Free USCA Order - District Court of Delaware - Delaware

f Case 1:98-cv-00019-SLR Document 224 Filed 05/07/2008 Page 1 of 3
NOTE; This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2006-1393,-1394,-13%,-1396,—1415,—1416`
CORDIS CORPORATION,
Plaintilf—AppeIlant,
v.
BOSTON SCIENTIFIC CORPORATION
and BOSTON SCIENTIFIC SCIIVIED, INC. (formerly known as Scimed Life Systems,
Inc.),
Defendants—Appellalits.
l\/IEDTRONIC AVE, INC., , _
Plarnrlw-Appellant, §
V- gn
;_;:w>(Tq
CORDIS CORPORATION, JOHNSON AND JOHNSON, §
and EXPANDABLE CRAFTS PARTNERSHIP, ry
c=>
Defendants-Appellees. U1 *-·*
BOSTON SCIENTIFIC CORPORATION
and BOSTON SCIENTIFIC SC|l\/IED, INC. (formerly known as Scimed Life Systems,
Inc.),
P|aintitfs—Appellants,
v.
ETHICON, INC., CORDIS CORPORATION,
and JOHNSON & JOHNSON INTERVENTIONAL SYSTEl\/IS CO.,
Defendants—Cross Appellants.

· Case 1:98-cv-00019-SLR Document 224 Filed 05/07/2008 Page 2 of 3
Appeals from the United Sates District Court for the District of Delaware in consolidated
cases 97-CV-550, 97-CV—700, and 98—CV—i9, Judge Sue L. Robinson.
DECIDED: April 9,2008
ON PETITION FOR REHEARING
Before BRYSQN, Circuit Judge, FRIEDIVIAN, Senior Circuit Judge, and, KEELEY,
District Judge.
PER CURlAl\/I.
Co—defendants Boston Scientific Corp. and Boston Scientific Sclmed, Inc.,
(collectively, "BSC") have filed a petition for panel rehearing and for rehearing en banc.
Among its arguments, BSC asserts that rehearing is warranted because the panel failed
to direct the district court to grant BSC a new trial on the issue of obviousness with
respect to claim 44 of U.S. Patent No. 4,739,762 ("the ’762 patent") following this court’s
reversal of the district ccurt’s order invaiidating that claim on other grounds.
ln response, Cordis argues that BSC has waived its argument that ciaim 44 is
obvious. Cordis argues that BSC chose not to raise the obviousness of the ’762 patent
in the first trial in 2000. After lVledtronic’s first appeai in this case, to which BSC was not
a party, the district court issued an order allowing BSC and Cordis to supplement the
record to address the validity of the ’762 patent in light of the claim construction of "slots
formed therein“ adopted by this court in lVledtronic‘s appeal. At the 2005 retrial, BSC
asserted a defense of obviousness with respect to claim 23 of the ’762 patent, but not
* Honorable lrene l\/l. Keeley, Chief Judge, United States District Court for
the Northern District of West Virginia, sitting by designation.
2006-1393,-1394,-13%,-1396,—14“l5,—1416
2

. . .· Case 1:98-cv-00019-SLR Document 224 Filed 05/07/2008 Page3of3
with respect to claim 44. instead, BSC filed a motion in limine to exclude Cordis’s
evidence with respect to the nonobviousness of claim 44. In its motion, BSC argued
that the issue of obviousness as to claim 44 was moot because the district court had
found that claim invalid under 35 U.S.C. § 305. BSC stated that the issue of
obviousness as to claim 44 would be better addressed if Cordis were to succeed in
appealing the district court’s decision to invalidate claim 44 under section 305. Cordis
nevertheless argues that BSC waived any argument regarding the obviousness of claim
44 because the district court’s interlocutory order invalidatlng claim 44 under section
305 did not preclude BSC from raising the obviousness of claim 44 at the 2005 retrial.
The district courts familiarity with the proceedings in this case puts it in the best
position to determine whether BSC’s defense of obviousness with respect to claim 44
has been waived and, if not, what further proceedings are appropriate. We issue this
supplemental order to make clear that this court’s mandate was not intended to resolve
the issue of waiver and accordingly does not have the effect of depriving the district
court of the authority to determine whether it should conduct further proceedings
addressing the merits ofthe issue of the obviousness of claim 44.
SO ORDERED.
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SLERK
I HEREBYC§§*l?§?H?S? ISZCLIMENT
IS A TRUE AND CORRECT COPY
OF THE ORIGINAL ON FILE.
2006-1393,-1394,-1395,-1396,-1415,-1416 uNiT§g§}-¤—éE’§E%(éHRE((.%I;éA5%EALS
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