Last August, we wrote about Judge Robinson’s reversal a 2002 inequitable conduct decision in one of the Cordis Corp. v. Boston Scientific cases. Judge Robinson had initially found the two asserted patents invalid for inequitable conduct. Cordis appealed, won on appeal, and then prevailed again on remand. Boston Scientific then filed a motion for reconsideration, and Judge Robinson issued a memorandum opinion on Thursday addressing the motion. Cordis Corp. v. Boston Scientific Corp., C.A. No. 98-197-SLR (D. Del. Mar. 31, 2010)
Boston Scientific asserted that “the Federal Circuit’s mandate clearly limited the court’s inquiry on remand ‘only to supplement and explain its prior findings on deceptive intent and taint,” id. at 4, and that the Court “did not address all of the questions posed by the Federal Circuit,” id. at 6. The Court disagreed on both counts, essentially holding that if the Federal Circuit had mandated that it review its prior findings, it must also be able to change its prior conclusion; a contrary interpretation would “leave the court in the untenable position of submitting for appellate review a factual record which is starkly inconsistent with the court’s previous legal determinations.” Id. The Court further held, as far as addressing individual questions, that its analysis did not deviate from the Federal Circuit’s mandate.
Boston Scientific further argued that reversal as to one of the two patents was improper, because Cordis had failed to appeal the holding as to that patent. The Court again disagreed, holding that “Irrespective of Cordis’ failure to explicitly place the enforceability of the . . . patent at issue [on appeal], the Federal Circuit’s mandate directing the court to engage in a factual inquiry regarding deceptive intent – relevant to the enforceability of [both] patents – implicitly does so.” Id. at 6-7.