In a March 14, 2014 ruling, Judge Shira Scheindlin dismissed Medinol, Ltd.’s patent infringement action against Cordis Corporation and Johnson & Johnson on the ground of laches following a five day bench trial on that issue. Medinol had two suites of patents for arterial stents, the so-called “Pinchasik patents” and the so-called “Israel patents” which issued from continuation-in-part applications from the Pinchasik patents. In 2000, Medinol sued Cordis over the Israel patents. That series of lawsuits was ultimately unsuccessful, and ended in 2004. The parties thereafter entered into a distribution relationship, which included a tolling provision for any unspecified claims that the parties might have against each other. Sometime in 2005, Medinol explored an infringement action against Cordis on the Pinchasik patents, but did not file that action (or in any way inform Cordis that it was contemplating such an action) until 2013. The parties’ distribution relationship ended early by mutual agreement in 2012. There were some ultimately unfruitful negotiations to renew the relationship, and when those collapsed, Medinol sued on the Pinchasik patents. Judge Scheindlin noted that to “‘prevail on a defense of laches, a defendant must establish that (1) the plaintiff’s delay in filing a suit was “unreasonable and inexcusable,” and (2) the defendant suffered “material prejudice attributable to the delay.”’” The Court further wrote that in a patent case, the time period for laches does not begin to run until after the patent issues, and that a “delay of more than six years before bringing suit raises a presumption that such a delay was both unreasonable and prejudicial to the defendant.” The presumption shifts the burden to the plaintiff to submit evidence reasonably putting into dispute the reasonableness of the delay and the lack of any prejudice.
