Covidien (NYSE:COV) won a round this week in its long-running set-to with Johnson & Johnson‘s (NYSE:JNJ) Ethicon Endo-Surgery division over surgical instrument patents when a federal judge in Connecticut granted an injunction barring sales of Ethicon’s Harmonic Ace +7 shears.
Covidien sued Ethicon in June, alleging that the latest iteration of its ultrasound surgical shears infringes 3 Covidien patents – the same trio of Covidien patents Ethicon was found to infringe last year.
That lawsuit resulted in a $177 million judgment against Ethicon in March 2013, when Judge Janet Bond Arterton ruled that Ethicon Endo-Surgery infringed 6 claims in 3 patents held by Covidien’s corporate predecessors, Tyco Healthcare and U.S. Surgical Corp., with products including its Autosonix and LCS ultrasonic scalpels (Covidien’s competing products include its Harmonic shears). Ethicon has appealed that ruling.
The latest suit accuses Ethicon of ignoring Arteron’s ruling in releasing the Ace+7 shears and seeks judgments of infringement and willful infringement (which would potentially triple any damages award), injunctions barring the sale of the Ace+7 device, and legal costs, according to court documents. This week Judge Janet Hall granted Covidien’s bid for a preliminary injunction, ruling that "enforcing Covidien’s patent is in the public interest.”
“It is especially important to enjoin infringement where, as here, it was consciously undertaken by 1 who knew of the risk. While Ethicon has put forward an important public interest factor of its own, it does not outweigh those offered by Covidien. Any harm to the public as a result of an injunction against Ethicon’s sale of the Ace+7 is limited by the fact that the Ace+7 is a new device and by the availability of alternative devices," Hall wrote. "Given that the Ace+7 has only recently been released and the fact that physicians have alternatives available, the public interest is better served here by enjoining Ethicon’s infringement."
Hall also denied for "essentially the same reasons" Ethicon’s motion to stay the lawsuit pending the outcome of Ethicon’s appeal of the 1st lawsuit, according to the documents.
"Covidien operates within a highly competitive global health care environment. We are pleased that the court has recognized the value of our intellectual property. As demonstrated by our actions, we will vigorously protect our innovative products, solutions and intellectual property," Covidien’s advanced surgical president Chris Barry said in prepared remarks.
Johnson & Johnson, which has filed an appeal of the Hall injunction with the U.S. District Court for the Federal Circuit, told MassDevice.com via email today that it is "disappointed" with the decision.
"Our number one priority is maintaining access and choice for surgeons and their patients.," Ethicon spokeswoman Ann Leibson wrote. "This injunction is specific to patent infringement and does not reflect negatively on the safety and effectiveness of our product."