Hologic (NSDQ:HOLX) wants a federal judge in Massachusetts to revisit its loss to rival Smith & Nephew (FTSE:SN, NYSE:SNN) over the MyoSure fibroid device it acquired along with Interlace Medical last year.
The lawsuit, the consolidation of 2 cases filed by the British orthopedic devices giant against Interlace and subsequent acquirer Hologic, alleges infringement of a pair of patents covering the MyoSure technology. Interlace developed the MyoSure device, a hysteroscopic system designed to remove fibroids – benign tumors of the uterus – in an out-patient procedure, using a high-speed cutting blade.
A jury awarded $4 million in damages in September 2012 to cover Smith & Nephew’s lost profits from the infringement. In June, Judge Rya Zobel of the U.S. District Court for Massachusetts upheld that decision but found that any damages owed by Hologic to the British medical products giant couldn’t yet be determined.
Now Hologic wants Zobel to revisit the case, arguing that the U.S. Patent & Trademark Office introduced new parameters for 1 of the patents in the case that Smith & Nephew agreed to.
"These statements in the prosecution history constitute new intrinsic evidence reflecting an agreement between the PTO and S&N as to what certain terms mean and mandating the reopening of claim construction so that the terms that were the subject of that agreement may be properly construed. Indeed, it would be error for the parties and the court to continue to operate under a claim scope that fails to account for what has transpired in the PTO over the last 45 days," Hologic argued in its Sept. 23 brief. "Applying this narrower construction of the terms at issue would have far-reaching effects. Most fundamentally, S&N has not proven – and could not prove – that Hologic’s accused MyoSure device infringes under the construction applied by the PTO in the reexamination."
Hologic asked Zobel to schedule time to "address the claim construction issues raised by the new intrinsic evidence in the file history" and reconsider her finding of no inequitable conduct on the part of Smith & Nephew.
"Or, alternatively, Hologic would respectfully request that the court stay the entire case until the conclusion of the reexaminations of the patents-in-suit and any subsequent appeals," according to court documents.
Smith & Nephew countered that Hologic’s new arguments are a re-hashing of issues already put to rest in the case and have no legal precedent to back them up.
"In its opening brief/motion to reconsider the entire case, Hologic cites to no case which ‘requires’ this court to do any such thing. Indeed, Hologic fails to cite a case in which a court has done such a thing in circumstances remotely close to those presented here," according to the documents. "At the end of the day, Hologic’s opening brief is little more than a thinly-veiled attempt to argue theories that it could have made the first time around, or reargue those that it has already lost. … It is time for judgment to be entered in this case, and for whatever appeals that may follow to be taken."
Smith & Nephew asked Zobel to calculate the 16% royalty the jury awarded it to come up with a damages amount "through the date of the close of Hologic’s most recent fiscal quarter," according to the documents.
The 1st lawsuit, filed against Interlace in 2010, accused its chief technology officer Ronald Adams, an SNN employee from 2002 to 2006, of bringing the technology with him when he jumped ship for the then-startup. Smith & Nephew sued Hologic, along similar grounds, after its Interlace buyout last year.
Interlace won 510(k) clearance for the device in October 2009, raising $21 million in June 2010 in a Series C round aimed at commercializing the MyoSure system. The company also won a $75,000 tax break from the Mass. Life Sciences Center to foster the creation of 10 permanent life science jobs in the Bay State. In 2009, Interlace landed a $300,000 tax break from the Commonwealth.