Hologic Inc. (NSDQ:HOLX) wants a federal judge in Ohio to reconsider his ruling allowing Johnson & Johnson (NYSE:JNJ) subsidiary Ethicon Endo-Surgery Inc. to pursue patent infringement claims in its lawsuit over breast biopsy technology.
Ethicon sued Hologic in 2007, accusing the Bedford, Mass.-based women’s health products maker of violating a quartet of patents related to Ethicon’s Mammotome breast biopsy system with Hologic’s ATEC system, and of violating false advertising laws.
Last week, Judge Michael Barrett of the U.S. District Court for Southern Ohio ruled invalid one of the Ethicon patents, “Surgical Device For The Collection Of Soft Tissue,” but ruled that four other claims in the suit must be sorted out at trial.
Three of those claims argue that Hologic willfully violated patents related to Ethicon’s Mammotone device. In a motion filed Feb. 1, Hologic asked Barrett to reconsider allowing Ethicon to pursue those claims, arguing that there’s no evidence that Hologic knew about the patents before the lawsuit was filed.
Citing several precedents, Hologic claimed that allowing a jury to decide whether willful or even indirect patent infringement occured runs contrary to the requirement that there be "actual knowledge" of potential infringement.
"Given the absence of record evidence that even suggests Hologic had actual knowledge of the [three] patents prior to suit, summary judgment should be entered in favor of Hologic and [co-defendant and Hologic subsidiary] Suros on the issue of willful infringement," Hologic’s lawyers wrote, according to court documents. "Even if the Court does not enter summary judgment on this issue, Hologic respectfully requests that Ethicon not be permitted to argue that proof that Hologic ‘should have known’ of the patents-in-suit can establish willful infringement."
In the fourth claim Barrett allowed Ethicon to pursue, Ethicon accused Hologic of violating the Lanham Act, which prohibits false advertising, claiming that a Hologic whitepaper and video violated the statute. Barrett found that although Hologic’s claims in the whitepaper were false, neither side proved or disproved whether the deception was willful, ruling that question a matter to be settled at trial (along with the question of whether the video harmed Ethicon).