Hologic Inc. (NSDQ:HOLX) agreed to pay $12.5 million to Johnson & Johnson (NYSE:JNJ) subsidiary Ethicon Endo-Surgery to settle a pair of patent infringement cases involving breast biopsy technology.
Ethicon sued Hologic in 2007 in Ohio and in 2009 in Delaware, 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.
In January, a federal judge in Ohio threw out one patent infringement charge against Hologic, but ruled that four other claims in the suit must be sorted out at trial. Earlier this month Hologic asked Judge Michael Barrett of the U.S. District Court for Southern Ohio to reconsider, arguing 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.
The Ohio case went to trial this week (the Delaware case was pending), and evidently Hologic decided it didn’t like what it saw on the jurors’ faces, inking the settlement agreement. In addition to the $12.5 million Hologic will send Ethicon’s way, the deal involves a cross-licensing agreement that calls for Hologic to pay Ethicon royalties on sales of its ATEC and EVIVA products; Ethicon will pay royalties to Hologic on sales of its Mammotone MR device.