UPDATED May 6, 2019, with comment from Minerva.
A Delaware federal judge this week denied Minerva Surgical‘s bid for a new trial in its $5 million patent infringement loss to Hologic (NSDQ:HOLX), despite an appeals court ruling last month that invalidated one of the patents at issue.
Hologic’s NovaSure ablation device, acquired with the 2007 buyout of Cytyc (which acquired NovaSure developer Novacept in 2004), competes with Minerva’s Aurora device. Hologic sued Minerva in November 2015 in the U.S. District Court for Delaware, alleging infringement of a pair of patents after Novacept CEO Csaba Truckai founded Minerva in 2008. (Minerva sued Hologic for patent infringement in April 2017 in a California federal court; that case is still under way after being transferred to the Delaware court in February, according to court documents.)
In the first case brought by Hologic, the jury in July 2018 awarded $$4.2 million in damages and $587,000 for lost royalties. Both companies then filed a clutch of motions, with Minerva lodging another bid for judgment as a matter of law, a new motion for another trial and a motion for an injunction under the Deceptive Trade Practices Act. Hologic moved for legal fees, enhanced damages, a permanent injunction, an accounting, supplemental damages, ongoing royalties and pre- and post-judgment interest.
Then, last month, the U.S. Court of Appeals for the Federal Circuit upheld a Patent Trial & Appeals Board decision invalidating one of the Hologic patents, known as the ‘183 patent.
In a May 1 ruling Judge Joseph Bataillon ruled that the Federal Circuit decision “does not affect the jury verdict in this case.”
“The jury was asked to assess damages for infringement of the asserted claims of both the ‘183 patent and the ‘348 patent, without separately apportioning damages between the asserted claims of the two patents. The jury’s damages determination can be adequately supported by the finding of infringement of claim 1 of the ‘348 patent. The infringement of the ‘348 patent apparatus claim and the ‘183 patent method claims were interrelated, but a finding that the method claims are not valid does not affect the finding of infringement as to the apparatus claim,” Bataillon wrote. “In other words, one can infringe the apparatus claim even if the method claims are invalid.”
The Federal Circuit ruling does, however, render moot Hologic’s bids for a permanent injunction, supplemental and/or enhanced damages and ongoing royalties on the ‘183 patent.
“Any supplemental or enhanced damages for infringement of the ‘348 patent can be awarded only up the date of expiration of the ‘348 patent [on Nov. 19, 2018],” he wrote.
Bataillon also tacked on more than $270,000 in pre-judgment interest, according to court documents.
“There is no dispute that Hologic is also entitled to post-judgment interest and Hologic will also be awarded post-judgment at the legal rate from and after August 13, 2018,” the date of expiration on the ‘183 patent, Bataillon wrote. The judge also set the royalty rate at 16.1%.
“The court finds Hologic is entitled to recover a 16.1% royalty for infringing sales that are not reflected in the jury verdict and the court will order an accounting of such sales. The court finds, however, that no enhanced royalty for infringing sales post-verdict should be awarded. Hologic has not shown that enhanced damages are warranted,” Bataillon ruled.
In a May 6 press release, Minerva said it intends to appeal the past damages ruling and “unequivocally maintains its position that the second expired patent was never infringed by Minerva and should have been held invalid as well.”
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