In the latest salvo of a patent war over a permanent female contraception device made by both companies, Judge William Alsup of the United States District Court, Northern District of California denied the Mountain View, Calif.-based company’s request to stop Hologic from selling the Adiana permanent contraception system in the U.S. Alsup also ruled that no further royalties would be due to Conceptus on future sales of the Adiana.
In October, a California jury awarded Conceptus $18.8 million in monetary damages and royalties of 20 percent after finding that Hologic violated 5 patents covering the Conceptus Essure system with its competing Adiana system. A motion by Hologic to overturn the jury’s verdict was also denied by Alsup.
"We are very pleased the judge saw fit to allow the Adiana system to stay on the market as an alternative for women seeking permanent contraception," Mark Casey, Hologic’s senior vice president said in prepared remarks. "We continue to evaluate our options in this matter, including appealing the underlying infringement verdict."
The news hit Conceptus hard on The Street yesterday, where shares dropped 6.3% to $11.90 at market close. Stocks have rebounded slightly to $12.00 per share in mid-afternoon trading.
"While the judge did not grant our motion for a permanent injunction against our competitor’s product, the court’s decision today reaffirms the jury’s verdict and represents the next step in the process to finalize damages in connection with the jury finding that Hologic infringed on Conceptus’ patent," D. Keith Grossman, president & CEO of Conceptus said in a prepared release. "We are currently evaluating our options, including filing a supplemental complaint to seek lost profits."
Conceptus filed the request for injunction against Hologic less than a week after the October patent win.
Essure uses a flexible coil partly made of copper to permanently block the fallopian tubes. The device is delivered via a trans-cervical catheter.
The Hologic system, which won 510(k) clearance from the Food & Drug Administration in July 2009, also uses a small insert to occlude the fallopian tubes. But the Adiana procedure first applies radiofrequency energy to small sections of the tube, before a silicone plug is implanted.