UPDATED 10/18/2011 with comment from Hologic
A California jury awarded Conceptus $18.8 million and royalties of 20 percent after finding that Hologic violated five patents covering the Conceptus Essure system with its competing Adiana system.
Mountain View, Calif.-based Conceptus had sued its Bedford, Mass.-based competitor in May 2009.
Essure uses a flexible coil partly made of copper to permanently block the fallopian tubes. The device is delivered via a trans-cervical catheter. In 2009 Judge William Alsup of the U.S. District Court for Northern California denied a Conceptus motion seeking a preliminary injunction barring Hologic from bringing its Adiana treatment to market. That 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.
“The jury verdict acknowledges the invention Conceptus pioneered more than a decade ago that is the foundation of the Essure procedure. We remain committed to continuously defending our intellectual property while we work to achieve our long-term goal of making Essure the standard of care in permanent birth control,” Conceptus president & CEO Mark Sieczkarek said in prepared remarks.
Hologic said the verdict won’t have any impact on its operations or finances because “the payment, should it be paid, would be deducted from the contingent consideration otherwise due to former Adiana Inc. shareholders (the former owners of the Adiana system).”
“We are obviously disappointed in this verdict. However, there remain several issues to be decided by the court which could impact the ultimate disposition of the case,” Holgic general counsel Mark Caseysaid in prepared remarks. “Upon resolution of those issues, the company will evaluate its options. In the meantime, the company will continue to sell, market and promote the Adiana System.”