The U.S. Patent & Trademark Office dealt a setback to Smith & Nephew (FTSE:SN, NYSE:SNN) last month when it invalidated claims in a pair of patents at the core of a long-running infringement dispute with Interlace Medical and its subsequent acquirer, Hologic (NSDQ:HOLX).
Smith & Nephew sued Interlace in 2010, alleging infringement of a pair of patents with the MyoSure fibroid tumor device, and filed against Hologic after the Interlace buyout in January 2011.
In September 2012, a jury awarded $4 million in damages to cover Smith & Nephew’s lost profits from the infringement. Further damages, however, can’t yet be decided because the jury’s verdict was too vague, according to Judge Rya Zobel of the U.S. District Court for Massachusetts.
In October 2013, Hologic asked a federal judge in Massachusetts to revisit that loss. Last June, Judge Rya Zobel of the U.S. District Court for Massachusetts upheld that decision but found that any damages owed by Hologic to the British medical products giant couldn’t yet be determined.
Now the case is up in the air, after the patent office Jan. 14 rejected the lone claim at issue in 1 of the patents and rejected all the claims contained in the other, according to court documents.
"These decisions substantially impact issues of liability, damages, inequitable conduct, and the propriety of a stay of this case pending the final resolution of the reexaminations, and Hologic would be pleased to brief the import of these PTO actions should the court so request," Hologic attorney Matthew Wolf wrote, according to the documents.
Hologic said in a regulatory filing that it expects the USPTO decisions to be appealed and vowed its own appeal of the original jury verdict.
The 1st Smith & Nephew lawsuit, filed against Interlace in 2010, accused its chief technology officer Ronald Adams, an SNN employee from 2002 to 2006, of bringing the technology with him when he jumped ship for the then-startup. Smith & Nephew sued Hologic, along similar grounds, after its Interlace buyout.
Interlace won 510(k) clearance for the device in October 2009, raising $21 million in June 2010 in a Series C round aimed at commercializing the MyoSure system. The company also won a $75,000 tax break from the Mass. Life Sciences Center to foster the creation of 10 permanent life science jobs in the Bay State. In 2009, Interlace landed a $300,000 tax break from the Commonwealth.
