The Valueless Method Patent in Hologic v. Minerva...

Gaston Kroub

Investors quickly learn that a patent trial is at best a halfway point or so in the typical contested patent struggle between competitors. In fact, such disputes today frequently have interweaving proceedings in the PTAB (IPR) and District Court (civil infringement action). Whenever those parallel proceedings intersect, interesting things tend to happen. A long-running (since 2015) patent dispute between Hologic and Minerva Surgical provides a good example.

Last July, Hologic obtained a damages verdict against Minerva for close to $5mm in damages, based on Minerva’s infringement of two Hologic patents. In the case, Hologic alleged that Minerva infringed U.S. Patent No. 6,872,183 (“the ’183 Patent”) and U.S. Patent No. 9,095,348 (“the ’348 Patent”). From the ’183 patent, Hologic asserted method claims. The asserted claim of the ’348 patent was a system or apparatus claim. The jury verdict form did not break out the damages by patent. Even though Minerva now probably wishes it did.

Fast forward to a week or so ago. Senior Judge Joseph F. Bataillon of the District of Delaware issued a comprehensive ruling on the various post-trial motions filed by the parties. As his decision notes, during the pendency of the post-trial motions the Federal Circuit decided to affirm an earlier IPR decision cancelling claims (including the asserted claims) from the ‘183 Patent. Which therefore tasked the Court with deciding whether the invalidation of one of the two patents underlying the jury verdict would impact on the damages award.

Judge Bataillon said there was no impact. Because the jury verdict did not apportion the damages on a per-patent basis and the damages award was supportable even on the basis of the uncancelled patent alone, there was no reason in his view to disturb the jury verdict. While the correctness of his reasoning may be challenged in a future appeal, his decision suggests that had Minerva asked for an apportionment by patent on the jury verdict form, the result may have been different. Likewise, had there been evidence suggesting that the cancelled method patent contributed some value, the Court’s conclusion that the apparatus patent alone justified the full jury award would seem more arbitrary. Either way, this decision highlights the importance of introducing evidence, to the jury and the Court, regarding the respective value of each patent asserted. Otherwise, even an IPR win may end up being negated if the patent cancelled is later determined to have been a valueless one for lack of evidence to the contrary.