Court Grants Summary Judgment on Finding of Infringement and No Invalidity for Endometrial Ablation Patent

July 2, 2018 – CYTYC Surgical Products, LLC, Hologic, Inc. had brought an infringement suit against Minerva Surgical, Inc. for its patents regarding endometrial ablation.

On June 28, the Court denied defendant’s motion to dismiss plaintiff’s claims for infringement following inter partes review because the patent had not been cancelled and the appeal of the PTAB finding “does not have preclusive effect as to this action until the appeal is resolved.” The Court denied defendant’s motion for summary judgment of invalidity for lack of written description and enablement since “the evidence shows that any such experimentation would involve repetition of commonly known or used techniques and application of techniques well known in the art.” On the other hand, the Court granted plaintiff’s motion for summary judgment that defendant’s § 112 validity challenges to plaintiff’s endometrial ablation patent were barred by assignor estoppel. The Court also granted plaintiff’s motion for summary judgment that defendant infringed its endometrial ablation patents after the court found that defendant’s “arguments for non-infringement all depend on claim construction that is contrary to the court’s construction.”

The Court also denied without prejudice defendant’s motion to strike the testimony of plaintiff’s infringement/validity expert in support of its summary judgment briefing since his testimony merely related to the content of the specifications. The court denied without prejudice defendant’s motion to strike the testimony of plaintiff’s damages expert for failing to apply the correct standards for lost profits or a reasonable royalty, since the motion can be adequately resolved at trial. The court also denied defendant’s motion for summary judgment that plaintiff’s claims for infringement under the doctrine of equivalents were barred by prosecution history estoppel.  Due to genuine disputes of material fact, the court also denied defendant’s motion for summary judgment that it did not willfully infringe.

The patents at issue were U.S. Patent Nos. 6,872,183 entitled “System and method for detecting perforations in a body cavity” and 9,095,348 entitled “Moisture transport system for contact electrocoagulation.” The case is captioned Hologic, Inc. et al v. Minerva Surgical, Inc., Case No. 1-15-cv-01031, District of Delaware.

By: Julian G. Pymento