A California jury awarded damages of $18.8 million based on lost profits and a royalty rate of 20% to Conceptus due to Hologic’s infringement of a Conceptus patent related to a transcervical intrafallopian contraception method.
Possibly more interesting than the actual verdict was an earlier JMOL, where the court ruled that Hologic had no acceptable and available non-infringing alternatives. Hologic had claimed that two specific alternatives were available because it had designed them and had the materials, equipment, and know-how to “implement” them during the period of alleged infringement. But the court found that the only support Hologic cited for this argument was a portion of the unsworn report of its own expert that relied exclusively on private conversations with Hologic personnel, which the court and Conceptus dubbed double hearsay, not evidence. The court notes that Hologic — the alleged infringer —bears the burden of proving the availability of some other acceptable non-infringing alternative, yet Hologic had not proffered any admissible evidence to rebut the inference that no acceptable noninfringing substitutes were available. In a JMOL, the court thus found that there were no acceptable and available non-infringing alternatives.
Interestingly, the court also cited some examples of evidence Hologic could have provided: “Hologic does not point to any research-and-development documentation, deposition testimony, or sworn declarations that might demonstrate Hologic’s capacity to “implement” non-infringing alternatives during the period of alleged infringement.”
Conceptus, Inc. v. Hologic, Inc., 3-09-cv-02280 (CAND December 16, 2010, Order) (Alsup)