Innogenetics announced that the United States Court of Appeals for the Federal Circuit yesterday evening has affirmed the U.S. District Court’s finding that Abbott Lab infringed Innogenetics’ patented Hepatitis C Virus (HCV) genotyping technology. The Federal Circuit also upheld the jury’s finding that Abbott pay Innogenetics damages for infringement and sanctions for making a baseless claim against Innogenetics, estimated to total approximately $US10 million.
In a decision i the Federal Circuit rejected a myriad of issues raised by Abbott in Abbott’s effort to overturn the unanimous jury verdict in Innogenetics’ favor. The Federal Circuit also affirmed the district court’s finding that Abbott should be sanctioned and pay Innogenetics’ attorneys fees related to Abbott’s baseless claim that Innogenetics had acted improperly in obtaining its US HCV genotyping patent. The result of the Federal Circuit decision is that Abbott must pay an estimated $US 10 million in damages to Innogenetics, using current exchange rates. During the appeal, Abbott challenged many of the rulings made by both the district court and the jury. In rejecting Abbott’s challenges, the Federal Circuit affirmed the district court’s finding that Abbott infringed claims 1, 2 and 3 of Innogenetics’ HCV genotyping patent; dismissed all challenges to the validity of claims 2 and 3 of the patent; affirmed the jury’s damages award; affirmed the district’s finding that the patent is enforceable; and affirmed the district court’s sanctioning of Abbott by ordering it to pay Innogenetics’ attorneys fees resulting from Abbott’s baseless assertion that the patent was not enforceable due to Innogenetics’ conduct before the United States Patent Office.
The Federal Circuit reversed the district court’s decision to summarily rule on the validity of one of the patent’s claims in light of one piece of prior art; finding instead that the district court should have allowed that question to be decided by a jury. The Federal Circuit thereby remanded this issue back to the district court. Importantly, because two of the three claims found to be infringed are unaffected by this ruling, this reversal will not affect either the determination that Abbott infringed Innogenetics’ HCV genotyping patent or the jury’s determination that Abbott must pay damages for its infringement. In reversing the district court’s permanent injunction against Abbott, the Federal Circuit replaced the permanent injunction against Abbott with a compulsory license requiring Abbott to pay Innogenetics a royalty on each future infringing product sold by Abbott in the United States, or made by Abbott in the United States and exported for sale worldwide. The Federal Circuit left it to the district court to precisely determine the amount of damages to be paid to Innogenetics, taking into account accrued interest and the increased value of the Euro. These proceedings also will result in the establishment of an appropriate future royalty payment that Abbott must pay to Innogenetics if it sells any more infringing HCV genotyping assays.
In September 2005, Innogenetics sued Abbott Laboratories alleging that Abbott was infringing the company’s US5846704 (“the ‘704 patent”), which covers a method of genotyping the Hepatitis C Virus. The court found the patent was infringed as a matter of law. On September 1, 2006, a jury returned a unanimous verdict for Innogenetics that the ‘704 patent was valid in all respects. On September 8, 2006, the same jury unanimously found that Abbott’s actions had been willful, and directed Abbott to pay Innogenetics $7 million in damages related to the infringement up to the time of the trial. On January 4, 2007, the judge in this case dismissed Abbott’s requests for a new trial, affirmed the jury’s finding that Abbott infringed the patent, that the patent was valid in all respects and approved the award of $7 million in damages. The judge overturned the jury’s unanimous finding that Abbott’s infringement had been willful. On January 10, 2007, the judge affirmed Innogenetics’ request for a permanent injunction against Abbott, enjoining Abbott from any further sales, use or export of products, including components, that infringe on Innogenetics’ patented genotyping technology. On January 15, 2007, Abbott filed an appeal of the district court case with the United States Court of Appeals for the Federal Circuit. Innogenetics filed a cross-appeal on January 24, 2007. On October 1, 2007, oral argument was held before a three-judge panel of the United States Court of Appeals for the Federal Circuit.
In a decision i the Federal Circuit rejected a myriad of issues raised by Abbott in Abbott’s effort to overturn the unanimous jury verdict in Innogenetics’ favor. The Federal Circuit also affirmed the district court’s finding that Abbott should be sanctioned and pay Innogenetics’ attorneys fees related to Abbott’s baseless claim that Innogenetics had acted improperly in obtaining its US HCV genotyping patent. The result of the Federal Circuit decision is that Abbott must pay an estimated $US 10 million in damages to Innogenetics, using current exchange rates. During the appeal, Abbott challenged many of the rulings made by both the district court and the jury. In rejecting Abbott’s challenges, the Federal Circuit affirmed the district court’s finding that Abbott infringed claims 1, 2 and 3 of Innogenetics’ HCV genotyping patent; dismissed all challenges to the validity of claims 2 and 3 of the patent; affirmed the jury’s damages award; affirmed the district’s finding that the patent is enforceable; and affirmed the district court’s sanctioning of Abbott by ordering it to pay Innogenetics’ attorneys fees resulting from Abbott’s baseless assertion that the patent was not enforceable due to Innogenetics’ conduct before the United States Patent Office.
The Federal Circuit reversed the district court’s decision to summarily rule on the validity of one of the patent’s claims in light of one piece of prior art; finding instead that the district court should have allowed that question to be decided by a jury. The Federal Circuit thereby remanded this issue back to the district court. Importantly, because two of the three claims found to be infringed are unaffected by this ruling, this reversal will not affect either the determination that Abbott infringed Innogenetics’ HCV genotyping patent or the jury’s determination that Abbott must pay damages for its infringement. In reversing the district court’s permanent injunction against Abbott, the Federal Circuit replaced the permanent injunction against Abbott with a compulsory license requiring Abbott to pay Innogenetics a royalty on each future infringing product sold by Abbott in the United States, or made by Abbott in the United States and exported for sale worldwide. The Federal Circuit left it to the district court to precisely determine the amount of damages to be paid to Innogenetics, taking into account accrued interest and the increased value of the Euro. These proceedings also will result in the establishment of an appropriate future royalty payment that Abbott must pay to Innogenetics if it sells any more infringing HCV genotyping assays.
In September 2005, Innogenetics sued Abbott Laboratories alleging that Abbott was infringing the company’s US5846704 (“the ‘704 patent”), which covers a method of genotyping the Hepatitis C Virus. The court found the patent was infringed as a matter of law. On September 1, 2006, a jury returned a unanimous verdict for Innogenetics that the ‘704 patent was valid in all respects. On September 8, 2006, the same jury unanimously found that Abbott’s actions had been willful, and directed Abbott to pay Innogenetics $7 million in damages related to the infringement up to the time of the trial. On January 4, 2007, the judge in this case dismissed Abbott’s requests for a new trial, affirmed the jury’s finding that Abbott infringed the patent, that the patent was valid in all respects and approved the award of $7 million in damages. The judge overturned the jury’s unanimous finding that Abbott’s infringement had been willful. On January 10, 2007, the judge affirmed Innogenetics’ request for a permanent injunction against Abbott, enjoining Abbott from any further sales, use or export of products, including components, that infringe on Innogenetics’ patented genotyping technology. On January 15, 2007, Abbott filed an appeal of the district court case with the United States Court of Appeals for the Federal Circuit. Innogenetics filed a cross-appeal on January 24, 2007. On October 1, 2007, oral argument was held before a three-judge panel of the United States Court of Appeals for the Federal Circuit.
