In a case filed in the U.S. District Court, Southern District of Ohio, federal judge Michael Barrett has dismissed one patent infringement claim against Hologic, Inc., but has upheld three other patent claims and other related claims to go to trial.

Plaintiff Ethicon Endo-Surgery, Inc. (Ethicon) filed the suit against Hologic, Inc. and Suros Surgical Systems, Inc. (collectively, "Hologic") for patent infringement of four patents, U.S. patent numbers 6,273,862 ("the '862 patent"), 7,226,424 ("the '424 patent"), 6,428,487 ("the '487 patent"), and 6,752,768 ("the '768 patent") as well as a false advertising claim under the Lanham Act, and willful infringement. Hologic counterclaimed for invalidity of patent '487 and '768. Ethicon alleged that Defendants' ATEC breast biopsy systems infringe upon several of the claims in the patents, which are related to Ethicon's Mammotome breast biopsy systems. The Ethicon patents in question enable vacuum-assisted removal of multiple tissue samples by one needle insertion for a breast biopsy analysis.

Hologic had filed a motion for summary judgment, which asks the court to declare that there are no genuine issues as to any material fact and that the moving party is entitled to judgment as a matter of law. Hologic argued that it did not infringe upon the Ethicon patents.

For the '862 patent, Ethicon had admitted that there was no literal infringement, but argued infringement under the doctrine of equivalents. In essence, as noted by the Court, the doctrine of equivalents allows a patentee to show an equivalent when a challenged product or process performs substantially the same function in substantially the same way, to achieve substantially the same result. Judge Barrett found that Ethicon was not able to provide enough evidence to sustain an equivalent claim.

However, Judge Barrett found genuine issues of material fact on the '424, '487, and '768. Hologic also moved for summary judgment on the claim that it had violated the Lanham Act and that it had willfully infringed upon the Ethicon patents. Judge Barrett held that a question of fact exists as to whether or not the actions of Hologic were willful, and of Hologic's actual knowledge of Ethicon's patents.

According to the court docket, the trial on the remaining issues should commence February 1.

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