Endometrial Ablation Patent Invalidated Due to Statutorily Prohibited Commercialization Activities

Posted on

The patent infringement lawsuit Minerva Surgical, Inc. v. Hologic, Inc. et al., case number 1:18-cv-00217, in the U.S. District Court for the District of Delaware, was an assertion of U.S. Patent No. 9,186,208 (“the ’208 patent”, entitled “Systems for Endometrial Ablation”) against accused Hologic devices.

On July 23, 2021, in Minerva Surgical, Inc. v. Hologic, Inc. et al., Defendant Hologic’s motion for summary judgment of invalidity of the asserted claims (of the ’208 patent) under 35 U.S.C. § 102(b) (pre-AIA), due to statutorily prohibited commercialization of the claimed invention more than one year before the application filing date, was granted invalidating the ‘208 patent just days before trial which had been scheduled to begin August 9, 2021.

The Court found “overwhelming and corroborated evidence” that “Minerva’s technical documents, internal communications, Board presentations, and communications with physicians and potential investors, both before and closely following [the Global Congress of Minimally Invasive Gynecology sponsored by the American Association of Gynecologic Laparoscopists on November 16-19, 2009 (“AAGL 2009”)], show a prototype with [“substantially dissimilar material properties” (SMDP)] elements as construed by the Court [(the dispositive claim limitation, as Hologic did not dispute that all other requirements of the single asserted independent claim are literally present in the accused product)]. Minerva commercially exploited its invention before the critical date.” MEMORANDUM AND ORDER, p. 19.

The Court also stated: “Minerva documents dated shortly after AAGL 2009 demonstrate that the claimed invention had been displayed at the trade show. Minerva’s exhibitor booth at the show was open to the public—visitors did not need to sign nondisclosure agreements to see it.” MEMORANDUM AND ORDER, p. 11.

If you have questions about this article, or about patent, trademark or other intellectual property-related matters, please contact our Intellectual Property Practice Group.

Leech Tishman’s Facebook Page: https://www.facebook.com/leechtishman

Leech Tishman’s Twitter: https://twitter.com/LeechTishman

Leech Tishman’s Company Page on LinkedIn: https://www.linkedin.com/company/leech-tishman

Leech Tishman Fuscaldo & Lampl is a full-service law firm dedicated to assisting individuals, businesses, and institutions. Leech Tishman offers legal services in business restructuring & insolvency, corporate matters, employment & labor, estates & trusts, intellectual property, litigation & alternative dispute resolution, and real estate. In addition, the firm offers a wide range of legal services to clients in the aviation & aerospace, cannabis, construction, energy & natural resources, healthcare, and hospitality industries. Headquartered in Pittsburgh, PA, Leech Tishman also has offices in Chicago, Los Angeles, New York, Philadelphia, Sarasota, Washington, D.C., and Wilmington, DE.