Tyco Healthcare Group LP, et. al. v. Ethicon Endo-Surgery Inc., No. 3-10-cv-00060 (D. Conn. Mar. 28, 2013)

http://scholar.google.com/scholar_case?case=5376641270378033479&q=tyco+ethicon&hl=en&as_sdt=2,11

Plaintiffs Tyco Healthcare Group LP and United States Surgical Corporation (“Tyco”) own three patents related to ultrasonic surgical tools, issued in 2000, 2002, and 2004, respectively. Tyco sued Ethicon in the District of Connecticut in 2010 for infringement of these patents. After a bench trial, the district court found Tyco’s patents valid and infringed and awarded Tyco approximately $176 million in damages.

After applying the eBay v. MercExchange factors, the court declined to award Tyco a permanent injunction. The court first rejected Tyco’s argument that it had suffered irreparable harm, noting it had not articulated why “if Tyco has endured infringement and harm to its reputation since 2004, it never sought preliminary injunctive relief.” The court also found that monetary damages were fully adequate to compensate for Tyco’s injury because throughout trial Tyco had been “emphatic as to its entitlement to lost profits and to a certain royalty rate.”

In finding that the public interest factor cut both ways, the court noted that enforcing patent rights generally serves the public interest, but emphasized that a permanent injunction would pull many devices that are presently used in surgery off the market. The court cited the statement in Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 2009 WL 920300, at *9 (D. Ariz. Mar. 31, 2009), that taking surgical tools off the market would “deny many sick patients a full range of clinically effective and potentially life saving treatments,” Apparently the court was swayed by Ethicon’s post-trial arguments that an injunction would require it to reintroduce its old surgical tools into the market, which would have required retraining doctors. Finally, in examining the “balance of hardships” factor, the court found that the parties were both “giants in the industry” and therefore the balance of hardships did not tip sufficiently in the plaintiff’s favor.