Innogenetics, N.V. v. Abbott Labs. (W.D. Wis. 2007)

Permanent Injunction Issued Against Abbott HCV Genotyping Test Kit

    By Robert Dailey --

District Judge Barbara Crabb of the Western District of Wisconsin has issued a permanent injunction against Abbott that halts worldwide sales of its HCV genotyping test kits.  In an opinion issued last week (and reported on Patent Docs), the Court already held Abbott liable for infringing U.S. Patent No. 5,846,704, owned by Innogenetics.

To receive a permanent injunction, a successful plaintiff in a patent infringement suit must show that (i) it has suffered irreparable harm; (ii) the remedies available at law are inadequate to compensate for that harm; (iii) considering the balance of hardships between the plaintiff and defendant, an equitable remedy is warranted; and (iv) the public interest would not be harmed by the issuance of the permanent injunction.

In last week's opinion, the Court found that Innogenetics had clearly satisfied the first three factors in the four-factor test.  On the first factor, the Court found irreparable harm because Abbott's products directly compete with the products of the plaintiff's licensees (e.g., Bayer).  On the second factor, Abbott had argued that the Plaintiff's prior efforts to license its technology indicate its willingness to accept a purely legal remedy to the dispute.  Yet the Supreme Court expressly rejected this line of reasoning in eBay Inc. v. MercExchange L.L.C., 126 S. Ct. 1837, 1840 (2006).  On the third factor, the Court held that Abbott recited no harms that differed from those suffered by patent infringers generally.

The Court scheduled a separate hearing this week to hear parties' evidence on the public interest factor.  Abbott argued that Innogenetics could not fill the market need for FDA-compliant test kits and that enjoining Abbott would disrupt the HCV diagnostics services market.  In an order issued this morning, Judge Crabb rejected both of these contentions.  The Court held that Innogenetics does have ample capacity to supply the market need for HCV genotyping test kits.  Furthermore, the Court found Abbott's market disruption claims to be unpersuasive.  Abbott sells 90% of its infringing kits to a single customer - a laboratory that is already taking steps to replace its use of Abbott's test kits.

Abbott also argued that 35 U.S.C. § 271(f) could not prevent it from selling its products to foreign customers who could use its kits to practice the plaintiff's patented method outside of the U.S.  On a similar set of facts, however, the Federal Circuit had already held that § 271(f) does apply to U.S.-based companies that directly supply foreign customers with components that could be used to infringe a U.S. method patent.  See Union Carbide Chem. & Plastics Tech. Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005).  The permanent injunction, therefore, encompasses all of Abbott's domestic and foreign sales of its HCV genotyping kits.

Innogenetics, N.V. v. Abbott Labs., No. 05-C-0575-C (W.D. Wis.)

Click here for last week's opinion.

Click here for this morning's permanent injunction order.

Robert Dailey, Ph.D., is a physical chemist and a third-year law student at the University of North Carolina at Chapel Hill.  Dr. Dailey was a member of MBHB's 2006 class of summer associates.

Comments

[Christie]

So what is everyone's take on this?