Conceptus, Inc. v. Hologic, Inc.

Filing 455

ORDER REGARDING ACCEPTABLE NON-INFRINGING ALTERNATIVES AND LOST PROFITS re 449 Brief, filed by Hologic, Inc., 450 Brief filed by Conceptus, Inc.. Signed by Judge Alsup on October 6, 2011. (whalc1, COURT STAFF) (Filed on 10/6/2011)

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1 2 3 4 5 IN THE UNITED STATES DISTRICT COURT 6 FOR THE NORTHERN DISTRICT OF CALIFORNIA 7 8 9 CONCEPTUS, INC., 11 For the Northern District of California United States District Court 10 12 13 Plaintiff, v. ORDER REGARDING ACCEPTABLE NON-INFRINGING ALTERNATIVES AND LOST PROFITS HOLOGIC, INC., Defendant. / 14 15 No. C 09-02280 WHA In December 2010, partial summary judgment was granted in favor of Conceptus, Inc. that 16 “there were no acceptable and available, non-infringing alternatives to the claimed inventions 17 during the relevant damages period” (Dkt. No. 356 at 17–20). Conceptus now requests an 18 in limine ruling that, pursuant to the partial summary judgment ruling, Hologic, Inc. may not 19 introduce evidence or argue that tubal ligation was an acceptable non-infringing alternative 20 during the damages period (Dkt. No. 450). With one important caveat, the request is GRANTED. 21 In opposing Conceptus’s motion for summary judgment on this issue, the only supposed 22 alternatives Hologic identified were “design-arounds,” meaning other design approaches that the 23 Hologic engineers supposedly tested but did not bring to market. Hologic did not identify tubal 24 ligation as a supposedly acceptable non-infringing alternative (Dkt. No. 296 at 22–24). The 25 summary judgment ruling that there were no acceptable and available non-infringing alternatives 26 will stand. Hologic had the burden of identifying any such alternatives at the summary judgment 27 stage, and it failed to do so. Hologic may not now introduce the new theory that tubal ligation 28 was an acceptable alternative. 1 Conceptus, however, still bears the burden of establishing that but for the alleged 2 infringement it would have made additional sales. The summary judgment ruling does not imply 3 that Conceptus would have sold its product to every user of Hologic’s method if Hologic had not 4 been in the market. Rather, the absence of any acceptable non-infringing alternative is only one 5 step along the way to proving lost profits. Fiskars, Inc. v. Hunt Mfg. Co., 279 F.3d 1378, 1380 6 n.2 (Fed. Cir. 2002) (“Absence of acceptable non-infringing alternatives is one of four factors in 7 the test for entitlement to lost profits damages . . . .”) (emphasis added). 8 9 IT IS SO ORDERED. 11 For the Northern District of California United States District Court 10 Dated: October 6, 2011. WILLIAM ALSUP UNITED STATES DISTRICT JUDGE 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2

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