[Ip-health] Abbott's compulsory license on the Innogenetics's patents for hepatitis C virus (HCV) testing kit

[James Love]

These are a few quotes from the CAFC's January 2008 decision on the
compulsory license on Innogenetics's patents for Abbott's hepatitis C
virus (HCV) testing kit.  Abbott was found to infringe the patents, but
the appeals court required the lower court to grant an compulsory
license for future use of the patent.   Jamie


*  "even Abbott acknowledges that such future sales would be subject to
the running royalty, a compulsory license. We remand to the district
court to delineate the terms of the compulsory license, such as
conditioning the future sales of the infringing products on payment of
the running royalty, the 5-10 Euros per genotyping assay kit"

http://www.cafc.uscourts.gov/opinions/07-1145.pdf


United States Court of Appeals for the Federal Circuit
2007-1145, -1161
INNOGENETICS, N.V.,
Plaintiff-Cross Appellant,
v.
ABBOTT LABORATORIES,
Defendant-Appellant.

...................
The reasonable royalties awarded to Innogenetics include an upfront
entry fee that contemplates or is based upon future sales by Abbott in a
long term market. When a patentee requests and receives such
compensation, it cannot be heard to complain that it will be irreparably
harmed by future sales. Moreover, this factor greatly outweighs the
other eBay factors in this case. As a result, the district court=E2=80=99s =
grant
of an injunction prohibiting future sales of Abbott=E2=80=99s genotyping as=
say
kits was an abuse of discretion and must be vacated.8

While the market entry fee was based upon the projection that Abbott
could sell its product through 2019, even Abbott acknowledges that such
future sales would be subject to the running royalty, a compulsory
license. We remand to the district court to delineate the terms of the
compulsory license, such as conditioning the future sales of the
infringing products on payment of the running royalty, the 5-10 Euros
per genotyping assay kit.9

8 In its order granting the permanent injunction, the district court
stated that =E2=80=9C[i]t would denigrate the value of plaintiff=E2=80=99s =
patent rights
to allow defendant to continue to sell plaintiff=E2=80=99s invention as its=
 own
in exchange for the same fee it would have paid without a lawsuit.=E2=80=9D
Injunctive relief ought not to act as a form of =E2=80=9Cextra damages=E2=
=80=9D to
compensate for litigation costs. See Amstar Corp. v. Envirotech Corp.,
823 F.2d 1538, 1549 (Fed. Cir. 1987) (remarking that injunctions may not
be punitive in any case). Cf. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572,
1581 (Fed. Cir. 1996) (finding that awarding =E2=80=9Ckickers=E2=80=9D on t=
op of a
reasonable royalty to compensate for heavy litigation costs or expenses
is abuse of discretion). If litigation costs were a factor, injunctive
relief would be warranted in every litigated patent case. Cf. eBay, 126
S. Ct. at 1840 (noting that permanent injunctions are not to be granted
as a matter of course in patent litigation).


9 An injunction delineating the terms of the compulsory license would
permit the court to retain jurisdiction to ensure the terms of the
compulsory license are complied with.


--
_____________________________
James Love, Knowledge Ecology International (KEI)
http://www.keionline.org, mailto:james.love@keionline.org
voice +1.202.332.2670, fax +1.202.332.2673, US mobile +1.202.361.3040,
Geneva mobile +41.76.413.6584

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