J&J subsidiary files suit against Medtronic company over Enseal
Ethicon Endo Surgery, a subsidiary of Johnson & Johnson, has filed a complaint for declaratory judgment of non-infringement against Covidien, which is owned by Medtronic.
The case, which was filed on Monday, December 19, in the US District Court for the District of Massachusetts, centres on the product called Enseal, a “single-patient-use electrosurgical instrument for sealing and transecting vessels”.
According to Ethicon, the product does not infringe the patents involved, which are US numbers 6,585,735; 7,118,587; 7,473,253; 8,070,748; and 8,241,284.
In 1999, Ethicon and Covidien’s predecessor entered into a settlement agreement in which the parties agreed to submit to pre-litigation mediation in instances where one party believes that the other’s product or process infringes a patent “not within the scope of the immunity granted” in the agreement.
The submission of pre-litigation mediation should also take place where “one party wishes to resolve whether a new product or process of such party not within the scope of the immunity granted under the 1999 settlement agreement infringes any patents of the other party”.
Ethicon gave Covidien notice of mediation, stating that Enseal does not infringe Covidien’s patents.
But as a response, Covidien allegedly declined Ethicon’s offer to evaluate Enseal, asserting that it was not obliged to engage in the mediation process until Ethicon has begun commercial sales of the product.
In the complaint, Ethicon stated that the settlement agreement does not require commercial sales of a new product before the initiation of the mediation procedures, and further argued that Covidien was in breach of the agreement.
Following the notifications from both companies, the parties finally engaged in mediation but this did not result in a settlement. Covidien filed a complaint for patent infringement of the five patents.
Ethicon has asked the court to enter a judgment that Enseal does not infringe the patents asserted by Covidien. It has also asked for an award of costs.
