A jury unanimously found that Abbott Laboratories willfully infringed Innogenetics’ U.S. Patent No. 5,846,704, which covers a method of genotyping the Hepatitis C Virus (“HCV”) using probes targeting sequences from the 5′ untranslated region of HCV.

Hepatitis C viruses (HCV) are a family of positive-stranded, enveloped RNA viruses causing the majority of non-A, non-B (NANB) hepatitis. The ‘704 patent claims:

1. A method of genotyping HCV present in a biological sample comprising hybridizing nucleic acids in a biological sample with at least one probe and detecting a complex as formed with said probe and said nucleic acids of HCV, using a probe that specifically hybridizes to the domain extending from the nucleotides at positions -291 to -66 of the 5′ untranslated region of HCV.

The U.S. District Court judge still has the discretion to up the award to triple the amount – so-called treble damages (35 U.S.C. § 284) – since the jury specifically determined Abbott’s patent infringement was willful. Innogenetics also has said it will seek an injunction against Abbott diagnostic products that infringe its ‘704 patent and any other available remedies.

On September 2, 2006, a jury returned a unanimous verdict for Innogenetics that the ‘704 patent was valid and has now determine damages and whether the infringement had been willful. Upon a finding of infringement, a court may increase damages, but a finding of increased damages is not mandatory. Under the statute, a court “may increase the damages up to three times the amount found or assessed.” Further, a court may award attorney’s fees as well. However, willful infringement is merely a predicate act to the enhancement of damages as a finding of willful infringement, though a sufficient basis for an award of increased damages does not mandate them.

Whether a finding of willful infringement is warranted depends on what the Federal Circuit has characterized as “the totality of the circumstances” presented, namely, whether a reasonable person would prudently conduct himself with any confidence that a court might hold the patent invalid, not infringed or unenforceable.

One factor is whether the infringer has obtained an opinion of counsel regarding infringement and/or validity. The Federal Circuit has held that once a party has actual notice of another’s patent right, that party has an affirmative duty to respect those rights, and that this affirmative duty normally entails obtaining advice of legal counsel.

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