Summit Technology, Inc. v. Nidek Co., Ltd., 03-1214.
| Citation | 363 F.3d 1219 |
| Decision Date | 26 March 2004 |
| Docket Number | No. 03-1214.,03-1214. |
| Parties | SUMMIT TECHNOLOGY, INC., Plaintiff-Appellant, v. NIDEK CO., LTD., Nidek, Inc., and Nidek Technologies, Inc., Defendants-Appellees. |
| Court | U.S. Court of Appeals — Federal Circuit |
Wayne L. Stoner, Hale and Dorr LLP, of Boston, MA, argued for plaintiff-appellant. With him on the brief were Lisa J. Pirozzolo and Debra Squires-Lee. Of counsel on the brief was Thomas J. Engellenner, Nutter, McClennen & Fish, LLP, of Boston, MA.
Neil B. Siegel, Sughrue Mion, PLLC, of Washington, DC, argued for defendants-appellees. With him on the brief were Robert M. Masters, Abraham J. Rosner and Paul J. Wilson. Of counsel on the brief were David S. Godkin, Kristina E. Barclay, and Jill L. Brenner, Testa, Hurwitz & Thibeault, LLP, of Boston, MA.
Before SCHALL, BRYSON, and LINN, Circuit Judges.
Summit Technology, Inc. ("Summit") appeals from the entry of judgment as a matter of law of non-infringement of all asserted claims of its U.S. Patents Nos. 4,941,093 ("the Marshall '093 patent") and 4,973,330 ("the Azema '330 patent"), entered by the United States District Court for the District of Massachusetts in favor of defendants Nidek Co., Ltd., Nidek, Inc., and Nidek Technologies, Inc. (collectively "Nidek"), following a jury verdict that found the asserted claims of both patents literally infringed. Summit Tech., Inc. v. Nidek Co., No. 98-CV-12611-EFH, 2002 WL 31844693 (D.Mass. Dec. 19, 2002) ("JMOL Order"). Because Summit failed to present sufficient evidence to support the jury's verdict that Nidek infringed either the Marshall '093 patent or the Azema '330 patent, we affirm.
The patents in suit are the Marshall '093 and Azema '330 patents, which are directed to laser eye surgical apparatuses and techniques to correct vision problems. These patents are owned by Summit and cover basic aspects of Summit's LASIK or PRK laser eye surgery technology.
The human eye processes light reflected from objects, permitting a person to see those objects. Light enters the eye through the cornea or outer layer of the eye, is focused by the cornea and the lens, and then is detected by the retina. The eye's light focusing function is substantially affected by the cornea. Refractive errors of the eye, including a misshapen cornea or a visual axis of improper length, can cause vision problems such as myopia or astigmatism.
Over the years, doctors have devised various surgical methods for directly reshaping the cornea to correct refractive errors of the eye as an alternative to external corrective lenses. See Marshall '093 patent, col. 2, ll. 4-15. In the early 1980s, doctors began experimenting with excimer lasers to reshape the cornea and correct vision problems. See id. at col. 1, l. 64 — col. 2, l. 4. Excimer lasers use pulses of light to precisely remove corneal material in a process of vaporization called ablation. Each pulse of light has characteristic parameters, such as wavelength, energy, shape, and size. The energy per unit area — the energy of a laser pulse divided by the size of the light spot on the cornea — is directly related to the depth of corneal material ablated.
The Marshall '093 patent issued to Summit on July 10, 1990, and covers systems and methods for removing different amounts of corneal material in different areas to correct refractive vision problems. This technique is referred to as differential ablation. Of the asserted claims of the Marshall '093 patent found to be infringed, claims 1, 15, and 25 are independent. Claim 1 is a representative apparatus claim and recites, with the disputed term underlined:
1. A laser system for eroding a surface, said laser system comprising:
laser means for generating pulses of laser light along a beam path at an energy level, such that the pulses can be absorbed at a surface to induce photoablation;
support means for aligning a surface relative to the laser means; and
beam dimension control means disposed along said laser beam path, including optical means for optically varying an area on the surface to which the pulses of laser energy are delivered while maintaining a substantially constant energy per unit area during each pulse.
Marshall '093 patent, col. 24, ll. 15-29 (emphasis added). The other two independent claims, claims 15 and 25, are method claims with similar limitations. The limitations of claims 15 and 25 corresponding to the "beam dimension control means" of claim 1 are nearly identical and not separately discussed by the parties.
In construing the disputed "beam dimension control means" limitation as a means-plus-function limitation subject to 35 U.S.C. § 112, ¶ 6, the district court stated:
The function of this limitation is, using optical component(s) in the path of the laser beam, to vary an area on the surface to which pulses from the laser are delivered but, at the same time, to have each pulse delivered to the surface have substantially the same energy per unit area. Pulses delivered to the surface have substantially the same energy per unit area if they each ablate approximately the same depth of material. There are a number of "beam dimension control" and "optical" means described in the patent which perform or assist in performing this function ... including a variable aperture iris diaphragm.
Summit Tech., Inc. v. Nidek Co., No. 98-CV-12611-EFH, slip op. at 2 (D.Mass. June 25, 2002) ("Claim Construction Order").
The Azema '330 patent issued on November 27, 1990, and was later acquired by Summit. Of the asserted claims of the Azema '330 patent found to be infringed, only claim 21 is independent. Claim 21 recites, with the disputed term underlined:
21. A surgical apparatus useful in performing in situ ophthalmological operations to optimize the curvature of the anterior surface of an area of the cornea of an eye, having an optical axis comprising:
(a) a light source having a wavelength in the ultraviolet range, said light source being capable of effecting photochemical decomposition of corneal material;
(b) means for selecting out of the light produced by said light source, a portion of light which is essentially unidirectional in nature, whereby a beam of light having an outer portion and a center is formed;
(c) means for focusing said beam of light onto the anterior surface of a patient's cornea, whereby a light spot having an area a configuration [sic] is formed, the area of said light spot having a maximum area at least as large as the area of the cornea desired to be operated upon, whereby within the area of the corneal surface impinged by said light spot, ablation of a portion of the corneal material occurs by means of photochemical decomposition, said ablation being time-dependent, whereby, the longer a particular portion of the cornea surface is impinged by said light spot the greater the amount of corneal material ablated; and,
(d) means for changing the configuration of said light spot, whereby size or shape of said light spot may be varied or a portion of said light spot may be obscured such that, as a function of time, varying portions of the cornea surface may be made to receive varying amounts of total photoradiant energy, whereby a lenticular lamina of cornea material having a smooth anterior surface may be removed by ablation, thereby locally adjusting the radius of curvature of the cornea surface.
Azema '330 patent, col. 11, ll. 14-51 (emphasis added).
In construing the disputed "means for focusing" limitation of the Azema '330 patent as a means-plus-function limitation subject to 35 U.S.C. § 112, ¶ 6, the district court stated:
The "function" of this limitation is to focus the beam to direct a spot of light onto the front surface of the cornea. The area of the spot is at least as large as the area of the cornea one wishes to operate upon. The "means" structure described in the patent specification for performing this function is a lens.
Claim Construction Order, slip op. at 4.
Nidek is a competitor to Summit and a manufacturer of excimer laser eye surgical devices, including the EC-5000 Excimer Laser System ("EC-5000"). Summit filed suit against Nidek on December 28, 1998, alleging that Nidek's EC-5000 infringed certain claims of the patents in suit. Nidek counterclaimed, alleging that the patents in suit were invalid and not infringed.
On June 21, 2002, the parties jointly moved for the entry of a unified claim construction order that incorporated a claim construction order from a related case in the District of Delaware, as well as modifications previously made by the Massachusetts district court and correction of a typographical error. On June 25, 2002, the district court adopted the parties' proposed order. Claim Construction Order, slip op. at 4.
After a twelve-day trial, the jury found that Nidek infringed all claims asserted by Summit, namely claims 1, 3, 15, 17, 25, 27, 28, 29, and 30 of the Marshall '093 patent, and claims 21, 22, 24, 25, and 27 of the Azema '330 patent. The jury further found that the Marshall '093 patent was not invalid as anticipated. The jury awarded $14.832 million in lost profit damages, $2.397 million in reasonable royalties, and found Nidek's infringement willful.
Following the verdict, Nidek filed a renewed motion for judgment as a matter of law, asking the district court to overturn the jury verdict of infringement and willfulness. Nidek did not challenge the underlying claim construction or the jury's validity verdict. On December 19, 2002, the district court granted Nidek's motion on the ground that there was no substantial evidence to support the jury's verdict that Nidek infringed either the Marshall '093 or the Azema '330 patent. JMOL Order, 2002 WL 31844693, at *15. The district court subsequently entered judgment of non-infringement for Nidek pursuant to its grant of judgment as a matter of law. Summit Tech., Inc. v. Nidek Co., No....
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