Shearing v. Iolab Corp., 91-1343

• Decision Date: 11 September 1992
• Docket Number: No. 91-1343,91-1343
• Citation: 975 F.2d 1541,24 USPQ2d 1133
• Parties: Steven P. SHEARING, Plaintiff-Appellee, v. IOLAB CORPORATION and Johnson & Johnson, Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1541

975 F.2d 1541

24 U.S.P.Q.2d 1133

Steven P. SHEARING, Plaintiff-Appellee, v. IOLAB CORPORATION and Johnson & Johnson, Defendants-Appellants.

No. 91-1343.

United States Court of Appeals Federal Circuit.

Sept. 11, 1992.

Morton R. Galane, Las Vegas, Nev., argued for plaintiff-appellee. With him on the brief were Thomas J. Tanksley, R.L. Rickdall and Philip M. Ballif. Also on the brief was Bradford E. Kile, Baker & McKenzie, Washington, D.C.

David F. Dobbins, Patterson, Belknap, Webb & Tyler, New York City, argued for defendants-appellants. With him on the brief was Harman Avery Grossman. Also on the brief were Don K. Harness, Paul A. Keller and Stephen J. Foss, Harness, Dickey & Pierce, Troy, Michigan.

Before NEWMAN, RADER, and ALARCON ¹, Circuit Judges.

RADER, Circuit Judge.

Dr. Steven P. Shearing, inventor and owner of U.S. Patent No. 4,159,546, sued Iolab and Johnson & Johnson for breach of a patent licensing agreement. Iolab filed a counterclaim to declare the '546 patent invalid based on prior inventorship, obviousness, and concealment of the best mode of carrying out the invention. After a lengthy trial, the jury rejected Iolab's challenges to validity of the '546 patent. The United States District Court for the District of Nevada denied appellants' motions for judgment notwithstanding the verdict and, in the alternative, a new trial. Because on this record the jury could reasonably have reached its verdict, this court affirms.

BACKGROUND

The '546 patent claims a method for inserting an artificial optic lens into the posterior chamber of the eye. The artificial lens is a convex disc five or six millimeters in diameter. Two resilient curved strands, called J-loops or open-loops, extend from the disc. These strands hold the disc in place relative to the pupil.

Before the '546 method, surgeons had unsuccessfully tried to replace the diseased natural lens of cataract victims with an Dr. Shearing was the first to claim a method for implanting an open-loop artificial lens into the posterior chamber of the eye. The two J-loops, whose loop-to-loop length is slightly greater than the posterior chamber, press gently against the chamber walls and center the lens behind the pupil. Dr. Shearing claimed the method for inserting the open-loop artificial lens through the pupil into the eye's posterior chamber. Claim 2 of Dr. Shearing's '546 patent states:

                open-loop artificial lens.   These attempts in the 1950s to place a J-loop artificial lens in the anterior chamber (in front of the iris) often caused hemorrhaging or rupturing.   For this reason, surgeons only implanted an artificial lens as a last resort.   In the 1960s and 1970s, surgeons experimented with implanting different types of artificial lenses in the posterior chamber of the eye, behind the iris.   These experiments did not successfully secure the artificial lens behind the pupil
                

[I]nserting said lens through the pupil with said first [inferior loop] strand first followed by said lens body ... directing said first strand into the posterior chamber, further urging said lens through the pupil and into the posterior chamber thereby compressing said first strand within the posterior chamber until said second [superior loop] strand passes through said pupil and into the posterior chamber, and directing said second strand opposite said first strand in the posterior chamber, whereby the entire lens is located and fixed within the posterior chamber and posterior to the iris.

Figures 5-7 of the '546 patent illustrate this method:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

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Once Dr. Shearing designed the lens assembly, he worked with Iolab to manufacture sterile, implantable prototypes. On March 22, 1977, Dr. Shearing first implanted a J-loop artificial lens in the posterior chamber of a patient's eye. Three months later, Dr. Shearing filed a patent application. In a 1978 patent licensing agreement, Dr. Shearing granted Iolab an exclusive license under the patent. Iolab paid Dr. Shearing royalties on sales of Iolab's lens.

Later a dispute arose between Iolab and Dr. Shearing over the licensing agreement. In 1985, Dr. Shearing filed this action against Iolab for breach of the licensing agreement. Four years later, Iolab counterclaimed to challenge the validity of At trial, Dr. Shearing attacked the credibility and probity of Dr. Simcoe's claims of prior inventorship. To impeach medical records of Dr. Simcoe's early implantations, Dr. Shearing produced evidence that the body of one of Dr. Simcoe's patients, since deceased, had been exhumed. Examination of the cadaver did not reveal implantation of J-loop lenses at all.

                the '546 patent.   Besides asserting that Dr. Shearing concealed the best mode for implanting open-loop artificial lenses, Iolab contended that Dr. William Simcoe's prior work anticipated or rendered obvious the invention claimed in the '546 patent.   As part of Iolab's case, Dr. Simcoe, an ophthalmic surgeon, testified that he began working in 1975 to place an artificial lens in the posterior chamber of the eye.   Dr. Simcoe stated that his implantation surgery included open-loop lenses.   Other witnesses for Iolab stated that Dr. Simcoe disclosed his work as early as 1976 at professional trade meetings
                

In addition to other impeaching witnesses, Dr. Shearing called as a witness Mr. Donald Streck, an attorney for whose client Dr. Simcoe had testified in an earlier legal proceeding. Mr. Streck contradicted Dr. Simcoe's testimony about prior work with intraocular lenses.

The court first tried the issues of prior inventorship and obviousness. After a one and a half week trial, the jury returned a verdict for the plaintiff. Following a recess, the parties presented a two and a half day trial on the issue of compliance with the best mode requirement. See 35 U.S.C. § 112 (1988). The jury returned a verdict in favor of Dr. Shearing.

DISCUSSION

Standard of Review

On appeal after denial of a motion for JNOV, the appellant must prove that the record lacks substantial evidence to support the jury's verdict. Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1512, 220 USPQ 929, 936 (Fed.Cir.), cert. denied, 469 U.S. 871, 105 S.Ct. 220, 83 L.Ed.2d 150 (1984). Substantial evidence is such relevant evidence, considering the record as a whole, on which a reasonable jury could base the verdict under review. Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893, 221 USPQ 669, 673 (Fed.Cir.), cert. denied, 469 U.S. 857, 105 S.Ct. 187, 83 L.Ed.2d 120 (1984). In review of a jury's verdict on patent validity, this court presumes the jury made the proper findings to support its verdict. Shatterproof Glass v. Libbey-Owens Ford Co., 758 F.2d 613, 619, 225 USPQ 634, 637 (Fed.Cir.), cert. denied, 474 U.S. 976, 106 S.Ct. 340, 88 L.Ed.2d 326 (1985). This court reviews the denial of a motion for new trial under the abuse of discretion standard. Railroad Dynamics, 727 F.2d at 1512.

Anticipation and Obviousness

This court first reviews whether Dr. Simcoe's method for implanting artificial lenses anticipated the '546 patent. See 35 U.S.C. § 102(a) (1988). To prove anticipation, Iolab must have convinced the jury with clear and convincing evidence at trial that Dr. Simcoe disclosed in advance of Dr. Shearing's invention each and every element of the '546 patent's claims. Diversitech Corp. v. Century Steps, 850 F.2d 675, 677, 7 USPQ2d 1315, 1317 (Fed.Cir.1988).

This court also reviews whether Dr. Simcoe's work rendered the invention of the '546 patent obvious. To prove obviousness, Iolab must have convinced the jury that the '546 "subject matter as a whole would have been obvious at the time the invention was made to a person of ordinary skill in the art." 35 U.S.C. § 103 (1988).

The trial court correctly instructed the jury on the requirements of the law. ²

                This court must determine whether substantial evidence supports the jury's conclusion that Iolab did not overcome the presumption of validity for the '546 patent.   See Perkin-Elmer, 732 F.2d at 894
                

The jury heard Dr. Shearing testify that in 1976 he invented the method he later claimed in the '546 patent. In addition, the jury heard considerable evidence discrediting Dr. Simcoe's testimony that he invented and disclosed the same method or a method rendering Dr. Shearing's work obvious before his 1977 patent application. For instance, a witness for Iolab testified about seeing a home movie in 1976 at the annual meeting of the American Academy of Ophthalmology depicting posterior chamber lens implantation by Dr. Simcoe. Iolab, however, did not produce the movie. Moreover several witnesses recalled either that the movie involved anterior chamber implantation in the eyes of animals or that the movie was shown in 1978. This proof is some of the testimony which supplied substantial evidence to support the jury's finding that Shearing first invented the posterior chamber implantation method.

The jury also reviewed the medical records of Dr. Simcoe's 750 implant surgeries before Dr. Shearing's 1977 patent application. Only two of these records (the same patient having each eye operated on at different times) refer to implantation of an open-loop lens in the posterior chamber of the eye. The jury heard evidence that these two medical records contain notations in different inks from the ink of Dr. Simcoe's signature. Moreover the typewritten portion of the report states that the lens was implanted in the pupil rather than in the posterior chamber. Finally, the jury heard that these two records referred to operations on a patient named Mr. Claude W. Simons, since deceased. Upon exhumation of Mr. Simons' body, an examination showed Dr. Simcoe had not implanted J-loop artificial lenses at all.

Other witnesses testified about watching Dr. Simcoe implant open-loop artificial lenses in the posterior chamber. The jury also heard evidence impeaching the...