Freeman v. Minnesota Min. and Mfg. Co.

• Citation: 675 F. Supp. 877
• Decision Date: 17 December 1987
• Docket Number: 85-46 CMW.,Civ. A. No. 84-577 CMW
• Parties: Dr. Jerre M. FREEMAN, Plaintiff, v. MINNESOTA MINING AND MANUFACTURING COMPANY, Defendant. Dr. Jerre M. FREEMAN, Plaintiff, v. COOPERVISION, INC., Defendant.
• Court: U.S. District Court — District of Delaware

675 F. Supp. 877

Dr. Jerre M. FREEMAN, Plaintiff, v. MINNESOTA MINING AND MANUFACTURING COMPANY, Defendant.

Dr. Jerre M. FREEMAN, Plaintiff, v. COOPERVISION, INC., Defendant.

Civ. A. Nos. 84-577 CMW, 85-46 CMW.

United States District Court, D. Delaware.

December 17, 1987.

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Jeffrey B. Bove and Collins J. Seitz, Jr. of Connolly, Bove, Lodge & Hutz, Wilmington, Del. of counsel: Bradford E. Kile of Washington, D.C. and James E. Cockfield of Lahive & Cockfield, Boston, Mass., for plaintiff.

Charles S. Crompton, Jr. and David B. Brown of Potter, Anderson & Corroon, Wilmington, Del. of counsel: Walter N. Kirn, Patent Counsel for 3M in St. Paul, Minn., and John Gould of Merchant, Gould, Smith, Edell, Welter & Schmidt, Minneapolis, Minn., for defendant, in C.A. 84-577.

Donald F. Parsons, Jr. of Morris, Nichols, Arsht & Tunnell, Wilmington, Del. of counsel: Thomas R. Boland and Ellen A. Efros of Vorys, Sater, Seymour & Pease, Washington, D.C. for defendant, in C.A. 85-46.

OPINION

CALEB M. WRIGHT, Senior District Judge.

This action arises out of separate patent infringement suits filed by Dr. Jerre Freeman against CooperVision, Inc. ("CooperVision") and Minnesota Mining and Manufacturing Company ("3M") for infringement of Freeman's patent relating to intraocular lenses. The suits were consolidated for the purposes of discovery and trial on the issues of validity, scope of the claims, infringement, and enforceability because of common issues of law and fact. Defendants 3M and CooperVision each filed a summary judgment motion. CooperVision subsequently filed a motion to strike an affidavit submitted by Freeman and to preclude proof on the subject matter of that affidavit. The Court denies both summary judgment motions, strikes the affidavit, but does not preclude proof.

I. FACTS

An intraocular lens ("IOL") is an artificial lens placed within the eye to replace a damaged natural eye lens. It consists of an optical lens portion and supporting elements called haptics. The haptics serve to position the optical portion and maintain it in place. The IOL is placed in the anterior chamber of the eye. This chamber is filled with aqueous humor, a fluid with a density of approximately one.

On March 15, 1976, Freeman filed patent application number 666,651 for a "Neutral Buoyancy Intraocular Lens Device." The patent was issued on March 7, 1978, as U.S. Patent No. 4,077,071 ("'071 patent"). On May 31, 1979, Freeman filed a reissue application. The reissue patent was issued on August 7, 1984, as U.S. Reissue Patent No. 31,640 entitled "Buoyancy Intraocular Lens Device" ("'640 patent" or "Freeman's patent" or "reissue patent").

Freeman filed suit against 3M for infringement of the '640 reissue patent on October 5, 1984. He filed suit against CooperVision on January 18, 1985. On May 20, 1985, the two cases were consolidated for trial on the issues of validity, scope of the claims, infringement, and enforceability. Damages, if any, will be the subject of separate trials. Discovery closed on October 31, 1986.

Subsequent to Freeman's filing these suits, 3M sought to have the Patent and Trademark Office ("PTO") reexamine the patents in light of publications that it believed anticipated the patents. On March 26, 1987, Freeman filed a Motion to Enjoin 3M from filing a petition for reexamination while the instant litigation was pending. This Court denied plaintiff's request for an injunction on April 30, 1987. Freeman v. Minnesota Mining and Mfg. Co., 661 F.Supp. 886 (D.Del.1987). The PTO granted 3M's request for reexamination, and the proceedings are ongoing.

The defendants then filed four motions. Defendant CooperVision filed its Motion for Summary Judgment of Patent Invalidity because of prior publication on April 30, 1987 ("Motion 1").¹ It claimed that a Protocol of the Second Clinical Conference of the Moscow Experimental Laboratory for Experimental Surgery held on April 15, 1974 ("Russian Protocol" or "Protocol"), was published and shelved at the Moscow Research Institute of Eye Microsurgery ("Moscow Eye Institute") more than one year prior to Freeman's application for a patent. The Protocol discusses experiments performed with an IOL containing polypropylene haptics and refers to 150 having been made and 24 implanted. Patent Examiner Ronald L. Frinks was unaware of the existence of the Protocol at the time of the prosecution of the patent.

CooperVision also cites an article written by Dr. Joaquin Barraquer entitled "Nuevos Modelos de Lentes Plasticas de Camera Anterior" which appeared in Anales de Instituto Barraquer, Vol. II, No. 3 (1961) ("Barraquer Article"). Figure 15 of the Barraquer Article describes an IOL with a methacrylate optic and support members made of polyethylene, which has a density less than one. Figure 15 also states that "there are still unresolved difficulties in the injection of the mould sic in perfecting this model." Patent Examiner Frinks was also unaware of this article.

In his opposition to CooperVision's summary judgment motion, Freeman submitted the affidavit of Dr. Donald MacKeen for the proposition that the Barraquer Article could not anticipate Freeman's patent because the device described in it was inoperable. CooperVision then filed a Motion to Strike the Affidavit of Dr. Donald MacKeen and to Preclude Proof on the issue of the inoperability of the device discussed in the Barraquer Article on June 5, 1987 ("Motion 4").

Defendant 3M also filed two motions. On May 1, 1987, 3M filed its Motion for Partial Summary Judgment Regarding Claim Scope ("Motion 2"). On May 26, 1987, 3M filed its Motion to Lift the Confidential Status of Discovery Materials ("Motion 3").

The Court held oral argument on all four motions on June 25, 1987. Ruling from the bench, the Court granted 3M's motion to lift the confidentiality status of certain documents. This Opinion represents the Court's decision on the other three motions.

II. COOPERVISION'S MOTION FOR SUMMARY JUDGMENT OF PATENT INVALIDITY

CooperVision filed a Motion for Summary Judgment that Reissue Patent No. 31,640² is invalid as a matter of law because the invention was disclosed in publications more than one year prior to the date of the original patent application, March 15, 1976. It claims that the Russian Protocol and the Barraquer Article, as printed publications prior to March 15, 1975, invalidate the '640 reissue patent.³ The PTO was unaware of the references. Deposition of Examiner Roland L. Frinks at 22, 25, CooperVision's Brief in Support of Motion 1, app. 3. Because genuine issues of material fact exist as to the status of both the Russian Protocol and the Barraquer Article as invalidating references, the Court denies CooperVision's Motion.

A. The Legal Standard

The Court's summary judgment analysis under Rule 56 of the Federal Rules of Civil Procedure is the same in patent cases as in other types of cases. See, e.g., Howes v. Medical Components, Inc., 814 F.2d 638, 643 (Fed.Cir.1987) (summary judgment is appropriate in patent cases if no genuine issue of material fact exists). To prevail, CooperVision must demonstrate the absence of any genuine issue of material fact and prove that it is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). The Court must resolve all ambiguities and doubts as to the existence of factual issues in favor of Freeman. Howes, 814 F.2d at 643. Therefore, to prevent summary judgment, Freeman need just "point to an evidentiary conflict created on the record." Armco, Inc. v. Cyclops Corp., 791 F.2d 147, 149 (Fed.Cir.1986) (citation omitted). The facts material to this motion are those concerning whether the Russian Protocol and the Barraquer Article are prior publications under the patent laws.

A patent is invalid as a matter of law if "the invention was patented or described in a printed publication in this or a foreign country ... more than one year prior to the date of application for the patent in the United States." 35 U.S.C. § 102(b) (1982). The "determination of whether certain materials are `printed publications' under Section 102(b) is a mixed question of fact and law and, in general, is not subject to summary judgment." Tyler Refrigeration Corp. v. Kysor Indus. Corp., 553 F.Supp. 279, 284 (D.Del.1982). But situations may exist where summary judgment may be appropriate. The key issues for the Court are whether the invention was described, whether there was a publication, and if so, what the publication's date was.

Section 102(b) refers to the date of application for the patent, here March 15, 1976. Therefore, one issue for the Court to determine is whether the documents were printed publications before March 15, 1975, one year prior to the date of application.

The document need not be formally "printed" to be a printed publication. In re Wyer, 655 F.2d 221, 225 (C.C.P.A.1981). Section 102(b) "was designed to prevent withdrawal by an inventor, as the subject of a patent, of that which was already in the possession of the public." Id. at 226. Thus, the determination of whether a document is a printed publication requires the Court to focus on the unitary concept of "public accessibility." Id. The inquiry for the Court is whether there has been public dissemination of the document and whether the information contained in it is accessible to persons skilled in or interested in the art.⁴Id.; Philips Elec. & Pharmaceutical Indus. Corp. v. Thermal & Elec. Indus., Inc., 450 F.2d 1164, 1170-71 (3d Cir.1971) (requiring "a satisfactory showing that a person interested in and ordinarily skilled in the art can locate the publication and understand the essentials of the claimed invention without further research or experimentation."); Tyler Refrigeration, 553 F.Supp. at 282 (whether people concerned with the art "have had an opportunity to inspect and digest the information").

A reference must describe an invention sufficiently "to have placed the...