Freeman v. Minnesota Min. & Mfg. Co.

• Decision Date: 04 August 1989
• Docket Number: 89-1021,Nos. 89-1020,s. 89-1020
• Parties: Unpublished Disposition NOTICE: Federal Circuit Local Rule 47.8(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order. DR. Jerre M. FREEMAN, Plaintiff-Appellant, v. MINNESOTA MINING & MANUFACTURING COMPANY, Defendant/Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1398

884 F.2d 1398

13 U.S.P.Q.2d 1250

Unpublished Disposition

NOTICE: Federal Circuit Local Rule 47.8(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order.

DR. Jerre M. FREEMAN, Plaintiff-Appellant, v. MINNESOTA MINING & MANUFACTURING COMPANY, Defendant/Cross-Appellant.

Nos. 89-1020, 89-1021.

United States Court of Appeals, Federal Circuit.

Aug. 4, 1989.

Rehearing Denied Sept. 30, 1989.

Suggestion for Rehearing In Banc Declined Oct. 25, 1989.

Before FRIEDMAN, RICH and MICHEL, Circuit Judges.

FRIEDMAN, Circuit Judge.

DECISION

The judgment of the United States District Court for the District of Delaware is affirmed insofar as it held that the claims of the appellant's Reissue Patent No. 31,640 here at issue were not infringed by the appellee Minnesota Mining & Manufacturing Company (3M)'s products and denied 3M attorney fees, and is vacated insofar as it held that those claims are invalid.

OPINION

I

The patent claims an intraocular lens that is surgically implanted in the human eye after the eye's natural lens affected with cataract has been removed.

The implanted device consists of an artificial lens and attached posts or threads that are used to attach the lens to the eye and hold the lens in place. The claim limitations at issue in this case relate to the weight and buoyancy of the implant, described in relation to the density of a liquid in the eye known as aqueous humor.

The claims of the original patent specified that the "intraocular lens device" include

buoyancy means external of and attached to said optical lens having a mean density less than the density of said aqueous humor ... for reducing the overall mean density of said lens device to substantially that of said aqueous humor.

The reissued patent added broadened claims that contain the limitation that there be a "buoyancy" or "support means," the "density" of which is "less than the density of the aqueous humor of the eye," "for providing at least a degree of buoyant uplift to said optical lens when said intraocular lens device is implanted into the human eye." The reissue patent also included the claims in the original patent described above.

After trial, in a lengthy opinion, the district court held that (1) the appellant had not proved infringement, (2) 3M had shown by clear and convincing evidence that overcame the presumption of validity that all the claims at issue would have been obvious and that one of them also was anticipated by a prior patent, and (3) that 3M was not entitled to attorney fees because "this suit was not frivolous and that exceptional circumstances were not present." Freeman v. Minnesota Mining & Mfg. Co., 693 F.Supp. 134, 156, 9 USPQ2d 1111, 1130-31 (D.Del.1988).

II

A. The appellant argues that the district court's finding of noninfringement was based upon a misinterpretation of the claims.

The district court construed the limitation in the original patent claims that the "buoyancy means 'reduc[e] the overall mean density of said lens device to substantially that of said aqueous humor' " to "require[ ] reducing the density to close to neutral buoyancy, thus creating a condition wherein the lens would weigh near zero in aqueous humor." Freeman, 693 F.2d at 141, 9 USPQ2d at 1118. The court construed the limitation in the reissue patent claims "at least a degree of buoyant uplift for the optical lens when the intraocular lens is implanted into the human eye" to mean that " 'buoyant uplift' requires at least neutral buoyancy." 693 F.2d at 144, 9 USPQ2d at 1121. The court thus interpreted the broadened reissue claims to cover implants whose combined weight in aqueous humor was either near zero or less than zero, i.e., they would float.

The appellant contends that the limitation "a degree of buoyant uplift" is satisfied if the support means itself (as distinguished from the entire intraocular implant) is buoyant in aqueous humor, thereby imparting a "degree of buoyant uplift" to the lens and making the implant lighter than the lens by even the smallest degree.

In rejecting this interpretation of the claims, the district court relied upon the specification, the prosecution history of both the original patent and the reissue, and the expert testimony. Based upon all of this evidence, including the testimony of 3M's experts (which the court credited), the...