Freeman v. Minnesota Min. and Mfg. Co., Civ. A. No. 84-577-CMW.

• Decision Date: 29 August 1988
• Docket Number: Civ. A. No. 84-577-CMW.
• Citation: 9 USPQ 2d 1111,693 F. Supp. 134
• Parties: Dr. Jerre M. FREEMAN, Plaintiff, v. MINNESOTA MINING AND MANUFACTURING COMPANY, Defendant.
• Court: U.S. District Court — District of Delaware

693 F. Supp. 134

9 USPQ 2d 1111

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

Civ. A. No. 84-577-CMW.

United States District Court, D. Delaware.

August 29, 1988.

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

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

OPINION

CALEB M. WRIGHT, Senior District Judge.

This patent infringement suit was brought by Dr. Jerre Minor Freeman against the Minnesota Mining and Manufacturing Company ("3M") on October 5, 1984. Freeman asserts that Claims 1, 4, 10-11, and 21-22 of United States Reissue Patent No. 31,640 ("`640 patent" or "reissue patent"), entitled "Buoyancy Intraocular Lens Device," are valid and that they were willfully infringed by 3M. Freeman also brought suit against CooperVision, Inc., for infringement of the same patent.

The suits were consolidated for purposes of discovery and trial on the issues of scope of the claims, infringement, validity, and enforcement, because of common issues of law and fact between the cases. The cases were also bifurcated such that damages will be the subject of a separate proceeding at a later date, if necessary. 3M filed with the Patent and Trademark Office ("PTO") a petition for reexamination of the '640 patent in light of prior art not previously before the PTO. This Court declined to enjoin the reexamination proceeding, Freeman v. Minnesota Min. and Mfg. Co., 661 F.Supp. 886 (D.Del.1987), and the PTO granted 3M's petition. The reexamination proceeding was later suspended sua sponte by the PTO at the onset of the trial. Manual of Patent Examining Procedure § 2286 (1987).

CooperVision subsequently filed a motion for summary judgment on the grounds that the claims at issue were invalid because they were anticipated by several prior art references not considered by the PTO. Shortly thereafter, 3M filed a motion for partial summary judgment on the issue of the scope of the claims. The Court denied both motions. Freeman v. Minnesota Min. and Mfg. Co., 675 F.Supp. 877 (D.Del. 1987).

On the eve of trial, Freeman settled his claims with CooperVision and CooperVision was dismissed from the case. Freeman v. CooperVision, Inc., Order of February 26, 1988. Trial was held on 3M's liability on March 1-15, 1988, and April 4, 1988. The parties subsequently filed numerous post-trial memoranda. This Opinion represents the Court's findings of fact and conclusions of law. Because the number of issues raised by the parties is so large and because many of the issues are separate and distinct, the Court's findings and conclusions will be integrated and organized by issue.

I. BACKGROUND

A. The Parties

Plaintiff Dr. Jerre Minor Freeman is a practicing opthalmic surgeon in Memphis, Tennessee. Pretrial Order at (3)1 (hereinafter cited as "PT"). His undergraduate training was in mechanical engineering. Plaintiff's Trial Exhibit 55 (hereinafter cited as "PTX-____"). He then went to medical school and had several years of training in opthalmology. PTX-55.

3M is a Delaware corporation with its principal place of business in St. Paul, Minnesota. PT at (3)1. The 3M division responsible for designing and manufacturing intraocular lenses, 3M Vision Care, is a division that was formerly the McGhan Medical Corporation ("McGhan"). McGhan was originally established in 1974 when Donald McGhan and several other personnel left the Dow-Corning Corporation to begin their own company for the production of breast implants and intraocular lenses. Trial Transcript at 717 (hereinafter cited as "Tr.").

B. Field of Invention

1. Anatomy Of The Eye

Freeman's invention pertains generally to intraocular lens devices. '640 patent, Col. 1, lines 11-12. In order to understand Freeman's invention, it is first necessary to have a basic functional understanding of the anatomy of the eye.

The eye functions similarly to a camera. The cornea and lens serve to focus an image on the retina which then translates the image and transmits it to the brain via the optic nerve. Tr. at 16-17. The retina is located at the rear of a large chamber called the vitreous body. This chamber is filled with a fluid called vitreous humor and is separated from the remainder of the eye by the hyaloid face. Tr. at 329; Defendant's Exhibit 103B (hereinafter cited as "DX-____").

The area forward of the vitreous body extends from the hyaloid face to the cornea and is filled with a fluid called aqueous humor. Tr. at 327-39. This forward area contains two chambers separated by the iris, the colored part of the eye. Tr. at 329. The anterior chamber extends forward from the iris to the cornea, while the posterior chamber extends back between the iris and the hyaloid face. Tr. at 329-30; DX-103B. The iris is made up of colored tissue that extends inward from the walls of the eye and regulates the amount of light that reaches the retina. At the center of the iris is an opening called the pupil. Tr. at 329. Thus, dilation of the pupil is a contraction of the iris in response to the amount of light present. Tr. 329. The tissue area just behind the iris is called the ciliary sulcus, and that just forward of the iris is called the anterior angle. DX-103B.

The natural lens of the eye is located in the posterior chamber of the eye, between the iris and the hyaloid face. It is a crystalline structure that sits in a capsule attached to the ciliary muscle of the chamber, the ciliary body. For a variety of reasons, the natural lens can become cloudy so that light rays cannot freely pass through it. Tr. at 17. This condition is known as a cataract. Tr. at 16. A common treatment is to remove the non-functional lens, Tr. at 17-21, and to replace it with an artificial lens called an intraocular lens. The natural lens can be removed in one of two ways. In extracapsular surgery, the lens is removed from the capsule while leaving the capsular bag intact, Tr. at 325, whereas in intracapsular surgery, the capsule is removed altogether. Tr. at 326.

2. Intraocular lens devices

An intraocular lens device ("IOL") is a mechanical device implanted into the eye to replace a natural lens. It consists of an optical portion and support means known as haptics, which are used to attach the IOL to the tissues of the eye. DX-216. The IOL can be placed wholly in the anterior or posterior chambers, or partly in each chamber. Tr. at 618. In every case, however, the optical portion is centered in order to focus light on the retina. If the IOL is to be placed in the posterior chamber, the supports can either be placed in the capsular bag, if extracapsular surgery has been done, or in the ciliary sulcus. Tr. at 325. If it is to be placed in the anterior chamber, the supports can be placed in the anterior angle at the base of the iris. Also, the lens can be supported by attachment to the iris.

IOLs were first used in 1949. Tr. at 23. It was not until the early 1970s, however, that their usefulness increased. This was largely due to pioneer work by Dr. Cornelius D. Binkhorst of The Netherlands. Tr. at 23, 581-82. Various designs were developed and have remained in use even though the materials of which they are composed have changed. The optical portion ("optic") is generally made of polymethylmethacrylate ("PMMA"), a plastic. See, e.g., Tr. at 322. The support means, or haptics, have been constructed of such materials as platinum-iridium, nylon, and polypropylene. Tr. at 632-35.

3. Buoyancy

The goal of neutral buoyancy for the IOL, a condition in which the IOL would be weightless in aqueous humor, has been known in the field since at least 1963, when Richard C. Troutman published an article describing an IOL that is made weightless in aqueous humor in order to minimize damage to the iris. Troutman, Artiphakia and Aniserkonia, 56 Amer.J. of Opthalmology 630-39 (1963). PTX-17. Freeman's invention basically involves increasing the buoyancy of existing IOLs by altering the composition of the support means without altering the optical portion of the device.

Buoyancy is the property that makes certain objects float in a fluid. There is an upward bouyancy force on all submerged objects due to the pressure around them. Tr. at 799. This force is equal to the weight of the fluid displaced by the object. Id. There is also a downward gravitational force on the submerged object. The balance of these forces determines how much an object will weigh in a fluid, and whether the object will float or sink.

The net force on the object is determined by the relative densities of the object and the fluid. Density is a measure of mass per unit volume, and can be thought of as a measure of how solid an object is. Thus, even though a porous object such as a sponge and a more solid object such as a metal block may occupy the same volume, the sponge will be less dense, will have less mass, and will weigh less in air.

An object immersed in a fluid will exhibit one of three possible behaviors if unconstrained. If its density is greater than that of the fluid, the object will display negative buoyancy and will sink in the fluid. Tr. at 785. If its density is less than that of the fluid, the object will display positive buoyancy and will rise in the fluid. Id. If its density is equal to that of the fluid, it will remain stationary and display neutral buoyancy. Id.

Specific gravity is a measure of the density of a material relative to the density of water. A material with a specific gravity of 2.0 is twice as dense as water and will tend to sink in it, while a material with a specific gravity of 0.5 is half as dense as water...