Johnson & Johnson Vis. Care v. Ciba Vision Corp.

• Decision Date: 14 August 2009
• Docket Number: No. 3:06-cv-301-J-32TEM.,No. 3:05-cv-135-J-32TEM.,3:05-cv-135-J-32TEM.,3:06-cv-301-J-32TEM.
• Citation: 648 F.Supp.2d 1294
• Parties: JOHNSON & JOHNSON VISION CARE, INC., Plaintiff and Counterclaim Defendant, v. CIBA VISION CORPORATION, Defendant Counterclaim Plaintiff.
• Court: U.S. District Court — Middle District of Florida

Page 1294

648 F.Supp.2d 1294

JOHNSON & JOHNSON VISION CARE, INC., Plaintiff and CounterclaimDefendant, v.CIBA VISION CORPORATION, DefendantCounterclaim Plaintiff.

No. 3:05-cv-135-J-32TEM.

No. 3:06-cv-301-J-32TEM.

United States District Court, M.D. Florida, Jacksonville Division.

August 14, 2009.

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Aaron A. Barlow, John J. Molenda, Michael F. Buchanan, Daniel J. Schwartz, Harry J. Roper, Timothy J. Barron, Jenner & Block, LLP, Chicago, IL, for Plaintiff and Counterclaim Defendant.

James Whitelaw Middleton, Jacksonville, FL, for Plaintiff and Counterclaim Defendant/Defendant Counterclaim Plaintiff.

Charles R. Work, Daniel Bucca, Joel M. Freed, Raphael V. Lupo, Thomas P. Steindler, McDermott, Will & Emery, LLP, Washington, DC, Corey A. Salsberg, McDermott, Will & Emery, LLP, Boston, MA, Jeremy T. Elman, McDermott, Will & Emery, LLP, Miami, FL, Rutledge Richardson

Liles, Liles, Gavin, Costantino & George, Jacksonville, FL, for Defendant Counterclaim Plaintiff.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

TIMOTHY J. CORRIGAN, District Judge.

This consolidated case pertains to various CIBA Vision Corporation("CIBA") patents for extended wear contact lenses.This dispute started with a declaratory judgment action brought by Johnson & Johnson Vision Care, Inc. ("J & J") against CIBA, seeking a declaration that five of CIBA'S United States Patents, U.S. PatentNos. 5,760,100("'100 Patent"), 5,776,999 ("'999 Patent"), 5,789,461 ("'461 Patent"), 5,849,811 ("'811 Patent") and 5,965,631 ("'631 Patent")("Nicolson patents") are invalid and/or unenforceable, and alternatively that J & J's new silicone hydrogel contact lenses, the Phoenix contact lens, marketed under the name ACUVUE®OASYS™ ("Acuvue Oasys" or "Oasys"), does not infringe upon the CIBA patents.(Case No. 3:05-cv-135-J-32TEM, Doc. 1.)CIBA answered and counterclaimed that J & J's lens infringes upon the '100, '461, '811, and '631 CIBA Patents.In case No: 3:06-cv-301-J-32TEM, CIBA as plaintiff filed an action alleging that J & J has and continues to infringe upon CIBA's United States PatentNo. 6,951,894("'894 Patent"), also a Nicolson patent.J & J counterclaimed, seeking a declaration that the '894 Patent is invalid and unenforceable.¹

On March 14, 2008, this Court issued its Corrected Markman Order construing terms found in one or more of all six patents at issue.(Doc. 121);Johnson & Johnson Vision Care, Inc. v. CIBA Vision Corp.,540 F.Supp.2d 1233(M.D.Fla.2008).The case was subsequently trimmed to 31 asserted claims from five of the six patents in suit, with CIBA alleging infringement of the 31 claims (Docs. 189, 190 at 9; 191).²Following extensive briefing and submission of evidentiary material and argument, the Court, on December 3, 2008, entered an Order denying J & J's motion for summary judgment as to noninfringement and invalidity, and denying CIBA's motion as to infringement and in part as to invalidity.(Doc. 190.)The Court granted CIBA's motion for summary judgment pertaining to J & J's invalidity defense/claim based on anticipation by prior art (with one exception), and "best mode."(Doc. 190at 55-56.)

The Court conducted a ten day bench trial³ from March 30 through April 10, 2009(Docs. 269-78), and heard closing arguments on June 10, 2009, the record of which is incorporated here.(Docs. 310, 311.)At trial, CIBA asserted as infringed nine claims in three patents which CIBA owns (Docs. 257;287 at 6-11): claims 1, 28 and 56 of the '100 Patent; claims 28 and 29 of the '811 Patent; and claims 89, 90, 96 and 99 of the '894 Patent.⁴Having stipulated to the issues to be decided (Doc 281),⁵the parties submitted post-trial proposed findings of fact and conclusions of law (Docs. 286, 287) and responses.(Docs. 303, 305.)The Court has exhaustively reviewed the extensive record in this case, examined the evidence presented at trial,⁶ observed the witnesses, read the parties' post-trial submissions, and considered the arguments.The Court now makes the following findings of fact and conclusions of law as required by Federal Rules of Civil Procedure 52(a).

I.Infringement

A.CIBA's Infringement Contentions

CIBA asserts a total of nine claims from three of the patents in suit.('100 Patent cls. 1, 28, and 56; '811 Patent cls. 28 and 29; '894 Patent cls. 89, 90, 96 and 99.)The asserted claims relate to silicone hydrogel contact lenses suitable for continuous periods of extended wear of "about" or "at least" 24 hours or "at least" seven days.The claims teach that the patented lens exhibits an oxygen permeability and/or transmissibility of at least or about 70 barrers; and threshold levels of ion permeability.Four claims require a "surface treatment process" while the other five asserted claims do not recite this limitation.The three claims asserted from the '100 Patent recite that the lens must have separate "phases," while the remaining asserted claims do not.

CIBA contends that the evidence establishes that J & J's Acuvue Oasys product meets each and every limitation in the nine asserted claims.(Doc. 287at 16-17;D. Dem. 2-9(citingTr. IIat 54(Harris), 110-14 (Pitt), 242 (Gido);Tr. IIIat 113-14, 126-28(Hoffman), 201-07 (Mays)).)⁷

J & J asserts that the Acuvue Oasys does not meet four sets of claim limitations, based upon a(1) lack of "oxygen permeability,""high oxygen permeability" and "oxygen transmissibility;"(2) lack of a "surface modified by a surface treatment process;"(3) lack of "polyvinylpyrrolidone at a surface of the lens;" and (4) lack of "phases."(Doc. 281.)J & J does not dispute that Acuvue Oasys meets each of the other limitations of the asserted claims.(Tr. IIat 43-46;Tr. Xat 123-24; Docs. 253, 281.)

The Court finds that CIBA has proved that Acuvue Oasys meets all of the other limitations of the asserted claims (with the following exceptions as set forth in the footnote)⁸ and addresses J & J's four non-infringement contentions below.In doing so, the Court observes that an infringement analysis involves two steps: (1)claim construction and (2) comparison of the properly construed claims to the accused device, here the Acuvue Oasys.Cook Biotech Inc. v. Acell, Inc.,460 F.3d 1365, 1372(Fed.Cir.2006).The Court accomplished the first step in its Markman Order.(Doc. 121.)

"To establish infringement, every limitation set forth in a patent claim must be found in an accused product or process exactly or by a substantial equivalent."Laitram Corp. v. Rexnord, Inc.,939 F.2d 1533, 1535(Fed.Cir.1991);see alsoDynacore Holdings Corp. v. U.S. Philips Corp.,363 F.3d 1263, 1273(Fed.Cir.2004)."Literal infringement requires that each and every claim limitation be present in the accused device."Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc.,467 F.3d 1370, 1378(Fed.Cir.2006).Under the doctrine of equivalents, a claim limitation is equivalently present if there are only "insubstantial differences" between the limitation and the corresponding aspects of the device.CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG,224 F.3d 1308, 1318-19(Fed.Cir.2000)."A finding of infringement under the doctrine of equivalents requires a showing that the difference between the claimed invention and the accused product was insubstantial."Crown Packaging Tech. v. Rexam Beverage Can Co.,559 F.3d 1308, 1312(Fed.Cir.2009).CIBA, as patentee, has the burden of proving infringement by a preponderance of the evidence.Warner-Lambert Co. v. Teva Pharm. USA, Inc.,418 F.3d 1326, 1341(Fed.Cir.2005).

B.J & J's Non-Infringement Positions

1.Lack of "oxygen permeability,""high oxygen permeability" and "oxygen transmissibility"

CIBA contends that J & J's Acuvue Oasys lens satisfies the oxygen permeability and transmissibility limitations that are a part of all nine asserted CIBA patent claims, which set minimum values of permeability and transmissibility.Both of these properties relate to a lens' ability to allow oxygen from the atmosphere to travel through the lens to the cornea of the eye to promote the health of the eye.(Tr. Iat 61(CIBA inventor Dr. Paul C. Nicolson("Nicolson")).)The dispute over the "oxygen permeability" and "oxygen transmissibility" terms centers upon whether the CIBA patent limitations teach that oxygen permeability (and oxygen transmissibility) values as measured by the single point coulometric method specified in the patents do not change with the thickness of the lens measured.J & J contends that the CIBA patents teach that the oxygen permeability ("Dk") does not change with thickness and thus, because the evidence established that the Acuvue Oasys lens Dk values are dependent on thickness, the Acuvue Oasys does not infringe this limitation.

"Oxygen transmissibility"("Dk/t") is defined first in the patent as being:

The rate at which oxygen will pass through a specific ophthalmic lens.Oxygen transmissibility, Dk/t, is conventionally expressed in units of barrers/mm, where t is the average thickness of the material [in units of mm] over the area being measured ....

('100 Patent col.4 ll. 51-56.)In seeking a Markman construction of the term, CIBA had pressed for a definition which specified that oxygen permeability "Dk", as used in the oxygen transmissibility formula Dk/t, referred to "the oxygen permeability of the lens measured by the coulometric method disclosed in the CIBA patents ... without any corrections."(SeeDocs. 121at 84;86 at 16-17.)J & J offered no alternative construction, contending that the term was "indefinite" as it related to the definition of "barrer."(Docs. 94 at 33;121 at 84-86.)Concluding that the measurement technique of oxygen permeability ("Dk") and oxygen transmissibility ("Dk/t") need not be resolved at the claim construction phase of the proceedings, (Doc. 121at 86), the...