Nielsen v. Alcon, Inc.

• Decision Date: 02 September 2011
• Docket Number: NO. 3-08-CV-2239-B-BD,3-08-CV-2239-B-BD
• Parties: JAMES M. NIELSEN, M.D. Plaintiff, v. ALCON, INC.,ET AL. Defendants.
• Court: U.S. District Court — Northern District of Texas

JAMES M. NIELSEN, M.D. Plaintiff,

v.ALCON, INC.,ET AL. Defendants.

NO. 3-08-CV-2239-B-BD

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF TEXAS DALLAS DIVISION

DATED: September 2, 2011.

FINDINGS AND RECOMMENDATION OF THE

UNITED STATES MAGISTRATE JUDGE

This patent case is before the court on cross-motions for summary judgment. Defendants Alcon, Inc. and Alcon Laboratories, Inc. ("Alcon") seek summary judgment on the issues of infringement and willful infringement, and on their affirmative defenses of invalidity, laches, estoppel, and failure to mark. Plaintiff James M. Nielsen, M.D. ("Nielsen") moves for partial summary judgment as to the affirmative defenses of invalidity due to anticipation under 35 U.S.C. § 102(a) & (b), laches, and estoppel. For the reasons stated herein, both motions should be denied.

I.

Plaintiff is the owner and named inventor of U.S. Patent No. 5,158,572 ("the '572 Patent"), entitled "Multifocal Intraocular Lens." (See Def. MSJ App., Exh. 4 at 116). Simply stated, the patented device is an artificial lens, comprised of a substantially circular central region surrounded by multiple concentric ring regions providing a variety of optical powers, that can be surgically implanted inside a human eye to correct both near and distance vision. (See id, Exh, 4 at 119-20). The device claims to provide vision correction closely approximate to the range of a natural lens byrelying on the inherent ability of the nervous system to selectively perceive one of two or more optical inputs. (See id., Exh. 4 at 120).

Defendants manufacture and sell a line of intraocular lenses ("IOLs") known as the ReSTOR® IOL. (See id., Exh. 5 at 126-27). The ReSTOR® IOL is comprised of an inner "apodized diffractive region" and an outer "refractive region." (See id., Exh. 5 at 126).¹ According to promotional literature published by defendants, the apodized diffractive region "comprises 12 concentric steps of gradually decreasing . . . step heights that allocate energy based on lighting conditions and activity, creating a full range of quality vision - near to distant." (Id.) (emphasis in original). The refractive region, which surrounds the apodized diffractive region, "directs light to a distance focal point for larger pupil diameter, and is dedicated to distance vision." (Id.) (emphasis in original). Defendants advertise the ReSTOR® IOL to cataract patients "who desire near, intermediate, and distance vision" without glasses. (Id., Exh. 5 at 126-27).

In this action, plaintiff sues defendants for direct and contributory infringement of the '572 Patent. (See Plf. Orig. Compl. at 3-4,¶¶ 11 -12). Defendants deny any infringement and contend that the patent-in-suit is invalid due to anticipation by prior art, for obviousness, and for lack of a written description. (See Def. Ans. at 2-4). Both sides now move for summary judgment on the affirmative defense of invalidity due to anticipation and various defenses related to damages. Defendants also seek summary judgment on the threshold issue of infringement and their other invalidity defenses.

II.

Summary judgment is proper when "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." FED. R. CIV. P. 56(a). The substantive law determines which facts are material. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 2509-10, 91 L.Ed.2d 202 (1986). In a patent case, a defendant who seeks summary judgment on an affirmative defense must establish "beyond peradventure" all of the essential elements of the defense to warrant judgment in its favor. See Mannatech, Inc. v. Glycobiotics Int'l Inc.,No.3-06-CV-0471-BD)2007WL4386244at*l (N.D. Tex. Dec. 14,2007) (citing cases). By contrast, a defendant who seeks summary judgment on the issue of infringement, or a plaintiff who seeks summary judgment on an affirmative defense, need only point to the absence of a genuine fact issue. See Novartis Corp. v. Ben Venue Labs., Inc., 271 F.3d 1043,1046 (Fed. Cir. 2001). Once the movant meets its initial burden, the burden shifts to the nonmoving party to produce evidence or designate specific facts in the record showing the existence of a genuine issue for trial. See Mannatech, 2007 WL 4386244 at * 1. The parties may satisfy their respective burdens by tendering depositions, affidavits, and other competent evidence. Id. All evidence must be viewed in the light most favorable to the party opposing the motion. Id.

A.

Plaintiff contends that the intraocular lens manufactured and sold by defendants under the brand name ReSTOR® directly infringes Claim 10 of the '572 Patent, both literally and under the doctrine of equivalents. A patent is infringed if every limitation set forth in a claim is present in an accused product. See Seal-Flex, Inc. v. Athletic Track and Court Constr., 172 F.3d 836, 842 (Fed. Cir. 1999); Jurgens v. McKasy, 927 F.2d 1552,1560 (Fed. Cir.), cert, denied, 112 S.Ct. 281 (1991).Where literal infringement is alleged, the patentee must prove that the accused product contains each limitation of an asserted claim. See Bayer AG v. Elan Pharm, Research Corp., 212 F.3d 1241, 1247 (Fed. Cir.), cert, denied, 121 S.Ct. 484 (2000). "If any claim limitation is absent from the accused [product], there is no literal infringement as a matter of law." Id.; see also Moba, B. V. v. Diamond Automation, Inc., 325 F.3d 1306,1313 (Fed. Cir.), cert, denied, 124 S.Ct. 464 (2003). To prove infringement under the doctrine of equivalents, a patentee must demonstrate that the accused product contains each limitation of the claim or its equivalent. See Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340,1382 (Fed. Cir. 2009). "An element in the accused product is equivalent to a claim limitation if the differences between the two are 'insubstantial' to one of ordinary skill in the art." Eagle Comtronics, Inc. v. Arrow Comm. Labs., Inc., 305 F.3d 1303, 1315 (Fed. Cir. 2002), cert denied, 123 S.Ct. 995 (2003). The test for equivalence is whether "the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product." Alcohol Monitoring Sys., Inc. v. Actsoft, Inc., 414 Fed.Appx. 294,300,2011 WL 201494 at *5 (Fed. Cir. Jan. 24,2011), quoting Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308,1312 (Fed. Cir. 2009).

1.

The '572 Patent claims a multifocal intraocular lens for implantation in the human eye having a plurality of concentrically arranged regions alternately powered for differing vision ranges. Claim 10 of the patent reads:

A multifocal lens adapted for intraocular implantation in ahuman eye comprising a one piece transparent lens body having a substantially circular centra] region having a first optical power; and a plurality ofconcentric ring regions coaxially surrounding said central region, the first innermost of said ring regions having a second optical power different from said first optical power, and a second subsequent ring region having a third optical power different from the optical power of the innermost ring region and different from the optical power of the central region.

(See Def. MSJ App., Exh. 4 at 120). In a prior action before a different judge, the court construed certain terms used in Claim 10 of the '572 Patent. One of the disputed claim terms, "optical power," was construed by the court to mean "the index of refraction divided by focal length." Nielsen v. Advanced Medical Optics, No. 3-05-CV-0018-L, Mag. J. F&R at 15,28 (N.D. Tex. Aug. 30,2006), rec. adopted, (N.D. Tex. Mar. 16,2007) ("the AMO Litigation"). The parties in the instant case have agreed to be bound by that claim construction ruling. (See Doc. #32).

2.

The central dispute regarding infringement is whether the ReSTOR® IOL manufactured and sold by defendants has three or more "optical powers," as taught by Claim 10 of the '572 Patent, or whether the accused product has only two "optical powers," Defendants rely on measurements made by their expert, Dr. Allen L. Cohen, an optometrist, to prove that the ReSTOR® lens generates only two focal points and, thus, does not infringe Claim 10 of the patent. (See Def. MSJ App., Exh. 1 at 12-14). Plaintiff counters with a report by Dr. Duncan T. Moore, an optical engineer, who concludes that the ReSTOR® lens has "at least three focal lengths" and "at least three optical powers[.]" (See Plf. MSJ App., Exh. 93 at 874,¶ 89). For summary judgment purposes, this "battle of the experts" focuses on whether the opinions of Dr. Moore are admissible under Fed. R. Civ. P. 702 and Daubert. If admissible, defendants tacitly concede that there is a genuine issue of material fact as to infringement. See Metro. Life Ins. Co. v. Bancorp Servs., LLC, 527 F.3d 1330, 1338-39 (Fed. Cir.2008) (conflict in expert testimony creates a genuine issue of material fact making summary judgment inappropriate). However, defendants maintain that Dr. Moore's opinions are not reliable because his infringement theory is based on an unverified theoretical model, rather than physical testing, and unsubstantiated assumptions. As a result, defendants contend that they are entitled to summary judgment on the issue of infringement.

a.

The admissibility of expert testimony in a patent case is a procedural issue governed by the law of the regional circuit in which the district court resides. See Micro Chem., Inc. v. Lextron, Inc., 317F.3d 1387,1390-91 (Fed. Cir. 2003). In the Fifth Circuit, Fed, R. Evid. 702 is the starting point for determining whether expert testimony is admissible at trial. This rule provides:

If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon

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