Pannu v. Iolab Corp.

• Decision Date: 06 August 1998
• Docket Number: No. 97-1466,97-1501.,97-1466
• Citation: 155 F.3d 1344
• Parties: Jaswant S. PANNU and Jaswant S. Pannu, M.D., Plaintiffs-Cross Appellants, v. IOLAB CORPORATION, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

155 F.3d 1344

Jaswant S. PANNU and Jaswant S. Pannu, M.D., Plaintiffs-Cross Appellants, v. IOLAB CORPORATION, Defendant-Appellant.

Nos. 97-1466, 97-1501.

United States Court of Appeals, Federal Circuit.

August 6, 1998.

Michael C. Cesarano, Bienstock & Clark, Miami, Florida, argued, for plaintiffs-cross appellants.

Harry J. Roper, Roper & Quigg, Chicago, Illinois, argued, for defendant-appellant. With him on the brief were Raymond N. Nimrod, Aaron A. Barlow, and Sarah L. Taylor.

Before MAYER, Chief Judge, LOURIE and RADER, Circuit Judges.

LOURIE, Circuit Judge.

In this patent infringement case, Iolab Corporation appeals from the decision of the United States District Court for the Southern District of Florida awarding the patentee, Dr. Jaswant S. Pannu, damages and enjoining Iolab from further infringement. See Pannu v. Iolab Corp., 93-CV-6076 (S.D.Fla. Feb. 10, 1997). Because the district court erred in granting Pannu's motion for judgment as a matter of law (JMOL) that Iolab could not invalidate the patent, U.S. Reissue Patent 32,525, on the ground of improper inventorship, we reverse the grant of JMOL, vacate the judgment of infringement, and remand.

Iolab also appeals and Pannu cross-appeals from the denial of their respective renewed motions for JMOL following the jury verdict that two of the four accused devices infringe, while the other two accused devices do not. Iolab asserts that the court's claim construction was erroneous; Pannu asserts that the findings of non-infringement were tainted by a variety of prejudicial errors. Because the district court did not err in construing the claims, the jury's findings were supported by substantial evidence, and the court did not abuse its discretion in its procedural decisions, we do not disturb the court's denial of the parties' post-trial motions.

BACKGROUND

The invention of the '525 patent is directed to an improved intraocular plastic lens, which can be inserted into the human eye as a replacement for a failed natural lens. Intraocular plastic lenses are typically used in cataract surgery. Generally, the lenses have a circular optic (or lens body) through which light is focused. The lenses also have positioning and supporting members that project from the rim of the optic. One problem associated with such lenses is that they tended to snag delicate eye tissue during insertion into the eye, a problem caused by the pointed end of the positioning and supporting members.

In April 1980, Pannu filed a patent application directed to an improved posterior intraocular lens that reduced snagging by placing a circular loop at the end of the positioning and supporting members. The application disclosed a lens consisting of an optic made from resins or glass with attached supporting members made from resins, glass, metal, or nylon. Subsequently, in October, Pannu met with Dr. William Link, then president of Heyer-Schulte, a manufacturer of intraocular lenses, to discuss whether Heyer-Schulte would be interested in licensing Pannu's invention. Link suggested that Pannu's lens could be manufactured from a single piece of clear plastic. Following their meeting, Heyer-Schulte manufactured several prototype single-piece lenses which Pannu then successfully implanted in the eyes of his patients.

On May 8, 1981, Pannu filed a continuation-in-part (CIP) application disclosing and claiming a single-piece lens consisting of a lens body 12 and integrally formed supporting members 14 with snag-resistant elements 16 having continuous and smooth curves, as shown below in Figures 1 and 2 of the '525 patent.

The CIP application issued as U.S. Patent 4,435,855; it was reissued as the '525 patent in 1987. Two years later, Pannu's attorneys offered Link's company a license under the '525 patent. Link responded that "I suggested to Dr. Pannu we make his lens using a single-piece of plexiglass" and evidenced surprise that Pannu was "listed as the sole inventor on this patent in which single-piece technology plays a key role."

Representative claim 1 of the '525 patent reads in pertinent part as follows:

An intraocular lens comprising:

a lens body;

at least two spaced flexible positioning and supporting elements integrally formed with said lens body as a one-piece construction and extending radially, outwardly from the periphery of said lens body;

said elements terminating in a free end spaced from said periphery; and

snag-resistant means integrally formed on the free end of each of said elements for smoothly guiding and positioning the lens across contacted eye tissue when implanting the lens ... said snag resistant elements and said positioning and supporting elements being substantially coplanar.

On January 29, 1993, Pannu sued Iolab, alleging that four types of intraocular lenses manufactured by Iolab infringed the '525 patent. Iolab answered by asserting that the patent was invalid for lack of an enabling description, failure to disclose the best mode, and improper inventorship. Regarding improper inventorship, Iolab argued that the patent was invalid because the '525 patent does not list Link as an inventor. Iolab in fact argued that Link was not only a co-inventor, but the sole inventor, because Pannu, by sending non-confidential letters to lens manufacturers in early 1980, had already placed his contribution to the invention, the snag-resistant loop, in the prior art.

Following a "Markman" hearing, the court construed the terms "snag-resistant means" and "substantially coplanar." Regarding the former limitation, the court determined that the claim recited sufficient structure such that 35 U.S.C. § 112, ¶ 6 (1994) did not apply. The court rejected Iolab's contention that the snag-resistant limitation must prevent any damage to the eye, finding no support for such a construction in the specification or the prosecution history. Instead, the court ruled that the snag-resistant means must be curved so as to minimize snagging, but not necessarily to eliminate it.

Regarding the "substantially coplanar" limitation, Iolab argued that the two supporting elements and the two snag-resistant elements all had to be within the same plane, relying on its expert's testimony that the limitation "describes a flat lens where the elements may deviate from the plane only as the result of manufacturing tolerances or natural flexibility." In contrast, Pannu argued that the term "substantially coplanar" permitted some small angle to exist between the supporting elements and the snag resistant elements. The court, after considering the prosecution history, including drawings submitted by Pannu showing lenses with angles up to ten degrees, agreed with Pannu and construed the limitation as requiring an angle of no more than ten degrees between the snag-resistant elements and the supporting elements.¹

Following a trial in January and February 1997, but before the case was submitted to the jury, Pannu successfully moved for JMOL on Iolab's invalidity defense based on improper inventorship. The court found no evidence that Link was, or had ever claimed to be, the sole inventor of the patent. The court also determined that, even assuming that Link was a co-inventor, Iolab would have to establish that Pannu acted in bad faith in failing to name him as an inventor on the patent. Because Iolab had not submitted any evidence suggesting Pannu's bad faith, the court ruled that the patent would be correctable under 35 U.S.C. § 256 (1994) and thus could not be invalidated for improper inventorship.

The jury rendered a verdict finding that the patent was not proved invalid for a failure to disclose the best mode or for lack of enablement. The jury also found that only two of the four accused lenses infringed the claims of the patent and awarded Pannu damages based on a royalty rate of seven percent. All post-trial motions were denied and the court entered final judgment for Pannu, awarding $670,667.47 in damages and enjoining Iolab from manufacturing or selling the adjudged infringing lenses. Iolab appeals from the infringement and validity judgments, and Pannu cross-appeals from the judgment of non-infringement. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (1994).

DISCUSSION

On appeal from a judgment denying a motion for JMOL, we reapply the standards used by the district court in ruling on the motion. See Cybor Corp. v. FAS Technologies., Inc., 138 F.3d 1448, 1454, 46 U.S.P.Q.2d 1169, 1173 (Fed.Cir.1998) (in banc). A motion for JMOL against a party may be granted at the close of the evidence and before the case is submitted to a jury if the "party has been fully heard on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue." Fed.R.Civ.P. 50(a). To prevail on a renewed motion for JMOL following a jury trial, a party "must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied by the jury's verdict cannot in law be supported by those findings." Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893, 221 U.S.P.Q. 669, 673 (Fed.Cir.1984) (citation omitted); see also Fed.R.Civ.P. 50(b). We review the denial of a motion for a new trial for an abuse of discretion. See DMI, Inc. v. Deere & Co., 802 F.2d 421, 427, 231 U.S.P.Q. 276, 280 (Fed.Cir.1986).

A. Inventorship

Iolab argues that the '525 patent is invalid under 35 U.S.C. § 102(f) (1994) for failure to name Link as an inventor, and that the district court thus erred by granting JMOL in favor of Pannu on Iolab's inventorship defense.² Specifically, Iolab argues that it is undisputed that Link contributed the idea of making Pannu's snag-resistant lens from a single piece of plastic, thus making Link at least a co-inventor of the patented invention. Iolab also argues that Link's contribution in fact makes him the sole inventor because Pannu had already placed his...