Solex Laboratories v. Graham, Civ. No. 19497

• Decision Date: 06 August 1958
• Docket Number: 19986,19679,19498,Civ. No. 19497,19558,20484.
• Citation: 165 F. Supp. 428
• Court: U.S. District Court — Southern District of California
• Parties: SOLEX LABORATORIES, Inc., Plaintiff, v. Robert GRAHAM; John L. Roberts d.b.a. John L. Roberts Optical Co.; M. Charles May; George W. Spratt Optical Company, Doctors Contact Lens Service, Inc., and Sterling P. Dunham; Dr. Barry Bleeck; and M. Lon Kasow, Defendants. SOLEX LABORATORIES, Inc., Plaintiff, v. John L. ROBERTS, d.b.a. John L. Roberts Optical Co., Defendant. SOLEX LABORATORIES, Inc., Plaintiff, v. M. Charles MAY, Defendant. SOLEX LABORATORIES, Inc., Plaintiff, v. GEORGE W. SPRATT OPTICAL COMPANY, Doctors Contact Lens Service, Inc., and Sterling P. Dunham, Defendants. SOLEX LABORATORIES, Inc., Plaintiff, v. Dr. Barry BLEECK, Defendant. SOLEX LABORATORIES, Inc., Plaintiff, v. M. Lon KASOW, Defendant.

165 F. Supp. 428

SOLEX LABORATORIES, Inc., Plaintiff, v. Robert GRAHAM; John L. Roberts d.b.a. John L. Roberts Optical Co.; M. Charles May; George W. Spratt Optical Company, Doctors Contact Lens Service, Inc., and Sterling P. Dunham; Dr. Barry Bleeck; and M. Lon Kasow, Defendants.

SOLEX LABORATORIES, Inc., Plaintiff, v. John L. ROBERTS, d.b.a. John L. Roberts Optical Co., Defendant.

SOLEX LABORATORIES, Inc., Plaintiff, v. M. Charles MAY, Defendant.

SOLEX LABORATORIES, Inc., Plaintiff, v. GEORGE W. SPRATT OPTICAL COMPANY, Doctors Contact Lens Service, Inc., and Sterling P. Dunham, Defendants.

SOLEX LABORATORIES, Inc., Plaintiff, v. Dr. Barry BLEECK, Defendant.

SOLEX LABORATORIES, Inc., Plaintiff, v. M. Lon KASOW, Defendant.

Civ. Nos. 19497, 19498, 19558, 19679, 19986, 20484.

United States District Court S. D. California, Central Division.

August 6, 1958.

Hazard & Miller, by Allan D. Mockabee, Los Angeles, Cal., for plaintiff.

Bair, Freeman & Molinare, Chicago, Ill., by Will Freeman, A. W. Molinare, W. M. Van Sciver, Chicago, Ill., and William Douglas Sellers, Pasadena, Cal., for defendants Robert Graham; John L. Roberts, d.b.a. John L. Roberts Optical Co.; and M. Charles May.

Mason & Graham, by Collins Mason, Los Angeles, Cal., and Martineau & Martineau, by L. R. Martineau, and Glenn B. Martineau, Los Angeles, Cal., for defendants George W. Spratt Optical Co., Doctors Contact Lens Service, Inc., and Sterling P. Dunham.

Mason & Graham by Collins Mason, Los Angeles, Cal., for defendant Dr. Barry Bleeck.

Lyon & Lyon, by Reginald E. Caughey, Los Angeles, Cal., for defendant M. Lon Kasow.

TOLIN, District Judge.

This patent infringement litigation concerns but one patent. There are several separately filed cases which have been consolidated for trial. There are different accused structures in the various cases. The patent is not a stranger to this District Court. In the unreported case of Solex Laboratories v. Pacific Contact Laboratories, another Judge of this Court held it valid. The decision was affirmed on appeal.¹ Attorneys for the defendants in the present case have insisted that the former case was but little more than a default. From the entire record on appeal that does not appear to be a correct appraisal of the prior litigation. Although the attorneys in that case are also among the attorneys in the present consolidated cases, the named party defendants are different and the doctrine res judicata accordingly does not apply. The patent in suit was issued to Kevin M. Tuohy and bears Number 2,510,438. It was assigned to plaintiff. The claims read:

"I claim:

"1. A contact lens applicable to the human eye comprising a concavo-convex lens formed of light-transmitting material having a marginal size smaller than the limbus portion of the eye to which it is applicable but larger than the maximum iris opening, said lens having a radius of curvature on its concave side slightly greater than the radius of curvature of the cornea to which it is applied so that radially from the center of the lens there will be a small but gradually increasing clearance for the entry of natural eye fluids between the lens and the cornea, said lens being ground to correct for visual deficiency.

"2. A contact lens applicable to the human eye comprising a concavo-convex lens formed of light-transmitting material having a marginal size smaller than the limbus portion of the eye to which it is applicable but larger than the maximum iris opening, said lens having a radius of curvature on its concave side slightly greater than the radius of curvature of the cornea to which it is applied so that radially from the center of the lens there will be a small but gradually increasing clearance for the entry of natural eye fluids between the lens and the cornea, said lens being ground to correct for visual deficiency and having a bevel at its marginal edges on the concave side thereof."

The patent is presumptively valid.

"* * * The issue of the patent is enough to show, until the contrary appears, that all the conditions under which a discovery is patentable in accordance with the statutes have been met. Hence, the burden of proving want of novelty is upon him who avers it."²

"* * * Not only is the burden to make good this defense upon the party setting it up, but his burden is a heavy one, as it has been held that `every reasonable doubt should be resolved against him.' * * *".³

Whatever may be said for the prior art hereafter discussed, it appears that before the introduction of the Tuohy lens, contact lenses for the correction of vision in the human eye were cumbersome and uncomfortable structures to which the user had only a tolerance of brief duration at a given use. There was an interference with normal vision. This was manifested by the appearance of rainbows or halos within the user's field of vision and clouding of the vision after the lenses had been worn for a short time. These earlier lenses were what have generally been referred to in the optometrical field as scleral lenses. By this was meant that although the portion of the lens employed to correct vision was small, the lens extended beyond the border of the vision correcting area so as to be a glass or plastic structure which extended beyond the cornea with the edges resting on the scleral portion of the eye. The scleral lenses had flanges. The presence of these scleral flanges made such contact lenses very difficult to wear. When in use they pressed on the sclera and covered the sclera to a large extent and tended to restrict the natural blood supply to the eye. They also interfered with the free movement of natural eye fluids, and the eye covered by such a lens was deprived of free circulation of natural eye fluids and the supply of oxygen normally available from the air. A buffer solution compatible with the tissues of the patient was necessarily used. The halos and cloudiness which interfered with the patient's vision, as above stated, arose from the circumstance that the buffer solution deteriorated rapidly during use. Despite the considerable practical limitation of undertaking to use a scleral lens instead of conventional spectacles, there was some small demand for these lenses because they did enable the user to correct his vision without being patently aided by eye glasses, and the very nearness to the eye was believed in some instances to be beneficial in ameliorating certain pathological conditions. Apparently the custom was for persons willing to undergo the discomfort and inconvenience of a short period of tolerance of the lenses to use them for maximum periods of a very few consecutive hours. In the light of this cumbersome and often painful application and functioning of the pre-Tuohy lenses, Tuohy is corroborated in his insistence that his work was the originally successful corneal lens by the fact that following the invention disclosed by the patent, a sizeable industry in the manufacture of corneal lenses promptly came into being and those who prescribed glasses for the correction of visual deficiencies commenced to prescribe them with frequency. Use of the scleral lenses declined. The public acceptance was considerable and the corneal lenses enjoyed immediate commercial success whereas the scleral lenses had achieved only occasional tolerance by some unfortunate user whose occupation⁴ or pathology drove him to a toleration of the inconvenience, discomfort and visual deficiencies. Had any of the predecessors cited as prior art been able to accomplish the generally satisfactory result of the Tuohy lens, such a structure would, in great probability (in the light of the willingness of the public to accept a contact lens) have been readily accepted. However, the prior art cited against the invention is, for the most part, patently beside the point. Some foreign language publications have been received in evidence. These so meagerly described the structures with which they dealt, or adequately described some widely different device, that those interested in contact lenses for correction of visual deficiencies were not thereby led to create the Tuohy type lens.

That the Tuohy lens rapidly very largely replaced the scleral lenses in the market, is some evidence of successful novelty.⁵ The inventor developed an entirely different approach to a solution of the hitherto unsolved problems. He eliminated the scleral flange entirely and manufactured a contact lens which would cover only the cornea. It correctly appeared to him that if the buffer solution between the lens and the surface of the eye could be natural eye fluid rather than a prescriber's compounded solution, the clouding, halos, and other unhappy visual manifestations would be eliminated. To accomplish this, Tuohy designed his lens to have a radius of curvature slightly greater than the radius of curvature of the patient's cornea. As set forth in the patent, this is made evident by the following:

"* * * if the radius of curvature of the cornea measures 7.8 millimeters the radius of curvature of the concave side of the lens need only be 7.9 or possibly 8.0 millimeters."⁶

The result was that by having a gradually increasing space between the apical portion of the cornea and the lens, the natural tear fluids would be able to circulate beneath the lens, and instead of experiencing rapid deterioration of the buffer solution, the user would enjoy a continuous reception into the area of natural eye fluids. The remarkable part of this new lens is that although it is larger or flatter than the cornea, it remains attached to the eye by capillary action and it does not slide to the bottom of the eye and remain there. Also, though there may be temporary displacements from the cornea, simple blinking of the eyelids causes the Tuohy lens to re-center itself with respect to the cornea whenever such a temporary displacement occurs. To facilitate the passage of the edge of the lens over the protruding limbus when...