Rembrandt claims Ciba still infringing contact lens patent despite $41M verdict

Marilyn Tennissen Aug. 12, 2008, 8:56am

Earlier this year, a Texas jury ordered Ciba Vision to pay $41 million for infringing on rival Rembrandt's patent for certain types of contact lenses.

But Rembrandt claims the ruling has done little to stop Ciba from continuing to make the offending lenses, and has asked a federal judge to allow it investigate the suspected ongoing patent violations.

On Feb. 6, a jury in Marshall found in favor of plaintiff Rembrandt Vision Technologies against Ciba Vision Corp. The verdict upheld Rembrandt's claim that Ciba infringed U.S. Patent No. 5,712,327 in the manufacture of Ciba's Focus Night & Day and O2Optix conact lenses.

Rembrandt originally accused both Bausch and Lomb – which settled before going to trial – and CIBA of infringing on the '327 Patent. The patent relates to gas permeable extended wear contact lenses which allows for better oxygen exchange and moisture retention.

On Aug. 4, Rembrandt filed a motion to request discovery regarding possible infringements by Ciba since the February verdict.

"Since the verdict in this case, however, Ciba has continued to market these products on its Web site and sell them through eye care professionals and its eye care network, including through online retailers," Rembrandt's motion states.

Rembrandt also wants U.S. District Magistrate Judge Charles Everingham to sever the matter relating to the post-verdict infringement and enter a final judgment on the current litigation, in order to "move the case closer to appellate review and nearer closure for Rembrandt."

Severance is appropriate in a case such as this, Rembrandt writes, since patent infringement is a continuing tort, which makes each instance of infringement separate, cognizable cause of action.

Rembrandt wants a court injunction against Ciba, or at least for the court to determine the appropriate royalty or license term to be awarded for Ciba's continuing infringements. Rembrandt cites Paice LLC vs. Toyota Motor Corp., holding that a district court has the power to set the royalty for continuing infringements.

Rembrandt also wants the chance to discover if Ciba has made modifications or "design arounds" to its products, which may still leave the products in violation of the patent.

"Ciba asserted during trial that it can effectively 'design around' the '327 Patent, but has refused to provide any information so that Rembrandt may independently determine whether, despite Ciba's contentions, the actual implementation of these would infringe the '327 Patent," Rembrandt writes.

The motion states that at trial, Ciba's former employee Paul Nicolson testified there were several possible ways to change the existing design of the Focus and O2Optix lenses. Dr. Nicolson testified that Ciba could change the methane and air treatment on the lenses to a clinically indistinguishable methane and nitrogen plasma treatment, or that Ciba could change the water content of the lenses to get around the '327 Patent.

Nicolson also testified that "Ciba could move its entire manufacturing facilities overseas."

"Rembrandt has good reason to believe that none of these 'design arounds,' if implemented, would eliminate Ciba's infringement liability," Rembrandt claims.

Rembrandt's experts testified that changing the water content in the amount Ciba proposed would not entirely avoid infringement.

And as for Ciba's claim that it could avoid infringement by moving overseas, Rembrandt states that the foreign manufacture "design around" tactic does not solve the issue, since Ciba's importation of the lenses into the U.S. would still constitute infringement.

Robert Christopher Blunt of Parker, Bunt & Ainsworth PC in Tyler is representing Rembrandt along with Capshaw Derieux in Longview, Jones & Jones in Marshall, Ireland Carroll & Kelley in Tyler and Fish & Richardson in Dallas and Boston.

Michael Jones of Potter Minton in Tyler and Bryan Medlock Jr. of Dallas is representing Ciba.

Case No. 2:05-cv-491-CE

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