After $47M award from Ciba, Rembrandt's new infringement suit targets J&J

Marilyn Tennissen Jun. 25, 2009, 4:46am

Suing for infringement of U.S. Patent No. 5,712,327 proved lucrative for Rembrandt Vision Technologies last year, so the contact lens maker is filing suit again � this time against another company for infringing the same patent.

After receiving a $47 million jury verdict from Ciba Vision and an undisclosed settlement from Bausch & Lomb, Rembrandt has now filed suit against Johnson & Johnson Vision Care over its alleged infringement of the '327 Patent.

In 2008, a federal jury in Marshall awarded Rembrandt $47 million from Ciba Vision, a unit of Novartis AG, for infringing the contact lens patent that makes it possible to wear contact lenses for long periods of time (Rembrandt Vision Technologies LP v. Bausch & Lomb Inc. and Ciba Vision Corp., Case No. 2:05-cv-491). The jury found that the technology had been used in Ciba Vision's Focus Night and Day and 020Ptix products.

Before the case went to trial, Rembrandt settled with the other defendant, Bausch & Lomb and struck an undisclosed deal with B&L that put it at odds with former co-defendant Ciba Vision.

On June 22, Rembrandt filed a new lawsuit against Johnson & Johnson's Vision Care in the U.S. District Court for the Eastern District of Texas, the same court where its other litigation has taken place.

The venue was appropriate, the suit states, since the court presided over Rembrandt v Ciba and the jury trial, as well as the claim construction of the'327 Patent. And it had been Magistrate Judge Charles Everingham who had approved the jury's finding of a reasonable royalty of $41,083,853.

According to the complaint, the '327 Patent was issued Jan. 27, 1998, to Dr. Sing-Hsiung Chang and Mei-Zyh Chang for a Soft Gas Permeable Contact Lens Having Improved Clinical Performance.

"Dr. and Mrs. Chang worked for many years making improvements to the oxygen-permeability and tear-wettability of contact lenses, in particular soft contact lenses," the complaint states. "Apart from the '327 Patent, Dr. Chang is the named inventor of three other patents relating to soft, oxygen permeable contact lenses."

Based on agreements with Dr. and Mrs. Chang, the suit states that Rembrandt Vision is the owner of all rights, titles and interest in the '327 Patent.

Rembrandt alleges that Johnson & Johnson "has known of the '327 Patent since at least July 1999."

The suit claims that J&J Vision Care recognized that the Changs made a "key innovation" and were among the first to solve the problems with silicone hydrogel lenses that had kept them from being used as extended wear lenses.

In addition, the plaintiff states J&J sought a license to the '327 Patent from Dr. Chang, but never obtained one.

"J&J Vision Care has made, used, sold and/or offered to sell and/or continues to make, use, sell and offer to sell the Acuvue Advance and Acuvue Oasys contact lenses," the suit states.

The Acuvue products embody one or more claims of the '327 Patent, Rembrandt claims, and Rembrandt has been caused significant financial damage by J&J Vision Care's infringement.

Rembrandt is seeking compensatory damages, treble damages for willful infringement, interest, costs, attorneys' fees and other relief to which it may be entitled.

The company is also asking that J&J be ordered to deliver for destruction all infringing products in its possession.

Beaumont attorneys Larry Germer and Charles Goehringer Jr. of Germer Gertz LLP are representing Rembrandt. Attorneys from Robins, Kaplan, Miller & Ciresi LLP in Minneapolis, Minn., are of counsel.

The case has been assigned to U.S. District Judge T. John Ward.

Case No. 2:09-cv-200-TJW

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