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Court Agrees That Jury Verdict of Infringement Lacks Substantial Evidence

March 26, 2004

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Last Month at the Federal Circuit - April 2004

Judges: Linn (author), Schall, and Bryson

In Summit Technology, Inc. v. Nidek Co., No. 03- 1214 (Fed. Cir. Mar. 26, 2004), the Federal Circuit affirmed a district court’s entry of JMOL in favor of Defendants Nidek Company, Ltd.; Nidek, Inc.; and Nidek Technologies, Inc. (collectively “Nidek”), following a jury verdict that found the asserted claims literally infringed.

Summit Technology, Inc. (“Summit”) and Nidek are competitors in the field of laser eye surgery. Summit is the owner of U.S. Patent Nos. 4,941,093 (“the Marshall ‘093 patent”) and 4,973,330 (“the Azema ‘330 patent”), which are directed to laser eye surgical apparatuses and techniques to correct vision problems. Summit filed suit against Nidek alleging that Nidek’s EC-5000 Eximer Laser System (“EC-5000”) infringed claims of both the Marshall ‘093 and the Azema ‘330 patents. Nidek counterclaimed, alleging that the patents-insuit were invalid and not infringed. A jury found that Nidek infringed all asserted claims of the patents-in-suit, that the Marshall ‘093 patent was not invalid as anticipated, and that Nidek’s infringement was willful. Following the verdict, Nidek filed a renewed motion for JMOL as to the jury’s finding of infringement and willfulness, and the district court granted Nidek’s motion.

Concerning the Marshall ‘093 patent, the parties disputed whether Summit presented substantial evidence to support the jury’s finding that Nidek infringed the patent’s “beam dimension control means” limitation. Under the district court’s claim construction, this limitation functions to vary the area of the cornea exposed to the laser pulses, while the energy per unit area of each pulse that hits the eye remains substantially the same. The district court had found that pulses delivered to the cornea have substantially the same energy per unit area if they ablate approximately the same depth of corneal material. Thus, to establish infringement under the district court’s claim construction, Summit was required to prove that each pulse delivered to the cornea in Nidek’s EC-5000 device ablated approximately the same depth of corneal material as the aperture size varied. The district court entered JMOL because it found that Summit had failed to present such evidence.

The Federal Circuit affirmed the district court’s ruling, not on the grounds cited by the district court, but on the basis of Nidek’s alternative argument. Nidek alternatively argued that it did not infringe because its EC-5000 device has Gaussian or bell-shaped energy distributions that ablate nonuniform depths of corneal material, rather than ablating approximately the same depth of corneal material as required by the district court’s claim construction. The Federal Circuit found that evidence at trial supported this conclusion. Nidek’s statements to the FDA concerning the operation of its EC-5000, cross-examination testimony of Summit’s expert, and Nidek’s defense exhibits all established that the laser pulses were Gaussianshaped.

Concerning the Azema ‘330 patent, the parties disputed whether substantial evidence supported the jury’s finding that Nidek infringed the patent’s “means for focusing” limitation. Under the district court’s claim construction, this limitation functions to focus the beam to direct a spot of light onto the cornea, where the area of the spot is at least as large as the area of the cornea one wishes to operate on. Summit argued that it presented evidence of Nidek’s infringement under three separate theories: (1) that the area of the cornea one wishes to operate on is dynamic and changes throughout the operation; (2) even if the area is static, the device physically combines individual laser pulses into a composite pulse that covers the entire area; and (3) Nidek’s description of its EC-5000 as a “largearea” or “wide-area” ablation system implies that it infringes.

The Federal Circuit dismissed Summit’s first theory as misplaced. The Court found that it was irrelevant whether the light beam was larger than the light spot produced on the cornea at certain points of the procedure. The limitation referred to the entire area of the cornea treated during the operation, not the area undergoing ablation at any one time. The Court further found that Nidek’s FDA submission, and all of Summit’s proffered trial testimony, supported a conclusion that physical combinations of separate laser pulses were technologically impossible. Finally, Nidek’s expert explicitly stated at trial that the EC-5000 was not a “wide-area” ablation system within the district court’s construction. Instead, he emphasized that it was impossible to combine the light spots from the individual laser pulses.

The Federal Circuit found that Summit failed to present more than a mere scintilla of evidence to support a jury verdict that Nidek infringed either the Marshall ‘093 patent or the Azema ‘330 patent. Thus, the Court affirmed the district court’s JMOL of noninfringement in favor of Nidek.