Nidek and Visx go at it again

Nidek has filed suit against Visx for patent infringement regarding the Star series excimer laser system.

SAN FRANCISCO — Once again Nidek (Gamagori, Japan) and Visx (Santa Clara, Calif.) have locked horns regarding patent infringement. This time Nidek has filed suit in U.S. District Court here against Visx and its Star excimer laser system. Nidek claims the Star system infringes on Nidek’s U.S. patents 5,445,633; 5,624,436; and 6,136,012.

The complaint states that the patents in question infringe on fundamental and advanced technologies and calibration techniques required to carry out laser vision correction. U.S. Patent No. 5,624,436 covers calibration techniques, and has an equivalent Japanese patent, currently the subject of litigation instituted in Japan by Nidek against Visx’s Japanese distributor.

Nidek’s claim states that it is seeking monetary damages for past infringement and at least a permanent injunction to prevent Visx from further manufacture and sale of infringing excimer laser systems. Nidek also alleges that the infringement by Visx is willful and is seeking treble damages as well as attorney fees.

Ocular Surgery News attempted to contact Elizabeth Dávila, president and chief operating officer of Visx regarding the lawsuit, but was instructed to speak to Lola Wood, investor relations manager for Visx. Ms. Wood stated that it was company policy not to comment on ongoing court cases.

Courts and decisions

In a relatively short period of time, Nidek and Visx have built a long history of battling over patent infringement.

Visx filed a patent infringement suit against Nidek in December 1998. Two months later, the International Trade Commission (ITC) initiated an investigation of Nidek and its U.S. subsidiaries in response to a complaint filed by Visx. That complaint was also based on the charge of patent infringement.

In early 1999, both Visx and Summit (then of Waltham, Mass., now a part of Alcon) filed patent infringement suits against Nidek and its EC 5000 laser.

Summit charged that Nidek’s laser infringes on two of Summit’s U.S. patents (4,973,330 and 4,941,093). Summit sought an injunction to prevent further violation and obtain monetary damages.

Visx charged that three of its patents were being infringed upon: 4,718,418; 4,729,372 and 4,732,148. Visx also sought injunctive relief and monetary damages from Nidek. In a press release, Visx warned that surgeons and laser centers may also be subject to that injunction and be liable for damages. Nidek pointed out in its own release that no injunction had yet been granted and that the company “fully supports its customers and offers a standard indemnification on its products to customers.”

Nidek also said they did not intend to charge a per-procedure fee to users of the EC-5000 on any patents held by Nidek or collect fees for patents held by other companies.

Visx actions

In March 1999 Visx announced that the company had filed a complaint against Farmington Laser Eye Center PLLC and Donald C. Fiander, MD, in U.S. District Court in Michigan. The suit alleged that the defendants’ use of, and offers to use, the Nidek EC-5000 excimer laser system infringe Visx’s U.S. Patent No. 4,665,913.

Also in March, Visx filed similar complaints against OR Providers Inc. and Refractive Support Inc. in U.S. District Court in Ohio. In both actions, Visx sought an injunction against the defendants prohibiting the use of the Nidek EC-5000 excimer laser and an award of treble damages in view of the “intentional and willful” nature of the infringement, in addition to the reimbursement of attorney fees.

In June 1999, Administrative Law Judge Stuart A. Levin ruled in favor of Visx and dismissed Federal Trade Commission (FTC) charges against Visx, which alleged the company fraudulently attained a fundamental patent by not disclosing prior art with intent to deceive.

Judge Levin’s initial decision ordering the dismissal of the remaining charges against Visx stated that the complainant counsel had not satisfied the burden of establishing by clear and convincing evidence that the prior art was actually withheld with intent to deceive.

In Nidek’s countersuit against Visx, arguing for invalidating the patent, Nidek was free to develop evidence that FTC attorneys did not. Nidek was not constrained by the Visx/FTC decision.

At the beginning of 2000, Nidek received the ITC ruling that the company’s EC-5000 does not infringe upon two Visx patents.

Subsequently Icon Laser Eye Centers announced they would open laser centers in 100 American markets using Nidek’s EC-5000 laser. Nidek has approximately 500 EC-5000 units installed worldwide.

For Your Information:

• Nidek Technologies can be reached at 675 S. Arroyo Parkway, Ste. 330, Pasadena, CA 91105; (626) 578-1351; fax: (626) 578-1327. Visx investor relations manager
• Lola Wood can be reached at Visx Inc., 3400 Central Expressway, Santa Clara, CA 95051-0703; (408) 773-2020; fax: (408) 773-7378; e-mail: ir@visx.com.