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Storz summary judgment on IOL patent affirmed
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MIAMI — A federal court of appeals here denied an appeal by Jaswant S. Pannu, MD, in an IOL patent dispute, and agreed with a counterclaim by Storz Instruments. In granting summary judgment to Storz, the court stated that a reissued patent is invalid under the "recapture rule."
The U.S. Court of Appeals for the Federal Circuit in essence told Dr. Pannu that once something has been given away, it cannot be reclaimed in a different patent. As such, Storz Instruments did not infringe upon Dr. Pannu's patent claims on an IOL design because the patent itself was invalid.
The suit centers around U.S. patent No. 32,525, a reissue of an earlier patent commonly known as the '855 patent. In 1980, Dr. Pannu was granted a patent (No. 136,243) for an IOL. A year later, Dr. Pannu filed a continuation-in-part application (known as the '953 application) based on the original '243 patent. The '953 added new matter, of which some claims were rejected as being obvious in light of prior art references. Dr. Pannu filed a supplemental amendment cancelling several of the claims, adding newer claims and modifying some of the initial claims of the '953 application. The examiner accepted those claims and granted patent No. '855.
In 1985, Dr. Pannu filed an application for the reissue of the '855 patent, saying that he "unduly and without deceptive intent narrowed the claims beyond what was necessitated by the applied prior art." The examiner allowed Dr. Pannu to delete particular phrases from his description of the lens, but required him to insert other parameters. The '855 patent was then reissued as the '525 patent.
In the past, Dr. Pannu has successfully sued Alcon and the Cooper Companies, alleging infringement of the '525 patent. Alcon settled the earlier suit for $800,000, and Cooper settled for $550,000, according to attorneys.
Dr. Pannu also sued IOLab for allegedly infringing upon his patent, and was awarded about $860,000 in damages. IOLab is in the midst of appealing its decision, according to attorneys.
When Dr. Pannu sued Storz, alleging infringement of patent ‘525, Storz filed a counterclaim seeking a declaratory judgment of patent invalidity. In essence, Storz executives said, Dr. Pannu recaptured definitions he had surrendered in obtaining his secondary patent, the '855. The federal circuit courts agreed.
Bausch & Lomb (NYSE: BOL) recently acquired Storz Instruments.