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Portney v. CIBA Vision Corp.

December 23, 2009

VALDEMAR PORTNEY, AN INDIVIDUAL, PLAINTIFF/COUNTERCLAIM-DEFENDANT,
v.
CIBA VISION CORPORATION, A DELAWARE CORPORATION, DEFENDANT/COUNTERCLAIM-PLAINTIFF.



The opinion of the court was delivered by: Hon. Andrew J. Guilford United States District Judge

ORDER REGARDING CLAIM CONSTRUCTION

Before the Court are the claim construction arguments of the parties. Extensive arguments were presented in the papers and at oral argument. After reviewing all arguments, the Court has determined the proper claim constructions of the disputed terms.

1. BACKGROUND

Plaintiff Valdemar Portney ("Portney") has accused defendant CIBA Vision Corp. ("CIBA Vision") of using 140 claims of 6 U.S. patents, 6 non-U.S. patents, and either 2 or 3 non-U.S. patent applications. The U.S. patents are U.S. Patent Nos. 4,898,461; 5,166,711; 5,260,744; 5,657,108; 8,577,839; and 6,186,625. The 6 non-U.S. patents are Brazil BR8807089-1; Japan JP2-500468, JP6-023815; Norway NO179629, NO890376; Europe EP0318561; Australia AU605332; and Canada CA1326389. The non-U.S. patent applications are JP 2-500468, NO 890376, and BR 8807089 A. Each of these patents and applications claims priority to the 1987 application that became U.S. Patent No. 4,898,461 ("the '461 patent").

All of the claims asserted in this litigation include a term denoting that the claimed invention is a type of multifocal lens. These terms are:

* A multifocal ophthalmic lens;

* An ophthalmic lens . . . to provide vision correction over a wide range of viewing distances;

* Ophthalmic lens . . . to provide correction of vision over a wide range of distances;

* A multifocal ophthalmic lens for providing variable vision correction power;

* An ophthalmic lens . . . for providing variable vision correction power[s];

* Ophthalmic lens . . . to provide the power of correction of variable vision;

* A method of vision correction . . . to provide progressive vision correction powers;

* A method . . . including progressive vision correction powers;

* A multifocal surface;

* A multifocal ocular lens;

* Ocular lens . . . to bring about a variable vision correction performance; and

* Ophthalmic lens . . . to provide variable vision correction. [U.S. Patent Nos. 4,898,461; 5,166,711; 5,260,744; 5,657,108; 8,577,839; 6,186,625; Brazil BR8807089-1 and translation; Japan JP2500468 and translation; JP6023815 and translation; Norway NO179629 and translation; NO890376 and translation; Europe EP0318561; Australia AU605332; Canada CA1326389; BR 8807089 A and translation)]. These phrases are collectively referred to herein as "a multifocal ophthalmic lens." The proper construction of each of these phrases is before the Court.

Plaintiff has argued that two of these phrases "relate to 'method claims'" and therefore cannot be referred to as "a multifocal ophthalmic lens." [Portney's Opening Brief on Patent Claim Construction at 23]. But the method claims are not simply a collection of process steps. Rather, they have structural requirements. The claims all say "progressive" and require a "surface." That surface is the multifocal lens Portney claims to have invented, so the method claims cannot be practiced without creating "a multifocal ophthalmic lens." See Dealertrack Inc. v. Huber, No. 06-CV-2335 AG, Slip. Op. at 16 (C.D.Cal. Sept. 27, 2008) ("computer based method" in preamble was a limitation).

Before this litigation, all of the U.S. patents-in-suit were the subject of litigation in the U.S. District Court for the Eastern District of Texas between Portney's company Vision Advancement, LLC and non-party Vistakon. Vision Advancement, LLC v. Vistakon, Civil Action No. 2:05cv455 (E.D. Tex.). In the Vistakon litigation, Magistrate Judge Love issued a claim construction opinion and order that was adopted in full by Judge Davis. But he was not asked to construe and did not construe the terms currently before this Court. (Memorandum Opinion and Order ("Vistakon Claim Construction Decision"), Vision Advancement, LLC v. Vistakon, Civil Action No. 2:05cv455 (E.D. Tex. Jan. 26, 2007)).

CIBA Vision proposes that in the context of the Portney Patents "a multifocal ophthalmic lens" (and all of the listed variants) should be construed as "a multifocal ophthalmic lens (1) that has no segment of constant (i.e., spherical) curvature except (optionally) at the center, and (2) that contains at least 2 cycles in which vision correction power moves from Far to Near and back to Far (or vice versa from Near to Far to Near), and (3) that has the same Near power in each cycle and the same Far power in each cycle." (CIBA Vision's Opening Claim Construction Brief at 8-9.) Portney proposes that the court simply adopt the "ordinary and customary meaning of the claim terms at issue." (Portney's Opening Brief on Patent Claim Construction at 1.)

The Court finds CIBA Vision's arguments to be more persuasive and construes the claims with the limiting ...


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