The opinion of the court was delivered by: Michael A. Telesca United States District Judge
Plaintiff Bausch & Lomb Incorporated, ("Bausch & Lomb") brings this action pursuant to federal patent law, (codified at 35 U.S.C. § 100 et. seq.), claiming that defendant Coopervision, Inc. ("Coopervision") is infringing upon Bausch & Lomb's United States Patent No. 6,132,236 (issued on September 5, 2000)(hereinafter "the '236 Patent"). The '236 Patent, entitled "Toric Contact Lenses," generally discloses toric contact lenses that are shaped and manufactured in such a way as to minimize differences in the thickness and fitting characteristics of the lenses despite differences in certain optical-correction properties of the lenses. Plaintiff contends that the defendant is infringing upon the '236 Patent by making and selling contact lenses that infringe upon the patent. Pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)("Markman"), the parties request that the court construe the disputed claim terms of the '236 Patent.*fn1 The following constitutes my construction of the claim terms in dispute.
United States Patent 6,113,236 was issued to plaintiff Bausch & Lomb Incorporated (as the assignee) by the United States Patent Office on September 5, 2000. The '236 Patent discloses a "toric" contact lens with specific fitting characteristics. Toric contact lenses are generally used to correct "refractive abnormalities of the eye associated with astigmatism." '236 Patent at col. 1, lns. 7-8, and are called "toric" lenses because the portion of the lens correcting for the astigmatism generally has a toric (elliptical) shape.
An astigmatism is a condition of the eye in which the cornea has an irregular (toric) shape which causes light rays entering the eye to focus both in front of and behind the retina. As a result, a person with an astigmatism often has difficulty seeing objects that are both near and far. In this respect an astigmatism is different then the conditions of myopia (commonly referred to as "nearsightedness") in which light rays focus in front of the retina, causing the sufferer to have difficulty seeing objects that are far away, or hypermetropia (commonly referred to as "farsightedness") in which light rays focus behind the retina, causing the sufferer to have trouble seeing objects that are in close proximity.
A toric contact lens corrects for an astigmatism by using a toric optical zone on either the front (anterior) or rear (posterior) surface of the contact lens. The "optical zone" of a contact lens is located in the central portion of the lens, and is the portion of the lens that corrects for vision abnormalities. The optical zone is surrounded by the "peripheral zone" of the lens, which area assists in keeping the lens on the eye, and in the case of toric lenses, properly oriented on the eye.
In a conventional, non-toric contact lens, the optical zone of the lens is spherically shaped--having a uniform curve along both the vertical and horizontal meridians. A toric optical zone, however, typically has a longer curve along the horizontal meridian, and a shorter curve along the vertical meridian, though some toric zones can be spherical. By utilizing two different curves within the optical zone, a toric lens can simultaneously correct for light rays that are focused in front of and behind the retina. In contrast, a spherical lens, because it utilizes only one curve, can only correct for light rays that are focused either in front of, or behind the retina.
Perhaps the easiest way to understand the difference between a spherical optical zone and a toric optical zone has been suggested by the parties in their submissions to the court. As explained by both parties, a spherical optical zone takes a shape similar to the edge of a basketball: it is equally round throughout the zone. A toric optical zone, however, generally takes a shape more like the edge of a football: the curve is longer along one meridian, (usually the horizontal meridian) and shorter along a perpendicular meridian. Toric and spherical shapes are depicted in the illustration below, which appears in Plaintiff Bausch & Lomb's Opening Brief on Claim Construction, at page 5.
Depiction of a Depiction of a Toric shape Spherical shape Because persons with an astigmatism also often suffer from either myopia or hypermetropia, toric contact lenses often utilize two optical zones to correct for both conditions. '236 Patent at col. 1, lns. 9-14. One optical zone provides for spherical correction: that is correction for nearsightedness or farsightedness. The other optical zone provides for cylindrical correction: that is correction for the astigmatism. T h e ' 2 3 6 Patent contemplates the use of two optical zones, one on the front surface of the lens, and one on the back surface of the lens. The optical zone that provides for spherical correction may be located on either the front (anterior) surface of the lens, or may be located on the back (posterior) surface of the lens. The optical zone providing cylindrical correction will be located on whichever surface the spherical optical zone is not located. '236 Patent at col. 1, lns. 15-17.
While toric contact lenses have been in use for decades, the novelty of the '236 Patent arises from the claimed ability to minimize the thickness of an individual lens by selecting certain sizes of the optical zones of the lens, and the ability to create a series of lenses which provide different cylindrical corrections, but maintain substantially uniform lens thickness throughout the series of lenses.
According to the '236 Patent, a common problem with toric contact lenses is that as the cylindrical correction of the lens increases, the thickness of the lens increases. '236 Patent at col. 1, lns. 43-49. Oftentimes, lenses with higher cylindrical corrections "will have greater thickness in at least one portion of the lenses." '236 Patent at col. 1, lns. 47-49. According to the '236 Patent, varying thicknesses of lenses with the same spherical correction, but different cylindrical corrections, is problematic for practitioners who attempt to fit patients with correctly-fitting lenses that provide the appropriate optical correction. This is because practitioners typically "use sets of diagnostic contact lenses to determine which lens provides appropriate fitting characteristics and optical correction." '236 Patent at col. 1, lns. 38-41. Because lenses with different thicknesses have different fitting characteristics, practitioners experienced difficulty in identifying a lens that would both provide the necessary optical correction, and fit the patient properly.
The '236 Patent claims to solve the problem of variable thicknesses in contact lenses by adjusting the sizes of the anterior and/or posterior optical zones. According to the '236 Patent, the inventor found that: by adjusting the diameters of the posterior and/or anterior optical zones, based on cylindrical correction of toric contact lens, the thickness profile of the lens can be maintained fairly constant over a series of lenses, including lenses having a range of cylindrical corrections. In other words, in a series of contact lenses having different cylindrical corrections, the thickness of lenses in the series at any nominal section of lenses in the series, can be maintained consistent across the series. '236 Patent at col. 3, lns. 1-11. According to the '236 Patent, by minimizing variations in the thicknesses of the lenses, the fitting parameters of the lenses become more consistent, and this improvement leads to efficiencies in both prescribing and manufacturing contact lenses. '236 Patent at col. 3, lns. 16-21.
In 1996, the United States Supreme Court held in Markman v. Westview Instruments, Inc., 517 U.S. 370, 372, that "construction of a patent, including terms of art within its claim, is exclusively within the province of the court." Because the meaning of claim terms is often "the central issue of patent litigation . . . ." and because "most aspects of trial hing[e] on this determination . . . a conscientious court will generally endeavor to make this ruling before trial." Loral Fairchild Corporation v. Victor Company of Japan, Ltd., 911 F.Supp. 76, 79 (E.D.N.Y. 1996) (Rader, J. sitting by designation)(citing Markman v. Westview Instr., Inc., 52 F.3d 967 (Fed.Cir.1995)(internal quotation omitted)).
In determining how the terms of a claim are to be construed, "the court should look first to . . . intrinsic evidence . . . i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)(citing Markman, 52 F.3d at 979). "Such intrinsic evidence is the most significant source of legally operative meaning of disputed claim language." Vitronics, 90 F.3d at 1582. "In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term[,]" and in such circumstances, reliance on extrinsic evidence, such as expert testimony is "improper." Vitronics, 90 F.3d at 1583.
In considering the intrinsic evidence, the court looks first to the words of the claims, including the claims not asserted, to define the scope of the patented invention. Vitronics, 90 F.3d at 1582. The words in the claim are given their ordinary and customary meaning, unless the patentee chooses to define the words in a specific manner. Vitronics, 90 F.3d at 1582. If the patentee chooses to be his or her own lexicographer, the specified definitions assigned to particular words or terms must be found either in the specification or the file history. Vitronics, 90 F.3d at 1582. Accordingly, it is always necessary to review the specification to determine if any specialized meanings have been given to terms used in the patent. Vitronics, 90 F.3d at 1582. Finally, with respect to intrinsic evidence, the prosecution history of the patent may often be of "critical significance" in defining claim terms. Vitronics, 90 F.3d at 1582. The prosecution history often contains express representations made by the applicant regarding the scope or limitations of the claims, and therefore is a valuable resource in determining the meanings of words used in the claims. Vitronics, 90 F.3d at 1582.
CONSTRUCTION OF THE DISPUTED CLAIM TERMS OF THE '236 PATENT
The '236 Patent contains 22 claims, three of which (Claims 1, 8, and 17) are independent. The independent claims are set forth below, with the disputed claim terms highlighted.
Claim 1 of the '236 Patent provides:
A toric contact lens including a posterior surface and an anterior surface, one of said surfaces including a toric optical zone and the other of said surfaces including a spherical optical zone, the anterior and posterior surfaces being shaped to form a ballast oriented about a ballast axis, wherein a diameter of the posterior optical zone and a diameter of the anterior zone are selected to minimize thickness of the lens based on the cylindrical correction of the lens. '236 Patent at col. 6, lns. 9-7.
Claim 8 of the '236 Patent discloses:
A series of toric contact lenses, each lens in the series including a posterior surface and an anterior surface, one of said surfaces including a toric optical zone and the other of said surfaces including a spherical optical zone, the anterior and posterior surfaces being shaped to form a ballast oriented about a ballast axis, each lens in the series having a common effective base curve and overall diameter but different cylindrical correction,
wherein each lens in the series has a posterior optical zone diameter and an anterior optical zone diameter that are selected to optimize thickness of lens based on the cylindrical ...