Johns Hopkins Univ. v. Alcon Labs., Inc.

Johns Hopkins Univ. v. Alcon Labs., Inc.

Opinion

REDACTED VERSION

[text redacted]

REPORT AND RECOMMENDATION

I. INTRODUCTION

Presently before the court in this patent infringement action are the following motions: (1) the motion for summary judgment regarding U.S. Patent No. 7,077,848 ("the '848 patent"), filed by defendants Alcon Laboratories, Inc. and Alcon Research, Ltd. (together, "Alcon") (D.I. 196); (2) the motion for summary judgment on issues [*2]  pleaded by defendants but not pursued or disclosed during discovery, filed by plaintiff The Johns Hopkins University ("JHU") (D.I. 199); (3) JHU's motions to exclude under Federal Rule of Evidence 702 and Daubert (D.I. 218); and (4) Alcon's Daubert motion to exclude certain opinions and testimony of JHU's experts Brian Napper and Charles Colby (D.I. 225). I recommend that the court grant-in-part each of the four pending motions for the following reasons.

II. BACKGROUND¹

JHU filed this patent infringement action on June 23, 2015, alleging that Alcon infringes the '848 patent, entitled "Sutureless Occular Surgical Methods and Instruments for Use in Such Methods." (D.I. 1) The '848 patent involves an ocular surgery technique that allows a surgeon to perform vitreoretinal surgery without the use of traditional incisions and sutures. (Id. at ¶ 11) Instead, the surgery involves making openings in the eye for the placement of tubes, called cannulas, through which thin gauge instruments are inserted to perform the surgery. ('848 patent, col. 6:48-60) Following the procedure, the tubes are removed and the wounds self-seal. (Id.) The prior art method, known as 20-gauge surgery, was used for about twenty years before the technique claimed by the '848 was [*3]  developed in 2002. Surgeons had to make multiple incisions in performing the 20-gauge surgery because that technique did not use cannulas. ('848 patent, col. 2:17-27)

JHU asserts that Alcon encourages performance of the patented surgical technique it calls "Micro-Incision Vitrectomy Surgery" ("MIVS") by making and selling certain surgical instruments (the "Accused Products"), including 23-gauge, 25-gauge, and 27-gauge products.² (D.I. 13 at ¶ 19) The list of Accused Products includes cannulas, instruments inserted and removed through the cannulas, other related items, and "Paks," which are kits containing the various tools. (3/29/16 Tr. at 14:6-15:1) The instruments included in the Accused Products can be sold individually, in pre-set Paks, or in customized Paks, and the instruments come in different sizes. (Id. at 15:1-21, 16:5-13)

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