Rembrandt Vision Technologies v. CIBA Vision Corporation
(EDTX, Fish & Richardson) Patent Infringement:

Situation:

Our client, a private inventor partnered with a technology holding company, Rembrandt, had invented gas-permeable, hydrophilic soft contact lenses (U.S. Patent 5,712,327) which was being infringed by CIBA, one of the biggest names in the contact lens market.

Challenge:

The technology at issue presented significant challenges. The first issue was the complex nature of the polymer chemistry involved in the patented method of contact lens manufacture - the very heart of the invention. The second issue was more practical in nature. Contact lenses are small and transparent making any depiction of, or comparison between, the lenses very difficult. Finally, the methods used to test the chemistry of the accused lenses were arcane (X-Ray Photoelectron Spectrometry and Time of Flight Secondary Ion Mass Spectrometry). We had to find a way to simplify this technology without obscuring the critical details and without denigrating the breakthrough nature of the invention. And, we had to do it in only four days of trial.

Solutions:

Though the inventor was a brilliant chemist and a very likable witness, Dr. Sing-Hsiung “Mike” Chang, his English was difficult to understand as he was a Taiwanese immigrant. It was decided that his technological presentation would be limited to the invention story (presented via a timeline) and a single non-technical animation depicting the breakthrough in practical terms that jurors could easily grasp. This simplified animation would, however, be used and expanded upon by the technical experts in the case.

Working closely with the expert witnesses and attorneys, along with our own independent research, we developed a series of seven animations, presented together with many still slides, that supported explanations of the polymer chemistry of the lens, the testing methods and the conclusive results of those tests. Watch the animation.

Finally, though the opposing expert had not used them in his testimony, in our review of his expert report submitted months earlier, we found photographs of the accused lens which clearly showed infringement. The expert had used a dye which selectively stained areas of high concentration of the patented molecule. He claimed the tests show no sign of the molecule and attempted to prove this by making apples-to-oranges comparisons in difficult to decipher graphs. But the photos told a different story. With a slight boost in contrast, we were able to show the jury the truth during our cross examination: the accused lenses had exactly the kind of surface treatment claimed in the patent.

Results:

The jury found that the patent was both valid and infringed and awarded our client $41M in past damages.