A Medical Device Daily

Advanced Medical Optics (AMO; Santa Ana, California) reported that it has won its case against Alcon Manufacturing and Alcon Laboratories (Fort Worth, Texas) for infringement on two AMO patents for phacoemulsification equipment used during cataract surgery.

AMO was awarded $94.8 million in damages, and the jury found that the infringement by Alcon was willful, potentially tripling the award total.

Alcon immediately responded by saying that it believes that the verdict “is not supported by the evidence and is incorrect as a matter of law” and that it will ask the court to set aside the verdict. It said it would appeal, if necessary.

Saying that while it expects the verdict to be overturned, Alcon noted that it already has decided to make the software changes necessary to remove the Occlusion Power Management feature at issue from these products because few, if any, of its customers actually used it.

“While we are disappointed with this jury’s decision, we remain confident that when the matter is further reviewed, the court will find that Alcon does not infringe and owes no damages,” said Elaine Whitbeck, vice president and general counsel of Alcon.

AMO in December 2003 filed a complaint in U.S. District Court for the District of Delaware against Alcon for infringement of U.S. patent nos. 5,700,240 (the ’240 patent) relating to occlusion mode and 6,059,765 (the ’765 patent) relating to a fluidics management system.

AMO alleged that Alcon’s Infiniti infringed the ’765 patent and the Infinity and the Series 20000 AdvanTec and Everest Legacy phacoemulsification machines infringe the ’240 patent.

AMO’s corporate vice president and chief marketing officer, Russ Trenary, said that, with the ruling, “AMO customers doing phacoemulsification procedures will continue to enjoy the benefits of our occlusion mode technology, which offers an automatic, safe, and cool means of clearing occlusions at the phaco tip. Additionally, our patented means of purging air through our phaco pack, which allows for better chamber stability during the procedure, will in the future only be featured on AMO machines.”

Alcon said that the suit challenges only certain features of its Infiniti Vision System and the Advantec and Everest software upgrades to its Legacy cataract system. It said it does not relate to the core phacoemulsification technologies that make up the Infiniti and Legacy systems.

AMO and Alcon compete in the ophthalmic surgical and eye care product markets.

In other legalities, Applied Biosystems Group (Foster City, California), an Applera (Norwalk, Connecticut) business, reported that Applera has reached an agreement with Hoffmann-La Roche (Basel, Switzerland) to expand their licensing program for polymerase chain reaction (PCR) technology to incorporate enabling patents for real-time PCR and other PCR-related technology.

Thus, Applera and Roche said they have reached a settlement – financial terms not disclosed – of their outstanding litigation and arbitration related to contracts involving rights to PCR and real-time PCR.

Applied Biosystems will be authorized by Roche to be the sole licensor of Roche patents covering reagents and methods for practicing PCR and real-time PCR in the life science research and applied fields. In real-time PCR, the amplified DNA is detected during the PCR process instead of at the end of the amplification process.

“Real time facilitates a number of important additional applications for PCR in biological research and standardized testing, including gene expression quantitation and genotyping,” said Paul Grossman, PhD, vice president, strategic planning, business development and intellectual property at Applied Biosystems.

Catherine Burzik, president of Applied Biosystems, said, “We believe licensing real-time PCR reagents and patents will enable broad commercial access to this second-generation PCR technology and will accelerate the pace of life science research . . . [W]e also expect it will generate significant income . . . that should substantially offset income lost from expiring first-generation PCR patents.”

Roche and Applera also agreed to the terms of a diagnostic license to Applera under Roche’s nucleic acid technology patents.