Alcon and Kirkland invalidate two AMO eye surgery patents

The current dispute between Alcon and AMO relates to EP 2 548 528 and EP 18 35 861, which belong to the latter California subsidiary of Johnson & Johnson. EP 528 is a division of EP 861, their specifications being materially identical. Both patents protect a system comprising a laser and an imaging device for performing surgery on the eye, which aims to reduce the effect of cataracts.

The application was originally filed by medical device manufacturer Alcon seeking revocation of EP 861 and later EP 528. The applicant alleged lack of inventive step and included various claims of insufficiency. AMO filed a counterclaim for infringement for both patents.

In August 2021, the European Patent Office maintained EP 861 in amended form. In case EP 528, opposition proceedings are still pending at the EPO. However, the UK High Court has now declared both patents invalid, primarily on obviousness grounds. However, the judgment indicates that if the court had not declared the patents invalid for evidence, the president of the court would have nevertheless declared the two patents invalid for insufficiency (Case ID: HP-2020-000028).

Alcon wins in Germany

The decision is part of a complex of cross-border proceedings concerning laser technology for ophthalmic surgery. Covering Germany, the United Kingdom and the United States, the dispute concerns 20 patents from two patent families, held by Johnson & Johnson companies. 13 other patents from five Alcon patent families are also affected. All patents cover the United States and Europe.

In Europe, opponents are vying for eight patents from different families. Four belong to the Johnson & Johnson subsidiary AMO (EP 18 35 861, EP 25 48 528, EP 27 72 234 B1, EP 34 66 379 B1). Four belong to Alcon (EP 29 26 780, PE 22 40 108, EP 25 79 827, EP 28 26 436). To date, the winning side has changed on a case-by-case basis.

However, in a first decision in Germany, the Hamburg Regional Court found that AMO infringed Alcon’s EP 780 patent (Case ID: 327O 321/20) and issued an injunction. The appeal against this decision is pending.

Ian Kirby

In a further decision on the merits of AMO’s EP 861, in February 2022, the Mannheim Regional Court (Case ID: 7 O 70/20) concluded that Alcon had infringed the patent. Alcon has appealed the decision, while a parallel invalidity action against the patent is pending.

The UK High Court ruling is the first civil court ruling on the validity of the patents at issue. In addition to the EP 861 and EP 528 patents, Alcon has also challenged AMO’s EP 234 and EP 379 patents in the UK, with a trial scheduled for April 2023.

AMO relies on regulars

This is the first time US law firm Kirkland & Ellis has acted for Alcon, the instruction coming from close contacts with in-house lawyers. The latter knew the Kirkland team from his time at Novartis, from which Alcon separated in 2019. Kirkland has advised Novartis for years. The US firm coordinates cross-border proceedings in the US, UK and Germany. In Germany, a mixed team of Vossius & Partner and patent attorneys from Wüsthoff & Wüsthoff represent Alcon.

Daniel Lim

AMO, like its parent company Johnson & Johnson, has relied for years on joint law firm Carpmaels & Ransford for filings and lawsuits, as well as EPO objections. The firm is also increasingly active in counterfeiting cases for Johnson & Johnson and its subsidiaries. However, this is the first time that AMO has appointed Carpmaels in litigation capacity.

In the United States, AMO relies on a team from Latham & Watkins. The team, led by Washington partner Michael Morin, also coordinates transatlantic procedures and works closely with Carpmaels UK partner Ian Kirby. He also works with lawyers from Rosspat Osten Pross, as well as patent attorneys from Hoffmann Eitle in Germany.

For Alcon
Three new squares (London): Thomas Hinchliffe, Kathryn Pickard, Jeremy Heald
Kirkland and Ellis (London): Nicola Dagg, Daniel Lim (partners); associates: Nadia Spiccia, Ashley Grant
Kirkland and Ellis (Washington): Gregg LoCascio, Jeannie Heffernan, Sean McEldowney, Noah Frank

For the OMA
8 New Square (London): Michael Tappin, Henry Ward
Carpmaels and Ransford (London): Ian Kirby, John Brunner (patent attorney) (both partners); Associates: Sarah Johnson, Aled Jones; Ben Chapman, Chris Tunstall (both patent attorneys)
Latham and Watkins (Washington): Michael Morin, Roger Chin
Internally, Johnson & Johnson (US): Denise DeFranco (Global Head of Intellectual Property Litigation)

British High Court of England and WalesLondon
James Mellor (presiding judge)

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