AMO finds EPO success in eye surgery tech battle with Alcon

The European Patent Office’s Boards of Appeal destroyed Alcon’s patent EP 28 26 436, which protects precise targeting technology from surgical photoperturbation. The technology, in particular the required patient interface, is used in laser technology for ophthalmic surgery, including cataract removal. Now AMO can sell this technology to users of its existing ocular laser devices in Germany.

Johnson & Johnson, owner of AMO, filed an opposition to the patent at the end of 2018. Initially, in spring 2021, the opposition division of the EPO upheld EP 436. But, in second instance, the boards of appeal decided otherwise, revoking the patent. based on the added material.

In November 2021, in case EP 436, the Hamburg Regional Court also dismissed an infringement action against AMO. As such, since the EPO destroyed the patent, Alcon’s appeal against the Hamburg Higher Regional Court’s decision is now moot.

AMO and Alcon at an impasse

For years, Alcon and Johnson & Johnson have been locked in patent litigation for the growing eye laser technology market in Germany, the UK and the US. Originally, the litigation concerned eight families of patents. Four belong to the AMO subsidiary of Johnson & Johnson (EP 1 835 861, EP 2 548 528, EP 2 772 234 B1 and EP 3 466 379 B1), while Alcon has four (EP 2 926 780, EP 2 240 108, EP 2 579 827 and EP 28 26 436). All patents relate to laser technology for ophthalmic surgery, with some patents protecting its software and accessories.

However, due to various successes in different courts, no patent holders are currently allowed to sell new devices in Germany.

In the fall of last year, the regional court in Hamburg found that AMO violated Alcon’s EP 780. As a result, the court issued an injunction, which meant that AMO could not sell its disputed products in Germany. The defendant appealed to the Higher Regional Court Hamburg (Case ID: 327 O 321/20 and 327 O 323/20). At the same time, a nullity action against the patent is pending before the Federal Patent Court (case ID: 6 NI 10/21).

No callback pending

In turn, a decision by the regional court in Mannheim prohibits Alcon from marketing some of its products. In AMO’s EP 861 patent litigation, the court granted the infringement action in February. Alcon also appealed the decision to the Higher Regional Court in Karlsruhe (Case ID: 6 U 36/22).

According to the respective judgements, the two opponents applied the ban on sales to the other party. However, both parties refrained from enforcing recalls of competing products. German clinics and medical practices will therefore continue to use the products.

In this context, the sale of accessories and software is important. The current decision by the EPO means that AMO can continue to sell the corresponding products to users of its devices in Germany.

New claims in Munich

This is not the first patent in dispute that the EPO has revoked. In January 2022, the Boards of Appeal also revoked Alcon’s right EP 25 79 827, thus confirming the first instance decision of the Opposition Division. Subsequently, Alcon withdrew its parallel infringement action in the Hamburg Regional Court.

Other proceedings are still pending. In Mannheim, AMO is pursuing its patents EP 528, EP 234 and EP 379 (case ID: 7 O 8/21, 7 O 10/22 and 7 O 9/22). In addition, a nullity action is pending before the Federal Patent Court (case ID: 6 NI 20/21) parallel to the appeal proceedings in case EP 861.

In Hamburg, in addition to the appeal in the EP 780 case, Alcon’s EP 108 patent infringement actions are still pending at first instance (case ID: 327 O 317/20 and 327 O 318/20). Nullity actions before the Federal Patent Court are also still pending (case ID: 6 NI 10/21 and 6 NI 11/21). The parties are also contesting certain of the US and UK patents.

Kai Ruting

Recently, Alcon filed additional infringement claims against AMO in Munich, involving Alcon’s patents EP 23 73 207 and EP 21 84 005. The EPO had rejected an opposition to EP 207, while also upholding EP 005. As a result, AMO brought invalidity actions against both patents in Germany.

Patents protect imaging methods related to ocular laser technology.

International teams

Both opponents have relied on their advisory teams from the start. Alcon engaged a team from patent law firm Wuesthoff & Wuesthoff in opposition and infringement proceedings for some of the patents, while patent attorney Markus Breuer advised others. Both stood alongside the team of lawyers, led by Vossius partner Kai Rüting, in the German infringement proceedings.

Kirkland & Ellis coordinates cross-border proceedings in the United States, United Kingdom and Germany.

For AMO, a team of patent attorneys from the British mixed firm Carpmaels & Ransford conducted the opposition procedure before the EPO. Carpmaels’ solicitor, Ian Kirby, is responsible for the infringement proceedings in the UK. He cooperated closely with Rospatt partner Thomas Musmann, who led the German infringement proceedings. Markus Müller, partner of Hoffmann Eitle, advised on technical matters.

Thomas Muslim

For the OMA
Carpmaels and Ransford: Ian Kirby, John Brunner (patent attorney), Chris Tunstall (patent attorney) (all partners); partner: Ben Chapman (patent attorney)
Rospatt Osten Pross
(Düsseldorf): Thomas Musmann, André Sabellek (partners)
Hoffmann Eitle (Munich): Markus Müller (partner, patent attorney)

For Alcon
Wuesthoff & Wuesthoff (Munich): Axel Katérle, Sebastian Mooser (patent attorneys)
Breuer Friedrich Hahner (Munich): Markus Breuer (patent attorney)
Vossius & Partner (Düsseldorf): Kai Rüting (partner); partners: Wolfgang von Meibom (of counsel), Philipp Widera, Frederic Mühlenbruch (both counsels); Florian Meier, Martina Brasse (both patent attorneys)
internally (Geneva/Dallas): Christine Bohmann (IP global manager), Brannon Latimer (IP surgery manager)

European Patent Office, Technical Boards of Appeal, Munich
Marco Alvazzi Delfrate (president); members: Axel Martinez Möller, Christof Schmidt


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