Judge rejects CIBA Vision's attempt to block Johnson & Johnson contact lens sales

May 15, 2010

J&J Vision Care may continue selling its Acuvue Oasys contact lenses even though their manufacturing infringes CIBA Vision's patent, in order to protect "millions of innocent contact lens wearers" who would have to be refitted with a different brand, a federal judge has ruled.

Jacksonville, FL-Johnson & Johnson (J&J) Vision Care may continue selling its Acuvue Oasys contact lenses, even though their manufacturing infringes CIBA Vision's patent, in order to protect "millions of innocent contact lens wearers" who would have to be refitted with a different brand, a federal judge has ruled.

Denying Duluth, GA-based CIBA Vision's motion for an injunction prevents inconvenience to more than 5.5 million Americans wearing the lenses and what could amount to more than $500 million in extra expenses associated with a refitting, the judge decided.

"These are not just issues of comfort or cosmetics, as CIBA argues, but rather deal with the more substantive concerns of proper vision and eye care," Judge Timothy J. Corrigan wrote in the April 27 order. "There will also be significant disruption, confusion, and cost (estimated to be in the hundreds of millions of dollars) caused by Acuvue Oasys patients being abruptly told that the contact lens for which they have been fitted and with which they are satisfied, is no longer available. . . . CIBA's answer that 'they can just wear glasses' is no answer, in this Court's view."

The U.S. District Court for the Middle District of Florida had ruled Nov. 9, 2009, that J&J is infringing CIBA Vision's Nicolson patents with the lenses. CIBA argued that it should therefore halt J&J's sales.

The Nicolson patents protect the unique silicon hydrogel technology CIBA Vision uses for its Air Optix portfolio of silicone hydrogel contact lenses, according to CIBA Vision spokeswoman Jetaun E. Adkins.

However, the court noted that CIBA Vision had previously granted licenses to several competitors, and even had offered in 2002 to give J&J license to use the patents in exchange for a 15% flat royalty rate and license to J&J's extended wear "developments." J&J declined the offer and CIBA subsequently entered into license agreements with Bausch + Lomb, CooperVision, and two smaller, foreign manufacturers.

In his ruling, the judge decided CIBA Vision would not be irreparably harmed and that monetary damages could adequately compensate the company in exchange for the continued infringement. The amount of those damages is yet to be determined.

Adkins said officials at CIBA Vision were "disappointed" and would determine whether to appeal the ruling. She noted that two court decisions in Europe have validated and enforced the Nicolson patents and granted injunctions against sales of J&J's Acuvue Oasys lenses in France and the Netherlands.

"CIBA Vision strongly believes that intellectual property protection stimulates innovation," she said. "Rigorous patent protection of innovations developed by its associates enables the company to commit significant R&D investments in new technologies that benefit millions of consumers in need of vision correction."

J&J spokesman Gary Esterow said the company maintains that its products do not infringe the CIBA Vision patents.

"Johnson & Johnson Vision Care is pleased that the court has denied CIBA Vision's motion for permanent injunction so that Acuvue Oasys products can continue to remain available to the millions of consumers and eye care professionals who depend on them," he said. "Johnson & Johnson Vision Care does not believe our Silicone Hydrogel products infringe any valid claims of the CIBA Vision patents, and we will continue to defend strongly any litigation taken by CIBA Vision."