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

June 1, 2010

Johnson & Johnson Vision Care Inc. may continue selling its Acuvue Oasys contact lenses, even though its manufacturing infringes CIBA Vision Corp.'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 Vision Care Inc. (J&J) may continue selling its Acuvue Oasys contact lenses, even though its manufacturing infringes CIBA Vision' Corp.'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.

Market leader

J&J began selling its Acuvue Oasys lenses in 2005. Today, Acuvue Oasys is the largest single-selling contact lens in the United States, the judge wrote. Also, the lens is the preferred choice for first fits among eye-care practitioners (ECPs), according to the ruling.

The U.S. District Court for the Middle District of Florida had ruled Nov. 9, 2009, that J&J is infringing on CIBA Vision's Nicolson patents with the lenses. CIBA argued that the court 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 spokesman 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, non-U.S. 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.

International legal precedent

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," Adkins 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."

Gary Esterow, J&J spokesman, 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 ECPs who depend on them," Esterow 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 strongly defend any litigation taken by CIBA Vision," he added.