Pallin v. Singer, Not Reported in F.Supp.

(1995)
36 U.S.P.Q.2d 1050

1995 WL 608365 Factual Background

United States District Court, D. Vermont.
Cataract surgery is necessary when the natural lens of the
Samuel L. PALLIN, M.D. eye becomes cloudy and can no longer effectively pass
v. light through to the light and image sensing portion of the
Jack A. SINGER, M.D. and the Hitchcock eye. The surgery is accomplished by making an incision
Clinic d/b/a Hitchcock Associates of Randolph. into the eye and removing the cloudy natural lens through
the incision. Once the natural lens has been removed, a
Civ. No. 5:93–202. plastic replacement lens (an “IOL”) is commonly placed
| into the space where the natural lens used to be to restore
May 1, 1995. the patient's vision.

The incision is made into the area of the eye known as

OPINION AND ORDER the “sclera,” or the white of the eye. The location of the
incision is generally measured from the limbus, which
BILLINGS, Senior District Judge. is the “narrow annular region of tissue that defines the
transition between the cornea and the sclera.” See Defs.'
*1 This is an action for patent infringement. Plaintiff
Mem.Supp.Mot. for Summ.J. of Invalidity, Glossary at
Dr. Samuel Pallin (“Pallin”) alleges that Defendants Dr. viii.
Jack Singer (“Singer”) and the Hitchcock Associates of
Randolph (“Hitchcock”) are infringing on a patented Traditionally, upon completion of cataract surgery,
surgical technique developed by Plaintiff for use during surgeons used sutures to close the incision. Sutures were
cataract surgery. Pallin allegedly developed a method for necessary to prevent “wound separation” due to pressure
making the surgical incision in the eye in a manner that from both within and without the eye. Sutures, however,
would allow the wound to be “substantially self-sealing,” often cause the patient to develop an astigmatism. Hence,
i.e., requiring no sutures to heal. Plaintiff obtained patent in 1990, doctors began to look for a way to perform
number 5,080,111 (“the '111 patent”) for the technique. surgery without using sutures, i.e., to develop an incision
Plaintiff's Complaint alleges that Defendants Singer and that would be self-sealing.
Hitchcock have carried out hundreds of operations that
infringe on the '111 patent and that Defendants have The patented invention, as characterized by Plaintiff, is
further induced violation of the patent by teaching the an incision that: (a) substantially self-seals; (b) is located
technique to other ocular surgeons. 1 1.5 to 3.0 millimeters from the limbus; and (c) diverges
from the limbus from a central location to form a shape
Now pending before the Court is Defendants' Motion resembling a chevron or frown. According to the patent,
for Summary Judgment of Patent Invalidity. Defendants the configuration of the incision allows it to seal as the
argue that the '111 patent's claims 1, 7, 22, and 28 are eye is inflated following surgery, eliminating the need for
invalid under 35 U.S.C. § 102(g) 2 and that all claims are sutures. Pallin alleges that he conceived of the invention
on April 16, 1990 and made the first operation with
invalid under 35 U.S.C. § 103. 3 To support this argument,
this technique on April 17, 1990. Pallin filed his patent
Defendants assert that other surgeons performed the same
application on June 28, 1990 and the '111 patent was
cataract surgery procedure claimed in the '111 patent prior
issued on January 14, 1992.
to the date on which Plaintiff first performed an operation
using the technique of a substantially self-sealing incision.
*2 Plaintiff was not, however, the only ocular surgeon
Plaintiff has filed opposition claiming that the prior work
working towards the development of a sutureless
of others does not invalidate his patent and that the subject
technique for use in cataract surgery in 1990. Defendants
matter of his patent is both novel under 35 U.S.C. § 102
allege that surgical techniques practiced by Drs. Michael
and nonobvious under 35 U.S.C. § 103.
McFarland, James P. Gills and Defendant Singer, both

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Pallin v. Singer, Not Reported in F.Supp. (1995)
36 U.S.P.Q.2d 1050

anticipated Plaintiff's patent under § 102(g) and render it

obvious under § 103. 4 I. Standard of Review

A. The '111 Patent's Presumed Validity

1. Dr. McFarland Under 35 U.S.C. § 282, a United States patent is
In January 1990, Dr. Michael McFarland developed a presumed valid. The party asserting invalidity must
sutureless technique whereby he made a straight line, overcome this presumption by clear and convincing
parallel to and 3 to 4 millimeters away from the limbus. evidence establishing facts which support the conclusion
McFarland then dug a tunnel through the sclera to of invalidity. Intel Corp. v. U.S. Int'l Trade Comm'n, 946
enter the anterior chamber. 5 For a stretching effect, F.2d 821, 834 (Fed.Cir.1991); Ethicon, Inc. v. Quigg, 849
McFarland made a series of vertical cuts in the floor of F.2d 1422, 1427 (Fed.Cir.1988).
the scleral tunnel, to allow insertion of a lens that was
larger than the tunnel width. Dr. McFarland published
a description of this technique in Ocular Surgery News B. The Summary Judgment Standard
on March 1, 1990. The parties do not dispute the facts Despite the presumption of validity, summary judgment
concerning Dr. McFarland's developed technique. may be granted in a patent suit, just as it may
be in any other civil action. C.R. Bard, Inc. v.
Advanced Cardiovascular Systems, Inc., 911 F.2d 670, 672
2. Dr. Gills (Fed.Cir.1990). Summary judgment is appropriate when
On March 19, 1990, Dr. James P. Gills performed several the Court finds that there is no genuine issue as to any
sutureless cataract surgeries. According to his surgical material fact and the moving party is entitled to judgment
notes, Gills used an inverted-V shaped scleral incision. as a matter of law. Fed.R.Civ.P. 56(c); Celotex Corp. v.
(See App.J. to Defs.' Mot, Dep. of Sherry Gillis, Ex. 3). On Catrett, 477 U.S. 317, 323 (1986). The initial burden of
March 22, 1990, Gills again performed cataract surgery, demonstrating that no genuine issue of material fact exists
employing the inverted-V technique. (Id., Ex. 4). A post- rests on the party seeking summary judgment. Adickes
operative photo of that patient was purportedly taken on v. S.H. Kress & Co., 398 U.S. 144, 157 (1970); Cooper
April 9, 1990. (Id., Ex. 5; App. I to Defs.' Mot, Dep. of v. Ford Motor Co., 748 F.2d 677, 679 (Fed.Cir.1984).
James Gills at 18). 6 The distance of the V's apex from The burden then shifts to the opposing party, who may
the limbus was not, however, measured exactly during not rest on its pleading but must present “significant
the surgery. Gills has indicated that the measurement was probative evidence” demonstrating that a factual dispute
“kind of estimated and guesstimated ... that it may vary exists. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249
from ... half a millimeter one way or the other.” (App. I to (1986). The Court must view these materials and draw all
Defs.' Mot, Dep. of James Gills at 18). In his 1990 book, inferences in the light most favorable to the non-movant.
Small–Incision Cataract Surgery, Gills instructed that the Id. at 255; C.R. Bard, 911 F.2d at 672.
incision should be made between 3 and 4 millimeters from
the limbus. (Id., Ex. 2A). *3 Although the ultimate question of patent validity is
one of law, this determination is based on an assessment
of the facts. A district court may only grant a motion for
3. Dr. Singer summary judgment when its factual inquiry presents no
On March 20, 1990, Singer performed corneal surgery genuine issue of material fact. Ryko Mfg. Co. v. Nu–Star,
using a frown shaped incision made at a distance of Inc., 950 F.2d 714, 716 (Fed.Cir.1991). In the case before
approximately 2 millimeters from the limbus. 7 (See App. us, we find that complex factual disputes exist and we
D to Defs.' Mot, Singer Dec., ¶ 12). Because he wanted to therefore decline to grant summary judgment on the issue
ensure that the wound would be safe and remain closed, of patent invalidity.
however, Singer used a single suture. (Id., ¶ 15).

II. Prior Art—35 U.S.C. § 102(g)

Discussion

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Pallin v. Singer, Not Reported in F.Supp. (1995)
36 U.S.P.Q.2d 1050

Under § 102(g), a patent is invalid if it was previously required by the statute. See Kimberly–Clark Corp. v.
Johnson & Johnson, 745 F.2d 1437, 1444 (Fed.Cir.1984).
made in this country by another who had not abandoned,
In determining whether an invention would have been
suppressed, or concealed it. The patentee need not have
obvious at the time it was made, section 103 requires a
knowledge of the prior art. E.I. du Pont de Nemours
Court to: (1) determine the scope and content of the prior
& Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1437
art; (2) ascertain the differences between the prior art and
(Fed.Cir.), cert. denied, 488 U.S. 986 (1988). Nevertheless,
the claims at issue; and (3) resolve the level of ordinary
for the prior art to anticipate under § 102 a single teaching
skill in the pertinent art. Graham v. John Deere Co., 383
must anticipate every element of the claimed invention.
U.S. 1, 17 (1966); Ryko, 950 F.2d at 716. “Secondary
See Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802
considerations [such] as commercial success, long felt but
F.2d 1367, 1379 (Fed.Cir.1986), cert. denied, 480 U.S. 947
unsolved needs, failure of others, etc., might be utilized
(1987); Great N. Corp. v. Davis Core & Pad Co., 782 F.2d
to give light to the circumstances surrounding the origin
159, 165 (Fed.Cir.1986). This determination is one of fact.
of the subject matter sought to be patented.” John Deere,
Hybritech, 802 F.2d at 1379.
383 U.S. at 17. Defendants argue that a determination
of obviousness is appropriate in this case because the
Our comparison of the surgical techniques practiced by
scope and content of the prior art, the differences between
Drs. McFarland, Gills and Singer with the asserted claims
the prior art and the claims at issue, and the level of
of the '111 patent reveals that genuine issues of material
ordinary skill in the pertinent art all render the claims of
fact exist as to whether the works of any one of these
the '111 patent obvious to one of ordinary skill in the art.
doctors fully anticipated Plaintiff's claims. Taking the
Defendants do not, however, elaborate by demonstrating
evidence in the light most favorable to the Plaintiff,
that no factual dispute exists with respect to the John
we find that complex disputes exist as to the following
issues: whether Dr. McFarland's straight line incision and Deere test set forth above. 10
vertical cuts fall within the ambit of Plaintiff's claims;
whether the distance from the limbus of the incisions made *4 We conclude, therefore, that Defendants have failed
by Dr. Gills during the March 1990 surgeries falls within to meet their burden of proof under the summary
the 1.5 to 3.0 millimeter range advocated by Plaintiff's judgment standard to establish that there is no genuine
issue of material fact as to obviousness.
patent; 8 and whether the incision made by Dr. Singer
in his March 1990 surgery was capable of self-sealing. 9
Accordingly, Defendants are not entitled to summary
judgment under 35 U.S.C. § 102(g). Conclusion

In light of the foregoing, we hereby DENY Defendants'

Because we find that Defendants have failed to meet their
Motion for Summary Judgment of Patent Invalidity.
burden of demonstrating that no factual issues exist as
to whether Plaintiff's patent was previously made in this
SO ORDERED.
country by another, we need not address the issue of
abandonment, suppression or concealment.
All Citations

Not Reported in F.Supp., 1995 WL 608365, 36

III. Obviousness—35 U.S.C. § 103
U.S.P.Q.2d 1050
The determination of obviousness under § 103 is a
legal conclusion that rests on the factual determinations

Footnotes
1 Plaintiff alleges that Defendants' actions violate 35 U.S.C. § 271. Section 271 provides, in pertinent part:
(a) Except as otherwise provided in this title, whoever without authority makes, uses or sells any patented invention,
within the United States during the term of the patent therefor, infringes the patent.
(b) Whoever actively induces infringement of a patent shall be liable as an infringer.

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Pallin v. Singer, Not Reported in F.Supp. (1995)
36 U.S.P.Q.2d 1050

2 35 U.S.C. § 102 provides, in pertinent part:

A person shall be entitled to a patent unless—
(g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned,
suppressed, or concealed it.... In determining priority of invention there shall be considered not only the respective
dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first
to conceive and last to reduce to practice, from a time prior to conception by the other.
3 35 U.S.C. § 103 provides, in pertinent part:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section
102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains.
4 Defendants also argue that Dr. Steven Siepser and Dr. Paul Ernest developed sutureless cataract surgery prior to April
1990. Defendants do not contend, however, that the work of either Drs. Siepser or Ernest invalidates Plaintiff's patent.
5 The anterior chamber is defined by Defendants as “an internal fluid-filled cavity within the eye lying between the cornea,
the iris and the central portion of the lens not covered by the iris (i.e., the pupil).” See Defs.' Mem.Supp.Mot. for Summ.J.
of Invalidity, Glossary at vi.
6 Defendants contend that this photograph was later published on page 129 of Dr. Gills' book, Small–Incision Cataract
Surgery, which went to press in August 1990 and was distributed later that year. Plaintiff has properly pointed out,
however, that the photographs are not the same.
7 Singer documented this technique in a videotape entitled “Frown Incision” published in the Audiovisual Journal of Cataract
and Implant Surgery (See App. D to Defs.' Mot., Singer Dec., Ex. 4).
8 The Court acknowledges Defendants' argument that because Plaintiff's patent cites a range for the incision of 1.5 to
3.0 millimeters from the limbus, the “claim is anticipated by any prior use falling at a point within [this] range.” See
Defs.' Mem.Supp.Mot. for Summ.J. of Invalidity at 22–23 (citing Titanium Metals Corp. v. Burmer, 778 F.2d 775, 781
(Fed.Cir.1985) (alloy containing 0.25% by weight Mo and 0.75% Ni anticipates patent with claims within ranges of 0.2–
0.4% Mo and 0.6–0.9% Ni)). In light of Gills' deposition testimony that his measurements were “guesstimated,” however,
the Court finds that Defendants have not met their burden of establishing that Dr. Gills ever made an incision 3 millimeters
away from the limbus.
9 We caution the parties that these identified issues are not to be considered exhaustive.
10 In their Reply Brief, Defendants observe that in some cases, the Federal Circuit has not adhered to the John Deere
analysis for § 103 claims in instances where “the difference between what is claimed and what is old is trivial and
routine.” (See Defs.' Reply Brief at 14). This is hardly the situation before the Court.

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