Alcon and AMO reach global settlement over cataract surgery equipment

To end their ongoing global proceedings, Alcon has reported making a one-time payment of $199 million to competitor AMO, which settles litigaton over medical devices for cataract surgery. According to an announcement by Alcon, “the parties have exchanged cross-licences of certain intellectual property and other mutually agreed covenants and releases… to resolve various worldwide intellectual property disputes.”

The exchange of cross-licences is as well as the already-agreed payment. The parties settled one day before the US jury trial was due to begin.

Alcon and AMO face-off

While UK proceedings settled in 2022, litigation was ongoing in Germany and the US. In the latter, the parties had faced each other at the District Court for the District of Delaware over multiple counts, including copyright infringement and patent infringement claims.

Since 2020, Alcon and Johnson & Johnson/AMO had been locked in a global dispute over eight patent families covering the growing market of eye laser technology. The latter company owned four patents (EP 18 35 861, EP 25 48 528, EP 27 72 234 B1, EP 34 66 379 B1), while Alcon owned a further four (EP 29 26 780, EP 22 40 108, EP 25 79 827, EP 28 26 436). All patents relate to laser technology for ophthalmic surgery which is used largely in the treatment of cataracts, with British doctors carrying out roughly 300,000 such operations annually. In the US, this number is as high as 2.5 million.

UK dispute closed

In July 2022, the parties resolved the UK part of the dispute, which concerned ophthalmic surgical systems. Alcon had sought revocation of AMO’s  EP 861 and later EP 528, alleging lack of inventive step and various insufficiency allegations. AMO counterclaimed for infringement for both patents. The High Court found both patents invalid, primarily for obviousness (case ID: HP-2020-000028).

AMO did not appeal against the nullity judgment concerning the two patents, and also consented to the revocation of its further two patents, EP 234 and EP 379. The company also agreed not to enforce any other patents of the so-called Culbertson patent family, which the latter two fall under, against Alcon’s LenSx laser in the UK. Meanwhile, the EPO destroyed two of Alcon’s four patents-in-suit, revoking EP 827 in January and EP 436 in May.

In the Netherlands, a parallel nullity suit by Alcon against two AMO patents came to nothing, as the patent owner waived the Dutch parts of its patents.

No appeals in Germany

In Germany, the parties also fought at various courts, including in Hamburg, Munich, Mannheim and Karlsruhe. Due to the parties’ varying successes at different courts, during the proceedings neither patent holder was able to sell new devices in Germany. However, prior to the settlement, some EPO decisions in AMO’s favour did permit the company to continue selling its existing devices to customers in the country.

The recent settlement, however, has quashed appeal proceedings over Alcon’s EP 780, as well as pending first-instance proceedings over EP 108. Most recently, Alcon had filed additional infringement claims against AMO in Munich involving Alcon’s patents EP 23 73 207 and EP 21 84 005. Now both companies can market and sell their new devices in Germany.

The High Court at the Royal Courts of Justice, London, where Alcon initially succeeded in invalidating two AMO patents. ©pxl.store/ADOBE STOCK

Network of litigators for Alcon

In the UK litigation, Kirkland & Ellis led by partners Nicola Dagg and Daniel Lim acted for Alcon, with the instruction coming through close contacts with in-house lawyers. These knew the Kirkland team from their time at Novartis, from which Alcon spun off in 2019. Kirkland has advised Novartis for years. It also coordinated the cross-border proceedings in the US and Germany.

In Germany, a mixed team of Vossius & Partner together with patent attorneys from Wuesthoff & Wuesthoff represented Alcon. This was the first time the team had acted for the Swiss-US company, with Kirkland bringing in the team around Kai Rüting and Wolfgang von Meibom. The US firm coordinated the cross-border proceedings and brought in Vossius & Partner in Germany, with which it has a long-standing partnership. For example, the two firms worked together for BAT against Philip Morris over patents for heat-not-burn e-cigarette technology.

For the Dutch nullity case, Kirkland called in Brinkhof, with partner Mark van Gardingen taking the lead. The Dutch law firm also has a close working relationship with Vossius, for example recently launching its joint UPC service, Vossius & Brinkhof UPC Litigators.

In the Hamburg infringement proceedings, Munich patent attorney Markus Breuer of Munich-based Breuer Friedrich Hahner advised on technical details. He is also active in the opposition against the AMO patents. However, for the EPO opposition case against its own patents, Alcon relies on a team from Wuesthoff & Wuesthoff. The firm took over the case in spring 2020 from Irish patent attorney firm, Hanna Moore & Curley.

AMO looks to boutiques

AMO, like parent company Johnson & Johnson, has long relied on mixed firm Carpmaels & Ransford in filing and prosecution, as well as in EPO oppositions. The firm is also increasingly active in infringement cases for Johnson & Johnson and its subsidiaries. However, this was the first time that AMO instructed Carpmaels in a litigation capacity, with partner Ian Kirby leading the charge.

In the opposition suit against EP 436, the Carpmaels team represented AMO’s US parent company Johnson & Johnson Surgical Vision. Carpmaels partner and patent attorney John Brunner was also involved.

Here, AMO also retained Rosspat Osten Pross for the first time. The firm has long-standing ties to the parent company. In addition, Düsseldorf partner Thomas Musmann cooperated in the infringement case with the patent attorneys at Hoffmann Eitle, specifically Markus Müller, in Germany. The mixed firm also represented Johnson & Johnson Surgical Vision in opposition proceedings against Alcon patent EP 827. Meanwhile, a Carpmaels & Ransford team advised a second opponent, AMO Ireland.

In the Dutch nullity proceedings, dual-qualified partner Simon Dack represented AMO for Hoyng ROKH Monegier. In the US, AMO relied on a team from Latham & Watkins. The team, led by Washington partner Michael Morin, also coordinated the transatlantic proceedings. IN doing so, they cooperated closely with Ian Kirby in the UK. He also works with Rosspat Osten Pross lawyers, as well as the patent attorneys at Hoffmann Eitle in Germany.