In a dispute over eye surgery laser technology, AMO and Alcon have both obtained a mutual sales ban for their devices in Germany. But an EPO ruling has now paved the way for AMO to begin selling its accessories for the existing machines. The battle over these important patents, whose technology is used in cataract surgery, is far from over.
3 June 2022 by Konstanze Richter
The European Patent Office Boards of Appeal has destroyed Alcon’s patent EP 28 26 436, which protects a technology for the precise targeting of surgical photodisruption. The technology, in particular the requisite patient interface, is used in laser technology for ophthalmic surgery, including cataract removal. Now AMO can sell this technology to users of its existing eye laser devices in Germany.
Johnson & Johnson, which owns AMO, filed an opposition to the patent in late 2018. Initially, in spring 2021, the EPO’s Opposition Division upheld EP 436. But, in the second instance, the Boards of Appeal have decided otherwise, revoking the patent on the grounds of added matter.
In November 2021, in the EP 436 case, the Hamburg Regional Court also dismissed an infringement action against AMO. As such, since the EPO has destroyed the patent, Alcon’s appeal against the Higher Regional Court Hamburg ruling is now moot.
For years, Alcon and Johnson & Johnson have been locked in a patent dispute for the growing market of eye-laser technology in Germany, the UK and the US. Originally, the dispute involved eight patent families. Four belong to Johnson & Johnson’s subsidiary AMO (EP 1 835 861, EP 2 548 528, EP 2 772 234 B1 and EP 3 466 379 B1), while Alcon owns 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 at different courts, neither patent holder is currently allowed to sell new devices in Germany.
In autumn last year, Hamburg Regional Court found that AMO infringes Alcon’s EP 780. As a result, the court issued an injunction, meaning AMO could not sell its disputed products in Germany. The defendant appealed to the Higher Regional Court of Hamburg (case ID: 327 O 321/20 and 327 O 323/20). At the same time, a nullity action against the patent is pending at the Federal Patent Court (case ID: 6 NI 10/21).
In turn, a ruling from Mannheim Regional Court prohibits Alcon from marketing some of its products. In the dispute over AMO’s patent EP 861, the court granted the infringement suit in February. Alcon also appealed against the ruling at the Higher Regional Court Karlsruhe (case ID: 6 U 36/22).
From the respective judgments, both opponents enforced the sales ban for the other party. However, both sides refrained from enforcing the recalls of the competing products. Therefore, German clinics and doctors’ practices will continue to use the products.
In this context, the sale of accessories and software is significant. The current EPO ruling means that AMO may continue to sell corresponding products to the users of its devices in Germany.
This is not the first patent in the dispute that the EPO has revoked. In January 2022, the Boards of Appeal also revoked Alcon’s EP 25 79 827, thus confirming the first-instance decision of the Opposition Division. Subsequently, Alcon withdrew its parallel infringement action at Hamburg Regional Court.
Further proceedings are still pending. In Mannheim, AMO is suing over its patents EP 528, EP 234 and EP 379 (case IDs: 7 O 8/21, 7 O 10/22 and 7 O 9/22). Furthermore, a nullity action is pending at the Federal Patent Court (case ID: 6 NI 20/21) in parallel to the appeal proceedings in case EP 861.
In Hamburg, as well as the appeal in case EP 780, the infringement actions over Alcon’s patent EP 108 are still pending at first instance (case ID: 327 O 317/20 and 327 O 318/20). The nullity actions at the Federal Patent Court are also still pending (case ID: 6 NI 10/21 and 6 NI 11/21). The parties are also litigating some of the patents in the US and the UK.
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 it also upheld EP 005. As a result, AMO filed nullity actions against both patents in Germany.
The patents protect imaging methods related to eye-laser technology.
Both opponents have relied on their advisory teams from the start. Alcon retained a team from patent attorney firm Wuesthoff & Wuesthoff in opposition and infringement proceedings for some of the patents, while patent attorney Markus Breuer advised on others. Both stood alongside the litigator team, which was led by Vossius partner Kai Rüting in the German infringement proceedings.
Kirkland & Ellis is coordinating the cross-border proceedings in the US, UK and Germany.
For AMO, a team of patent attorneys from UK mixed IP firm Carpmaels & Ransford conducted the opposition proceedings at the EPO. Carpmaels lawyer Ian Kirby is responsible for the infringement proceedings in the UK. He cooperated closely with Rospatt partner Thomas Musmann, who took the lead in the German infringement proceedings. Hoffmann Eitle partner Markus Müller advised on technical issues.
Carpmaels & Ransford: Ian Kirby, John Brunner (patent attorney), Chris Tunstall (patent attorney) (all partners); associate: Ben Chapman (patent attorney)
Rospatt Osten Pross (Düsseldorf): Thomas Musmann, André Sabellek (partners)
Hoffmann Eitle (Munich): Markus Müller (partner, patent attorney)
Wuesthoff & Wuesthoff (Munich): Axel Katérle, Sebastian Mooser (patent attorneys)
Breuer Friedrich Hahner (Munich): Markus Breuer (patent attorney)
Vossius & Partner (Düsseldorf): Kai Rüting (partner); associates: Wolfgang von Meibom (of counsel), Philipp Widera, Frederic Mühlenbruch (both counsels); Florian Meier, Martina Brasse (both patent attorneys)
In-house (Geneva/Dallas): Christine Bohmann (global head IP), Brannon Latimer (IP head surgical)
European Patent Office, Technical Boards of Appeal, Munich
Marco Alvazzi Delfrate (chair); members: Axel Martinez Möller, Christof Schmidt