Neutral citation: 2001 FCA 215
BETWEEN:
VISX, INCORPORATED
Appellant
- and -
NIDEK CO., LTD., DR. H0WARD GIMBEL
and DR. DONALD JOHNSON
Respondents
Heard at Ottawa, Ontario on June 12, 13, 14, 2001
Judgment delivered at Ottawa, Ontario on June 28, 2001
REASONS FOR JUDGMENT BY: NOËL J.A.
CONCURRED IN BY: LINDEN J.A.
ISAAC J.A.
Date: 20010628
Docket: A-847-99
Neutral citation: 2001 FCA 215
CORAM: LINDEN J.A.
ISAAC J.A.
NOËL J.A.
BETWEEN:
VISX, INCORPORATED
Appellant
- and -
NIDEK CO., LTD., DR. H0WARD GIMBEL
and DR. DONALD JOHNSON
Respondents
[1] This is an appeal and a cross-appeal from the decision of Dubé J. by which he concluded that the appellant's claims in three Patents relating to an apparatus for performing ophtalmological surgery were valid but had not been infringed by any of the respondents. Canadian Letters Patent No 1,243,732 (the "Myopia Patent") and Canadian Letters Patent No 1,271,813 (the "Astigmatism Patent") describe and claim apparatus using a laser producing a pulsed laser beam, each pulse removing a small amount of tissue using controlled patterns of exposure to achieve the desired change in curvature of the cornea. Canadian Letters Patent No 1,254,658 (the "Topography-Display Patent") deals with the measurements and display of the surface area of the cornea and the linking of that information through a computer to an idealized corneal surface for controlling volumetric removal of corneal tissue.
[2] The main appeal, brought by the appellant Visx, deals with the trial judge's construction and application of the following four phrases set out in the claims in issue:
a) "anterior surface of the cornea" (all three patents in suit);
b) "means for shaping, focusing and directing the beam towards the cornea" (Myopia and Astigmatism Patents);
c) "topography-display unit with provision for storage of digital data and adapted to present from storage a comparative display of measured and desired ideal curvatures of the cornea" (Topography-Display Patent); and
d) "means connected to both said units for controlling stroma-penetrating volumetric removal of corneal tissue from the optically used central area in accordance with the difference between the said measured and desired ideal curvatures of the cornea" (Topography-Display Patent).
[3] The relevant facts as well as the background of the dispute between the parties are set out in detail in the trial judge's reasons, reported as VISX Inc. v. Nidek Co. (1999), 181 F.T.R. 22. Suffice it to say for present purposes that the apparatus manufactured by the respondent Nidek for performing ophtalmological surgery of the cornea (the "EC-5000") is at the centre of the allegation of infringement. It is sold in many countries including Canada for use in procedures known as photorefractive-keratectomy ("PKR") and laser in-stitu keratomileusis ("LASIK")
[4] The applicable legal principles are also set out by the trial judge in his reasons and I need not repeat them here. In the course of oral argument, counsel brought to our attention two recent decisions of the Supreme Court of Canada which contain a comprehensive review of the relevant law, Free World Trust v. Électro Santé Inc. et al., [2000] 2 S.C.R. 1024, 2000 SCC 66 and Camco Inc. et al. v. Whirlpool Corp et al., [2000] 2 S.C.R 1067, 2000 SCC 67. Although these decisions were not available to the trial judge at the time of his decision, both the appeal and the cross-appeal were argued on the basis that he properly instructed himself as to the law.
[5] The appellant first submitted that the trial judge erred in construing the words "anterior surface of the cornea" as being limited to the epithelium. In this respect, the appellant refers to paragraph 116 of the reasons of the trial judge where he states: "the anterior surface of the cornea, if properly construed, refers to the epithelium".
[6] It is unclear to me when regard is had to the reasons as a whole that the trial judge intended his conclusion to be construed as the appellant suggests. For instance, the trial judge refers at paragraph 38 of his reasons to the specifications of the Myopia Patent in which the inventor states that the ablative photodecomposition of the cornea applies to the "epithelium, Bowman's membrane and stroma levels of the cornea" and that the beam excises "at least the epithelium". In my view, a fair reading of the reasons indicates that the trial judge understood the phrase to mean at least the epithelium rather than only the epithelium as the appellant suggests.
[7] A purposive interpretation of the claim requires that the phrase "anterior surface of the cornea" be read as meaning the outer layers of the cornea up to a portion of the stroma, the foremost outer layer being the epithelium. To construe the phrase "anterior surface of the cornea" as being limited to the epithelium would be inconsistent with the wording of the claim as a whole which refers to an operation on the outer layers of the cornea up to the stroma in order to achieve an anterior-curvature change in the cornea. The claim contemplates that the laser penetrate beyond the epithelium, to a predetermined maximum depth into the stroma with the result that it uncovers surfaces of the cornea beyond the epithelium as the operation progresses. It is therefore difficult to see why the inventor would have used the phrase "anterior surface of the cornea" to refer only to the first anterior surface encountered by the laser.
[8] The appellant contends that the phrase "anterior surface of the cornea" refers to whatever surface is exposed to the laser at any given time without necessarily beginning with the epithelium. This construction is not consistent with the wording of the claim as a whole because the claim contemplates the gradual ablation of the corneal tissue towards a point being a predetermined maximum penetration into the stroma. The anatomy of the eye is such that the progressive ablation of the corneal tissue towards the stroma would normally begin with the epithelium and nothing in the language of the claim suggests that the inventor envisaged that the controlled ablative photodecomposition of the cornea would begin anywhere other than at the surface of the epithelium.
[9] This issue was central to the appellant's case because it had been demonstrated that the PKR and LASIK procedures associated with the EC-5000 require that manual means be taken by the physician to either remove or fold over the epithelium prior to the application of the laser onto the patient's eye. These procedures involve the application of the laser directly onto the exposed Bowmans's membrane or the stroma rather than onto the epithelium.
[10] In order to prove its case, the appellant had to demonstrate that the EC-5000 was nevertheless capable of ablating the anterior surface of the cornea which includes the epithelium. In this respect, there was evidence before the trial judge that the EC-5000 could be used to ablate the epithelium, although this evidence also suggests that this could not be done with precision. The appellant also relied on portions of the discovery evidence of the respondent Dr Johnson read in at trial who indicated that with the help of a software supplied by Nidek, he routinely used the EC-5000 to ablate the epithelium, Bowman's membrane and a section of the stroma as part of his "No Touch" technique. Given this Court's construction of the phrase "anterior surface of the cornea", Dr. Johnson's evidence leads to the inevitable conclusion that the EC-5000 can perform one of the functions protected by claim 1 of the Myopia and Astigmatism Patents.
[11] Turning to the second phrase, the appellant argued that the trial judge correctly construed the words "means for shaping, focusing and directing the beam towards the cornea" but erred in failing to apply this construction to the infringement issue. I do not agree. It is clear from the trial judge's reason's at paragraph 118 that in his view, the phrase should be read as meaning "the narrowing and concentrating the entirety of an originally rectangular beam to its smallest practical spot on the cornea". The earlier statement made with respect to the reliability of Dr. Eden's testimony must be read in light of the unequivocal conclusion which the trial judge reached on this point.
[12] Further, I am not persuaded that the trial judge erred in concluding that the phrase should be read as meaning the shaping, focusing and directing of the entirety of the originally rectangular laser beam. The trial judge found that in the EC-5000 apparatus the entirety of the laser beam was not concentrated onto the cornea, but rather that portions of that beam were allowed to go through variable slits of an iris diaphragm. There was evidence on which the trial judge could conclude that the EC-5000 did not have the claimed feature and therefore did not operate in breach of the claim.
[13] In my view therefore, the trial judge properly concluded that the Myopia and Astigmatism Patents had not been infringed by the respondents. A finding of infringement cannot rest solely on the capacity of the EC-5000 to ablate "the anterior surface of the cornea" since the other essential element of the claim in the Myopia and Astigmatism Patents, ("means for shaping, focusing and directing the beam towards the cornea") was not shown to have been breached.
[14] Finally, with respect to the Topography-Display Patent, the trial judge found that the expression "Topography-Display" meant the measurement, input and display of the surface area of the cornea measured over thousands of locations, based on the definition of the words "corneal topography". The trial judge also found that the EC-5000 did not have the claimed feature since it relied on a "K reading" by which four measured spots of the cornea were averaged to produce an idealized surface of the cornea. The appellant argued before us that the trial judge erred in his construction because the claim did not require the measurement of a thousand spots, but merely a comparative measure of the curvature of the cornea. I find this argument untenable in light of the consistent use by the inventor of the words "topography-display" within the Patent itself. Given this conclusion, there is no need to opine on the trial judge's construction of the fourth and last phrase.
[15] As to the cross-appeal, I am satisfied that the trial judge properly concluded that the patents in issue are valid.
[16] I would dismiss the appeal and the cross-appeal with costs.
"Marc Noël"
J.A.
"I agree.
A.M. Linden"
"I agree.
Julius A. Isaac"