Femto Sec Tech Inc v. Alcon Lensx Inc

NOTICE OF MOTION AND MOTION for Summary Judgment as to Infringement Invalidity Fraud Intentional Interference With Contract UCL and Recision

C.D. Cal.May 22, 2017

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Alcon LenSx’s Notice of Motion for Partial SJCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699636 ERIC M. ACKER (CA SBN 135805) EAcker@mofo.com JOHN R. LANHAM (CA SBN 289382) JLanham@mofo.com MORRISON & FOERSTER LLP 12531 High Bluff Drive San Diego, California 92130-2040 Telephone: 858.720.5100 Facsimile: 858.720.5125 MARY PRENDERGAST (CA SBN 272737) MPrendergast@mofo.com MORRISON & FOERSTER LLP 2000 Pennsylvania Avenue, Suite 600 Washington, DC 20006 Telephone: 202.887.1500 Facsimile: 202.887.0763 Attorneys for Defendant and Counterclaimant ALCON LENSX, INC. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA JOSEPH NEEV, an individual Plaintiff, v. ALCON LENSX, INC., a Delaware corporation. Defendant. Case No. 8:15-cv-01538-JVS-JCGx (Consolidated for all purposes this action with No. 8:15-cv-00624-JVS- JCGx) ALCON LENSX, INC.’S NOTICE OF MOTION FOR PARTIAL SUMMARY JUDGMENT Date: June 19, 2017 Time: 1:30 p.m. Judge: Hon. James V. Selna Ctrm: 10C AND RELATED COUNTERCLAIMS FEMTO-SEC TECH, INC., a California corporation, Plaintiff, v. ALCON LENSX, INC., a Delaware corporation, Defendant. AND RELATED COUNTERCLAIMS Case 8:15-cv-00624-JVS-JCG Document 159 Filed 05/22/17 Page 1 of 3 Page ID #:5603 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 1 Alcon LenSx’s Notice of Motion for Partial SJCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699636 TO ALL PARTIES AND THEIR COUNSEL OF RECORD: PLEASE TAKE NOTICE that on June 19, 2017, at 1:30 p.m., or as soon thereafter as this matter may be heard by the Hon. James V. Selna in Courtroom 10C, located at 411 West Fourth Street, Santa Ana, California, Defendant Alcon LenSx, Inc. will and hereby does move pursuant to Federal Rule of Civil Procedure 56 for an Order granting partial Summary Judgment in favor of Alcon LenSx, Inc. as to: Plaintiff Lawrence Livermore National Security, LLC’s claims for: (1) infringement of U.S. Patent No. 5,720,894 (the “’894 patent”) by the LenSx Laser system; (2) fraud; and (3) intentional interference with contractual relations; Plaintiff Femto-Sec Tech, Inc.’s claims for: (1) infringement of the ’894 patent by the LenSx Laser system; (2) violation of California Business and Professions Code section 17200; and (3) rescission; and Plaintiff Joseph Neev’s claim for infringement of U.S. Patent No. 8,523,926 (the “’926 patent”) by the LenSx Laser system. LenSx also moves the Court for summary judgment that the asserted claims of the ’926 patent are invalid as anticipated by prior art. This Motion is based on this Notice of Motion and Motion for Partial Summary Judgment, the concurrently filed Memorandum of Points and Authorities, the concurrently filed Separate Statement of Uncontroverted Facts and Conclusions of Law and the evidence cited therein, the concurrently filed Proposed Order, the concurrently filed declarations of Eric M. Acker, Dr. Robin Marjoribanks, Dr. Theodore B. Norris (and demonstratives lodged with the Court referenced therein), and Dr. Karl Stonecipher, the pleadings and records on file in this action, and such additional argument and evidence that may be introduced prior to or in connection with the hearing on this motion. This Motion is made following the conference of counsel pursuant to Local Case 8:15-cv-00624-JVS-JCG Document 159 Filed 05/22/17 Page 2 of 3 Page ID #:5604 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2 Alcon LenSx’s Notice of Motion for Partial SJCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699636 Rule 7-3, which took place over the period of May 11, 2017 to May 14, 2017. Plaintiffs oppose the relief sought herein. Dated: May 22, 2017 MORRISON & FOERSTER LLP By: /s/ Eric M. Acker ERIC M. ACKER Attorneys for Defendant and Counterclaimant ALCON LENSX, INC. Case 8:15-cv-00624-JVS-JCG Document 159 Filed 05/22/17 Page 3 of 3 Page ID #:5605 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ERIC M. ACKER (CA SBN 135805) EAcker@mofo.com JOHN R. LANHAM (CA SBN 289382) JLanham@mofo.com MORRISON & FOERSTER LLP 12531 High Bluff Drive San Diego, California 92130-2040 Telephone: 858.720.5100 Facsimile: 858.720.5125 MARY PRENDERGAST (CA SBN 272737) MPrendergast@mofo.com MORRISON & FOERSTER LLP 2000 Pennsylvania Avenue, Suite 600 Washington, DC 20006 Telephone: 202.887.1500 Facsimile: 202.887.0763 Attorneys for Defendant and Counterclaimant ALCON LENSX, INC. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA JOSEPH NEEV, an individual Plaintiff, v. ALCON LENSX, INC., a Delaware corporation. Defendant. Case No. 8:15-cv-01538-JVS-JCGx (Consolidated for all purposes this action with No. 8:15-cv-00624-JVS- JCGx) MEMORANDUM OF POINT AND AUTHORITIES IN SUPPORT OF ALCON LENSX, INC.’S MOTION FOR SUMMARY JUDGMENT Date: June 19, 2017 Time: 1:30 p.m. Judge: Hon. James V. Selna Ctrm: 10C UNREDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL AND RELATED COUNTERCLAIMS FEMTO-SEC TECH, INC., a California corporation, Plaintiff, v. ALCON LENSX, INC., a Delaware corporation, Defendant. AND RELATED COUNTERCLAIMS Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 1 of 29 Page ID #:5606 TABLE OF CONTENTS Page i Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I. INTRODUCTION ........................................................................................... 1 II. LEGAL STANDARD ..................................................................................... 2 III. STATEMENT OF FACTS .............................................................................. 2 A. Relevant Principles of Laser-Material Interaction ................................ 2 B. The History of LenSx ............................................................................ 3 C. The LenSx Laser System ...................................................................... 4 D. Patents at Issue ...................................................................................... 6 IV. ARGUMENT .................................................................................................. 7 A. The LenSx Laser Does Not Infringe the Asserted Claims of the ’894 Patent ............................................................................................ 7 1. The LenSx Laser Does Not Direct its Beam “Onto the Surface” ...................................................................................... 8 2. The LenSx Laser Does Not Interact With a “Thin Layer Portion” ..................................................................................... 11 3. The LenSx Laser Does Not Practice the “Removed” Limitation ................................................................................. 12 4. The LenSx Laser Does Not Cause “Substantially No Collateral Damage” .................................................................. 13 B. There is No Evidence that the LenSx Laser Practices the “Without Any Thermal Damage” Limitation of All Asserted ’926 Patent Claims .............................................................................. 14 C. The Asserted Claims of the ’926 Patent Are Invalid as Anticipated by the ’199 Patent ............................................................ 15 1. The ’199 Patent Anticipates the Asserted Independent Claims of the ’926 Patent ......................................................... 16 2. The ’199 Patent Anticipates the Asserted Dependent Claims of the ’926 Patent ......................................................... 19 D. LenSx Is Entitled to Summary Judgment on Non-Patent Claims Asserted by Plaintiffs .......................................................................... 19 1. LLNS Fails to Establish Required Elements of Fraud ............. 19 2. LLNS Fails to Establish Required Elements of Intentional Interference with Contractual Relations ................................... 21 3. Femto Has No Evidence to Show Any Unlawful, Unfair, or Fraudulent Business Practices by LenSx to Support its UCL Claim ................................................................................ 22 4. Femto Has Failed to Establish Any Grounds for Rescission ................................................................................. 24 V. CONCLUSION ............................................................................................. 25 Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 2 of 29 Page ID #:5607 ii Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF AUTHORITIES Page(s) Cases Albillo v. Intermodal Container Services, Inc., 114 Cal. App. 4th 190 (2003) .............................................................................. 23 Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003) ........................................................................... 16 Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) .............................................................................................. 2 Apple Computer, Inc. v. Articulate Sys., Inc., 234 F.3d 14 (Fed. Cir. 2000) ................................................................................. 2 Berger v. Rossignol Ski Co., Inc., No. C 05-02523 CRB, 2006 WL 1095914 (N.D. Cal. Apr. 25, 2006), aff’d, 214 F. App’x 981 (Fed. Cir. 2007) ................................................... 8 Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002) ............................................................................... 8 Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354 (Fed. Cir. 1998) ........................................................................... 16 Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361 (Fed. Cir. 2004) ............................................................................. 8 Creager v. Yoshimoto, No. C05-01985JSW, 2007 WL 2938168 (N.D. Cal. Oct. 9, 2007) .................... 24 Display Technologies, Inc. v. Paul Flum Ideas, Inc., 282 F.3d 1340 (Fed. Cir. 2002) ........................................................................... 15 Engalla v. Permanente Medical Group, Inc., 15 Cal. 4th 951 (1997) ......................................................................................... 20 Hsu v. Thorsen Tool Co., 2014 U.S. Dist. LEXIS 195156 (C.D. Cal. Nov. 10, 2014) ................................ 21 Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 3 of 29 Page ID #:5608 iii Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Lippitt v. Raymond James Fin. Servs., 340 F.3d 1033 (9th Cir.2004) .............................................................................. 22 Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572 (Fed. Cir. 1996) ............................................................................. 16 Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206 (Fed. Cir. 1998) ........................................................................... 10 Neilson v. Union Bank of California, N.A., 290 F. Supp. 2d 1101 (C.D. Cal. 2003) ............................................................... 20 O2 Micro Int’l, Ltd. v. Monolithic Power Sys., 467 F.3d 1355 (Fed. Cir. 2006) ............................................................................. 8 Quelimane Co. v. Stewart Title Guar. Co., 19 Cal.4th 26 (1998) ............................................................................................ 22 SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878 (Fed. Cir. 1998) ............................................................................... 2 TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360 (Fed. Cir. 2002) ............................................................................. 8 Vinotemp Int’l Corp. v. Wine, 2013 U.S. Dist. LEXIS 142100 (C.D. Cal. Feb. 5, 2013) ................................... 21 Statutes 35 U.S.C. §257(c)(2)(A) ........................................................................................... 15 Cal. Civ. Code § 1688. .............................................................................................. 24 Cal. Civ. Code § 1689(b) .......................................................................................... 25 Other Authorities Fed. R. Civ. P. 26(a)(1)(A)(iii) ................................................................................. 21 Fed. R. Civ. P. 56(a) ................................................................................................... 2 Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 4 of 29 Page ID #:5609 1 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I. INTRODUCTION In 2010, LenSx Lasers, Inc. (now Alcon LenSx, Inc. or “LenSx”) entered into license agreements with Dr. Joseph Neev (“Neev”) and his company, Femto- Sec Tech, Inc. (“Femto”), for rights to U.S. Patent No. 6,482,199 (the “’199 patent”) and U.S. Patent No. 5,720,894 (the “’894 patent”). LenSx licensed the ’199 patent from Neev and sublicensed the ’894 patent from Femto, which had licensed the ’894 patent from Lawrence Livermore National Security, LLC (“LLNS”). LenSx took licenses to the ’199 and ’894 patents to develop a future glaucoma application for its LenSx Laser and to build a defensive portfolio for potential use against third-parties. LenSx never believed that its current laser system infringed either patent. In an arbitration conducted in 2013 (and later confirmed by the Federal Circuit), Neev lost his claims relating to the alleged infringement of the ’199 patent and breach of contract. Undeterred, Neev sued LenSx again—this time alleging infringement of the ’894 patent and a third patent, U.S. Patent No. 8,523,926 (the “’926 patent”). Plaintiffs allege that LenSx infringes the ’894 patent—an invalid and expired patent—which claims a process of modifying the surface of a tissue using femtosecond lasers. But while the LenSx Laser does utilize an ultrashort pulse laser, it operates in a fundamentally different manner—capitalizing on collateral damage—to achieve efficient subsurface tissue modification. Neev’s own experts acknowledge that the ’894 patent covers only surface modification, and not subsurface modification. The Court can dispose of all of the ’894 infringement claims by applying any one of four, already construed, claim elements related to subsurface modification. While Neev was losing his fight regarding the ’199 patent, he sought new claims for a similar femtosecond-based invention, resulting in the’926 patent. But Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 5 of 29 Page ID #:5610 2 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Neev never disclosed the ’199 patent to the USPTO during the prosecution of the ’926 patent. After being accused of inequitable conduct in the present case for that failure, Neev filed for a supplemental reexamination of the patent believing— incorrectly—that he could inoculate it from these charges. But rather than confirming the patentability of the patent, the USPTO issued an office action rejecting every claim of the ’926 patent over the ’199 patent. Moreover, not only is the ’926 patent invalid, LenSx does not practice the ‘926 patent’s claims. II. LEGAL STANDARD Summary judgment is proper if the evidence before the court “shows that there is no genuine dispute as to any material fact and that the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). A dispute is genuine only if a reasonable jury could return a verdict for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). “The question here is whether a jury could reasonably find either that the plaintiff proved his case by the quality or quantity of evidence required by the governing law or whether he did not.” Id. at 254-55. A patent plaintiff bears the burden of proving infringement by a preponderance of the evidence. SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 889 (Fed. Cir. 1998). A patent defendant bears the burden of proving invalidity by clear and convincing evidence. Apple Computer, Inc. v. Articulate Sys., Inc., 234 F.3d 14, 26 (Fed. Cir. 2000). III. STATEMENT OF FACTS A. Relevant Principles of Laser-Material Interaction This case involves two fundamentally different types of laser-material modification: surface material modification and subsurface material modification. In surface modification, a laser pulse is directed onto the surface of a material to create a thin layer of plasma, which decays into a vapor and is ejected away from the material in a vapor plume. (Statement of Uncontroverted Facts (“SUF”) ¶ 1.) Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 6 of 29 Page ID #:5611 3 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 When the plasma reaches a certain density, it prevents additional energy from the pulse entering the bulk material by a process called “plasma shielding.” (SUF ¶ 2.) The remaining energy of the laser pulse is ejected from the material along with the vapor plume, and therefore not transferred to the bulk of the material. (SUF ¶ 3.) This process is called plasma-mediated ablation, or sometimes photoablation, and is the process described by the ’894 patent. (SUF ¶ 4.) In subsurface interaction, the laser pulse is directed to a focal point below the surface of material. (SUF ¶ 5.) No plasma is generated at the surface of the material because the laser beam is not focused on the surface. (SUF ¶ 6.) But when the laser pulse reaches the target spot below the surface of the material, it reaches threshold intensity and forms a pear-shaped bubble of plasma. (SUF ¶ 7.) This plasma expands into an ionized cavitation bubble that is driven rapidly into the surrounding material by the internal pressure of its hot, ionized gas content. (SUF ¶ 8.) Because the energy of the laser pulse is below the surface of the material, it cannot be ejected away and must go into the surrounding material. (SUF ¶ 9.) This process is called photodisruption and is the process employed by the LenSx Laser. (SUF ¶ 10.) Demonstratives contrasting surface plasma-mediated ablation and subsurface photodisruption are provided in the declaration of Dr. Theodore B. Norris,1 filed herewith. B. The History of LenSx In the early 1990s, Dr. Ronald Kurtz was an ophthalmology resident on call at the University of Michigan hospital when he was called to the emergency room to treat a graduate student who had suffered an eye injury from a misdirected beam pulse from a picosecond laser. (SUF ¶ 11.) Intrigued by how the laser pulse had caused a “very focal injury” to the eye, Dr. Kurtz followed the graduate student to the research lab where the injury occurred to learn more about this work. (SUF 1 Dr. Theodore B. Norris is LenSx’s expert witness on non-infringement. Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 7 of 29 Page ID #:5612 4 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ¶ 12.) Dr. Kurtz ended up working with the same ultrashort pulse laser research group at the University of Michigan, headed by Dr. Gerard Mourou. (SUF ¶ 13.) The work by this team would lead to foundational discoveries in laser-material interaction, including Mourou’s U.S. Patent No. 5,656,186. (SUF ¶ 14.) Along with a partner from the University of Michigan group, Dr. Kurtz founded IntraLase, one of the first companies to use ultrashort pulse lasers for flap cutting in LASIK surgery, in the mid-1990s. (SUF ¶ 15.) Abbott Medical Optics subsequently acquired IntraLase. (SUF ¶ 16.) Dr. Kurtz next co-founded LenSx to develop new ophthalmic applications for femtosecond lasers. As LenSx grew, Dr. Kurtz worked to obtain a license to the ’894 and ’199 patents. (SUF ¶ 17.) LenSx wanted these licenses for “offensive and defensive positions” and also, specifically with respect to the ’894 patent, for a potential future glaucoma application. (SUF ¶ 18.) At no point did LenSx think it needed to license these patents for its existing product. (SUF ¶ 19.) Alcon Laboratories, Inc., a global eyecare company, ultimately acquired LenSx in 2010 and formed Alcon LenSx, Inc. (SUF ¶ 20.) C. The LenSx Laser System The LenSx Laser is a femtosecond laser device used in cataract surgery and corneal flap creation. (SUF ¶ 21.) “Femtosecond” is a unit of time, which refers to the duration of each laser pulse created by the LenSx Laser. (SUF ¶ 22.) A single femtosecond is one quadrillionth of a second. (SUF ¶ 23.) The primary use of the LenSx Laser is cataract surgery, though the device was also recently approved for LASIK flap creation. (SUF ¶ 24.) All procedures performed by the LenSx Laser operate through the subsurface photodisruptive process described above. (SUF ¶ 25.) Each beam pulse of the LenSx Laser forms a very small (a few microns) bubble of plasma in the lens or corneal tissue, which rapidly and violently expands to a “cavitation bubble” comprised of gas and other materials, which is many times the size of the plasma Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 8 of 29 Page ID #:5613 5 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 spot. (SUF ¶ 26.) The cavitation bubbles expand in this fashion because the laser energy is trapped below the surface of the eye. (SUF ¶ 27.) These cavitation bubbles separate the tissue of the eye, called lamellae. (SUF ¶ 28.) The LenSx Laser works by rapidly laying down a non-overlapping series of thousands of such beam pulses, which cleaves the corneal tissue to create incisions. (SUF ¶ 29.) A cataract is clouding of the lens of the eye that results in impaired vision. (SUF ¶ 30.) The LenSx Laser can be used in the early steps of cataract surgery to fragment the cataract and create incisions in the eye that allow a surgeon to later remove the lens through suction or aspiration. (SUF ¶ 31.) The first step is a capsulotomy procedure—the creation of a cylindrical cut in the lens capsule, beginning below the top of the capsule and moving in an upward fashion. (SUF ¶ 32.) All of this cutting occurs in the interior of the eye. (SUF ¶ 33.) The capsule is cut during this portion of the procedure, but remains within the eye. (SUF ¶ 34.) Next, the LenSx Laser performs a “lens fragmentation” to break up the cataract by making a series of cuts in the lens which, again, all occur within the interior of the lens inside the eye. (SUF ¶ 35.) The LenSx Laser then creates “primary” and “secondary” incisions, which start inside the cornea and move anteriorly (toward the front of the eye). (SUF ¶ 36.) The LenSx Laser is also now approved to create LASIK flaps. In a LASIK flap procedure, the LenSx Laser is used to make two incision in the eye such that the top portion of the cornea can be folded back to expose the inside of the eye. (SUF ¶ 37.) The first cut is a planar (or bed) cut inside the cornea to form the bottom of the flap, and the second is a side cut which cuts from the interior planar cut up to the surface of the cornea.2 (SUF ¶ 38.) To complete the side cut, a cavitation bubble expands from below the surface to break the surface of the 2 Unlike the FS200 laser discussed in briefing filed by Alcon Laboratories, the LenSx Laser does not create a “tunnel” cut. (SUF ¶ 39.) Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 9 of 29 Page ID #:5614 6 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 cornea. (SUF ¶ 40.) The surgeon uses a flap manipulator tool to manually lift the flap to expose the inside of the eye. (SUF ¶ 41.) The inside of the eye is then ablated in another stage of the procedure using an excimer laser (a device not at issue in this case) to reshape the eye and correct the patient’s vision. (SUF ¶ 42.) Regardless of whether the cuts are made for cataract procedures or LASIK, all cuts made with the LenSx Laser are subsurface. (SUF ¶ 43.) Dr. Mikhail Ovchinnikov,3 a technical expert on the LenSx Laser, testified that all cuts performed by the LenSx Laser start inside the eye. (SUF ¶ 44.) Dr. Robert Kershner,4 LLNS’s expert, testified about every cut the LenSx Laser is designed to perform and confirmed that each cut is made under the surface of the cornea. (SUF ¶ 45.) Dr. Terry Fuller5 testified that each and every LenSx Laser cut is a subsurface cut. (SUF ¶ 46.) Dr. Israel Gannot,6 Neev’s lead infringement expert, testified that the beam of the LenSx Laser is directed to a specific location in the XYZ volume of the cornea. (SUF ¶ 47.) While some cuts performed by the LenSx Laser follow beam paths that traverse the top surface of the cornea, the LenSx Laser never fires a beam pulse onto the surface of the eye itself. (SUF ¶ 48.) To the contrary, the photodisruptive process employed by the LenSx Laser depends on the formation of subsurface plasma which expands into cavitation bubbles to cleave tissue (whether within the eye or to break through the surface of the cornea from below). (SUF ¶ 49.) D. Patents at Issue The ’894 Patent was filed on January 11, 1996 stemming from collaboration between Neev and a number of LLNS scientists. (SUF ¶ 50.) The ’894 patent 3 Dr. Mikhail Ovchinnikov is LenSx’s fact witness on the technical aspects of the LenSx Laser. 4 Dr. Robert Kershner is one of LLNS’s expert witnesses on infringement. 5 Dr. Terry Fuller is LLNS’s expert witness on infringement and invalidity. 6 Dr. Israel Gannot is Neev’s expert witness on infringement and invalidity. Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 10 of 29 Page ID #:5615 7 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 describes using ultrashort pulse lasers on various materials for the purpose of studying damage thresholds on the surface of these materials. (See, e.g., SUF ¶ 51.) Piggybacking off of research done with LLNS, Neev, on his own, filed the provisional patent application that led to the ’199 patent on June 4, 1997. Like the ’894 patent, the ’199 patent covers material modification using ultrashort pulsed lasers with “minimal collateral damage,” but unlike the ’894 patent, it is not limited to surface interactions. (Acker Decl. Ex. 4 [’199 patent], Abstract.) The ’199 patent describes subsurface tissue modification, including using a scanner to create a plurality of cavitation bubbles below the surface of material. (See SUF ¶¶ 52-53.) More than ten years after the ’199 and ’894 patents were filed, Neev filed the provisional application that led to the ’926 patent on October 8, 2007. (SUF ¶ 54.) Like Neev’s earlier patents, the ’926 patent describes laser-material interaction using ultrashort pulses while “minimizing collateral damage.” (See SUF ¶ 55.) After a claim of inequitable conduct was filed in this case, Neev filed a supplemental examination of the ’926 patent seeking to confirm its patentability over the prior art, including the ’199 and ’894 patents. (SUF ¶ 56.) Finding the ’199 patent to raise a substantial new question of patentability, the USPTO ordered reexamination of the ’926 patent. (SUF ¶ 57.) The USPTO subsequently issued an office action in November 2016 rejecting all claims of the ’926 patent in view of the ’199 Patent. (SUF ¶ 58.) The ex parte reexamination is currently pending. IV. ARGUMENT A. The LenSx Laser Does Not Infringe the Asserted Claims of the ’894 Patent7 To establish infringement, Plaintiffs must now show “that the accused device meets each claim limitation either literally or under the doctrine of equivalents.” 7 LenSx joins in argument by related parties Alcon Laboratories, Inc. and WaveLight GmbH, filed herewith, that the ’894 patent is invalid. Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 11 of 29 Page ID #:5616 8 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 812 (Fed. Cir. 2002). For purposes of the present motion, summary judgment is appropriate where plaintiffs’ proof is lacking for just one limitation of each claim. See TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002); Berger v. Rossignol Ski Co., Inc., No. C 05-02523 CRB, 2006 WL 1095914, at *6 (N.D. Cal. Apr. 25, 2006), aff’d, 214 F. App’x 981 (Fed. Cir. 2007). LenSx is entitled to summary judgment on non-infringement because the LenSx Laser does not practice at least four limitations required by the asserted claims of the ’894 patent: (1) onto the surface; (2) thin layer portion; (3) removed; and (4) collateral damage. Further, Femto has failed to provide any expert testimony opining on infringement and therefore Femto’s infringement claim as to the ’894 patent fails as a matter of law.8 1. The LenSx Laser Does Not Direct its Beam “Onto the Surface” All of the asserted claims of the ’894 patent require the limitation of “directing said pulsed output beam onto a target material from which removal is desired.” (Acker Decl. Ex. 3 [’894 patent] at 16:42-43.) The Court construed “onto” to mean “onto the surface of,” therefore the limitation has been construed as: “directing said pulsed output beam [onto the surface of] a target material from which removal is desired.” (-1538 Case, D.I. 59 at 17.) Both Alcon’s and Neev’s invalidity/infringement experts agree that tissue has a surface. Neev’s expert explained this tissue surface “is the area where it is [sic] the boundary with air, let’s say, above the tissue.” (SUF ¶ 59.) The LenSx Laser operates entirely through disruption of corneal tissue below the surface of the eye. 8 Femto asserted claims 11-16 of the ’894 patent, but has provided no expert testimony on the ’894 patent and LLNS’s experts do not opine on claims 13-16. Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir. 2004) (requiring expert testimony in actions involving “complex technologies”); see O2 Micro Int’l, Ltd. v. Monolithic Power Sys., 467 F.3d 1355, 1369 (Fed. Cir. 2006). Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 12 of 29 Page ID #:5617 9 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 (SUF ¶ 60.) Dr. Karl Stonecipher9 explained that the beam is directed below the surface of the eye: “Q. At various points in the deposition, you have used the phrase ‘focusing’ as well as the phrase ‘directing,’ correct? . . . THE WITNESS: I think that I have used those terms but I’ve used them in a variety of ways today, but yes, the beam is focused subsurface.” (SUF ¶ 61.) Dr. Ovchinnikov, a technical expert on the LenSx Laser, testified repeatedly that the laser beam is always directed into the bulk of the tissue of the eye. (SUF ¶ 62.) Even Neev’s expert agrees that the LenSx Laser directs its beam below the surface of the eye: “A. You would like to interact within this tissue, so you direct the beam into that specific location. . . . Q. And it has an XYZ coordinate; correct? A. Yeah, it’s three-dimensional, because it’s three dimensional organ.” (SUF ¶ 63.) LLNS’s experts, Dr. Fuller and Dr. Kershner, have likewise testified that all cuts performed by the LenSx Laser begin below the surface of the cornea. (SUF ¶ 64.) This subsurface interaction of the beam pulse allows the formation of cavitation bubbles (discussed above) that cleave tissue within the eye and create the incisions required by the LenSx Laser procedures. (SUF ¶¶ 65-66.) Even for incisions that transect the surface of the eye, the beam itself is never directed onto the surface of the eye—rather, a subsurface cavitation bubble expands to break the plane of the cornea from below. (SUF ¶ 67.) All vertical cuts performed by the LenSx Laser begin inside the eye and move up toward the surface of the cornea, contrary to how the Court has interpreted the ’894 patent to teach plasma formation at the surface moving deeper. (SUF ¶ 68.) LLNS principally has argued that “directing said pulsed output beam [onto the surface of] a target material” (emphasis added) encompasses merely “pointing” the laser beam at the eye, even if the actual laser-tissue interaction takes place 9 Dr. Karl Stonecipher is a laser eye surgeon and an expert witness for LenSx on the technical aspects of the LenSx Laser. Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 13 of 29 Page ID #:5618 10 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 subsurface. (Acker Decl. Ex. 10 [Fuller Dep. Tr.] 333:18-334:5 (pointing or aiming laser beam at the eye meets this limitation); 334:7-12 (plasma can be formed anywhere in the eye and the limitation is satisfied); 335:12-21; Acker Decl. Ex. 8 [Kershner Dep. Tr.] 142:1-142:15 (same).) LLNS further argues that it is irrelevant where in the eye plasma is formed—simply “pointing” the laser at the eye is enough. (See id. at 334:7-12, 335:12-21.) But LLNS’s overbroad interpretation would read “[onto the surface of] a target material from which removal is desired”—a limitation construed by the Court—out of the claim entirely. In its Claim Construction Order, the Court stated that “the specification repeatedly suggests that material removal occurs at the target’s surface,” “plasma formation occurs on the surface,” and “plasma formation begins at the surface and moves incrementally deeper.” (-1538 Case, D.I. 59 at 16.) It is clear that the LenSx Laser does nothing of the sort. By trying to broaden this claim to capture subsurface interaction, LLNS removes all meaning from this limitation. Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206, 1211 (Fed. Cir. 1998) (“[T]he patentee must show that the accused device contains every limitation in the asserted claims.”). LLNS’s reading is also contradicted by the fact that nearly every expert in this case agrees that the ’894 patent is exclusively about surface-level interaction. (See SUF ¶ 69.) The Court relied on Dr. Warren Grundfest’s10 and Dr. Robin Marjoribanks’s11 opinions on this issue in ruling that “onto” means “onto the surface.” (-1538 Case, D.I. 59 at 17.) Because the interaction caused by the LenSx Laser is subsurface, it does not satisfy the “onto the surface” limitation of the ’894 patent, which appears in all independent asserted claims (and is therefore a requirement of all asserted claims). 10 Dr. Warren Grundfest was Neev’s expert on claim construction. 11 Dr. Robin Marjoribanks is LenSx’s expert witness on invalidity and was LenSx’s expert on claim construction. Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 14 of 29 Page ID #:5619 11 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2. The LenSx Laser Does Not Interact With a “Thin Layer Portion” All of the asserted claims have been construed by the Court to require the limitation: “wherein each pulse interacts with a [shallow layer portion] of said material so as to form a plasma.” (-1538 Case, D.I. 59 at 20.) The Court expressed its preference for the term “shallow” “because it more clearly indicates that the focus is on the depth of the material removed in comparison to other layers.” (Id. at 21 (emphasis added).) Both of LLNS’s infringement experts omit the Court’s claim construction in their reports on the LenSx device. (SUF ¶ 70.) Laser interaction with a “shallow layer portion” of material makes perfect sense in the context of the ’894 patent. The patent teaches repeatedly firing a pulsed laser onto the surface of material to successively ablate layers of material from the surface. (SUF ¶ 71.) Each pulse forms a shallow layer of plasma that is ejected from the surface of the material. (SUF ¶ 72.) Thus, each layer is “shallow” because it is at the surface of the material and the plasma shielding effect prevents the pulse from moving deeper into the material. (SUF ¶ 73.) But this is not how the LenSx Laser works. As discussed above, the LenSx Laser directs beam pulses below the surface of the cornea. These pulses form roughly pear-shaped bubbles of plasma that expand into cavitation bubbles through the photodisruptive process. (SUF ¶ 74.) There is no “thin” or “shallow” layer portion in such subsurface interaction. (SUF ¶ 75.) Thus, this claim limitation is not met. Nor is an equivalency argument, suggested by Dr. Fuller, plausible here under the function/way/result test. The “way” claimed by the ’894 patent (shallow plasma and ejection of energy from the surface) is fundamentally different than the “way” of the LenSx Laser (subsurface cavitation bubbles), and the “result” claimed in the ’894 patent (repeated removal of material from the surface with minimal damage) is also fundamentally different than the “result” of the LenSx Laser (subsurface cleavages with significant damage). (SUF ¶ 76.) Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 15 of 29 Page ID #:5620 12 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3. The LenSx Laser Does Not Practice the “Removed” Limitation Claim 1 of the ’894 patent and its dependent claims require the limitation: “allowing said formed plasma to decay, such that said material portion is removed,” and claim 11 and its dependent claims require the limitation: “each successive pulse forming an additional plasma until a sufficient amount of material has been removed.” (Acker Decl. Ex. 3 [’894 patent] at 17:31-32.) The Court has not construed any of the terms in these limitations. The plasma formed by the LenSx Laser becomes trapped within the eye in the form of gas and water, at least for the duration of the LenSx Laser procedure and in some cases much longer. (SUF ¶ 77.) This is because the beam is directed below the surface of the cornea: the material changes into a different state of matter, and the plasma is formed there. (SUF ¶ 78.) Dr. Ovchinnikov explained that the material inside the eye is separated into different pieces, not removed. (SUF ¶ 79.) Instead, the material simply changes into a different state—plasma. As Dr. Ovchinnikov explained: “I don’t see any material being removed simply because there is nowhere for material to go. The material is generated or converted from one form to the other inside -- in where the cut is created and stays within -- it changes form from tissue to plasma to maybe gas, but it stays -- all the materials stays within the cut.” (SUF ¶ 80 (explaining that tissue is cut or separated, not removed).) Recognizing the problem with their position, LLNS’s experts try to skirt the issue. First, they claim that the limitation is met even when nothing is removed from the eye. (Acker Decl. Ex. 10 [Fuller Dep. Tr.] 358:8-16 (Q. And that second possibility, the target material has not been removed from the eye? . . .THE WITNESS: That’s correct. . . . Q. And, in your opinion, that still constitutes removal within the claims of the ’894 patent? A. Yes.”); Id. at 353:18-353:25, 357:21-358:16, 360:9-13, 360:16-19 (opining that removal occurs when tissue is Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 16 of 29 Page ID #:5621 13 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 transformed into gas, water, or even “something else”).) But this position ignores the plain meaning of the word “removed.” Next, they argue that the removal limitation can be met even if the removal takes days, weeks, or even months and even if something is moved one angstrom. (Acker Decl. Ex. 8 [Kershner Dep. Tr.] 162:13-163:5, 189:12-191:2.) But the ’894 patent makes clear that the removal of material must occur with the time between laser pulses—thus, as short as one femtosecond. (Acker Decl. Ex. 3 [’894 patent] at 3:66-4:21.) And movement of material inside the eye by as little as one angstrom is not the equivalent of removal of material from the eye. Again, LLNS’s position would render the “removal” limitations of the ’894 patent meaningless. Because the LenSx Laser does not cause material to be removed between femtosecond pulses, but rather transforms material from a solid into a plasma during the ablation process inside the bulk material of the eye, the removal limitation is not met. 4. The LenSx Laser Does Not Cause “Substantially No Collateral Damage” All of the asserted claims of the ’894 patent require the limitation: “substantially no collateral damage thereto.” (Acker Decl. Ex. 3 [’894 patent] at Claim 1.) The Court construed this limitation to mean “minimal damage to the area surrounding the target area, including, but not limited to, undesirable cracks, material charring, discoloration, surface melting and perceived pain.” (-1538 Case, D.I. 59 at 35 (emphasis added).) It is undisputable that surgery with the LenSx Laser causes “perceived pain” such that physicians must administer anesthetic to make the process bearable. Dr. Stonecipher, a laser eye surgeon and expert for Alcon, has explained that LenSx Laser surgery is a “painful procedure” that would not be possible without anesthetic. (SUF ¶ 81.) Dr. Fuller, LLNS’s lead infringement expert, testified that anesthesia would absolutely be required for cataract surgery using the LenSx Laser Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 17 of 29 Page ID #:5622 14 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 due to extreme pain: “[T]here are an enormous number of nerve endings in the cornea. It’s one of the most sensitive – as a matter of fact, it may be the most sensitive part of the human body, so absent providing anesthetic – putting anesthetic drops on there, that portion alone would be more than a person could bear.” (SUF ¶ 82.) Dr. Gannot, Neev’s lead infringement expert, agreed that the laser-tissue interaction causes enough pain to require anesthetic because “there are nerves that are sensing [the] heat.” (SUF ¶ 83.) Moreover, the photodisruptive process employed by the LenSx Laser inherently leverages damage to tissue surrounding the target region in order to cleave corneal tissue. The subsurface cavitation bubbles created by the LenSx Laser forcefully expand to push apart surrounding tissue. (SUF ¶ 84.) This damage is caused because the energy of each beam pulse is trapped within the lens or corneal tissue. (SUF ¶ 85.) That is completely unlike the process taught by the ’894 patent, involving ablation “from the target surface,” (-1538 Case, D.I. 59 at 16), which allows the energy from the beam pulse to be carried off into an ablation plume that escapes from the surface of the target. (SUF ¶ 86.) Plaintiffs will be unable to prove that the LenSx Laser causes “substantially no collateral damage,” in particular because it is indisputable that the LenSx Laser causes significant perceived pain and because it fundamentally relies upon causing substantial disruption to tissue surrounding the beam spot. B. There is No Evidence that the LenSx Laser Practices the “Without Any Thermal Damage” Limitation of All Asserted ’926 Patent Claims Asserted claims 6-7 and 20-23 of the ’926 patent require that a plurality of disruptions is created “without any thermal damage further than 5 μm below the plurality of disruptions.” (Acker Decl. Ex. 14 [’926 patent] at Claim 6.) There is no evidence in this case that the thermal damage created by the LenSx Laser does not extend further than 5 μm (which is about the size of a single Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 18 of 29 Page ID #:5623 15 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 red blood cell, or 1/15 the thickness of a human hair) below the cavitation bubbles created by the plasma. Neev’s infringement contentions provide no evidence for this limitation. (SUF ¶ 87.) Dr. Gannot, Dr. Neev’s infringement expert, cites no evidence for this limitation. (SUF ¶ 88.) Moreover, Dr. Gannot admits that he does not know the threshold volumetric power density for corneal tissue (SUF ¶ 89), which would be necessary information for a calculation of the extent of thermal damage. Nor is there any other evidence in this case regarding whether the LenSx Laser causes thermal damage further than 5 μm. (SUF ¶ 90.) Neev will therefore be unable to offer any evidence at trial in support of this limitation. Because Neev has no evidence with which to meet his burden, LenSx is entitled to summary judgment on non-infringement. See, e.g., Display Technologies, Inc. v. Paul Flum Ideas, Inc., 282 F.3d 1340, 1348 (Fed. Cir. 2002) (finding failure to point to evidence to establish that accused device operates in way required by claims required summary judgment). C. The Asserted Claims of the ’926 Patent Are Invalid as Anticipated by the ’199 Patent On June 6, 2016, after asserting the ’926 patent against LenSx, Neev filed a request for supplemental examination of the patent, apparently believing— incorrectly12—that he could inoculate it from charges he committed inequitable conduct in failing to disclose his own ’199 and ’894 patents (among others) during prosecution. (SUF ¶ 91.) The USPTO found that the ’199 patent raised a substantial new question of patentability for the ’926 patent and ordered reexamination. (SUF ¶ 92.) The USPTO subsequently issued a non-final office action rejecting all claims of the ’926 patent. (SUF ¶ 93.) For each asserted claim, 12 Under 35 U.S.C. §257(c)(2)(A), the supplemental examination process cannot prevent a patent from being held unenforceable due to inequitable conduct if the allegations of inequitable conduct are pled with particularity prior to the date of the request for supplement examination, as they were in the present action. Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 19 of 29 Page ID #:5624 16 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 the USPTO applied the ’199 patent and found each asserted claim invalid. (SUF ¶ 94.) Although the ex parte reexamination process is currently pending, the USPTO is correct that the ’199 patent reads on each and every element of the asserted claims 6-7, 20-23 of the ’926 patent. An anticipation analysis involves a three-part inquiry. First, the trier of fact must determine whether the challenging reference is prior art. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576-78 (Fed. Cir. 1996). Second, the fact finder must ascertain that the prior art is enabling as to put the invention in the public’s possession, though prior art references, however, are presumed enabled. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003). In the third step, the trier of fact must ascertain whether each element of the accused claim is present either expressly or inherently in a single prior reference. Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). 1. The ’199 Patent Anticipates the Asserted Independent Claims of the ’926 Patent Under § 102(a), a patent is anticipated, and therefore invalid, if the invention was patented before the date of the invention. The ’199 patent that issued on November 19, 2002, therefore, is prior art to the ’926 patent, which was not filed until 2007. The ’199 patent teaches all of the limitations of independent claims 6 and 20 of the ’926 patent. Claims 6 and 20 are largely analogous, so they are treated together here. The ’199 patent teaches claim 6’s preamble: “a device for treating a region of a target having a surface” and claim 20’s preamble: “a method of modifying a region of a target.” The ’199 patent Figure 7 illustrates a laser system treating a target having a surface, which is both a surface and a region of a target. (SUF ¶ 95.) The ’199 patent teaches claim 6’s “an energy source coupled with at least one [optical assembly capable of generating multiple beams]” and claim 20’s Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 20 of 29 Page ID #:5625 17 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 “providing an energy source to produce [multiple beams] with at least one [optical assembly capable of generating multiple beams].” In construing this term, the Court has relied upon an embodiment in which an energy source generates only a single beam and that single beam is moved, such as by a scanner. (-1538 Case, D.I. 59 at 33-34.) Neev and his expert, Dr. Gannot, also contend that a pulsed laser, directed sequentially, can create multiple beams/a plurality of beams. (SUF ¶ 96.) The ’199 patent teaches a pulsed laser beam (which is produced by a laser system, an energy source) directed sequentially: “The couplers couple the rotating light to either optical fibers 459 openings, to hollow waveguides, or to a set of articulated arms or mirrors to redirect the beams energy so that a sequential multiple beam pattern is formed at the target.” (SUF ¶ 97.) The ’199 patent teaches claim 6’s “a controller that operates the energy source to direct said [multiple beams] below the surface of the target” and claim 20’s “directing the [multiple beams] below the surface of the target with a controller that operates the beam generator.” The ’199 patent teaches a laser controller: “A laser controller 1478 is connected to the laser system 1460 and controls activation of the laser . . .” and “A controller redirects the redistributed beams. . . .” (SUF ¶ 98.) Dr. Gannot concedes that the ’199 patent teaches a CPU- based controller. (SUF ¶ 99.) Figure 7 of the ’199 patent illustrates a beam below the surface of a target. As discussed above, Neev contends that “multiple beams” can be created by sequentially firing a laser beam. Thus, the ’199 patent teaches “multiple beams” are directed below the surface of the target by a controller that operates the laser. (SUF ¶ 100.) The ’199 patent teaches claim 6’s “create a plurality of disruptions below the surface in a 3-dimensional pattern within the thickness of the target” and claim 20’s “creating a plurality of disruptions below the surface of the target in a 3 dimensional pattern within the thickness of the target.” Dr. Gannot concedes that one can create a plurality of beams by scanning a laser beam across a target (SUF Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 21 of 29 Page ID #:5626 18 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ¶ 101), which the ’199 patent teaches: “The couplers couple the rotating light to either optical fibers 459 openings, to hollow waveguides, or to a set of articulated arms or mirrors to redirect the beams energy so that a sequential multiple beam pattern is formed at the target.” (Id.) The ’199 patent teaches three dimensional patterns of disruptions: “Alternatively, scanning and moving either the beam or the target in three dimensional space would allow the operator to generate virtually any modification pattern desired.” and “[b]y arranging the fibers output (for example the fibers 459 of FIG. 8e), or the focused beamlets (for example, the beamlets 435 in FIG. 8c) in a spiraling manner 470 of FIG. 8f the deposition of thermal energy in the tissue can thereby be minimized.” (SUF ¶ 102.) The ’199 patent teaches claim 6 and claim 20’s “without any thermal damage further than 5 μm below the plurality of disruptions.” In the ’199 patent, Neev stated that “the inventor has recognized that a much wider range of pulse durations of up to approximately several hundred microseconds will allow the thermal diffusion to remain confined to within a distance of only a few micrometer of the ablated crater.” (SUF ¶ 103.) A “few” micrometers is less than 5 μm. The ‘199 patent also teaches “[m]aking use of the same apparatus with the option to spatially and/or temporally control the addition of ‘doping agents’, to induce selective power deposition, precise and highly localized material removal and/or modification can be induced at any desired location within the three-dimensional space of the target region while substantially sparing adjacent regions of the target material from any collateral damage.” (SUF ¶ 104.) The ’199 patent also teaches claim 20’s “the plurality of disruptions create scattering centers to decrease the amount of light penetrating deeper into the target” under Neev’s expert’s position that this limitation is met by “creat[ing] multiple cavitation bubbles” and that “[t]he cavitation bubbles create scattering centers that decrease the amount of light that penetrates deeper into the cornea.” (SUF ¶ 105.) The ’199 patent discloses the production of cavitation bubbles when the pulses are Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 22 of 29 Page ID #:5627 19 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 directed subsurface and pulse fluence substantially exceeds threshold. (SUF ¶ 106.) Under Dr. Neev’s interpretation of this limitation, it is disclosed in the ’199 patent. 2. The ’199 Patent Anticipates the Asserted Dependent Claims of the ’926 Patent The ’199 patent reads on the additional limitations of the dependent claims 7, 22, and 23 of the ’926 patent, which each add requirements for particular pulse duration ranges. Claim 7 requires “the controller is configured to control the [multiple beams] such that each beam has a pulse duration of no more than 10−9 seconds,” claim 22 requires “the [multiple beams] comprises pulses of duration is between about 10−15 second and about 10−12 seconds,” and claim 23 requires “the pulse duration is less than about 10−8 seconds, or less than about 10−9 seconds, or less than about 10−10 seconds, or less than about 10−11 seconds.” The ’199 patent teaches pulse durations in the range of about 1 femtosecond to about 10 milliseconds, which includes pulse durations falling into each of the ranges above: “[P]ulse duration in the range of about 1 femtosecond to about 10 milliseconds.” (SUF ¶ 107.) The ’199 patent also teaches claim 21’s “the [multiple beams] comprise pulsed light.” The ’199 patent teaches a pulsed laser beam, which is a beam of pulsed light. (SUF ¶ 108.) All of the asserted claims of the ’926 patent, therefore, are invalid as anticipated by the ’199 patent under section 102(a). D. LenSx Is Entitled to Summary Judgment on Non-Patent Claims Asserted by Plaintiffs LenSx is entitled to summary judgment on LLNS’s claims for: (1) fraud and (2) intentional interference with contractual relations. LenSx is also entitled to summary judgment on Femto’s claims for: (1) violation of UCL and (2) rescission. 1. LLNS Fails to Establish Required Elements of Fraud A fraud claim under California law requires a plaintiff to establish: “(a) misrepresentation (false representation, concealment, or nondisclosure); (b) Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 23 of 29 Page ID #:5628 20 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 knowledge of falsity (or ‘scienter’); (c) intent to defraud, i.e., to induce reliance; (d) justifiable reliance; and (e) resulting damage.” Neilson v. Union Bank of California, N.A., 290 F. Supp. 2d 1101, 1140-41 (C.D. Cal. 2003) (quoting Engalla v. Permanente Medical Group, Inc., 15 Cal. 4th 951, 974 (1997)). LLNS cannot establish evidence of at least (1) a false representation or (2) damages. The crux of LLNS’s “false representation” allegation is that LenSx Lasers and Femto executed a March 3, 2010 letter agreement—in which LenSx bought out Femto’s share of the ’894 patent royalty stream for $50,000—without LLNS’s express knowledge. (-624 Case, D.I. 78 ¶¶ 28-36.) The evidence however belies LLNS’s claim. Neev testified that he kept Mr. Randall Elder, LLNS’s licensing representative, informed of every aspect of the March 3, 2010 letter agreement: “Q. . . . Did you consider this a secret agreement you were somehow trying to hide from LLNL? A. No, not at all.”; “I certainly informed [Mr. Elder] of all the terms that I agreed to. . . . My recollection is that I was completely up front with Mr. Elder.”; and “A. My recollection is that I kept Mr. Elder abreast of every aspect of the negotiation. Q. Including this Exhibit 188, the the March 3 letter agreement? A. . . . my recollection is that I discussed everything with him, all the component [sic] of our agreement.” (SUF ¶ 109.) Similarly, (SUF ¶ 110.) LLNS’s claims also fail as a matter of law because it cannot establish the essential element of damages. LLNS’s own corporate representative witness, Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 24 of 29 Page ID #:5629 21 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 (SUF ¶ 112.) Because it was admittedly unharmed by LenSx’s actions, it is unsurprising that LLNS has not put forward any expert testimony to support damages for this claim. Mr. Justin Lewis, LLNS’s damages expert, opined on certain breach of contract theories, but explicitly omitted a damages opinion on LLNS’s fraud and intentional interference with contractual relations claims. (SUF ¶ 113.) Finally, LLNS has provided no computation of its fraud or intentional interference damages or “evidentiary material . . . on which each computation is based” as required by Fed. R. Civ. P. 26(a)(1)(A)(iii). LLNS’s operative initial disclosures (served April 6, 2017) only assert that “LLNS seeks from Alcon LenSx damages sustained as a result of Alcon’s actions . . . [t]his includes monetary damages, equitable relief, prejudgment interest, attorneys’ fees, costs, enhanced damages, and exemplary relief.” (SUF ¶ 114.) Since LLNS failed to disclose any actual computation of damages, even if it came up with a belated damages theory now, the theory would be excluded from trial. See, e.g., Hsu v. Thorsen Tool Co., 2014 U.S. Dist. LEXIS 195156 (C.D. Cal. Nov. 10, 2014); Vinotemp Int’l Corp. v. Wine, 2013 U.S. Dist. LEXIS 142100 (C.D. Cal. Feb. 5, 2013). 2. LLNS Fails to Establish Required Elements of Intentional Interference with Contractual Relations LLNS’s intentional interference with contractual relations claim is also predicated on the LenSx Lasers and Femto March 3, 2010 letter agreement. (-624 Case, D.I. 78 [2/29/2016 LLNS Amnd Answer to Cntr Clim and X Clm Ctr Cl] ¶ 40) (“On information and belief, LenSx and Femto/Neev agreed in the March 3, 2010 side letter agreement that they would misrepresent the Sublicense as the complete agreement to sublicense the LLNL patents to LenSx.”).) The required elements are: “(1) a valid contract between plaintiff and a third party; (2) defendant’s knowledge of this contract; (3) defendant’s intentional acts designed to Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 25 of 29 Page ID #:5630 22 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 induce a breach or disruption of the contractual relationship; (4) actual breach or disruption of the contractual relationship; and (5) resulting damage.” Quelimane Co. v. Stewart Title Guar. Co., 19 Cal.4th 26, 55 (1998) (internal quotation marks and citation omitted). Like the fraud claim, LLNS’s intentional interference claim requires damages. But, as discussed above, LLNS has not been harmed and cannot put on testimony to the contrary. Moreover, LLNS cannot provide any evidence to substantiate its allegations that March 3rd letter agreement interfered with its License Agreement with Neev. LLNS alleged that “LenSx interfered with Femto’s performance of its obligations under the License Agreement because the three-part agreement (the ’199 License, the Sublicense, and the March 3, 2010 side letter agreement) modified the terms of the Sublicense such that the effective royalty rate did not conform to the royalty rate required under the License Agreement.” (-624 Case, D.I. 78 [2/29/2016 LLNS Amnd Answer to Cntr Clim and X Clm Ctr Cl] ¶ 41.) (SUF ¶ 115.) Because LLNS cannot show actual interference with its contract or damages, summary judgment should be granted as to this claim. 3. Femto Has No Evidence to Show Any Unlawful, Unfair, or Fraudulent Business Practices by LenSx to Support its UCL Claim Femto’s claim for violation of California Business and Professions Code section 17200 (“UCL”) also fails. To bring a UCL claim, “a plaintiff must show either an (1) ‘unlawful, unfair, or fraudulent business act or practice,’ or (2) ‘unfair, deceptive, untrue or misleading advertising.’” See Lippitt v. Raymond James Fin. Servs., 340 F.3d 1033, 1043 (9th Cir.2004) (quoting § 17200). Femto alleges Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 26 of 29 Page ID #:5631 23 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 conduct under the first prong—“unlawful,” “unfair,” and “fraudulent” business practices. (-624 Case, D.I. 41 ¶ 72-76.) To state a claim under this prong, a “plaintiff must establish that the practice is either unlawful (i.e., is forbidden by law), unfair (i.e., harm to victim outweighs any benefit) or fraudulent (i.e., is likely to deceive members of the public).” Albillo v. Intermodal Container Services, Inc., 114 Cal. App. 4th 190, 206 (2003). Femto has no evidence to support its UCL claim. Femto alleged that LenSx made false representations to Neev regarding the March 3 letter agreement and compensation under the ’199 License to induce him into signing the agreement. (- 624 Case, D.I. 41 ¶ 75.) Yet the facts show the opposite. Neev testified that he reviewed the letter and voluntarily signed it on the advice of counsel. (SUF ¶ 116.) He also concedes that he gave up Femto’s portion of the royalty stream for the ’894 patent in exchange for $50,000 in the agreement. (SUF ¶ 117.) The terms of the March 3rd letter agreement are clear on the face of the document, which states: “LenSx will pay you $50,000 . . . You agree . . . that such payment represents the net present value of all payments to which Femto-Sec would have been entitled under foregoing sub-license.”. (SUF ¶ 118.) Neev’s own admissions make clear that he willingly consented to the agreement. Under the “unfair” business practices prong, Femto has made allegations as either business-competitor based harms (“unfairly impeded the research and development of beneficial technology”) and/or consumer based harms (“substantially injurious to consumers”). (-624 Case, D.I. 41 ¶¶ 73, 76.) However, Femto has failed to demonstrate how LenSx’s conduct has harmed anyone, let alone the general public or some unidentified customers. Femto cannot present any evidence that LenSx prevented another entity from developing a product, nor that LenSx’s conduct in not developing a product that practices the ’894 patent was, by itself, injurious to consumers. In fact, no entity except Femto has actually ever taken a license to the ’894 patent from LLNS in the medical field of use. (SUF Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 27 of 29 Page ID #:5632 24 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ¶ 119.) Even after Femto terminated LenSx’s ’894 patent sublicense in March 2013, Femto never sublicensed the ’894 patent to any other entity. (SUF ¶ 120.) Femto’s failure to itself commercialize the ’894 patent or to license it to others has nothing to do with LenSx. Indeed, the lead inventor of the ’894 patent testified that LLNS did “a poor job in attempting to commercialize the ’894 patent,” that LLNS did not “pursue[] their responsibilities to widely commercialize,” and that granting an exclusive license to Neev was a “huge mistake.” (SUF ¶ 121.) Finally, Femto summarily alleges that LenSx’s conduct, including its representations with respect to the March 3 letter agreement, was fraudulent. (-624 Case, D.I. 41 ¶ 76.) Femto does not allege that LenSx’s conduct was likely to deceive members of the public, and likewise will fail to show evidence proving that any of LenSx’s actions fall within this prong. This is because the allegedly deceptive representations were not disseminated to the public, and the public would not have any sort of expectation regarding the letter agreement between LenSx and Femto. See Creager v. Yoshimoto, No. C05-01985JSW, 2007 WL 2938168, at *4 (N.D. Cal. Oct. 9, 2007) (“[A] fraudulent business practice under Section 17200 is not based upon proof of the common law tort of deceit or deception, but is instead premised on whether the public is likely to be deceived.”) (internal quotation marks omitted). 4. Femto Has Failed to Establish Any Grounds for Rescission Rescission is a remedy that disaffirms the contract. Cal. Civ. Code § 1688 et seq. Grounds for rescission include: (1) “[i]f the consent of the party rescinding … was given by mistake, or obtained through duress, menace, fraud, or undue influence, exercised by or with the connivance of the party as to whom he rescinds”; (2) “[i]f the consideration for the obligation of the rescinding party becomes entirely void from any cause”; and (3) “[i]f the consideration for the obligation of the rescinding party, before it is rendered to him, fails in a material Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 28 of 29 Page ID #:5633 25 Alcon LenSx’s MPA ISO Motion for Summary JudgmentCase No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd- 699637 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 respect from any cause.” Cal. Civ. Code § 1689(b). Femto’s own admissions undermine any basis for rescission. Neev seeks to rescind the March 3rd letter agreement that he claims “was obtained through fraud” in “justifiable reliance on LenSx’s assurances that he would be compensated under the ’199 License for sales of LenSx laser systems.” (- 624 Case, D.I. 41 ¶¶ 78, 80.) There is no merit to these allegations, as discussed above. Neev conceded that he reviewed the March 3rd letter agreement and signed it on the advice of counsel and that he gave up Femto’s portion of the royalty stream for the ’894 patent in exchange for $50,000. (SUF ¶ 122.) Further, the terms of the March 3 letter agreement are clear on its face—Neev sold Femto’s royalty interest in the ’894 sublicense to LenSx. (SUF ¶ 123.) Neev’s admissions make obvious that he consented to the agreement. He has offered no credible evidence of mistake, duress, menace, fraud, undue influence, or connivance. V. CONCLUSION LenSx respectfully requests the Court enter the attached proposed order granting partial summary judgment. Dated: May 22, 2017 MORRISON & FOERSTER LLP By: /s/ Eric M. Acker ERIC M. ACKER Attorneys for Defendant and Counterclaimant ALCON LENSX, INC. Case 8:15-cv-00624-JVS-JCG Document 159-1 Filed 05/22/17 Page 29 of 29 Page ID #:5634 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 ERIC M. ACKER (CA SBN 135805) EAcker@mofo.com JOHN R. LANHAM (CA SBN 289382) JLanham@mofo.com MORRISON & FOERSTER LLP 12531 High Bluff Drive San Diego, California 92130-2040 Telephone: 858.720.5100 Facsimile: 858.720.5125 MARY PRENDERGAST (CA SBN 272737) MPrendergast@mofo.com MORRISON & FOERSTER LLP 2000 Pennsylvania Avenue, Suite 600 Washington, DC 20006 Telephone: 202.887.1500 Facsimile: 202.887.0763 Attorneys for Defendant and Counterclaimant ALCON LENSX, INC. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA JOSEPH NEEV, an individual Plaintiff, v. ALCON LENSX, INC., a Delaware corporation. Defendant. Case No. 8:15-cv-01538-JVS-JCGx (Consolidated for all purposes this action with No. 8:15-cv-00624-JVS- JCGx) STATEMENT OF UNCONTROVERTED FACTS AND CONCLUSIONS OF LAW IN SUPPORT OF ALCON LENSX, INC.’S MOTION FOR SUMMARY JUDGMENT Date: June 19, 2017 Time: 1:30 p.m. Judge: Hon. James V. Selna Ctrm: 10C UNREDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL AND RELATED COUNTERCLAIMS FEMTO-SEC TECH, INC., a California corporation, Plaintiff, v. ALCON LENSX, INC., a Delaware corporation, Defendant. AND RELATED COUNTERCLAIMS Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 1 of 42 Page ID #:5635 TABLE OF CONTENTS Page i Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I. UNCONTROVERTED FACTS ..................................................................... 1 A. Relevant Principles of Laser-Material Interaction ................................ 1 B. The History of LenSx ............................................................................ 3 C. The LenSx Laser System ...................................................................... 5 D. Patents at Issue .................................................................................... 10 E. The LenSx Laser Does Not Infringe the Asserted Claims of the ’894 Patent .......................................................................................... 12 1. The LenSx Laser Does Not Direct its Beam “Onto the Surface” .................................................................................... 12 2. The LenSx Laser Does Not Interact With a “Thin Layer Portion” ..................................................................................... 15 3. The LenSx Laser Does Not Practice the “Removed” Limitation ................................................................................. 17 4. The LenSx Laser Does Not Cause “Substantially No Collateral Damage” .................................................................. 18 F. There is No Evidence that the LenSx Laser Practices the “Without Any Thermal Damage” Limitation of All Asserted ’926 Patent Claims .............................................................................. 19 G. The Asserted Claims of the ’926 Patent Are Invalid as Anticipated by the ’199 Patent ............................................................ 20 1. The ’199 Patent Anticipates the Asserted Independent Claims of the ’926 Patent ......................................................... 21 2. The ’199 Patent Anticipates the Asserted Dependent Claims of the ’926 Patent ......................................................... 24 H. LenSx Is Entitled to Summary Judgment on Non-Patent Claims Asserted by Plaintiffs .......................................................................... 25 1. LLNS Fails to Establish Required Elements of Fraud ............. 25 2. LLNS Fails to Establish Required Elements of Intentional Interference with Contractual Relation .................................... 27 3. Femto Has No Evidence to Show Any Unlawful, Unfair, or Fraudulent Business Practices by LenSx to Support its UCL Claim ................................................................................ 28 4. Femto Has Failed to Establish Any Grounds for Rescission ................................................................................. 29 II. CONCLUSIONS OF LAW ........................................................................... 30 A. Legal Standard .................................................................................... 30 B. The LenSx Laser Does Not Infringe the Asserted Claims of the ’894 Patent .......................................................................................... 31 1. The LenSx Laser Does Not Direct its Beam “Onto the Surface” .................................................................................... 31 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 2 of 42 Page ID #:5636 TABLE OF CONTENTS (continued) Page ii Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2. The LenSx Laser Does Not Interact With a “Thin Layer Portion” ..................................................................................... 32 3. The LenSx Laser Does Not Practice the “Removed” Limitation ................................................................................. 33 4. The LenSx Laser Does Not Cause “Substantially No Collateral Damage” .................................................................. 33 C. There is No Evidence that the LenSx Laser Practices the “Without Any Thermal Damage” Limitation of All Asserted ’926 Patent Claims .............................................................................. 34 D. The Asserted Claims of the ’926 Patent Are Invalid as Anticipated by the ’199 Patent ............................................................ 34 1. The ’199 Patent Anticipates the Asserted Independent Claims of the ’926 Patent ......................................................... 34 2. The ’199 Patent Anticipates the Asserted Dependent Claims of the ’926 Patent ......................................................... 36 E. LenSx Is Entitled to Summary Judgment on Non-Patent Claims Asserted by Plaintiffs .......................................................................... 36 1. LLNS Fails to Establish Required Elements of Fraud ............. 36 2. LLNS Fails to Establish Required Elements of Intentional Interference with Contractual Relations ................................... 37 3. Femto Has No Evidence to Show Any Unlawful, Unfair, or Fraudulent Business Practices by LenSx to Support its UCL Claim ................................................................................ 37 4. Femto Has Failed to Establish Any Grounds for Rescission ................................................................................. 38 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 3 of 42 Page ID #:5637 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 4 of 42 Page ID #:5638 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 4. This process is called plasma- mediated ablation, or sometimes photoablation, and is the process described by the ’894 patent. 4. (Norris Decl. ¶¶ 61, 190-217; Stonecipher Decl. ¶¶ 32-37, 52.) 5. In subsurface interaction, the laser pulse is directed to a focal point below the surface of material. 5. (Norris Decl. ¶ 79.) 6. In subsurface interaction, no plasma is generated at the surface of the material because the laser beam is not focused on the surface. 6. (Norris Decl. ¶¶ 79-80.) 7. But when the laser pulse reaches the target spot below the surface of the material, it reaches threshold intensity and forms a pear-shaped bubble of plasma. 7. (Norris Decl. ¶ 80; Stonecipher Decl. ¶ 23.) 8. This plasma expands into an ionized cavitation bubble that is driven rapidly into the surrounding material by the internal pressure of its hot, ionized gas content. 8. (Norris Decl. ¶¶ 85-86; Stonecipher Decl. ¶¶ 24-25.) 9. Because the energy of the laser pulse is below the surface of the material, it cannot be ejected away and must go into the surrounding material. 9. (Norris Decl. ¶ 86.) Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 5 of 42 Page ID #:5639 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 6 of 42 Page ID #:5640 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 4 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 U.S. Patent No. 5,656,186. 15. Along with a partner from the University of Michigan group, Dr. Kurtz founded IntraLase, one of the first companies to use ultrashort pulse lasers for flap cutting in LASIK surgery, in the mid-1990s. 15. (Acker Decl. Ex. 2 [Kurtz Dep. Tr.] 35:16-36:4.) 16. Abbott Medical Optics subsequently acquired IntraLase. 16. (Id. 127:10-13.) 17. As LenSx Lasers grew, Dr. Kurtz worked to obtain a license to the ’894 and ’199 patents. 17. (Acker Decl. Exs. 3 and 4.) 18. LenSx Lasers wanted these licenses for “offensive and defensive positions” and also, specifically with respect to the ’894 patent, for a potential future glaucoma application. 18. (Acker Decl. Ex. 2 [Kurtz Dep. Tr.] 66:13-17; 125:14-20; Ex. 5 [Prejean Dep. Tr.] 23:19-24.) 19. LenSx Lasers did not license these patents because it suspected its existing product might practice them. 19. (Acker Decl. Ex. 2 [Kurtz Dep. Tr.] 66:9-12.) 20. Alcon Laboratories, Inc., a global eyecare company, ultimately acquired LenSx Lasers in 2010 and formed Alcon, LenSx, Inc. (“LenSx”). 20. (Acker Decl. Ex. 5 [Prejean Dep. Tr.] 17:20-23.) Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 7 of 42 Page ID #:5641 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 8 of 42 Page ID #:5642 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 27. The cavitation bubbles expand in this fashion because the laser energy is trapped below the surface of the eye. 27. (Norris Decl. ¶¶ 96-105, 260- 61.) 28. These cavitation bubbles separate the tissue of the eye, called lamellae. 28. (Stonecipher Decl. ¶ 80; Norris Decl. ¶¶ 176, 261-62; Acker Decl. Ex. 8 [Kershner Dep. Tr.] 146:14-16.) 29. The LenSx Laser works by rapidly laying down a non-overlapping series of thousands of such beam pulses, which forcibly cleaves the corneal tissue in order to create incisions. 29. (Stonecipher Decl. ¶¶ 24, 80; Norris Decl. ¶¶ 169-171, 259-60; see also Acker Decl. Ex. 8 [Kershner Dep. Tr.] 146:24-149:1.) 30. A cataract is clouding of the lens of the eye that results in impaired vision. 30. (Norris Decl. ¶ 126; Acker Decl. Ex. 6 [Kershner Rept.] ¶ 56.) 31. The LenSx Laser can be used in the early steps of cataract surgery to fragment the cataract and create incisions in the eye that allow a surgeon to later remove the lens through suction or aspiration. 31. (Norris Decl. ¶ 145; Stonecipher Decl. ¶ 20.) 32. The first step is a capsulotomy procedure—the creation of a cylindrical cut in the lens capsule, beginning below the top of the capsule and moving in an upward fashion. 32. (Acker Decl. Ex. 10 [Fuller Dep. Tr.] 312:22-313:19; Acker Decl. Ex. 8 [Kershner Dep. Tr.] 64:6-11; Acker Decl. Ex. 9 [Dr. Mikhail Ovchinnikov (“Ovchinnikov”) Dep. Tr.] 221:19-222:5.) 33. All cuts of the capsulotomy 33. (Acker Decl. Ex. 10 [Fuller Dep. Tr.] 313:24-314:3; Acker Decl. Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 9 of 42 Page ID #:5643 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 7 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 procedure occur in the interior of the eye. Ex. 8 [Kershner Dep. Tr.] 64:12-17.) 34. The capsule is cut during this portion of the procedure, but remains within the eye. 34. (Acker Decl. Ex. 10 [Fuller Dep. Tr.] 312:22-313:9; Acker Decl. Ex. 8 [Kershner Dep. Tr.] 64:6-11.) 35. The LenSx Laser performs a “lens fragmentation” to break up the cataract by making a series of cuts in the lens which all occur within the interior of the lens inside the eye. 35. (Acker Decl. Ex. 10 [Fuller Dep. Tr.] 314:4-9, 315:6-9; Acker Decl. Ex. 8 [Kershner Dep. Tr.] 66:11-67:14.) 36. The LenSx Laser will then create “primary” and “secondary” incisions, which start inside the cornea and move anteriorly (upwards it the eye). 36. (Acker Decl. Ex. 10 [Fuller Dep. Tr.] 316:7-317:13; Acker Decl. Ex. 8 [Kershner Dep. Tr.] 68:22-70:4; Acker Decl. Ex. 9 [Ovchinnikov Dep. Tr.] 226:6-226:15.) 37. In a LASIK flap procedure, the LenSx Laser is used to make two incisions in the eye such that the top portion of the cornea can be folded back to expose the inside of the eye. 37. (Acker Decl. Ex. 10 [Fuller Dep. Tr.] 319:7-13; Stonecipher Decl. ¶ 21.) 38. The first cut is a planar (or bed) cut inside the cornea to form the bottom of the flap, and the second is a side cut which cuts from the interior planar cut up to the surface of the cornea. 38. (Acker Decl. Ex. 10 [Fuller Dep. Tr.], 317:15-319:5.) 39. The LenSx Laser does not create a 39. (Acker Decl. Ex. 8 [Kershner Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 10 of 42 Page ID #:5644 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 “tunnel” cut. Dep. Tr.] 78:21-23; Acker Decl. Ex. 9 [Ovchinnikov Dep. Tr.] 44:3-44:6.) 40. To complete the side cut, a cavitation bubble expands from below the surface to cleave the tissue and break the surface of the cornea. 40. (Acker Decl. Ex. 8 [Kershner Dep. Tr.] 80:15-22; Acker Decl. Ex. 10 [Fuller Dep. Tr.] 318:14-319:5; Stonecipher Decl. ¶ 54.) 41. The surgeon next uses a flap manipulator tool to manually lift the flap to expose the inside of the eye. 41. (Acker Decl. Ex. 8 [Kershner Dep. Tr.] 80:23-81:5; Stonecipher Decl. ¶¶ 56-57.) 42. The inside of the eye is then ablated in another stage of the procedure using an excimer laser (a device not at issue in this case) to reshape the eye and correct the patient’s vision. 42. (Acker Decl. Ex. 8 [Kershner Dep. Tr.] 80:23-81:5, 81:24-82:5; Stonecipher Decl. ¶¶ 42-43.) 43. Regardless of whether the cuts are made for cataract procedures or LASIK, all cuts made with the LenSx Laser are subsurface. 43. (Norris Decl. ¶¶ 263-67; Acker Decl. Ex. 9 [Ovchinnikov Dep. Tr.] 71:9-11, 71:12-20, 71:22-72:3, 107:11-22; Acker Decl. Ex. 8 [Kershner Dep. Tr.] 56:17-24 (“Q. So when the LenSx laser makes a cut in the lens capsule, it is making a cut in the interior of the eye, correct? A. Correct. Q. And the LenSx laser makes a circular cut in the lens capsule in the interior of the eye, correct? A. Correct.”); see also 61:18- 62:15, 65:25-66:10 (anterior capsulotomy incision); 66:22-67:14, 67:25-68:18 (lens fragmentation); 76:15-77:6 (primary and secondary incisions); Acker Decl. Ex. 10 [Fuller Dep. Tr.] 313:24-314:3 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 11 of 42 Page ID #:5645 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 (capsulotomy); 314:4-9 (lens fragmentation); 315:23-316:13, 317:8-13 (primary, secondary, and acurate cuts); 318:3-13 (bed cut for LASIK flaps); 318:14-319:5 (side cuts for LASIK flaps); Acker Decl. Ex. 11 [Dr. Israel Gannot (“Gannot”) Dep. Tr.] 163:1-8; Stonecipher Decl. ¶¶ 51-52, 60.) 44. Dr. Mikhail Ovchinnikov, a technical expert on the LenSx Laser, testified that all cuts performed by the LenSx Laser start inside the eye. 44. (Acker Decl. Ex. 9 [Ovchinnikov Dep. Tr.] 71:9-11, 71:12-20, 71:22-72:3, 107:11-22.) 45. Dr. Robert Kershner, LLNS’s expert, testified about every cut the LenSx Laser is designed to perform— capsulotomy, lens fragmentation, primary, secondary, accurate, bed, and side cuts—and confirmed that each cut is made under the surface of the cornea. 45. (Acker Decl. Ex. 8 [Kershner Dep. Tr.] 56:17-24 (“Q. So when the LenSx laser makes a cut in the lens capsule, it is making a cut in the interior of the eye, correct? A. Correct. Q. And the LenSx laser makes a circular cut in the lens capsule in the interior of the eye, correct? A. Correct.”); see also 61:18- 62:15, 65:25-66:10 (anterior capsulotomy incision); 66:22-67:14, 67:25-68:18 (lens fragmentation); 76:15-77:6 (primary and secondary incisions).) 46. Dr. Terry Fuller also testified that each and every LenSx Laser cut is a subsurface cut. 46. (Acker Decl. Ex. 10 [Fuller Dep. Tr.] 313:24-314:3 (capsulotomy); 314:4-9 (lens fragmentation); 315:23-316:13, 317:8-13 (primary, secondary, and acurate cuts); 318:3-13 (bed cut for LASIK flaps); 318:14-319:5 (side cuts for LASIK flaps).) Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 12 of 42 Page ID #:5646 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 13 of 42 Page ID #:5647 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 11 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 51. The ’894 patent describes using ultrashort pulse lasers on various materials for the purpose of studying damage thresholds on the surface of these materials. 51. (See, e.g., Acker Decl. Ex. 3 [’894 patent], Abstract; Acker Decl. Ex. 13 [Perry Dep. Tr.] 15:17-17:18, 25:24-27:20, 27:13-28:10, 32:6-32:12 (describing experiments that lead to independent claims of ’894).) 52. Like the ’894 patent, the ’199 patent covers material modification using ultrashort pulsed lasers with “minimal collateral damage,” but unlike the ’894 patent, it is not limited to surface interactions. 52. (Acker Decl. Ex. 4 [’199 patent], Abstract; Acker Decl. Ex. __ [Gannot Dep. Tr. (“’894 discusses the surface while ’199 discusses three- dimensional material interaction within the tissue, not over the tissue”).) 53. The ’199 patent describes subsurface tissue modification, including using a scanner to create a plurality of cavitation bubbles below the surface of material. 53. (See Acker Decl. Ex. 4 [’199 patent]; Declaration of Dr. Robin Marjoribanks submitted herewith (the “Marjoribanks Decl.”) ¶ 194).) 54. More than ten years after the ’199 and ’894 patents were filed, Neev filed the provisional application that led to the ’926 patent on October 8, 2007. 54. (See Acker Decl. Ex. 14 [’926 patent] at cover.) 55. Like Neev’s earlier patents, the ’926 patent describes laser-material interaction using ultrashort pulses while “minimizing collateral damage.” 55. (See id. at 2:64-67.) 56. After a claim of inequitable 56. (Acker Decl. Ex. 15 [Corrected Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 14 of 42 Page ID #:5648 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 15 of 42 Page ID #:5649 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 13 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 surgery expert, explained that the beam is directed below the surface of the eye: (“Q. At various points in the deposition, you have used the phrase ‘focusing’ as well as the phrase ‘directing,’ correct? . . . THE WITNESS: I think that I have used those terms but I’ve used them in a variety of ways today, but yes, the beam is focused subsurface.”).) 62. Dr. Ovchinnikov, a technical expert on the LenSx Laser, testified repeatedly that the laser beam is always directed into the bulk of the tissue of the eye. 62. (Acker Decl. Ex. 9 [Ovchinnikov Dep. Tr.] 71:9-20, 71:22-72:3, 107:11-22, 244:9-245:2.) 63. Neev’s expert agrees that the LenSx Laser directs its beam below the surface of the eye: “A. You would like to interact within this tissue, so you direct the beam into that specific location. . . . Q. And it has an XYZ coordinate; correct? A. Yeah, it’s three- dimensional, because it’s three dimensional organ.” 63. (Acker Decl. Ex. 11 [Gannot Dep. Tr.] 164:3-12 (emphasis added).) 64. LLNS’s experts, Dr. Fuller and Dr. Kershner, have likewise testified that all cuts performed by the LenSx Laser— for cataract surgery, the capsulotomy, lens fragmentation, primary, secondary, arcuate cuts; and for LASIK flap cutting, the bed and side cuts—begin below the 64. (Acker Decl. Ex. 10 [Fuller Dep. Tr.] 313:24-314:3 (capsulotomy); 314:4-9 (lens fragmentation); 315:23-316:13, 317:8-13 (primary, secondary, and arcuate cuts); 318:3-13 (bed cut for LASIK flaps); 318:14-319:5 (side cuts for LASIK flaps); Acker Decl. Ex. 8 [Kershner Dep. Tr. 61:18-62:15, 65:25-66:10 (anterior capsulotomy Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 16 of 42 Page ID #:5650 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 14 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 surface of the cornea. incision); 66:22-67:14, 67:25-68:18 (lens fragmentation); 76:15-77:6 (primary and secondary incisions).) 65. LLNS’s experts have testified that all cuts performed by the LenSx Laser begin below the surface of the cornea. 65. (Acker Decl. Ex. 10 [Fuller Dep. Tr.] 313:24-314:3 (capsulotomy); 314:4-9 (lens fragmentation); 315:23-316:13, 317:8-13 (primary, secondary, and arcuate cuts); 318:3-13 (bed cut for LASIK flaps); 318:14-319:5 (side cuts for LASIK flaps); Acker Decl. Ex. 8 [Kershner Dep. Tr. 61:18-62:15, 65:25-66:10 (anterior capsulotomy incision); 66:22-67:14, 67:25-68:18 (lens fragmentation); 76:15-77:6 (primary and secondary incisions).) 66. This subsurface interaction of the beam pulse allows the formation of cavitation bubbles (discussed above) that cleave tissue within the eye and create the incisions required by the LenSx Laser procedures. 66. (Norris Decl. ¶ 260; Stonecipher Decl. ¶ 24; Acker Decl. Ex. 8 [Kershner Dep. Tr.] 145:24- 146:16.) 67. Even for incisions that transect the surface of the eye, the beam itself is never directed onto the surface of the eye—rather, a subsurface cavitation bubble expands to break the plane of the cornea from below. 67. (Acker Decl. Ex. 10 [Fuller Dep. Tr.] 318:14-319:5; Acker Decl. Ex. 8 [Kershner Dep. Tr.] 70:5-71:4, 143:20-145:3, 146:24-149:1; Acker Decl. Ex. 12 [Stonecipher Dep. Tr.] 190:8-190:12; Stonecipher Decl. ¶ 54.) 68. All vertical cuts performed by the LenSx Laser begin inside the eye and move up toward the surface of the 68. (Acker Decl. Ex. 10 [Fuller Dep. Tr.] 312:22-313:19 (capsulotomy); 314:21-315:12 (lens fragmentation); 318:14-319:5 (side Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 17 of 42 Page ID #:5651 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 18 of 42 Page ID #:5652 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 16 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 73. Each layer is shallow because it is at the surface of the material and the plasma shielding effect prevents the pulse from moving deeper into the material. 73. (Norris Decl. ¶ 216; Stonecipher Decl. ¶ 36; see Acker Decl. Ex. 1 [Fuller Dep. Tr.] 51:10-23 (describing plasma shielding).) 74. These pulses form roughly pear- shaped bubbles of plasma that expand into cavitation bubbles through the photodisruptive process. 74. (Norris Decl. ¶¶ 274, 318; Stonecipher Decl. ¶¶ 98.) 75. There is no “thin” or “shallow” layer portion in such subsurface interaction. 75. (Norris Decl. ¶¶ 313, 318; Stonecipher Decl. ¶ 98.) 76. The “way” claimed by the ’894 patent (shallow plasma and ejection of energy from the surface) is fundamentally different than the “way” of the LenSx Laser (subsurface cavitation bubbles), and the “result” claimed in the ’894 patent (repeated removal of material from the surface with minimal damage) is also fundamentally different than the “result” of the LenSx Laser (subsurface cleavages with significant damage). 76. (Norris Decl. ¶¶ 327-36.) Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 19 of 42 Page ID #:5653 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 20 of 42 Page ID #:5654 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 21 of 42 Page ID #:5655 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 22 of 42 Page ID #:5656 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 23 of 42 Page ID #:5657 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 21 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 93. The USPTO subsequently issued a non-final office action rejecting all claims of the ’926 patent. 93. (Acker Decl. Ex. 16 [Office Action, U.S. Control No. 96/000,148].) 94. For each asserted claim, the USPTO applied the ’199 patent and found each asserted claim invalid. 94. (Id.) 1. The ’199 Patent Anticipates the Asserted Independent Claims of the ’926 Patent 95. The ’199 patent Figure 7 illustrates a laser system treating a target having a surface, which is both a surface and a region of a target. 95. (Marjoribanks Decl. ¶ 189, 197.) 96. Neev and his expert, Dr. Gannot, contend that a pulsed laser, directed sequentially, can create multiple beams/a plurality of beams. 96. (Acker Decl. Ex. 18 [Gannot Opening Rept. Ex. 4] at 9 (FS200 meets this limitation by creating sequential beams).) 97. The ’199 patent teaches a pulsed laser beam (which is produced by a laser system, an energy source) directed sequentially: “The couplers couple the rotating light to either optical fibers 459 openings, to hollow waveguides, or to a set of articulated arms or mirrors to redirect the beams energy so that a sequential multiple beam pattern is 97. (Acker Decl. Ex. 4 [’199 patent] at 51:58-62; Marjoribanks Decl. ¶¶ 190-191.) Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 24 of 42 Page ID #:5658 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 22 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 formed at the target.” 98. The ’199 patent teaches a laser controller: “A laser controller 1478 is connected to the laser system 1460 and controls activation of the laser . . .” and “A controller redirects the redistributed beams. . . .” 98. (Acker Decl. Ex. 4 [’199 patent] at 55:36-39, 13:23-28.) 99. Dr. Gannot concedes that the ’199 patent teaches a CPU-based controller. 99. (Acker Decl. Ex. 11 [Gannot Dep. Tr.] 142:18-144:1.) 100. The ’199 patent teaches “multiple beams” are directed below the surface of the target by a controller that operates the laser. 100. (Marjoribanks Decl. ¶¶ 192, 199.) 101. Dr. Gannot concedes that one can create a plurality of beams by scanning a laser beam across a target, which the ’199 patent teaches: “The couplers couple the rotating light to either optical fibers 459 openings, to hollow waveguides, or to a set of articulated arms or mirrors to redirect the beams energy so that a sequential multiple beam pattern is formed at the target.” 101. (Acker Decl. Ex. 11 [Gannot Dep. Tr.] 225:11-13); Acker Decl. Ex. 4 [’199 patent] at 51:58-62; Marjoribanks Decl. ¶ 201.) 102. The ’199 patent teaches three dimensional patterns of disruptions: 102. (Acker Decl. Ex. 4 [’199 patent] at 44:17-19, 53:3-7 (emphasis added); Fig. 7 (subsurface bubbles); Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 25 of 42 Page ID #:5659 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 23 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 “Alternatively, scanning and moving either the beam or the target in three dimensional space would allow the operator to generate virtually any modification pattern desired.” and “[b]y arranging the fibers output (for example the fibers 459 of FIG. 8e), or the focused beamlets (for example, the beamlets 435 in FIG. 8c) in a spiraling manner 470 of FIG. 8f the deposition of thermal energy in the tissue can thereby be minimized.” Fig. 8c (patterns of disruptions); Majoribanks Decl. ¶¶ 194, 201.) 103. In the ’199 patent, Neev stated that “the inventor has recognized that a much wider range of pulse durations of up to approximately several hundred microseconds will allow the thermal diffusion to remain confined to within a distance of only a few micrometer1 of the ablated crater.” 103. (Acker Decl. Ex. 4 [’199 patent] at 5:35-42 (emphasis added).) 104. A “few” micrometers is less than 5 μm: “Making use of the same apparatus with the option to spatially and/or temporally control the addition of “doping agents”, to induce selective 104. (See also id. 10:67-11:7 (emphasis added); Majoribanks Decl. ¶¶ 195, 202.) 1 Micrometer and micron are different names for the same unit. Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 26 of 42 Page ID #:5660 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 24 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 power deposition, precise and highly localized material removal and/or modification can be induced at any desired location within the three- dimensional space of the target region while substantially sparing adjacent regions of the target material from any collateral damage.” 105. The ’199 patent also teaches claim 20’s “the plurality of disruptions create scattering centers to decrease the amount of light penetrating deeper into the target” under Neev’s expert’s position that this limitation is met by “creat[ing] multiple cavitation bubbles” and that “[t]he cavitation bubbles create scattering centers that decrease the amount of light that penetrates deeper into the cornea.” 105. (Acker Decl. Ex. 18 [Gannot Opening Rept. Ex. 4] at 13.) 106. The ’199 patent discloses the production of cavitation bubbles when the pulses are directed subsurface and the laser pulses’ fluence substantially exceeds threshold. 106. (’199 patent 9:17-20; Marjoribanks Decl. ¶ 203.) 2. The ’199 Patent Anticipates the Asserted Dependent Claims of the ’926 Patent Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 27 of 42 Page ID #:5661 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 28 of 42 Page ID #:5662 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 29 of 42 Page ID #:5663 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 30 of 42 Page ID #:5664 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 31 of 42 Page ID #:5665 Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 32 of 42 Page ID #:5666 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 30 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 exchange for $50,000. 123. The terms of the March 3 letter agreement are clear on its face—Neev sold Femto’s 3.6% royalty interest in the ’894 sublicense to LenSx Lasers. 123. (Acker Decl. Ex. 24 [Neev Dep. Exhibit 188 or LENSX(25)0112816].) II. CONCLUSIONS OF LAW A. Legal Standard 1. Summary judgment is proper if the evidence before the court “shows that there is no genuine dispute as to any material fact and that the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). 2. A dispute is genuine only if a reasonable jury could return a verdict for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). 3. “The question here is whether a jury could reasonably find either that the plaintiff proved his case by the quality or quantity of evidence required by the governing law or whether he did not.” Id. at 254-55. 4. A patent plaintiff bears the burden of proving infringement by a preponderance of the evidence. SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 889 (Fed. Cir. 1998). 5. A patent defendant bears the burden of proving invalidity by clear and convincing evidence. Apple Computer, Inc. v. Articulate Sys., Inc., 234 F.3d 14, 26 (Fed. Cir. 2000). Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 33 of 42 Page ID #:5667 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 31 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 B. The LenSx Laser Does Not Infringe the Asserted Claims of the ’894 Patent 6. To establish infringement, Plaintiffs must show “that the accused device meets each claim limitation either literally or under the doctrine of equivalents.” Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 812 (Fed. Cir. 2002). 7. For purposes of the present motion, summary judgment is appropriate where plaintiffs’ proof is lacking for just one limitation of each claim. See TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002); Berger v. Rossignol Ski Co., No. C 05-02523 CRB, 2006 WL 1095914, at *6 (N.D. Cal. Apr. 25, 2006), aff’d, 214 F. App’x 981 (Fed. Cir. 2007). 8. Expert testimony is required in actions involving “complex technologies.” Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir. 2004); see O2 Micro Int’l, Ltd. v. Monolithic Power Sys., 467 F.3d 1355, 1369 (Fed. Cir. 2006). 1. The LenSx Laser Does Not Direct its Beam “Onto the Surface” 9. All of the asserted claims of the ’894 patent require the limitation of “directing said pulsed output beam onto a target material from which removal is desired.” (Acker Decl. Ex. 3 [’894 patent] at 16:42-43.) The Court construed “onto” to mean “onto the surface of,” therefore the limitation has been construed as: “directing said pulsed output beam [onto the surface of] a target material from which removal is desired.” (-1538 Case, D.I. 59 at 17.) 10. “[T]he patentee must show that the accused device contains every limitation in the asserted claims.” Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206, 1211 (Fed. Cir. 1998) Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 34 of 42 Page ID #:5668 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 32 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 11. Because the interaction caused by the LenSx Laser is subsurface, it does not satisfy the “onto the surface” limitation of the ’894 patent, which appears in all independent asserted claims (and is therefore a requirement of all asserted claims). 2. The LenSx Laser Does Not Interact With a “Thin Layer Portion” 12. All of the asserted claims have been construed by the Court to require the limitation: “wherein each pulse interacts with a [shallow layer portion] of said material so as to form a plasma.” (-1538 Case, D.I. 59 at 20.) 13. The Court expressed its preference for the term “shallow” “because it more clearly indicates that the focus is on the depth of the material removed in comparison to other layers.” (Id. at 21 (emphasis added).) 14. The LenSx Laser directs beam pulses below the surface of the cornea. These pulses form roughly pear-shaped bubbles of plasma that expand into cavitation bubbles through the photodisruptive process. There is no “thin” or “shallow” layer portion in such subsurface interaction. Thus, this claim limitation is not met. 15. Nor is an equivalency argument, suggested by Dr. Fuller, plausible here under the function/way/result test. The “way” claimed by the ’894 patent (shallow plasma and ejection of energy from the surface) is fundamentally different than the “way” of the LenSx Laser (subsurface cavitation bubbles), and the “result” claimed in the ’894 patent (repeated removal of material from the surface with minimal damage) is also fundamentally different than the “result” of the LenSx Laser (subsurface cleavages with significant damage). Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 35 of 42 Page ID #:5669 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 33 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 3. The LenSx Laser Does Not Practice the “Removed” Limitation 16. Claim 1 of the ’894 patent and its dependent claims require the limitation: “allowing said formed plasma to decay, such that said material portion is removed,” and claim 11 and its dependent claims require the limitation: “each successive pulse forming an additional plasma until a sufficient amount of material has been removed.” (Acker Decl. Ex. 3 [’894 patent] at 17:31-32.) The Court has not construed any of the terms in these limitations. 17. Because the LenSx Laser does not cause material to be removed between femtosecond pulses, but rather transforms material from a solid into a plasma during the ablation process inside the bulk material of the eye, the removal limitation is not met. 4. The LenSx Laser Does Not Cause “Substantially No Collateral Damage” 18. All of the asserted claims of the ’894 patent require the limitation: “substantially no collateral damage thereto.” (Acker Decl. Ex. 3 [’894 patent] at Claim 1.) The Court construed this limitation to mean “minimal damage to the area surrounding the target area, including, but not limited to, undesirable cracks, material charring, discoloration, surface melting and perceived pain.” (-1538 Case, D.I. 59 at 35 (emphasis added).) 19. Plaintiffs will be unable to prove that the LenSx Laser causes “substantially no collateral damage,” in particular because it is indisputable that the LenSx Laser causes significant perceived pain and because it fundamentally relies upon causing substantial disruption to tissue surrounding the beam spot. Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 36 of 42 Page ID #:5670 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 34 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 C. There is No Evidence that the LenSx Laser Practices the “Without Any Thermal Damage” Limitation of All Asserted ’926 Patent Claims 20. Asserted claims 6-7 and 20-23 of the ’926 patent require that a plurality of disruptions is created “without any thermal damage further than 5 μm below the plurality of disruptions.” (Acker Decl. Ex. 14 [’926 patent] at Claim 6.) 21. Because Neev has no evidence with which to meet his burden, LenSx is entitled to summary judgment on non-infringement. Display Technologies, Inc. v. Paul Flum Ideas, Inc., 282 F.3d 1340, 1348 (Fed. Cir. 2002) (finding failure to point to evidence to establish that accused device operates in way required by claims required summary judgment). D. The Asserted Claims of the ’926 Patent Are Invalid as Anticipated by the ’199 Patent 22. An anticipation analysis involves a three-part inquiry. First, the trier of fact must determine whether the challenging reference is prior art. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576-78 (Fed. Cir. 1996). Second, the fact finder must ascertain that the prior art is enabling as to put the invention in the public’s possession, though prior art references, however, are presumed enabled. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003). In the third step, the trier of fact must ascertain whether each element of the accused claim is present either expressly or inherently in a single prior reference. Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). 1. The ’199 Patent Anticipates the Asserted Independent Claims of the ’926 Patent 23. Under § 102(a), a patent is anticipated, and therefore invalid, if the invention was patented before the date of the invention. The ’199 patent that issued Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 37 of 42 Page ID #:5671 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 35 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 on November 19, 2002, therefore, is prior art to the ’926 patent, which was not filed until 2007. 24. The ’199 patent teaches claim 6’s preamble: “a device for treating a region of a target having a surface” and claim 20’s preamble: “a method of modifying a region of a target.” 25. The ’199 patent teaches claim 6’s “an energy source coupled with at least one [optical assembly capable of generating multiple beams]” and claim 20’s “providing an energy source to produce [multiple beams] with at least one [optical assembly capable of generating multiple beams].” 26. The ’199 patent teaches claim 6’s “a controller that operates the energy source to direct said [multiple beams] below the surface of the target” and claim 20’s “directing the [multiple beams] below the surface of the target with a controller that operates the beam generator.” 27. The ’199 patent teaches claim 6’s “create a plurality of disruptions below the surface in a 3-dimensional pattern within the thickness of the target” and claim 20’s “creating a plurality of disruptions below the surface of the target in a 3 dimensional pattern within the thickness of the target.” 28. The ’199 patent teaches claim 6 and claim 20’s “without any thermal damage further than 5 μm below the plurality of disruptions.” 29. The ’199 patent also teaches claim 20’s “the plurality of disruptions create scattering centers to decrease the amount of light penetrating deeper into the target” under Neev’s expert’s position that this limitation is met by “creat[ing] multiple cavitation bubbles” and that “[t]he cavitation bubbles create scattering centers that decrease the amount of light that penetrates deeper into the cornea.” Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 38 of 42 Page ID #:5672 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 36 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 2. The ’199 Patent Anticipates the Asserted Dependent Claims of the ’926 Patent 30. Claim 7 requires “the controller is configured to control the [multiple beams] such that each beam has a pulse duration of no more than 10−9 seconds,” claim 22 requires “the [multiple beams] comprises pulses of duration is between about 10−15 second and about 10−12 seconds,” and claim 23 requires “the pulse duration is less than about 10−8 seconds, or less than about 10−9 seconds, or less than about 10−10 seconds, or less than about 10−11 seconds.” The ’199 patent teaches pulse durations in the range of about 1 femtosecond to about 10 milliseconds, which includes pulse durations falling into each of the ranges above: “[P]ulse duration in the range of about 1 femtosecond to about 10 milliseconds.” 31. The ’199 patent also teaches claim 21’s “the [multiple beams] comprise pulsed light.” The ’199 patent teaches a pulsed laser beam, which is a beam of pulsed light: “The method for ablating a material comprises the steps of directing a pulse of energy at the material and so as to permanently modify a quantity of the material.” E. LenSx Is Entitled to Summary Judgment on Non-Patent Claims Asserted by Plaintiffs 1. LLNS Fails to Establish Required Elements of Fraud 32. A fraud claim under California law requires a plaintiff to establish: “(a) misrepresentation (false representation, concealment, or nondisclosure); (b) knowledge of falsity (or ‘scienter’); (c) intent to defraud, i.e., to induce reliance; (d) justifiable reliance; and (e) resulting damage.” Neilson v. Union Bank of California, N.A., 290 F. Supp. 2d 1101, 1140-41 (C.D. Cal. 2003) (quoting Engalla v. Permanente Medical Group, Inc., 15 Cal. 4th 951, 974 (1997)). Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 39 of 42 Page ID #:5673 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 37 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 33. Computation of fraud or intentional interference damages or “evidentiary material . . . on which each computation is based” is required by Fed. R. Civ. P. 26(a)(1)(A)(iii). 34. An undisclosed damages theory should be excluded from trial. See, e.g., Hsu v. Thorsen Tool Co., 2014 U.S. Dist. LEXIS 195156 (C.D. Cal. Nov. 10, 2014); Vinotemp Int’l Corp. v. Wine, 2013 U.S. Dist. LEXIS 142100 (C.D. Cal. Feb. 5, 2013). 35. LLNS will be unable to establish all required elements of a fraud claim. 2. LLNS Fails to Establish Required Elements of Intentional Interference with Contractual Relations 36. The required elements are: “(1) a valid contract between plaintiff and a third party; (2) defendant’s knowledge of this contract; (3) defendant’s intentional acts designed to induce a breach or disruption of the contractual relationship; (4) actual breach or disruption of the contractual relationship; and (5) resulting damage.” Quelimane Co. v. Stewart Title Guar. Co., 19 Cal.4th 26, 55 (1998) (internal quotation marks and citation omitted). 37. LLNS will be unable to establish all required elements of an intentional interference with contractual relations claim. 3. Femto Has No Evidence to Show Any Unlawful, Unfair, or Fraudulent Business Practices by LenSx to Support its UCL Claim 38. To bring a UCL claim, “a plaintiff must show either an (1) ‘unlawful, unfair, or fraudulent business act or practice,’ or (2) ‘unfair, deceptive, untrue or misleading advertising.’” See Lippitt v. Raymond James Fin. Servs., 340 F.3d 1033, 1043 (9th Cir.2004) (quoting § 17200). Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 40 of 42 Page ID #:5674 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 38 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 39. To state a claim under this prong, a “plaintiff must establish that the practice is either unlawful (i.e., is forbidden by law), unfair (i.e., harm to victim outweighs any benefit) or fraudulent (i.e., is likely to deceive members of the public).” Albillo v. Intermodal Container Services, Inc., 114 Cal. App. 4th 190, 206 (2003). 40. See Creager v. Yoshimoto, No. C05-01985JSW, 2007 WL 2938168, at *4 (N.D. Cal. Oct. 9, 2007) (“[A] fraudulent business practice under Section 17200 is not based upon proof of the common law tort of deceit or deception, but is instead premised on whether the public is likely to be deceived.”) (internal quotation marks omitted). 41. Femto will be unable to establish all required elements of a UCL claim. 4. Femto Has Failed to Establish Any Grounds for Rescission 42. Rescission is a remedy that disaffirms the contract. Cal. Civ. Code § 1688 et seq. 43. Grounds for rescission include: (1) “[i]f the consent of the party rescinding … was given by mistake, or obtained through duress, menace, fraud, or undue influence, exercised by or with the connivance of the party as to whom he rescinds”; (2) “[i]f the consideration for the obligation of the rescinding party becomes entirely void from any cause”; and (3) “[i]f the consideration for the obligation of the rescinding party, before it is rendered to him, fails in a material respect from any cause.” Cal. Civ. Code § 1689(b). 44. Femto will be unable to establish all required elements of a recession claim. Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 41 of 42 Page ID #:5675 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 39 Alcon LenSx’s Statement of Uncontroverted Facts and Conclusions of Law Case No. 8:15-cv-01538-JVS-JCGx (Consolidated) sd-699638 Dated: May 22, 2017 MORRISON & FOERSTER LLP By: /s/ Eric M. Acker ERIC M. ACKER Attorneys for Defendant and Counterclaimant ALCON LENSX, INC. Case 8:15-cv-00624-JVS-JCG Document 159-2 Filed 05/22/17 Page 42 of 42 Page ID #:5676