Published in Legal

Alcon faces penalty over Sight Sciences patent infringement

This is editorially independent content
4 min read

Sight Sciences received a favorable jury trial verdict for a patent infringement case it originally filed in 2021 against Alcon, Inc. and its subsidiaries.

Let’s start with a refresher on this case.

Back in September 2021, Sight Sciences filed a lawsuit within the U.S. District Court for the District of Delaware against Ivantis, Inc. for selling the Hydrus Microstent.

The allegation: Ivantis, Inc. (a subsidiary of Alcon) had infringed on four U.S. patents that describe and claim devices/methods for reducing intraocular pressure (IOP) in the eye.

Go on …

Further, a magistrate judge held a Markman hearing and issued a Report and Recommendation, which recommended to the Court that they put together a construct of 10 disputed claim terms specifically linked to these four U.S. patents and a fifth noted below (see “The amendment”) .

  • Note: Sight Sciences sought monetary damages and injunctive relief.

The amendment: In August 2022, the lawsuit was amended to include Alcon (Alcon Inc, Alcon Vision, LLC; and Alcon Research, LLC) for allegedly infringing on their U.S. patent (No. 11,389,328).

Wait, what is a Markman hearing?

Great question!  This type of hearing is a judicial proceeding held in a U.S District Court during a patent infringement case where a judge is responsible for interpreting the meaning and words and phrases in a patent.

The legal jargon typically used is “claims construction” which translates to claim interpretation.

How did Alcon and Ivantis respond to this?

The companies each filed petitions for inter partes review of the patent infringements and sought the invalidation of all four patents:

And the initial outcome of this?

Back in March 2023, the U.S. Patent Office denied all four patents’ petitions, declaring that any review to evaluate the potential invalidity of Sight Sciences’ claims were unwarranted.

Why, exactly?

The Patent Office stated its initial examination of Sight Sciences’ patents had already demonstrated the same (or largely similar) art.

  • Plus: It was concluded that both Alcon and Ivantis had failed to show sufficient evidence that the Patent Office’s examiner had made a material error when considering previous art.
  • Thus: The Patent Office’s rejection was final—and, most importantly, neither companies were permitted to appeal the verdict

What happened with Sight Sciences?

A jury trial covering the company’s patent infringement claims against Alcon and Ivantis was scheduled for April 8, 2024.

The patents involved:

Gotcha! So what happened with that?

A positive verdict (in favor of Sight Sciences) was granted on April 26, 2024 following a five-day trial.

The findings: Alcon had willfully infringed all three Sight Sciences’ asserted patents.

And the monetary damages?

Awarded to Sight Sciences based on past infringement, monetary damages included:

  • $5.5 million in lost profits
  • $28.5 million in royalty damages for sales of the Hydrus Microstent
    • Time period: Starting from its commercial launch through the end of the trial

The grand total amounts to $34 million, of which Alcon is required to pay.

Any other details to know?

In its announcement of the trial verdict, Sight Sciences also noted the judge has yet to rule on “any potential enhancements of damages associated with the willfulness verdict or other remedies.”

Lastly, is this decision final?

Unlike the court’s decision in March 2023, this verdict can be appealed.

*Disclaimer: The information provided in this article does not and is not intended to constitute legal advice; instead, all information, content, materials available herein are for general information purposes only.

How would you rate the quality of this content?