Free Status Report - District Court of Colorado - Colorado

Case 1:00-cv-01000-JLK-BNB

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO Civil Action No. 00-CV-1000-JLK-BNB RAS HOLDING CORP., a Delaware Corporation, and PRESBY, CORP., a Delaware corporation, Plaintiffs. v. DR. HOWARD N. STRAUB, a Colorado resident, COLORADO EYE INSTITUTE, P.C., a Colorado Corporation, and RESTORVISION, INC., a Colorado corporation, Defendants. JOINT STATUS REPORT AND MOTION FOR A STAY PENDING A FINAL RULING FROM THE U.S. PATENT OFFICE Plaintiffs RAS Holding Corp. and Presby Corp. respectfully request that this Court stay this case twelve (12) months pending a ruling by the United States Patent and Trademark Office ("Patent Office") on certain patent applications and other proceedings relating to technology at issue in this case. This motion arises directly out of the settlement conference held by Magistrate Judge Boyd N. Boland on Thursday, June 13, 2002, and is intended to hold this action in abeyance until the parties can make an intelligent decision concerning possible grounds for settlement.

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Grounds for this motion are set forth below. 1. This case involves new theories for the treatment of presbyopia. Presbyopia is the

inability to focus at near distances, which causes most people to require reading glasses as they grow older. 2. The plaintiffs assert that they have developed a procedure for treating presbyopia

involving the expansion of the sclera of the eye. The plaintiffs own United States patents for several medical procedures and devices to implement this method for treating presbyopia, including a scleral prosthesis that is placed in several quadrants of the eye, in the region of the ciliary muscle. This implant is called the "Presby Implant." The plaintiffs have received several patents on this procedure and related implants, which are at issue in this suit, and have additional patent applications pending. 3. Defendant Dr. Howard Straub asserts that he has developed and/or improved

scleral implants and surgical techniques for the treatment of presbyopia. Dr. Straub has applied for a patents on an implant which is called the "Restorvision Implant." 4. Neither the Presby Implant nor the Restorvision Implant has been approved for

commercial use in the United States by the Food & Drug Administration, although the plaintiffs are conducting domestic clinical trials approved by the FDA, and Restorvision, Inc. and Dr. Straub have submitted data to the FDA and assert that they are in the process of gathering and submitting additional data. 5. As indicated, Dr. Straub's application for a patent on the Restorvision Implant is

pending. The plaintiffs have challenged Dr. Straub's patent application in the Patent Office as 2

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being unpatentable to Dr. Straub, in light of work done previously by Dr. Schachar or Dr. Gene Zdenek. Currently, the U.S. Patent Office has rejected the defendants' patent application as being unpatentable. Defendants filed a response to the rejection on April 28, 2005. On May 17, 2005, the U.S. Patent Office refused to enter and/or consider the response because it raised new issues requiring still further consideration. Defendants' have until June 28, 2005 to respond to the present status of the case by either filing a request that the U.S. Patent Office continue the examination of the patent application or an appeal of the U.S. Patent Office's present decision to the Board of Appeal. 6. The result of these challenges could be that (a) (b) Dr. Straub will obtain a patent on the Restorvision Implant, Dr. Schachar or Dr. Zdenek will obtain a patent on the Restorvision

Implant, which patent then would be assigned to the plaintiffs, (c) (d) Nobody will receive a patent on the Restorvision Implant, or That a patent applications of Dr. Straub, and Drs. Schachar and Zdenek

will be disallowed, which is how the matter currently stands. 7. The parties participated in an extended settlement conference on Thursday,

June 13, 2002. During the course of that conference, with the assistance of Magistrate Judge Boland, the parties were able to clarify the issues that must be addressed if this case is to be resolved through settlement.

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8.

Setting aside opposing claims for attorneys' fees and/or damages, the key issues

are the following: (a) On the one hand, the plaintiffs seek confirmation that the patents asserted

in this case are valid and are infringed by the Restorvision Implant. Plaintiffs assert, subject to that confirmation, Plaintiffs would have no objection to Defendants' effort to obtain FDA approval for the Restorvision Implant. If and when the defendants obtain FDA approval, however, Plaintiffs assert that Defendants could not commercialize the Restorvision Implant without infringing one or more of the plaintiffs' patents. (b) On the other hand, Defendants understandably do not want to resolve this

case only to be confronted with an infringement suit if and when they obtain FDA approval for the Restorvision Implant. Therefore, Defendants believe that any resolution of this case probably would involve grants of license or cross-license. 9. The prospect of settlement is further complicated by the fact that Plaintiffs'

technology has recently been licensed to CIBA Vision, which has made a substantial commitment to commercialize the Presby Implant, including commercialization in the United States, if and when it is approved by the FDA. 10. To a very real degree, the "value" of the Restorvision Implant, and the prospect of

resolving the present lawsuit, is a function of whether Dr. Straub obtains patent protection of his reading implants. In other words, if the Patent Office grants Dr. Straub a patent on the

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Restorvision Implant, both parties will be motivated to evaluate the financial and technological wisdom of negotiating a license to cover the Restorvision Implant. 11. Yet, if the Patent Office rejects Dr. Straub's patent application, and either (a)

issues a patent to Dr. Schachar or Dr. Zdenek, both of whom have assigned their rights, if any, to the plaintiffs, or (b) refuses to issue a patent to anyone, Plaintiffs believe there would be nothing to license and little value to recognize in the Restorvision Implant. 12. Therefore, the parties have concluded that it is not reasonably possible to resolve

this lawsuit without first knowing the result of the proceedings in the Patent Office. 13. The parties respectfully request that the Court stay proceedings in this case for

twelve (12) months or until the Patent Office finally rules in the matter. The parties propose to file a status report with the Court in six months if the Patent Office has not ruled by that time. In addition, the parties believe that either side should be permitted to move for the entry of an order lifting the stay if circumstances change.

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14.

While the parties recognize that the requested stay would not remove the case

from the Court's docket, they firmly believe that the proposed stay would conserve both the Court's and the parties' resources, would result in efficient judicial administration, and would be fair to all concerned. Dated: June 27, 2005. Respectfully submitted,

/s Brian P. Kinnear James E. Hartley Brian P. Kinnear Holland & Hart, LLP 555 Seventeenth Street, Suite 3200 Denver, Colorado 80202 Phone: 303-295-8237 Fax: 303-295-8261 D.C. Box 06 and ­

/s Gary Lozow Gary Lozow Isaacson Rosenbaum P.C. 633 17th Street, Suite 2200 Denver, Colorado 80202 Phone: 303-292-5656 Fax: 303-292-3152 and ­

William A. Munck Mark D. Johnson Davis Munck, P.C. 900 Three Galleria Tower 13155 Noel Road Dallas, Texas 75240 Phone: 972-628-3600 Fax: 972-628-3616
ATTORNEYS FOR PLAINTIFFS
3395558_1.DOC(H&H document)

Thomas M. Saunders Lorusso & Loud 440 Commercial Street Boston, Massachusetts 02109 Phone: 617-227-0700

ATTORNEYS FOR DEFENDANTS

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CERTIFICATE OF SERVICE I hereby certify that on June 27, 2005, I electronically filed the foregoing with the Clerk of the Court using the CM/ECF system which will send notification of such filing to the following email addresses: [email protected] [email protected] and I herby certify that I have mailed or served the document or paper to the following nonCM/ECF participants by U.S. indicated by the non-participants name: William A. Munck Mark D. Johnson Davis Munck, P.C. 900 Three Galleria Tower 13155 Noel Road Dallas, Texas 75240 Thomas M. Saunders Lorusso & Loud 440 Commercial Street Boston, Massachusetts 02109 Phone: 617-227-0700

Gary Lozow Attorney for Defendants Isaacson Rosenbaum P.C. 633 17th Street, Suite 2200 Denver, Colorado 80202 Phone: 303-292-5656 Fax: 303-292-3152

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