Rоbert M. Sinskey appeals the judgment of the United States District Court for the Central District of California holding that United States Patent No. 4,601,720 is invalid under 35 U.S.C. § 102(b). Because we agree with the district court that Sinskey has not raised a genuine issue as to any material fact and that Pharmacia Ophthalmics, Inc. is entitled to judgment as a matter of law, we affirm.
BACKGROUND
Dr. Robert M. Sinskey is the named inventor and sole owner of the patent in suit, United States Patent No. 4,601,720 (the ’720 patent). On February 20, 1990, Sinskey filed a complaint alleging infringement of the '720 patent by Pharmacia Ophthalmics, Inc. Pharmacia filed a motion for summary judgment on Aрril 29, 1991, asserting that claims 1, 5 and 6 of the ’720 patent were invalid under 35 U.S.C. § 102(b) based upon the public use and sale of the claimed invention by Sinskey and IOLAB Corporation. Sinskey had filed his patent application on February 24, 1981, making the critical date for the use and sale inquiry February 24, 1980. In opposing the motiоn, he asserted that all precritical date activity was for experimental purposes and could not be the basis for a bar under section 102(b). In a July 16, 1991, order, the district court granted summary judgment, holding that Sinskey raised no genuine issue of material fact about the defense of experimental use. This is his appeal of that order. 1
The patent is directed to an intraocular lens (IOL). IOL’s are commonly implanted in the human eye to restore or improve the vision of patients who have had their natural lens removed because of damage or disease. An IOL consists of a transparent lens several millimeters in diameter, and loops or “haptics” joined to the lens. The loops retain the lens in the proper position in the eye.
In 1977, an IOL invented by Dr. Stephen P. Shearing became available. This lens is commonly referred to as the “Shearing” or “J-Loop” lens. Sinskey implanted approximately 1,000 Shearing lenses between 1977 and 1979. The Shearing lens was manufactured and sold by IOLAB as its Model 101 lens. Another IOL available in the late 1970’s was designed by Dr. William Simcoe. The “Simcoe” lens had continuously curved C-shaped loops.
See generally Shearing v. Iolab Corp.,
Sinskey testified under oath in a deposition on January 10, 1991, that he saw problems with the prior art IOL’s. Specifically, thеre was a risk of injury due to the loops of the lens piercing the interior of the patient’s eye during implantation. Sinskey sought to solve this problem by attempting a compromise between the Shearing J-Loop and the Simcoe C-Loop lenses. In November of 1979, he first thought of using a modified J-loop, having a shape somewhere between those of the other two lens designs. He presented his idea to IOLAB, who had its engineers prepare an engineering drawing of the lens. The lens was designated Model 103J and was added to IOLAB’s existing collection of lenses on November 16, 1979. Sinskey has admitted that the Model 103J lens is the invention of claims 1, 5 and 6 of the ’720 patent. By late December, 1979, IOLAB produced the first sterile Model 103J lenses which were ready for implantation into patients. IOL- *497 AB made the Model 103J lenses in the same way and with the same materials as the Shearing Model 101 lenses.
Sinskey first successfully implanted the Model 103J lens into a patient’s eye on January 17, 1980, and between February 7 and 18, 1980, he implanted seven more Model 103J lenses in seven additional patients. Thus, a total of eight Model 103J lenses were implanted prior to February 24, 1980, the critical date. All eight implantations took place at St. John’s Hospital, Santa Monica, California, under normal conditions and following standard hospital procedures.
IOLAB’s computerized record summaries show that IOLAB sold Sinskey at least three separate Model 103J lenses, pursuant to an invoice dated January 18, 1980. The records show the lenses were sold for $250 apiece and payment was received in full. IOLAB sales records also show that three Model 103J lenses were ordered on January 15, 1980, and that one of the lenses was shipped February 11, 1980, and invoiced for $250 on February 12, 1980. Another IOL-AB sales document indicates that Sinskey ordered 25 Model 103J lenses on February 19, 1980.
On March 17, 1980, after Sinskey implanted three more Model 103J lenses, for a total of eleven, IOLAB first offered the Model 103J lens for sale commercially to other ophthalmologists. IOLAB continued to sell Model 103J lenses for $250 each, with over 3,400 sold between March 17, 1980, and March 27, 1981.
DISCUSSION
The first question is the propriety of summary judgment which we decide for ourselves. We are not bound by the district court's ruling that there was no genuine issue of material fact to prevent judgment for Pharmacia as a matter of law.
Armco, Inc. v. Cyclops Corp.,
The facts set out abovе are not in dispute. The only issue is the purpose for which the pre-critical date implantations were made. The burden was on Sinskey to present some evidence that would raise a genuine issue of material fact over his allegation of experimental use. He argued that his declaration in opposition to defendant’s motion for summary judgment does that. The district court agreed that the declaration was in direct conflict with Sins-key’s previous testimony at the deposition, but held that this conflict did not raise a genuine issue of material fact.
Sinskey had testified undеr oath in the deposition that no testing of the Model 103J lens was required. 2 He made statements to the effect that he believed the lens would work and that the lens was not significantly different from the Shearing lens which he had implanted on hundreds of occasions in the past. And he testified that, after the first implantation, he felt sure the Model 103J lens would work and that there was no need for any further tests.
In the declaration, on the other hand, Sinskey said he considered the first eleven implants of the Model 103J lens to be experimental. 3 These assertions directly con *498 flict with the deposition statements that he did not believe thе lens required testing. There is no explanation for the facial inconsistency, and the declaration does not attempt to reconcile the conflict; indeed, it does not address Sinskey’s deposition testimony at all.
A party cannot create an issue of fact by supplying аn affidavit contradicting his prior deposition testimony, without explaining the contradiction or attempting to resolve the disparity.
See, e.g., Martin v. Merrell Dow Pharmaceuticals, Inc.,
The statutory presumption of validity under 35 U.S.C. § 282 puts the burden of proving invalidity on the party asserting it and the burden never shifts to the patentee.
Stratoflex, Inc. v. Aeroquip Corp.,
Pharmacia has put forth evidencе establishing the eight pre-critical date implantations and the sale by IOLAB of at least three Sinskey lenses. Sinskey did not contest these facts; in fact, he admitted them in Pharmacia’s initial request for admissions. Pharmacia has thus met its burden of establishing a prima facie case of invalidity under section 102(b) because the patented lenses were in public use or on sale more than one year before the patent application was filed. It was then incumbent on Sinskey to put forth some evidence in rebuttal to support his claim of experimental purpose.
To establish that an оtherwise public use or sale does not run afoul of section 102(b), it must be shown that the activity was “substantially for purposes of experiment.”
Baker Oil Tools, Inc. v. Geo Vann, Inc.,
As we have seen, Sinskey’s only rebuttal evidence was the declaration in opposition tо summary judgment proclaiming that the implantations were intended to
*499
be experimental, which was inconsistent with his deposition statement that he did not believe the lens needed to be tested. Sinskey argues here that his deposition is not inconsistent with his later declaration. He says that together they raise a genuine issue of material fact with regard to the alleged experimental purposes of the precritical date implantations. Sinskey argues that the implantations themselves were the required tests, and that he was never asked at deposition the purpose of the implantations, or how many would be necessary before he would be satisfied the lens was safe and effective. Even if the declaration could somehow be interpreted as consistent with the deposition, however, Sinskey still could not forestall summary judgment because аfter-the-fact testimony of an inventor’s subjective “experimental intent” is entitled to minimal weight.
In re Smith,
The objective evidence in this case cuts heavily against experimental use. Sinskey charged his usual surgicаl fee of $1,900 for each of the eight operations and IOLAB charged its standard $250 price for the lenses. He did not inform the patients that they were being treated with a “new” or “experimental” lens, nor did he obtain any kind of secrecy agreement from the patients or surgical staff. None of the documents provided by IOLAB or Sinskey ever referred to the Model 103J as “experimental” or the subject of tests. Apparently routine medical records of these implantations were kept, but Sinskey does not refer to them specifically, and they were not put before thе district court. If they contained any indication that the implantations were part of an experimental or test program, rather than routine operations, it is fair to assume Sinskey would have offered them. Besides, in its Pre-Market Approval Application to the FDA, IOLAB characterized the Sinskey lens as “equivalent in design, use and function to the Shearing ... Lenses” and requested that it be "approved at this time as a supplement to the Shearing” lenses.
Sinskey also provided no evidence contemporaneous with the initial eight implant operations that would cоrroborate his claims that they were for experimental purposes. Even evidence of his subjective intent at the time of the implantations was absent from the record. It is logical to expect that if an inventor set out to test a new device, there would be some contеmporaneous evidence about the success or at least the occurrence of the tests. One would expect some note at the time that the test was, or was not, successful. In an invention that was part of a medical procedure, the inventor might have made sоme notation in the medical records about the use of the experimental device. Here there was no contemporaneous evidence at all, subjective or otherwise, that might indicate the existence of tests or an experimental program. Nothing else Sinskеy raises persuades us an error was committed.
CONCLUSION
Accordingly, the judgment of the United States District Court for the Central District of California is affirmed.
AFFIRMED.
Notes
. In another order dated January 15, 1992, the district court granted Pharmacia summary judgment, holding that claims 2, 3 and 4 of the '720 patent were invalid under 35 U.S.C. § 103 as obvious in light of the рrior art, including Sins-key’s and IOLAB's pre-critical date activity. Sinskey has conceded that if we affirm the July 16 order that this activity was not experimental use, and therefore was prior art under section 102(b), then claims 2-4 are invalid under section 103.
. The particular portion of Sinskey’s deposition reliеd upon by the district court reads as follows:
Q. Were there any animal tests after they were sterilized?
A. Not that I remember.
Q. You didn’t indicate that they had to be tested?
A. No.
Q. In any way?
A. No, it looked pretty obvious to me what should be done.
Q. What was it obvious that had to be done?
A. I thought it was great myself and I couldn’t wait to put them in people.
Q. You knew they were going to work right away, didn’t you?
A. Right.
Q. So you didn’t feel they had to do any running of tests?
A. No, because it was basically — it wasn’t that markedly different ...
. Discussing the first implantation Sinskey stated in the declaration:
While I was satisfied with the performance of the lens in this particular implantation, I still could not be sure that the lens was going to work in all implantation surgeries____ I therefore needed to perform additional tests in order to insure that the lens would consistently work well____
*498 Referring to the first eleven implantations, he said,
I considered those eleven implantations ... to be experimental. I wanted to determine whether my new lens design would be easier and safer to implant than the Shearing lens and whether it would minimize the risk of damage to the zonules and capsule. In order to accomplish this test, I knew I would have to implant the lenses in a number of patients. ... It was only after these eleven implantations were successfully completed that I would be sure that my new design both minimized the risk of zonular and capsular damage while still providing sufficient support for the lens.