Alcon Research Ltd v. Neev Joseph

1. Case Identification

• Case #: IPR2014-00217
• Patent #: 6,482,199
• Filed: December 3, 2013
• Petitioner(s): Alcon Research, Ltd.
• Patent Owner(s): Dr. Joseph Neev
• Challenged Claims: 1, 44, 46-47, 81, 83, and 85

2. Patent Overview

• Title: Method and Apparatus for High Precision Variable Rate Material, Removal and Modification
• Brief Description: The ’199 patent describes methods and systems for laser-pulse modification of a target material, particularly biological tissue. The technology focuses on selecting laser beam parameters to modify material within a target region while minimizing collateral damage to surrounding areas.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 44 are Anticipated by Lai or Obvious over Lai in View of Latina

• Prior Art Relied Upon: Lai (WO 94/25107) and Latina (5,549,596).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lai, which describes a method for improved laser-based corneal surgery, taught every limitation of claims 1 and 44. Lai disclosed a method of controlled material modification using a pulsed laser with a variable repetition rate. Petitioner asserted Lai met the limitation of "preparing the target region" by teaching the application of mechanical pressure to the cornea via an "applanator plate," which alters the cornea's scattering characteristics. The limitation of allowing energy transients to "substantially decay" was allegedly met by Lai’s teaching of using short pulses where energy is expelled with the plasma explosion before the next pulse, thereby minimizing collateral damage.
  • Motivation to Combine (for §103 grounds): In the alternative, Petitioner argued that if Lai alone did not teach the "preparing" step, it would have been obvious to combine Lai with Latina. Both references are in the same field of ophthalmic laser treatment. Latina taught applying a dye to targeted cells to increase laser absorption. A POSITA would combine Latina’s dye method with Lai’s laser surgery system to improve the efficacy of treating pigmented cells on the cornea, as Latina suggested its method could be used with any suitable ophthalmic laser.
  • Expectation of Success: A POSITA would have had a high expectation of success because both technologies were directed to laser eye surgery and used conventional laser systems.

Ground 2: Claims 81 and 85 are Obvious over Juhasz ’438 in view of Juhasz 1996

• Prior Art Relied Upon: Juhasz ’438 (5,993,438) and Juhasz 1996 (a journal article titled "Time-Resolved Observations of Shock Waves and Cavitation Bubbles Generated by Femtosecond Lasers in Corneal Tissue").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Juhasz ’438 taught a controlled, variable-rate method of photodisruption in ophthalmic surgery using a pulsed laser, disclosing most elements of claims 81 and 85, including the specific pulse repetition rate of 30-100 kHz. The key limitation of "allowing interaction energy transients... to decay sufficiently" was met by combining Juhasz ’438 with Juhasz 1996. Juhasz ’438 taught minimizing collateral damage by matching the cavitation bubble size to the laser's focal spot. Juhasz 1996 explicitly taught that if sufficient time is allowed to pass between pulses, the cavitation bubble will decay and shrink, eventually disappearing.
  • Motivation to Combine: A POSITA would combine the two references because they address the same technical problem in the same field. Juhasz '438 expressed a desire to have the cavitation bubble size equal the focal spot size to minimize damage. Juhasz 1996 provided the explicit teaching on how to achieve this goal by allowing sufficient time for the bubble to decay between pulses. Therefore, a POSITA would have been motivated to incorporate the time-delay teaching of Juhasz 1996 into the system of Juhasz ’438 to achieve the stated objective of minimizing collateral damage.
  • Expectation of Success: Success was expected as the combination involved applying a known physical principle (cavitation bubble decay over time) to achieve a stated goal (damage reduction) in a known laser system.

Ground 3: Claims 1, 44, 81, and 85 are Anticipated by Fisher

• Prior Art Relied Upon: Fisher (5,829,448).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fisher, which was never cited during prosecution, anticipated all limitations of claims 1, 44, 81, and 85. Fisher taught a method for photo-dynamic therapy with a high degree of spatial selectivity using a pulsed laser operating within the claimed pulse duration and repetition rates (1 kHz to 10 GHz, which encompasses the 30-100 kHz range). Fisher taught "preparing the target region" by administering a photo-active molecular agent (a PDT agent) to increase absorption. The "substantially decay" limitation was met because Fisher’s method relied on non-linear two-photon excitation, which inherently minimizes collateral photo-activation outside the focus region. Petitioner asserted that achieving this highly localized effect required reducing the laser's repetition rate, which necessarily allows energy transients from a given pulse to dissipate before the next pulse arrives.
• Additional Grounds: Petitioner asserted additional challenges, including that claims 46 and 47 (adding a feedback device) were obvious over Lai or Fisher in view of Neev ’894 (5,720,894), which taught using a feedback analyzer for precise control of laser ablation.

4. Key Claim Construction Positions

• "allowing interaction energy transients... to substantially decay": Petitioner argued this term should be construed to mean "the removal or dissipation of pulse energy before subsequent pulse interaction with tissue, causing minimal collateral damage." This construction was based on the specification and the Patent Owner's positions in prior litigation.
• "preparing the target region...": Petitioner argued for a broad construction to mean changing absorption or scattering characteristics by either "(1) application of surface and/or sub-surface high absorption doping agents or (2) application of mechanical pressure to the material (e.g., the eye of a patient)." The second prong was based on the Patent Owner's infringement contentions in a related arbitration where applying mechanical pressure was alleged to meet this limitation.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1, 44, 46-47, 81, 83, and 85 of the ’199 patent as unpatentable.