Haag-Streit AG v. Eidolon Optical, LLC

1. Case Identification

• Case #: IPR2018- (number not assigned in document)
• Patent #: 6,547,394
• Filed: June 25, 2018
• Petitioner(s): Haag-Streit AG
• Patent Owner(s): Eidolon Optical, LLC
• Challenged Claims: 1, 5, 6, 8-10, 14-16, and 19

2. Patent Overview

• Title: Ophthalmic Illuminator
• Brief Description: The ’394 patent discloses a device for illuminating a patient's eye to examine for epithelial defects after administration of a fluorescent dye. The invention is described as utilizing four primary components: a battery, an electrical resistor, an electrical switch, and a blue light-emitting diode (LED).

3. Grounds for Unpatentability

Ground 1: Claims 1, 5, 6, 8-10, 14-16, and 19 are anticipated under §102(e)(2) over Lys.

• Prior Art Relied Upon: Lys (Patent 6,211,626)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Lys, which discloses methods and apparatus for providing light of a selectable color using LEDs, anticipates every limitation of the challenged claims. Independent claim 1 recites an ophthalmic illuminator with a battery, resistor, switch, and a blue LED used with fluorescein dye. Petitioner argued that Lys discloses a modular LED unit for ophthalmological examination that includes a power module with a battery, a processor to control current (the resistor), a responsive input switch, and blue LEDs. Lys further explicitly teaches that its system can be combined with fluorescein dye for ophthalmological evaluation.
  • Prior Art Mapping (Dependent Claims): Petitioner argued that Lys also teaches or inherently discloses the limitations of the dependent claims. For claim 5 (housing and magnifier lens), Lys discloses handheld, self-contained housings and the use of lenses for image projection, which a person of ordinary skill in the art (POSITA) would understand involves magnification. For claim 6, the standard magnification range for ophthalmoscopy (1.5x-15x) is inherently met by Lys’s intended use. For claim 8, the use of Sodium Fluorescein is inherent as it is the standard compound used in such examinations. For claims 9 and 10, the diode materials (Gallium Nitride or Silicon Carbide) are inherently disclosed as Lys specifies using conventional blue LEDs from a supplier known to use these materials at the time. For claims 14 and 19, the use of a focusing or magnifying lens is disclosed by Lys's teaching of "directing" light and projecting images. Finally, method claims 15, 16, and 19 were argued to be anticipated as they merely recite the intended use of the apparatus disclosed in Lys and anticipated in claim 1.

Ground 2: Claims 6, 10, and 14 are obvious over Lys in view of general knowledge in the art.

• Prior Art Relied Upon: Lys (Patent 6,211,626) and general knowledge in the art.
• Core Argument for this Ground: As an alternative to its anticipation arguments, Petitioner contended that if claims 6, 10, and 14 were found not to be anticipated, they would have been obvious over Lys combined with general knowledge.
  • Prior Art Mapping: Lys discloses an LED system for ophthalmic examination. The only differences are the explicit magnification range of claim 6 (1.5x-15x), the specific diode material of claim 10 (Silicon Carbide), and the explicit focusing lens of claim 14.
  • Motivation to Combine: A POSITA would have been motivated to modify Lys based on general knowledge. For claim 6, a POSITA would apply a standard magnification range for ophthalmoscopy to Lys’s system. For claim 10, a POSITA would be motivated to use Silicon Carbide, a known, cheaper alternative to Gallium Nitride for blue LEDs, in the system taught by Lys. For claim 14, a POSITA would understand that "directing" light, as taught by Lys, is best accomplished with a focusing lens, making it an obvious and simple modification to improve the device.
  • Expectation of Success: A POSITA would have had a high expectation of success in making these modifications, as they involved applying conventional, well-understood principles and components to the known system of Lys to achieve a predictable result.

4. Key Claim Construction Positions

• Petitioner proposed a construction for the preamble term "ophthalmic illuminator" (appearing in all challenged claims) as "a device for illuminating a patient’s eye for ophthalmic examination." This construction was based on the patent’s own specification and was asserted to be critical for demonstrating that the LED system in Lys, which is described for use in "ophthalmological examination," meets this limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution should not be denied under §325(d). During the original prosecution of the ’394 patent, the examiner cited a related patent (the ’868 patent) but withdrew the rejection after the applicant argued for an earlier priority date of October 21, 1997. Petitioner contended this priority claim was improper, as the ’394 patent's earliest supported filing date is October 20, 1998. Based on this later date, Lys qualifies as prior art under §102(e)(2). Because this specific argument regarding the correct priority date and the resulting prior art status of Lys was never presented to or considered by the examiner, Petitioner asserted that the current challenge is not the "same or substantially the same" as arguments previously presented to the Office.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 5, 6, 8-10, 14-16, and 19 of the ’394 patent as unpatentable.