PTAB

IPR2018-01311

Haag Streit AG v. Eidolon Optical LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Ophthalmic Illuminator for Fluorescein Dye Examination
  • Brief Description: The ’394 patent discloses a device for illuminating a patient’s eye after administration of a fluorescent dye to examine for epithelial defects. The invention’s simplest form comprises a battery, an electrical resistor, an electrical switch, and a blue light-emitting diode (LED).

3. Grounds for Unpatentability

Ground 1: Obviousness over Longobardi in view of Devonshire - Claims 1, 5, 6, 8-10, 14, and 19 are obvious over Longobardi in view of Devonshire.

  • Prior Art Relied Upon: Longobardi (European Patent Application No. 0 554 643 A1) and Devonshire (UK Patent Application GB 2 077 946 A).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Longobardi, which discloses a portable apparatus for fluoroscopic angiography, teaches most elements of independent claim 1, including a battery-powered light source, an LED, and its use with fluorescein dye which implies blue light emission. However, Longobardi does not expressly disclose an electrical resistor in circuit. Petitioner asserted that Devonshire, which teaches a hand-held indirect ophthalmoscope, remedies this deficiency by disclosing a "dimmer control" (an electrical resistor) in circuit with a battery and light source. For the dependent claims, Petitioner contended that Longobardi and Devonshire collectively teach the additional limitations. For instance, both references describe a hand-held housing (claim 5), Devonshire discloses a magnifier lens with specific powers (16D-36D) that satisfy the 1.5x-15x range of claim 6, and Devonshire teaches a focusing lens to direct light onto a patient's eye (claim 14).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Longobardi's portable LED illuminator with Devonshire's dimmer control to achieve the predictable and desirable result of adjustable light intensity. This modification would improve patient comfort and examination quality, providing a clear motivation for the combination.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in integrating a standard dimmer circuit (resistor) from Devonshire into the portable ophthalmic device of Longobardi, as it involves applying a known technique to a similar device to obtain a predictable improvement.

Ground 2: Anticipation by Longobardi - Claims 15 and 16 are anticipated by Longobardi.

  • Prior Art Relied Upon: Longobardi (European Patent Application No. 0 554 643 A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Longobardi explicitly discloses every element of method claim 15. Longobardi teaches methods for "the illumination of the fundus of the eye" for fluoroscopic angiography. This method includes the claimed steps of: (1) administering a fluorescein dye (disclosed as a tracer); (2) illuminating the eye with blue light from an LED (disclosing filters for 465-490 nm, the known absorption peak for fluorescein); and (3) viewing the eye while the dye fluoresces. Petitioner argued that Longobardi's disclosure of using "sodium fluorescein" as a tracer also expressly anticipates dependent claim 16, which requires the dye to comprise Sodium Fluorescein.

Ground 3: Anticipation by Devonshire - Claims 1, 5, 6, 8-10, 14-16, and 19 are anticipated by Devonshire.

  • Prior Art Relied Upon: Devonshire (UK Patent Application GB 2 077 946 A).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Devonshire discloses every limitation of the challenged claims. For independent claim 1, Devonshire teaches a hand-held ophthalmoscope that contains a battery, a dimmer control (electrical resistor), and an inherent on/off switch, and it states the light source is "preferably a light-emitting diode." Devonshire further discloses its use for fluorescence angiography with fluorescein, which inherently requires the generation of blue light and the administration of a fluorescein dye. For the apparatus claims, Devonshire’s T-shaped housing, which contains the battery, lamp, and dimmer in a hand grip, was argued to be the claimed "integral package" (claim 5). Devonshire also discloses magnifying lenses with powers (16D, 36D) corresponding to magnifications (5x, 10x) within the range of claim 6. For the method claims, Petitioner asserted that Devonshire's teaching of using the device for fluorescence angiography inherently discloses the steps of administering fluorescein, illuminating with blue light, and viewing the result (claims 15, 16, 19).

4. Key Claim Construction Positions

  • "ophthalmic illuminator" (preamble of claims 1, 5, 6, 8-10, and 14): Petitioner proposed this term be construed to mean "a device for illuminating a patient's eye for ophthalmic examination."
  • Relevance: This construction is based on the ’394 patent's own description of the invention. Petitioner asserted this construction to establish that the prior art ophthalmoscopes disclosed in Longobardi and Devonshire fall squarely within the scope of the claims, thereby making them relevant prior art for both anticipation and obviousness analyses.

5. Relief Requested

  • Petitioner requests 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.