Alcon Inc v. AMO Development LLC

1. Case Identification

• Case #: IPR2021-00823
• Patent #: 8,403,921
• Filed: April 16, 2021
• Petitioner(s): Alcon Inc., Alcon LenSx, Inc., Alcon Vision, LLC, Alcon Laboratories, Inc., and Alcon Research, LLC
• Patent Owner(s): AMO Development, LLC
• Challenged Claims: 1-23

2. Patent Overview

• Title: Laser Surgical System
• Brief Description: The ’921 patent discloses a system for performing ophthalmic procedures, particularly cataract surgery. The system integrates a laser for making incisions with a three-dimensional imaging system, such as Optical Coherence Tomography (OCT), to automatically identify eye structures, plan, and guide the laser treatment.

3. Grounds for Unpatentability

Ground 1: Obviousness over Swinger, Baikoff, and Li - Claims 1–2, 5, 9–13, and 16 are obvious over Swinger in view of Baikoff and Li.

• Prior Art Relied Upon: Swinger (Patent 6,325,792), Baikoff (a 2004 journal article on OCT), and Li (a 2003 journal article on automated biometry). Petitioner also presented an alternative ground using Yelbuz (a 2002 article) for its teachings on 3D rendering from OCT data.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Swinger disclosed a computer-controlled laser system for cataract surgery, including performing an anterior capsulotomy. However, Swinger relied on less advanced imaging like ultrasound. Baikoff taught the use of a more sophisticated OCT imaging system for pre-surgical diagnostics of the eye’s anterior segment. To the extent the claims required automatically identifying tissue boundaries and treatment regions, Li taught using a computer algorithm with an OCT system to perform such measurements automatically, overcoming the imprecision of manual measurements.
  • Motivation to Combine: A POSITA would combine Swinger’s laser surgery system with Baikoff’s superior OCT imaging to improve surgical accuracy, a well-known goal in the field. This combination represented a simple substitution of a known, improved imaging modality (OCT) for an older one (ultrasound). Furthermore, a POSITA would incorporate the automated measurement algorithms of Li to automate a known manual process, thereby increasing the speed, precision, and reproducibility of the procedure.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success, as integrating diagnostic imaging with laser treatment systems was a known and desirable goal. The components were all known to work for their intended purposes, and combining them would yield predictable results.

Ground 2: Obviousness over Freedman and Swinger - Claims 1–2, 5, 9–13, and 16 are obvious over Freedman in view of Swinger.

• Prior Art Relied Upon: Freedman (Patent 6,454,761) and Swinger (Patent 6,325,792).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Freedman disclosed a laser surgical system that uses OCT to three-dimensionally image and treat biological tissue, expressly including for "clearing cataracts." Freedman’s system included a processor to automatically control the laser based on the OCT imaging data. While Freedman taught the general concept, Swinger provided the specific, well-known details of performing modern cataract surgery, such as creating an anterior capsulotomy and fragmenting the lens.
  • Motivation to Combine: A POSITA would be motivated to apply Freedman's known OCT-guided laser technique to the specific, conventional cataract surgery methods described in Swinger. This combination amounted to applying a known improvement (OCT guidance) to a known surgical procedure (cataract surgery) to achieve the predictable result of improved accuracy. Freedman's broad disclosure of treating biological tissue would have naturally led a POSITA to apply it to well-established procedures like those in Swinger.
  • Expectation of Success: A POSITA would have reasonably expected success in configuring Freedman's system for the cataract surgery steps in Swinger. Freedman's system was already capable of imaging and ablating biological tissue, so programming it to target the cataractous lens and perform specific cutting patterns was well within the ordinary skill in the art.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Masket (for its teaching of projecting an alignment pattern onto the lens capsule) and Hoppeler (for its teaching of specific laser patterns to segment the lens into discrete fragments). These grounds targeted dependent claims and were based on similar motivations to combine known elements to add functionality and improve precision.

4. Key Claim Construction Positions

• "Automatically": Petitioner proposed construing this term as "without user control, but with or without taking into account user input." This construction was based on claim 10, which depends from claim 1 and requires the system to receive user input. Petitioner argued this shows "automatically" does not mean "without any human intervention whatsoever" but rather that the system performs its functions automatically after receiving initial parameters.
• "3-Dimensional imaging system": Petitioner argued that, based on the patent’s specification, this term should be construed as "an imaging system that is capable of scanning in at least two lateral dimensions and the axial dimension." This construction does not require the system to actually acquire and render a complete volumetric 3D image, only that it has the hardware capability to do so. This broader interpretation was critical to mapping prior art that described scanning across multiple meridians (e.g., Baikoff).

5. Arguments Regarding Discretionary Denial

• Petitioner argued extensively that discretionary denial under §314(a) and §325(d) would be inappropriate.
• Fintiv Factors: The petition was filed well before the scheduled trial in the parallel Delaware litigation (February 2023), which was four months after the statutory deadline for a Final Written Decision (FWD). Petitioner also noted that the trial date was uncertain due to court backlogs.
• Dissimilar Art and Arguments: Petitioner contended that the Examiner did not properly consider the best art during prosecution. Key references like Baikoff, Li, Yelbuz, Masket, and Hoppeler were never before the Examiner. Further, the primary references in the petition (Swinger and Freedman) were never applied by the Examiner against the challenged claims.
• Stipulation: Petitioner stipulated that if the IPR is instituted, it would not pursue in district court any ground raised or that reasonably could have been raised in the petition, weighing strongly against denial.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-23 of the ’921 patent as unpatentable.