Alcon Inc v. AMO Development LLC

1. Case Identification

• Case #: IPR2021-00824
• Patent #: 9,693,903
• Filed: April 17, 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: 1-6, 8-15, and 17-18

2. Patent Overview

• Title: Laser Surgical System
• Brief Description: The ’903 patent describes an ophthalmological laser surgical system for procedures like cataract surgery. The system integrates a laser treatment beam with an optical coherence tomography (OCT) imaging device, using a controller to generate image data of the eye, identify tissue boundaries, and guide the laser based on that data for precise incisions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Swinger, Baikoff, and Li - Claims 1-6, 8-15, 17, and 18 are obvious over Swinger in view of Baikoff and Li.

• Prior Art Relied Upon: Swinger (Patent 6,325,792), Baikoff (a 2004 journal article), and Li (a 2003 journal article).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Swinger taught a computer-controlled laser system for cataract surgery but used less precise imaging methods like ultrasound. Baikoff taught using a superior imaging modality, OCT, to generate high-resolution, cross-sectional images of the eye's anterior segment, including the crystalline lens, to plan surgical procedures. While Baikoff disclosed software for manual measurements, Li taught an OCT system with a computer algorithm to automatically identify tissue boundaries and make measurements from the image data, overcoming the imprecision of manual steps.
  • Motivation to Combine: A POSITA would combine Swinger's laser system with Baikoff's advanced OCT imaging to achieve more accurate and reproducible incisions, a primary goal stated in Swinger. It would have been a simple substitution of a known, superior imaging modality. A POSITA would further integrate Li's automation algorithms to program Swinger's controller to automatically process the OCT image data, identify boundaries, and determine treatment regions. This would automate a known manual process to improve the speed and accuracy of the surgical planning.
  • Expectation of Success: A POSITA would have a high expectation of success because the combination involved substituting known imaging modalities and automating manual measurement tasks with well-known computer algorithms to achieve predictable improvements in accuracy and efficiency.

Ground 2: Obviousness over Freedman and Swinger - Claims 1-6, 8-15, 17, and 18 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 an integrated laser surgical system that already combined a laser with an OCT imaging system. Freedman’s system used OCT to three-dimensionally image tissue, evaluate boundaries, and construct an ablating plan for corneal surgery. However, Freedman did not explicitly teach using its system for cataract surgery involving lens fragmentation. Swinger, conversely, taught using computer-controlled laser systems for various ophthalmic procedures, including anterior capsulotomy and lens fragmentation for cataract surgery.
  • Motivation to Combine: A POSITA would be motivated to apply Freedman's existing integrated OCT-guided laser system to the cataract surgery procedures taught by Swinger. Freedman taught its system was suitable for ablating various biological tissues, and Swinger taught that such laser systems were well-suited for cataract procedures. This represents applying a known tool (Freedman's integrated system) to a known, analogous surgical application (cataract surgery) to achieve the known benefits of OCT-guided precision.
  • Expectation of Success: Success would be expected because the combination merely involved using Freedman’s existing, integrated device for a different but suitable and well-known ophthalmic procedure described by Swinger, which would have been a predictable application of the technology.

• Additional Grounds: Petitioner asserted further obviousness challenges based on the addition of Hoppeler (a 1992 conference proceeding) to the primary combinations. Hoppeler was cited for its teaching of specific computer-controlled laser patterns to segment a cataractous lens into discrete fragments, which was known to reduce subsequent phacoemulsification time.

4. Key Claim Construction Positions

• Petitioner argued that the claim term "continuous depth profile of the volume of the patient's crystalline lens" should be construed to mean an "axial profile of the lens through its volume," which can be achieved by a standard two-dimensional B-scan.
• Petitioner contended that the ’903 patent specification only discusses linear and 3-line scans, consistent with 2D imaging, and provides no written description support for acquiring image data of a complete three-dimensional volume. Petitioner argued that if the Board were to adopt a broader construction requiring a full 3D scan, the claims would be invalid for lack of written description.

5. Arguments Regarding Discretionary Denial

• §325(d) Factors: Petitioner argued against denial under 35 U.S.C. §325(d), asserting that the presented grounds were dissimilar to the art considered during prosecution. Key references, including Freedman, Baikoff, Li, and Hoppeler, were never applied by the Examiner against the claims of the ’903 patent. Petitioner alleged the Examiner's allowance was based on a flawed, cursory examination that improperly relied on allowances in related family applications.
• §314(a) Fintiv Factors: Petitioner argued against discretionary denial under Fintiv based on a parallel Delaware litigation. Key arguments included that the scheduled trial date (February 2023) was four months after the statutory deadline for a Final Written Decision (FWD) in the IPR (October 2022). Furthermore, Petitioner noted that limited resources had been invested in the district court case regarding invalidity and that Petitioner had stipulated it would not pursue the same invalidity grounds in district court if the IPR was instituted, thereby avoiding duplicative efforts.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 8-15, and 17-18 of the ’903 patent as unpatentable.