Alcon Inc v. AMO Development LLC

1. Case Identification

• Case #: IPR2021-00825
• Patent #: 9,693,904
• 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: 1-8, 10-18, and 20

2. Patent Overview

• Title: Laser Surgical System for Cataract Procedures
• Brief Description: The 9,693,904 patent describes an ophthalmological laser surgical system for performing cataract surgery. The system integrates a laser with an imaging device, such as Optical Coherence Tomography (OCT), to generate image data of the patient's crystalline lens, which a controller then processes to automate laser-based incisions for procedures like lens fragmentation and capsulotomy.

3. Grounds for Unpatentability

Ground 1: Claims 1-8, 10-18, and 20 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 analysis), and Li (a 2003 journal article on automated biometry).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Swinger taught a computer-controlled laser system for cataract procedures but used older imaging technology like ultrasound. Baikoff taught the benefits of using a superior imaging modality, OCT, to obtain high-resolution images for planning ophthalmic surgery. Li taught automating surgical planning by using computer algorithms to identify tissue boundaries from OCT images, a step previously performed manually. Petitioner asserted that the combination of Swinger's laser platform, Baikoff's OCT imaging, and Li's automation algorithms disclosed all limitations of the challenged claims, including a laser system, an imaging device, and a controller configured to process image data to identify boundaries and determine treatment regions.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Swinger’s laser system with Baikoff’s superior OCT imaging to achieve greater surgical precision, a well-understood goal in the art. Adding Li's automation would be a predictable improvement to enhance the speed and accuracy of the combined system by programming the controller to perform steps that were previously manual.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success because the combination involved the simple substitution of a known, superior imaging modality for an older one and the automation of a manual process using well-known algorithms, both of which were predictable improvements.

Ground 2: Claims 1-8, 10-18, and 20 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: Freedman taught an integrated laser surgery system that uses OCT imaging to guide ablation on general ocular tissue, with a focus on the cornea. Its controller uses OCT data to create an ablating plan. Swinger taught the specific techniques for applying such laser systems to perform cataract surgery, including lens fragmentation and capsulotomy procedures within the crystalline lens.
  • Motivation to Combine (for §103 grounds): A POSITA would adapt Freedman’s versatile, OCT-guided system for the known and common application of cataract surgery. Swinger provided the established procedural blueprint for performing cataract surgery with a laser, and a POSITA would be motivated to apply Freedman's more advanced imaging and control system to perform those same procedures more accurately and effectively.
  • Expectation of Success (for §103 grounds): Success would be expected as this modification involved applying a known, advanced surgical tool (Freedman's OCT-guided laser) to a well-known surgical procedure (cataract surgery as detailed in Swinger), which constituted a predictable application of existing technologies.

• Additional Grounds: Petitioner asserted additional obviousness challenges against a subset of claims based on the further combination of Hoppeler (a 1992 conference proceeding) to teach specific lens fragmentation patterns for reducing phacoemulsification time.

4. Key Claim Construction Positions

• Petitioner argued that the key 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," a feature achievable with a standard two-dimensional B-scan (cross-section). This construction is central to Petitioner's case because it lowers the threshold for prior art to meet the limitation. Petitioner contended that even if the Board adopted a more demanding construction requiring a full three-dimensional volume scan, the prior art would still render the claims obvious.

5. Arguments Regarding Discretionary Denial

• Petitioner presented extensive arguments that discretionary denial would be inappropriate under both 35 U.S.C. §325(d) and 35 U.S.C. §314(a) (based on the Fintiv factors).
• §325(d) Arguments: Petitioner argued that the grounds presented were not substantially the same as those considered during prosecution. Key prior art references (Baikoff, Li, Hoppeler) were never before the Examiner, and the primary references used in the petition (Swinger and Freedman) were never applied against the challenged claims.
• Fintiv Arguments: Petitioner argued the Fintiv factors strongly favored institution. It was asserted that the parallel district court trial date was set for four months after the Final Written Decision deadline and was uncertain due to court backlogs. Furthermore, Petitioner noted the limited investment in validity-related discovery in the co-pending litigation and highlighted its stipulation not to pursue the same invalidity grounds in district court if the IPR is instituted.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-8, 10-18, and 20 of Patent 9,693,904 as unpatentable.