Alcon Inc v. AMO Development LLC

1. Case Identification

• Case #: IPR2021-00835
• Patent #: 9,095,415
• Filed: April 22, 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: 1-24

2. Patent Overview

• Title: Laser Assisted Cataract Surgery
• Brief Description: The ’415 patent discloses systems and methods for performing laser cataract surgery. The technology involves using an imaging system, such as Optical Coherence Tomography (OCT), to acquire image data of a patient’s eye, and a computer-controlled laser system to perform procedures like capsulotomy and lens fragmentation based on the image data.

3. Grounds for Unpatentability

Ground 1: Obviousness over Swinger, Baikoff, and Li - Claims 1-3, 9, 12-18, and 23-24 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 disclosed the foundational computer-controlled laser surgical system for performing cataract procedures like capsulotomy and lens fragmentation, but relied on less advanced imaging like ultrasound or direct visualization. Baikoff taught the use of a superior imaging modality, OCT, for pre-surgical diagnostics of the eye’s anterior segment, concluding it was accurate and user-friendly for surgical planning. Li further taught automating OCT image analysis with computer algorithms to determine ocular structures and measurements without manual intervention. Petitioner contended that combining Swinger's laser system with Baikoff's OCT imaging and Li's automated analysis would result in the claimed invention, where a controller processes OCT image data to generate laser scanning patterns for cataract surgery.
  • Motivation to Combine: A POSITA would combine Swinger's laser system with Baikoff's superior OCT imaging to achieve the well-understood goal of improving surgical accuracy. Swinger itself acknowledged the need for imaging to guide the laser. Having integrated OCT, a POSITA would then be motivated to incorporate Li's automation algorithms to replace the manual, less precise, and slower process of a surgeon interpreting images and inputting measurements, thereby increasing efficiency and reproducibility.
  • Expectation of Success: Petitioner asserted a high expectation of success, as the combination involved substituting a known, superior imaging modality for an older one and automating a manual task using known computer algorithms, both predictable modifications.

Ground 2: Obviousness over Freedman and Swinger - Claims 1-3, 9, 12-18, and 23-24 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, OCT-guided laser surgery system for treating biological tissue, including for "clearing cataracts," but its primary example was corneal surgery. Swinger, conversely, provided detailed teachings on the specific steps and benefits of using a computer-controlled laser for cataract surgery, including performing the anterior capsulotomy and lens fragmentation. The combination of Freedman's integrated OCT-laser system with Swinger's specific cataract surgery application was argued to teach all limitations of the challenged claims.
  • Motivation to Combine: A POSITA would be motivated to apply Freedman's known OCT-guided laser technique to the specific procedures detailed in Swinger. Since Freedman broadly disclosed its system's applicability to various tissues and Swinger demonstrated that computer-controlled laser cataract surgery was a known method ready for improvement, a POSITA would have found it obvious to configure Freedman's system for the cataract surgery application taught by Swinger to yield predictable improvements in accuracy.
  • Expectation of Success: Success was reasonably expected because Freedman's system was already capable of detecting tissue boundaries with OCT and controlling a laser accordingly. Applying this existing capability to the specific anatomical targets of cataract surgery (the lens and capsule) as detailed by Swinger was a straightforward application of a known technique.

Ground 3: Obviousness over Swinger, Baikoff, Li, and Hoppeler - Claims 4-8 and 19-22 are obvious over Swinger in view of Baikoff, Li, and Hoppeler.

• Prior Art Relied Upon: Swinger (Patent 6,325,792), Baikoff (a 2004 journal article), Li (a 2003 journal article), and Hoppeler (a 1992 conference proceeding).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds upon the combination of Swinger, Baikoff, and Li from Ground 1. It adds the teachings of Hoppeler, which disclosed using a computer-controlled laser to segment a cataractous lens into discrete fragments using various patterns (e.g., linear, spiral, rectangular). Petitioner argued this addresses the claims directed specifically to lens fragmentation patterns.
  • Motivation to Combine: A POSITA, having already arrived at the primary combination in Ground 1, would be motivated to incorporate Hoppeler's known fragmentation patterns. The stated purpose in Hoppeler was to significantly reduce phacoemulsification time, a well-known goal in cataract surgery. Since Swinger’s system was already capable of creating laser patterns, it would have been obvious to program it with Hoppeler's specific, efficient patterns for lens fragmentation.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including L'Esperance (Patent 4,538,608) to teach specific optical arrangements for three-dimensional scanning (Grounds 3 and 6) and other combinations of the core references.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate because the primary references, Swinger and Freedman, were never substantively applied against the claims by the Examiner during prosecution.
• Petitioner argued against discretionary denial under Fintiv factors, stating that: (1) the parallel district court trial was scheduled for February 2023, approximately four months after the statutory deadline for a Final Written Decision (FWD), and the trial date was uncertain due to court backlogs; (2) Petitioner stipulated that, if the IPR is instituted, it will not pursue the same grounds or any that could have been reasonably raised in the district court action, mitigating concerns of overlap; and (3) the petition presented a strong case on the merits.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-24 of the ’415 patent as unpatentable.