Alcon Inc v. AMO Development LLC

1. Case Identification

• Case #: IPR2021-00839
• Patent #: 9,101,448
• Filed: April 23, 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: 1-20

2. Patent Overview

• Title: Laser Cataract Surgery System
• Brief Description: The ’448 patent discloses an ophthalmological laser surgery system for performing cataract surgery. The system combines a laser for incising ocular tissue with an imaging system, such as Optical Coherence Tomography (OCT), to precisely determine the location of the lens and lens capsule before surgery.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 and 15-20 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 imaging), 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 performing cataract surgery procedures, including capsulotomy, and suggested using ultrasound for measurements. Baikoff taught using a superior imaging modality, OCT, for pre-surgical diagnostics of the eye’s anterior segment. Petitioner asserted that combining Swinger’s laser system with Baikoff’s OCT imaging would have been a simple and obvious substitution of a known, but inferior, imaging technology (ultrasound) with a known, superior one (OCT) to achieve greater precision. Furthermore, Li taught using computer algorithms to automate measurements from OCT images. Adding Li’s automation would address the manual interpretation steps inherent in Swinger and Baikoff, thereby making the combined system more accurate and efficient.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Swinger with Baikoff to improve the accuracy of laser incisions, a primary goal in cataract surgery. The known limitations of ultrasound would have motivated a POSA to seek more precise imaging techniques like OCT, which Baikoff demonstrated was well-suited for pre-surgical diagnostics. A POSA would further incorporate Li’s automated measurement algorithms to eliminate the potential for human error and improve the speed and reliability of the surgical planning process, which is a predictable improvement over manual analysis.
  • Expectation of Success: Petitioner contended a POSA would have had a high expectation of success. Integrating different imaging modalities into surgical systems was common, and substituting ultrasound with the known and more accurate OCT technology would yield the predictable result of improved imaging. Similarly, automating a manual data analysis task using computer algorithms, as taught by Li, was a well-understood technique with predictable benefits.

Ground 2: Claims 1-7 and 15-20 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: Petitioner argued that Freedman disclosed a general-purpose, OCT-guided laser surgery system for treating biological tissue and broadly suggested "clearing cataracts" as one of many potential applications. However, Freedman focused on corneal reshaping and did not teach the specific, controller-based steps required for modern cataract surgery. Swinger supplied these missing details by teaching a computer-controlled system specifically for performing anterior capsulotomy and lens fragmentation. The combination results in Freedman’s OCT-guided laser system being configured to perform the specific cataract surgery procedures detailed by Swinger.
  • Motivation to Combine: A POSA would have been motivated to apply Freedman's known OCT-guided laser technology to the specific application of cataract surgery as taught by Swinger. Freedman provided a known tool suitable for improvement, and Swinger provided a known method (computer-controlled cataract surgery) ready for improvement. Combining them would be the application of a known technique to a known problem to achieve the predictable result of a more accurate, image-guided cataract surgery.
  • Expectation of Success: Petitioner asserted a high expectation of success because Freedman's system was already capable of imaging biological tissue and controlling a laser based on that imaging. Configuring the system to target the lens and capsule (per Swinger) instead of the cornea was a straightforward adaptation that would have been well within the capabilities of a POSA.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on the primary combinations with further modifications. These grounds argued that claims 8-12 are obvious over Swinger/Baikoff/Li in view of Hoppeler (a 1992 conference proceeding) and over Freedman/Swinger in view of Hoppeler, adding teachings on specific lens fragmentation patterns. Other grounds argued that claims 13-14 are obvious over Swinger/Baikoff/Li in view of L'Esperance (Patent 4,538,608) and over Freedman/Swinger in view of L'Esperance, adding teachings on specific scanning assembly configurations.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate.
• Regarding potential denial under 35 U.S.C. §325(d), Petitioner asserted that the primary prior art references and arguments presented in the petition are dissimilar to those considered by the examiner during prosecution. Key references like Baikoff, Li, and Hoppeler were never before the examiner, and foundational references like Swinger and Freedman were never applied against the challenged claims.
• Regarding potential denial under 35 U.S.C. §314(a) based on the Fintiv factors, Petitioner argued that institution would be efficient. The co-pending district court trial was scheduled for February 2023, four months after the statutory deadline for a Final Written Decision (FWD). Petitioner also noted that it had stipulated it would not pursue in district court any invalidity grounds raised or that reasonably could have been raised in the IPR, mitigating concerns of duplicative efforts.

5. Relief Requested

• Petitioner requests institution of inter partes review (IPR) and cancellation of claims 1-20 of the ’448 patent as unpatentable.