Alcon Inc v. AMO Development LLC

1. Case Identification

• Case #: IPR2021-00840
• Patent #: 9,107,732
• 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: 1-2, 8-16, and 22-35

2. Patent Overview

• Title: Laser Surgical System and Method
• Brief Description: The ’732 patent discloses an ophthalmological laser surgical system for performing cataract surgery. The system integrates a laser for making incisions with an Optical Coherence Tomography (OCT) imaging system used to guide the laser and determine the location for surgical procedures like anterior capsulotomy and lens fragmentation.

3. Grounds for Unpatentability

Ground 1: Obviousness over Swinger, Baikoff, and Li - Claims 1-2, 8-12, 14-16, 22, 24-26, 28-29, 34-35 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 a computer-controlled laser surgery system for cataract procedures, including anterior capsulotomy and lens fragmentation. However, Swinger used less accurate imaging methods like ultrasound for pre-surgical analysis. Baikoff taught the benefits of using a high-resolution OCT system for pre-surgical diagnostics and planning in ophthalmic procedures, describing it as more accurate than ultrasound. The combination of Swinger and Baikoff taught most elements of the challenged claims. Li addressed the remaining limitation by teaching the use of computer algorithms to automatically process OCT image data to identify ocular structures and boundaries, improving precision over the manual measurements suggested in Baikoff.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Swinger's laser system with Baikoff's superior OCT imaging to improve the accuracy of cataract incisions, a primary goal in the field. Swinger's recognition of the need for pre-surgical imaging would have motivated a POSA to seek the best available imaging techniques, like Baikoff's OCT. Furthermore, to improve the precision of the combined system, a POSA would have been motivated to incorporate Li's automated image processing algorithms to replace the manual and less precise steps described by Baikoff and Swinger.
  • Expectation of Success: Petitioner asserted a POSA would have had a reasonable expectation of success. The combination involved the simple substitution of a known, superior imaging modality (OCT for ultrasound) into an existing surgical system and automating a known manual process (image measurement) using well-understood computer algorithms, both yielding predictable results.

Ground 2: Obviousness over Freedman and Swinger - Claims 1-2, 8-12, 14-16, 22, 24-26, 28-29, 34-35 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 contended that Freedman disclosed a combined laser and OCT imaging system suitable for biomedical applications, including "clearing cataracts." However, Freedman focused on corneal procedures and did not disclose specific parameters or techniques for cataract surgery, such as performing an anterior capsulotomy. Swinger, in contrast, provided these missing details, teaching a laser system with specific parameters (e.g., wavelength, pulse energy) and methods for performing cataract surgery.
  • Motivation to Combine: A POSA would adapt Freedman's integrated laser-OCT system for the specific, disclosed application of cataract surgery by applying the established procedures and laser parameters taught by Swinger. Freedman’s suggestion of using its system for cataracts, coupled with its silence on the specific techniques, would have naturally driven a POSA to consult a reference like Swinger that explicitly taught those techniques. The combination would result in Freedman's system being used to perform the specific cataract procedures taught by Swinger.
  • Expectation of Success: Petitioner argued success was highly probable because it involved applying a known surgical system (Freedman) to one of its intended uses (cataract surgery) by employing conventional techniques and parameters for that use (from Swinger). This required only routine adaptation rather than invention.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on the primary combinations of Swinger and Freedman, further modified by other references. These included combining Swinger/Freedman with:

  • Gelikonov to teach specific OCT light source parameters (claims 9 and 23).
  • L'Esperance to teach a specific arrangement of optical components for multi-directional scanning (claims 13 and 27).
  • Hoppeler to teach specific laser patterns for fragmenting the lens into discrete pieces (claims 30-33).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate because the core prior art references, Swinger and Freedman, were never applied by the Examiner against the challenged claims during prosecution. The new combinations presented in the petition were therefore not previously considered.
• Petitioner further argued that discretionary denial under Fintiv was inappropriate. The co-pending district court trial was scheduled for February 2023, four months after the statutory deadline for a Final Written Decision (FWD), and that trial date was uncertain. Petitioner also stipulated that, if the inter partes review (IPR) was instituted, it would not pursue the same invalidity grounds in the district court, thus preventing duplicative efforts and conserving judicial resources.

5. Relief Requested

• Petitioner requested the institution of an IPR and the cancellation of claims 1-2, 8-16, and 22-35 of the ’732 patent as unpatentable under 35 U.S.C. §103.