Alcon Inc v. AMO Development LLC

1. Case Identification

• Case #: IPR2021-00841
• Patent #: 9,474,648
• 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: 1-15

2. Patent Overview

• Title: Laser Surgical System
• Brief Description: The ’648 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 treatment parameters.

3. Grounds for Unpatentability

Ground 1: Obviousness over Swinger, Baikoff, and Li - Claims 1-5 and 12-15 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 for anterior segment analysis), and Li (a 2003 journal article on automated biometry with high-speed OCT).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Swinger disclosed a computer-controlled laser system for cataract surgery, including anterior capsulotomy, but used ultrasound or direct visualization for guidance. Baikoff taught the benefits of using OCT, a superior imaging modality, for pre-surgical diagnostics of the eye's anterior segment. Li further taught using computer algorithms to automate measurements from OCT images, addressing the imprecision of manual measurements. The combination allegedly disclosed all limitations of a laser system with an OCT imager and a controller configured to process image data to automatically determine incision patterns.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Swinger's established laser surgery system with Baikoff's more accurate OCT imaging to improve surgical precision, a primary goal in the field. To further enhance accuracy and efficiency, a POSITA would have found it obvious to automate the image analysis using the known algorithms taught by Li, replacing the manual steps with a more reliable, computer-driven process.
  • Expectation of Success: Petitioner asserted a POSITA would have had a high expectation of success, as the combination involved substituting a known imaging modality (ultrasound) with a known, superior alternative (OCT) and automating a manual task using well-understood software algorithms, all yielding predictable improvements.

Ground 2: Obviousness over Freedman in view of Swinger - Claims 1-5 and 12-15 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 the core hardware combination: an integrated laser surgery and OCT imaging system. Although Freedman focused on corneal procedures, it suggested applicability to other ophthalmic surgeries like "clearing cataracts." Swinger taught the specific application of such laser systems to perform anterior capsulotomy and lens fragmentation for cataract surgery and provided key laser parameters (e.g., pulse duration, energy) optimized for these procedures, which Freedman lacked.
  • Motivation to Combine: A POSITA would have been motivated to adapt Freedman’s existing integrated OCT-guided laser system for the well-known and related application of cataract surgery, as taught by Swinger. Freedman's lack of specific laser parameters for cataract procedures would have naturally led a POSITA to consult a reference like Swinger to supply the missing, necessary operational details for that specific application.
  • Expectation of Success: The combination involved applying a known device (Freedman's integrated system) to a known, analogous surgical procedure (Swinger's cataract surgery methods) using established parameters. This represented a predictable application of existing technologies with a high likelihood of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations incorporating Hoppeler (a 1992 conference proceeding) for specific lens fragmentation patterns and L'Esperance (Patent 4,538,608) for specific optical scanning assembly configurations.

4. Key Claim Construction Positions

• Petitioner argued that the phrase in claim 12, "To determine one or more axial locations of the anterior capsule of the lens; and or more anterior capsule axial locations," is nonsensical as written.
• For the purposes of the inter partes review (IPR), Petitioner proposed construing this limitation as "to determine one or more axial locations of the anterior capsule of the lens," treating the latter phrase as a synonymous shorthand for the former. Petitioner noted this interpretation is consistent with the Patent Owner's infringement contentions.

5. Arguments Regarding Discretionary Denial

• Arguments against §325(d) Denial: Petitioner argued denial under 35 U.S.C. §325(d) was inappropriate because the primary references and combinations presented were not previously considered by the Examiner. Key references like Baikoff, Li, Hoppeler, and L'Esperance were never before the Examiner. Furthermore, the base references (Swinger and Freedman), while part of the prosecution record, were never applied against the claims. Petitioner contended the original prosecution was cursory, noting the patent was a first-action allowance, which prevented the development of a robust examination record.
• Arguments against Fintiv Denial: Petitioner presented a detailed analysis of the Fintiv factors, arguing against discretionary denial under 35 U.S.C. §314(a) based on a parallel Delaware litigation. Key arguments were that the district court case was in its early stages, with the Markman hearing and claim construction order not expected until after the PTAB's institution decision. Crucially, Petitioner noted that the statutory deadline for a Final Written Decision (FWD) was four months before the scheduled trial date. Petitioner also submitted a stipulation agreeing not to pursue in district court any invalidity ground raised or that reasonably could have been raised in the IPR, a factor that weighs strongly against discretionary denial.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-15 of the ’648 patent as unpatentable.