Alcon Inc v. AMO Development LLC

1. Case Identification

• Case #: IPR2021-00845
• Patent #: 9,233,024
• Filed: April 26, 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: 1-17 and 20-26

2. Patent Overview

• Title: Method for Ophthalmic Laser Surgery
• Brief Description: The ’024 patent discloses methods for performing cataract surgery using a laser system. The methods involve delivering a first laser treatment pattern to form a partially penetrating cataract incision for accessing the eye's lens and a second treatment pattern to form a relaxing incision (e.g., in the cornea) to correct astigmatism.

3. Grounds for Unpatentability

Ground 1: Obviousness over Blumenkranz, Kurtz, and Weikert - Claims 1-17 and 20-26 are obvious over Blumenkranz in view of Kurtz and Weikert.

• Prior Art Relied Upon: Blumenkranz (Application # 2006/0195076), Kurtz (Application # 2008/0058777), and Weikert (a 2005 article in CATARACT AND REFRACTIVE SURGERY).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Blumenkranz taught a multifunctional laser ophthalmic surgery system capable of producing incisions at various depths and suitable for cataract surgery, including the claimed steps of generating and deflecting a laser beam. To the extent Blumenkranz did not explicitly teach a partially penetrating cataract incision, Kurtz taught making such partial incisions to protect the eye from contaminants in less-than-sterile environments. Furthermore, Weikert taught that making relaxing incisions to correct astigmatism induced by cataract surgery was a well-known practice dating to the late 1800s.
  • Motivation to Combine: A POSITA would combine Blumenkranz's laser system with Kurtz’s partial incision technique to enhance safety and reduce infection risk when performing the surgery outside a fully sterile operating room. A POSITA would also be motivated to incorporate the longstanding practice of making relaxing incisions, as taught by Weikert, into Blumenkranz’s automated laser procedure to correct for surgery-induced astigmatism, thereby achieving a known surgical goal with the improved precision of modern laser technology.
  • Expectation of Success: A POSITA would have a high expectation of success, as combining these elements involved applying known surgical techniques (partial incisions, astigmatism correction) using a capable and precise laser system (Blumenkranz) for their intended purposes.

Ground 2: Obviousness over Kurtz, Swinger, and Weikert - Claims 1-3, 6, 16-17, and 20-26 are obvious over Kurtz in view of Swinger and Weikert.

• Prior Art Relied Upon: Kurtz (Application # 2008/0058777), Swinger (Patent 6,325,792), and Weikert (a 2005 article).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground asserted that Kurtz disclosed a multifunctional laser system for resecting corneal tissue, including making partial incisions, but did not explicitly apply it to cataract surgery or relaxing incisions. Swinger taught using a similar multifunctional laser system for cataract surgery and for creating arcuate or transverse cuts (relaxing incisions) to correct refractive power. Weikert provided the historical context and clinical rationale for combining cataract and relaxing incisions.
  • Motivation to Combine: A POSITA would be motivated to adapt Kurtz's versatile laser system for the specific application of cataract surgery as taught by Swinger, which explicitly described using such systems for that purpose. Swinger and Weikert provided the motivation to further use the system's capabilities to perform relaxing incisions concurrently to correct astigmatism, a common and known need in cataract procedures. The combination represented using a known tool (a femtosecond laser) to perform a known surgical procedure (combined cataract and astigmatism correction).
  • Expectation of Success: The combination was merely the application of known laser capabilities to well-established surgical steps. A POSITA would expect that a system like Kurtz's, capable of precise corneal cuts, could successfully perform the cataract and relaxing incisions described by Swinger and Weikert.

• Additional Grounds: Petitioner asserted an alternative ground for claim 16, adding Swinger to the combination of Blumenkranz, Kurtz, and Weikert to expressly teach posterior-surface relaxation incisions. Petitioner also asserted a ground for claims 4-5 and 7-15, adding Benedikt (Application # 2004/0066489) to the Kurtz/Swinger/Weikert combination to teach the use of advanced imaging and profiling subsystems (e.g., OCT, profilometers) to guide the laser treatment patterns.

4. Key Claim Construction Positions

• "A cataract surgery method..." (preamble): Petitioner argued this preamble phrase, added during prosecution to overcome prior art, should be given no patentable weight. The argument was that the claim body recites a complete method of generating and delivering laser patterns that is not exclusive to cataract surgery, and the preamble merely states an intended use. Petitioner contended that even if the preamble were limiting, the primary prior art (Blumenkranz) explicitly stated its techniques "may be used during cataract surgery."
• "The first and second treatment patterns are delivered simultaneously": Petitioner argued this phrase is open to multiple interpretations based on the specification. One construction is that the patterns are truly delivered at the same time, as with a multi-segmented lens. Another is that they are combined into a single treatment plan delivered in a layer-by-layer sequence during a single execution of the controller's programming. Petitioner stated it would apply the prior art as if all interpretations were correct.

5. Arguments Regarding Discretionary Denial

• §325(d) Factors: Petitioner argued against discretionary denial under §325(d), asserting that the presented grounds were not the same or substantially the same as those previously presented to the Office. Key arguments were that the Examiner never considered Kurtz, Weikert, Swinger, or Benedikt. While Blumenkranz was considered, Petitioner argued the Examiner erred by giving patentable weight to the "cataract surgery" preamble amendment, despite Blumenkranz expressly disclosing that use.
• Fintiv Factors: Petitioner argued against discretionary denial under Fintiv, contending that the PTAB was a more efficient forum than the co-pending Delaware litigation. Key arguments included: (1) the district court trial was scheduled for February 2023, four months after the FWD deadline; (2) Petitioner stipulated not to pursue the same grounds in district court if IPR was instituted; and (3) the IPR petition was filed diligently after receiving infringement contentions, with limited investment in invalidity issues in the district court at the time of filing.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-17 and 20-26 of the ’024 patent as unpatentable.