PTAB

IPR2021-00853

Alcon Inc v. AMO Development LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Laser Assisted Cataract Surgery System
  • Brief Description: The ’725 patent relates to a system for performing cataract surgery that combines a laser for creating incisions with an image-guided aiming system, such as Optical Coherence Tomography (OCT), to precisely control the laser's application on the crystalline lens.

3. Grounds for Unpatentability

Ground 1: Obviousness over Swinger, Baikoff, and Li - Claims 1–3, 5, and 12–13 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), 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 key steps of cataract surgery, such as anterior capsulotomy and lens fragmentation, but relied on less precise imaging like ultrasound or direct visualization. Baikoff disclosed using a sophisticated OCT system for pre-surgical diagnostics of the eye's anterior segment, providing superior imaging capabilities. The combination of Swinger and Baikoff allegedly taught the core system of claim 1. To meet the automated processing limitations, Petitioner asserted that Li taught an OCT system with a computer algorithm that could automatically identify tissue boundaries and perform measurements, a task done manually in Swinger and Baikoff.
    • Motivation to Combine: A POSITA would combine Swinger's laser with Baikoff's superior OCT imaging to improve the accuracy and reproducibility of cataract incisions, which was a known goal in the art. This combination represented a simple substitution of a known, more advanced imaging modality (OCT) for an older one (ultrasound). A POSITA would then be further motivated to integrate Li's automated boundary detection and measurement algorithms to improve the speed and accuracy of the combined system, automating a previously manual and surgeon-dependent task.
    • Expectation of Success: Petitioner contended a POSITA would have a reasonable expectation of success, as integrating diagnostic imaging with surgical treatment systems was well-known and straightforward. The modification was an obvious-to-try approach, leveraging a finite number of predictable imaging modalities to achieve a predictable improvement in surgical precision.

Ground 2: Obviousness over Freedman and Swinger - Claims 1–3, 5–6, and 12–13 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 already taught an integrated laser surgical system that used OCT for imaging and guiding the ablation of biological tissue, and broadly suggested its use for "clearing cataracts." However, Freedman focused on corneal surgery and did not detail the specific steps of modern cataract surgery. Swinger supplied these missing details, teaching the specific procedures for using a computer-controlled laser to perform anterior capsulotomy and lens fragmentation.
    • Motivation to Combine: A POSITA would have been motivated to configure Freedman's existing OCT-guided laser system to perform the specific, well-known cataract surgery procedures described in Swinger. Petitioner framed this as the application of a known technique (Freedman's integrated system) to a known method ready for improvement (computer-controlled cataract surgery) to yield the predictable result of a more accurate procedure.
    • Expectation of Success: Success was reasonably expected because Freedman’s system was already capable of detecting tissue boundaries and controlling a laser based on that information. Adapting the system for cataract surgery would merely involve programming it to target the lens and execute known incision patterns, a task well within the capabilities of a POSITA.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining the Swinger/Baikoff/Li references with Sklar (for claim 6, relating to registering images based on user-identified targets) or Hoppeler (for claim 8, relating to lens fragmentation patterns). A final ground challenged claim 8 over the combination of Freedman, Swinger, and Hoppeler.

4. Key Claim Construction Positions

  • "Imaging device configured to acquire point by point image data from locations distributed throughout a volume of a crystalline lens" (claim 1): Petitioner argued this central limitation does not require a full three-dimensional (3D) image of the entire lens. Based on the patent’s specification, figures, and prosecution history, Petitioner proposed this term be construed as an "imaging device configured to perform a B-scan, wherein the B-scan occupies a single plane within the volume of the lens." This construction was argued to be critical, as the prior art clearly taught such 2D scanning, whereas support for true 3D volumetric scanning in the specification was allegedly lacking.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) would be inappropriate because the primary prior art references, Swinger and Freedman, were not substantively applied against the claims by the Examiner during prosecution.
  • Petitioner also presented extensive arguments against discretionary denial under Fintiv in view of co-pending district court litigation. Key arguments included:
    • The scheduled trial date (February 2023) was four months after the statutory deadline for a Final Written Decision (FWD), ensuring the Board's decision would issue first.
    • The parties had invested limited resources in the invalidity portion of the litigation at the time of filing.
    • Petitioner offered a stipulation not to pursue the same grounds or any grounds that could have been reasonably raised in the IPR in the district court if the petition were instituted, which it argued eliminates concerns of duplicative efforts and weighs strongly against denial.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1–3, 5–6, 8, and 12–13 of the ’725 patent as unpatentable.