Alcon Inc v. AMO Development LLC

1. Case Identification

• Case #: IPR2021-00856
• Patent #: 8,500,724
• Filed: April 27, 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, 17-23

2. Patent Overview

• Title: Laser Cataract Surgery Method
• Brief Description: The ’724 patent discloses methods for laser cataract surgery. The methods involve using an imaging system, such as Optical Coherence Tomography (OCT), to generate an image of a patient's eye lens, processing that image data to determine a targeted treatment region, and directing a computer-guided laser to photodisrupt and segment the lens tissue for subsequent removal.

3. Grounds for Unpatentability

Ground 1: Obviousness over Swinger, Baikoff, and Hoppeler - Claims 1-15 and 17-23 are obvious over Swinger in view of Baikoff and Hoppeler.

• Prior Art Relied Upon: Swinger (Patent 6,325,792), Baikoff (a 2004 journal article on OCT analysis), and Hoppeler (a 1992 conference proceeding on laser fragmentation).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Swinger disclosed a computer-controlled laser system for performing cataract surgery, including lens fragmentation. However, Swinger taught using manual estimation or ultrasound for imaging, not OCT. Baikoff was cited to remedy this deficiency, as it taught using OCT to obtain high-resolution, cross-sectional images of the eye's anterior segment to precisely plan ophthalmic surgery. Hoppeler was introduced to teach the specific step of segmenting a cataractous lens into discrete fragments using patterned laser cuts (e.g., linear or area patterns) to reduce subsequent phacoemulsification time. Petitioner contended that the combination of these references taught all elements of the independent claims, including generating an image, determining a targeted treatment region, and directing a laser in a pattern to fragment lens tissue.
  • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Swinger's laser system with Baikoff's superior OCT imaging to achieve more accurate and reproducible incisions, a primary goal expressed in Swinger. The motivation to add Hoppeler's teachings was to improve the efficiency of the overall procedure. A POSITA would have recognized that pre-fragmenting the lens into segments, as taught by Hoppeler, would reduce the time and energy needed for the subsequent phacoemulsification step, a well-known benefit.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success. Integrating different imaging and treatment systems was known in the art, and substituting Swinger's ultrasound imaging with the more advanced and accurate OCT taught by Baikoff represented a predictable improvement. Applying known fragmentation patterns from Hoppeler using Swinger’s programmable laser system was also a straightforward application of existing techniques.

Ground 2: Obviousness over Freedman, Swinger, and Hoppeler - Claims 1-15 and 17-23 are obvious over Freedman in view of Swinger and Hoppeler.

• Prior Art Relied Upon: Freedman (Patent 6,454,761), Swinger (Patent 6,325,792), and Hoppeler (a 1992 conference proceeding).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Freedman disclosed a combined, integrated laser and OCT-imaging system for ophthalmic surgery, satisfying the core combination of the claims. While Freedman focused on corneal procedures, it generally disclosed its applicability to "clearing cataracts." Swinger was cited to provide specific teachings on applying such laser systems to the particular steps of cataract surgery, including anterior capsulotomy and lens fragmentation. As in Ground 1, Hoppeler was relied upon for its explicit disclosure of using various computer-guided laser patterns to segment the lens into a plurality of pieces for easier removal.
  • Motivation to Combine: A POSITA would have been motivated to apply Freedman's versatile OCT-guided laser system to other known ophthalmic procedures beyond corneal surgery, such as the cataract surgery steps detailed in Swinger. Since Freedman’s system was already an integrated unit, applying it to fragment a lens (as taught by Swinger) was a natural and obvious extension of its capabilities. The motivation to incorporate Hoppeler's fragmentation patterns was, again, to enhance surgical efficiency and reduce phacoemulsification time.
  • Expectation of Success: Success would have been expected because this combination involved applying an existing integrated system (Freedman) to a known and suitable surgical application (cataract surgery steps from Swinger) using well-understood laser patterns (Hoppeler) to achieve a predictable result.

4. Key Claim Construction Positions

• "axially-elongated cutting zone transecting the anterior capsule": Petitioner argued this phrase, which appears in claim 1, is contradictory because the claim preamble locates the targeted region "in the lens of the eye." A region cannot be both entirely within the lens and also transect the anterior capsule (which would place it partially in the anterior chamber). Petitioner contended the term should be construed as "requiring determination of an anterior capsulotomy cutting region."
• "planar pattern" / "planar incision pattern": Petitioner argued these terms should be construed as any pattern created at a single, defined depth. This construction was based on dependent claims that add further limitations, such as creating patterns of "intersecting lines" or "circular lines," or repeating a planar pattern at an additional depth.

5. Arguments Regarding Discretionary Denial

• Arguments against §325(d) Denial: Petitioner argued that discretionary denial would be inappropriate because the primary references relied upon (Baikoff, Hoppeler, and Freedman) were not substantively considered or applied by the Examiner during the original prosecution. Petitioner further characterized the prosecution history of the ’724 patent and its family members as flawed and cursory, warranting a fresh review by the Board.
• Arguments against Fintiv Denial: Petitioner argued against denial based on a parallel Delaware litigation, asserting that the Fintiv factors weighed in favor of institution. Key arguments included that the Board's final written decision would likely issue four months before the scheduled trial date, the IPR would substantially simplify issues for the district court, and Petitioner had stipulated that, if review is instituted, it would not pursue in district court the same grounds raised in the petition or any grounds that reasonably could have been raised.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-15 and 17-23 of the ’724 patent as unpatentable.