PTAB

IPR2021-00858

Alcon Inc v. AMO Development LLC

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Methods for Laser Cataract Surgery
  • Brief Description: The ’497 patent describes methods for cataract surgery using an imaging-guided pulsed laser system. The system operates by acquiring image data from locations within a patient's crystalline lens, constructing an image, identifying a cutting region with anterior and posterior boundaries, and guiding a pulsed laser to scan a pattern within that region to segment the lens into a plurality of pieces for subsequent removal.

3. Grounds for Unpatentability

Ground 1: Obviousness over Swinger, Baikoff, and Hoppeler - Claims 1-3 and 6-19 are obvious over Swinger in view of Baikoff and Hoppeler.

  • Prior Art Relied Upon: Swinger (Patent 6,325,792), Baikoff (a 2004 JCRS article), and Hoppeler (a 1992 SPIE proceeding).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Swinger disclosed a computer-controlled laser surgery system for performing cataract procedures, including "liquefying" the lens, but used older ultrasound technology for pre-surgical imaging. Baikoff taught the benefits of using a superior imaging modality, Optical Coherence Tomography (OCT), to generate high-resolution, cross-sectional images of the anterior eye segment, including the crystalline lens, for planning surgical procedures. Petitioner contended that while Swinger teaches "liquefying," a POSA would understand this results in lens pieces, and to the extent it does not, Hoppeler explicitly taught using a computer-controlled laser to fragment a cataractous lens into discrete, patterned pieces (e.g., linear, spiral, or ring patterns) to reduce the time and energy needed for subsequent phacoemulsification.
    • Motivation to Combine: A POSITA would combine Swinger with Baikoff to improve the accuracy and safety of the laser procedure by replacing Swinger’s outdated ultrasound imaging with Baikoff's more precise and well-known OCT technology. A POSITA would be further motivated to incorporate Hoppeler's patterned lens fragmentation into Swinger's system to achieve the known and desired clinical benefit of reducing phacoemulsification time, a primary goal in cataract surgery.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved the predictable substitution of one known imaging modality for a superior one and the application of established laser fragmentation patterns to a system already capable of precise laser delivery.

Ground 2: Obviousness over Freedman, Swinger, and Hoppeler - Claims 1-2 and 6-19 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 SPIE proceeding).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground used Freedman as the base reference, which disclosed an integrated laser surgery system that used OCT for three-dimensional imaging to guide a pulsed laser for ablating corneal tissue. Petitioner asserted that Swinger taught that laser systems like Freedman's were not limited to corneal procedures but were suitable for numerous other ophthalmic surgeries, including cataract surgery and lens fragmentation. The combination of Freedman and Swinger thus provided an OCT-guided laser system for performing cataract surgery. As in Ground 1, Hoppeler was relied upon for its express teaching of segmenting the lens into patterned pieces for efficient removal.
    • Motivation to Combine: A POSITA would have been motivated to apply Freedman's advanced, integrated OCT-and-laser system to perform cataract surgery as taught by Swinger. This represented a natural extension of a known, versatile surgical tool to another well-known ophthalmic procedure to leverage its benefits of precise imaging and laser control. The motivation to incorporate Hoppeler's teachings was to achieve the known advantages of patterned lens fragmentation.
    • Expectation of Success: Success would be expected because it involved applying an existing integrated surgical system (Freedman) to a closely related and known application (cataract surgery per Swinger) using established techniques (patterned fragmentation per Hoppeler).

  • Additional Grounds: Petitioner asserted that claims 4-5 are obvious over the combination of Swinger, Baikoff, Hoppeler, and Masket (Application # 2004/0106929). This combination added Masket's teaching of projecting a visible alignment pattern directly onto the lens capsule to provide a physical guide for the surgeon, supplementing the virtual alignment from OCT data. A similar ground was asserted for claims 3-5 over the combination of Freedman, Swinger, Hoppeler, and Masket.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial of institution would be inappropriate.
  • Under 35 U.S.C. §325(d), Petitioner asserted that the presented grounds were substantially different from the art and arguments considered during prosecution. Key references, including Baikoff, Hoppeler, and Freedman, were not before the Examiner. While Swinger was cited during prosecution, it was not applied as a primary reference in the combinations now being asserted.
  • Under 35 U.S.C. §314(a) and the Fintiv factors, Petitioner argued that the PTAB is a more efficient forum than the parallel district court litigation. The trial in the co-pending litigation was scheduled for February 2023, approximately four months after the statutory deadline for a Final Written Decision (FWD) in this inter partes review (IPR). To mitigate concerns of duplicative efforts, Petitioner stipulated that if the IPR were instituted, it would not pursue the same invalidity grounds or any grounds that could have reasonably been raised in the district court.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of Patent 8,425,497 as unpatentable.