Alcon Inc v. AMO Development LLC

1. Case Identification

• Case #: IPR2021-00862
• Patent #: 8,709,001
• 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: 1-24

2. Patent Overview

• Title: Laser-Assisted Cataract Surgery System
• Brief Description: The ’001 patent discloses methods and systems for performing cataract surgery using a pulsed laser surgical system guided by an imaging system, such as Optical Coherence Tomography (OCT). The technology is directed at automating procedures like anterior capsulotomy and lens fragmentation.

3. Grounds for Unpatentability

Ground 1: Obviousness over Swinger and Baikoff - Claims 1-3, 6, 10-15, 18-19, and 23-24 are obvious over Swinger in view of Baikoff.

• Prior Art Relied Upon: Swinger (Patent 6,325,792) and Baikoff (a 2004 journal article titled Static And Dynamic Analysis Of The Anterior Segment With Optical Coherence Tomography).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Swinger disclosed a computer-controlled laser surgery system capable of performing key cataract surgery steps, including anterior capsulotomy and lens fragmentation. However, Swinger’s system relied on older imaging modalities like ultrasound or direct visualization for guidance. Baikoff taught the use of OCT, a superior and well-known imaging technique, to provide high-resolution, cross-sectional images of the eye’s anterior segment specifically for planning ophthalmic surgical procedures.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Swinger’s laser system with Baikoff’s advanced OCT imaging. Swinger recognized the importance of accurate and reproducible incisions, and a POSITA would have been motivated to replace Swinger's less precise ultrasound imaging with Baikoff's more accurate OCT to better achieve this goal. This combination represented a predictable substitution of a newer, superior imaging technology for an older one to improve system performance.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because integrating known diagnostic imaging and treatment functionalities into a single automated system was straightforward. The combination involved a simple substitution of known imaging components to achieve the predictable result of improved surgical accuracy.

Ground 2: Obviousness over Freedman and Swinger - Claims 1-2, 6, 10-15, 18-19, and 23-24 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 a general-purpose, OCT-guided laser surgical system for treating biological tissue, including for "clearing cataracts." While Freedman provided the core OCT-guided laser concept, it did not detail the specific steps of modern cataract surgery. Swinger supplied these missing details, teaching a computer-controlled system for performing precise anterior capsulotomies and lens liquefaction, which were established methods ready for improvement.
  • Motivation to Combine: A POSITA would have been motivated to apply Freedman's advanced OCT-guidance technology to the specific, well-established cataract surgery procedures described in Swinger. Doing so would improve the accuracy of Swinger’s known methods, representing the application of a known technique (OCT guidance) to a known system (Swinger's) to yield predictable results.
  • Expectation of Success: Petitioner argued that a POSITA would have reasonably expected success. Freedman’s system was already capable of detecting tissue boundaries and controlling a laser based on OCT data. Therefore, programming Freedman's system to execute the specific cutting patterns for capsulotomy and lens fragmentation taught by Swinger would have been a straightforward and predictable modification.

Ground 3: Obviousness over Swinger, Baikoff, and Hoppeler - Claims 7-9, 16-17, and 20-22 are obvious over Swinger in view of Baikoff and Hoppeler.

• Prior Art Relied Upon: Swinger (Patent 6,325,792), Baikoff (a 2004 journal article), and Hoppeler (a 1992 conference proceeding titled Preliminary Clinical Results With The ISL Laser).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination of Swinger and Baikoff, which provided an OCT-guided laser surgery system. Petitioner argued that while Swinger mentioned liquefying the lens, Hoppeler specifically taught the benefit of using a laser to segment the cataractous lens into discrete, patterned pieces. This fragmentation process was known to reduce the time and energy required for subsequent phacoemulsification.
  • Motivation to Combine: A POSITA would combine the teachings of Hoppeler with the Swinger/Baikoff system to improve the efficiency of the lens removal step. Swinger’s system was already described as a versatile, computer-programmable platform capable of creating various ablation patterns. A POSITA would have been motivated to program the known fragmentation patterns from Hoppeler into the Swinger system to make the overall cataract procedure faster and safer.
  • Expectation of Success: A POSITA would have had a high expectation of success, as this modification only required selecting one of several well-known incision patterns taught by Hoppeler and programming it into the computer-controlled Swinger system, a task well within the skill of a POSITA.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations incorporating Masket (Application # 2004/0106929) for its teaching of projecting a target image onto the lens capsule to confirm alignment.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate because the asserted grounds were not substantially the same as those considered during prosecution. Key prior art references like Baikoff and Hoppeler were never before the Examiner, and the primary references (Swinger and Freedman) were not previously applied as base references for the obviousness combinations presented in the petition.
• Petitioner also argued against discretionary denial under Fintiv factors (§314(a)). The petition contended that the scheduled trial in the parallel Delaware litigation (February 2023) was more than four months after the statutory deadline for a Final Written Decision (FWD). Furthermore, Petitioner stipulated that if the IPR was instituted, it would not pursue the same grounds or any grounds that could have been reasonably raised in the district court action, thereby streamlining the parallel litigation.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of the ’001 patent as unpatentable.