PTAB

IPR2022-00905

heru Inc v. UAB Research Foundation

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and System for Monitoring Photoreceptor Response
  • Brief Description: The ’191 patent discloses methods and systems for diagnosing retinal health by exposing photoreceptor cells (rods and cones) to a photobleaching light with a "tailored wavelength." This tailored light is intended to selectively affect a subset of those cells, and a subsequent psychophysical test is used to monitor the altered recovery response of the photoreceptors.

3. Grounds for Unpatentability

Ground 1: Claims 1-7, 10-14, 16-17, and 35 are anticipated and rendered obvious by Azevedo

  • Prior Art Relied Upon: Azevedo (a 1996 dissertation titled Automated Imaging Dark Adaptometry in Human Retina).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Azevedo, which was not before the examiner, taught the core two-step method of the challenged claims. First, Azevedo disclosed using filters to spectrally shape a white light source into a "tailored" bleaching light with a wavelength range (e.g., 500-700 nm) narrower than the full visible spectrum. This light preferentially bleached certain photoreceptors (rods, red/green cones) while minimally bleaching others (blue cones), thereby "accentuating or minimizing a response" as required by the claims. Second, Azevedo taught using a dark adaptation psychophysical test to monitor the recovery of visual sensitivity after bleaching, a response that is necessarily altered by the tailored bleaching light.
    • Motivation to Combine (for §103 grounds): Petitioner contended that, based on Azevedo's own teachings that certain eye diseases "selectively affect" rods or cones, a person of ordinary skill in the art (POSITA) would have been motivated to further tailor the bleaching light to the specific peak absorption wavelengths of different photoreceptors. This would better isolate their individual responses for more targeted diagnostic testing.
    • Expectation of Success: A POSITA would have had a high expectation of success, as applying a light at a wavelength known to be absorbed by a specific photoreceptor pigment would predictably and reliably bleach that pigment and elicit a measurable response.

Ground 2: Claims 1-7, 10-14, 16-17, and 35 are obvious over Azevedo in view of Rice

  • Prior Art Relied Upon: Azevedo (1996 dissertation) and Rice (Patent 6,895,264).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that Rice supplemented Azevedo's teachings by providing an explicit rationale for selecting specific wavelengths. Rice taught that it was preferable to use a bleaching light that "matches the active range of the visual pigment molecules" and disclosed a preferred range of 500-650 nm. Azevedo provided the specific peak absorption wavelengths for various pigments (e.g., rods at 507 nm, green cones at 535 nm, red cones at 565 nm), three of which fall squarely within Rice's preferred range.
    • Motivation to Combine: A POSITA would combine the references because they address overlapping subject matter and seek to solve similar problems. Rice's explicit teaching to match the bleaching light to the pigment's active range would have motivated a POSITA to apply this principle to Azevedo's method. This combination would refine Azevedo's technique to better isolate pigment responses for diagnosing diseases that selectively affect specific photoreceptors, a diagnostic goal identified by Azevedo.
    • Expectation of Success: Success would be predictable, as using the specific peak absorption wavelengths disclosed by Azevedo, as guided by Rice's teachings, would reliably isolate the response of the targeted photoreceptors to achieve a more precise measurement.

Ground 3: Claims 1-7, 10-14, 16-17, and 35 are obvious over Smith in view of Rice

  • Prior Art Relied Upon: Smith (Application # 11/219,334) and Rice (Patent 6,895,264).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Smith taught using a photobleaching light with a specific, tailored wavelength (e.g., 540 nm for green cones, 585 nm for red cones) to "accentuate or minimize" the regeneration response of particular photoreceptors. While Smith disclosed measuring this response via an imaging technique, it also acknowledged that psychophysical tests were well-known in the art for similar purposes. Rice supplied this missing element by disclosing a detailed psychophysical test—involving a subject identifying an illuminated target—for monitoring the photoreceptor response to bleaching by measuring the time to recover light sensitivity.
    • Motivation to Combine: A POSITA would combine Smith and Rice because both sought to non-invasively measure visual pigment regeneration. A POSITA would be motivated to augment Smith’s imaging-based method with Rice’s established psychophysical test to gain the benefits of improved accuracy and speed, or to provide an alternative or confirmatory measurement. The technical implementation would be straightforward, as both references disclosed highly similar optical illumination systems, making their integration a simple design choice.
    • Expectation of Success: A POSITA would have a high expectation of success, as incorporating a known psychophysical measurement technique (Rice) into a system that already isolates the desired biological response (Smith) is a predictable combination with no technical hurdles.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under the Fintiv factors would be inappropriate because a co-pending district court litigation in Delaware is in its earliest stages. Key factors favoring institution included the absence of a trial date, the minimal investment made in the court proceeding, and the strength of the petition's merits. The petition's strength was based on prior art (Azevedo and Smith) that was never before the patent examiner during the original prosecution.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-7, 10-14, 16-17, and 35 of the ’191 patent as unpatentable.