Ivantis Inc v. Sight Sciences Inc

1. Case Identification

• Case #: IPR2022-01533
• Patent #: 8,287,482
• Filed: September 14, 2022
• Petitioner(s): Ivantis, Inc., Alcon Research, LLC, Alcon Vision, LLC, and Alcon Inc.
• Patent Owner(s): Sight Sciences, Inc.
• Challenged Claims: 1-2, 5, 7-8, 10-11, 15, 18, 21, 23, 32-33, 36, 38-39, 41-42, 46, 49, 52, 54, 63, 65, 68-70, 73, 77, and 79-80

2. Patent Overview

• Title: Device and Method for Treating Glaucoma
• Brief Description: The ’482 patent discloses devices for treating glaucoma by implanting a support structure circumferentially within Schlemm's canal of the eye. The support is configured to maintain the patency of the canal, thereby improving the outflow of aqueous humor to reduce intraocular pressure.

3. Grounds for Unpatentability

Ground 1: Obviousness over Grieshaber +/- Bergheim - Claims 1-2, 5, 7-8, 10-11, 15, 18, 21, 23, 32-33, 36, 38-39, 41-42, 46, 49, 52, 54, 63, 65, 68-70, 73, 77, and 79-80 are obvious over Grieshaber, alone or in view of Bergheim.

• Prior Art Relied Upon: Grieshaber (Canadian Application 2,244,646) and Bergheim (Application # 2003/0060752).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Grieshaber taught all key limitations of the independent claims, including a support with fenestrations (throughholes) that is longitudinally insertable into Schlemm's canal to prop it open and maintain patency. Petitioner asserted that Grieshaber’s various disclosed support structures—such as those with axially spaced toruses connected by thin webs or helicoidal mesh networks—inherently result in discontinuous contact with the canal wall and a surface contact area of less than 30%, thereby meeting the limitations added during prosecution to overcome prior art.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Bergheim’s teachings with Grieshaber’s device because Bergheim explicitly taught the benefits of increasing a device’s porosity with features like troughs and channels to "facilitate efficient transport... of aqueous humor." This provided a clear motivation to optimize Grieshaber's design by further reducing its surface area contact to enhance drainage, a shared goal of both references.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success, as Grieshaber already taught multiple embodiments designed to reduce surface contact, and modifying them to further improve porosity based on Bergheim’s teachings constituted a predictable optimization of a known design principle.

Ground 2: Obviousness over Lynch +/- Bergheim - Claims 1-2, 5, 7-8, 15, 18, 21, 23, 32-33, 36, 38-39, 46, 49, 52, 54, 63, 65, 68-70, 73, and 77 are obvious over Lynch, alone or in view of Bergheim.

• Prior Art Relied Upon: Lynch (Application # 2005/0038334) and Bergheim (Application # 2003/0060752).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Lynch disclosed intraocular implants sized for Schlemm's canal to maintain patency. Lynch explicitly taught that its supports could be constructed of "solid, matrix, mesh, fenestrated, or porous material" to facilitate aqueous humor channeling. Petitioner argued that designs disclosed in Lynch, such as mesh or trough-like supports, inherently feature fenestrations, create discontinuous contact, and would have a surface contact area of less than 30% of the canal wall.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to incorporate Bergheim's teachings of adding channels or troughs into Lynch's device for the same reason as in Ground 1: to further enhance the primary goal of improving aqueous humor outflow, which was central to both Lynch's and Bergheim's disclosures.
  • Expectation of Success (for §103 grounds): Success would be expected because both references were directed to improving fluid flow through structural modifications. Optimizing Lynch’s already fenestrated or mesh-based designs by incorporating Bergheim's troughs was a predictable combination of known elements to achieve a known result.

Ground 3: Obviousness over Lynch +/- Bergheim and Gharib - Claims 8, 10-11, 39, 41-42, 77, and 79-80 are obvious over Lynch, alone or in combination with Bergheim, further in view of Gharib.

• Prior Art Relied Upon: Lynch (Application # 2005/0038334), Bergheim (Application # 2003/0060752), and Gharib (Application # 2002/0165478).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 2 to address claims reciting specific materials. Petitioner argued that while Lynch taught using biocompatible metals generally, Gharib specifically disclosed using a biocompatible, shape-memory metal (Nitinol, a nickel-titanium alloy) for a Schlemm's canal support.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Gharib's material teaching with Lynch's device to improve implantability. Gharib explained that using Nitinol allows a device to be delivered in a smaller, compressed state and then expand to its functional shape post-insertion, which reduces trauma to the eye during surgery. This was a well-known advantage for stent-like devices.
  • Expectation of Success (for §103 grounds): A POSITA would have an expectation of success in using Nitinol for Lynch's device, as it was a well-known and suitable material for ophthalmic stents with predictable and desirable properties for implantation.

4. Key Claim Construction Positions

• Petitioner argued that for the purposes of the inter partes review (IPR), it adopted the Patent Owner’s interpretation of the term “Internal wall surface area C, the support contacts less than 30% of C”.
• This interpretation estimates the surface area by treating Schlemm's canal as a regular cylinder. Petitioner noted this contradicts the ’482 patent’s own description of the canal as a "slightly arcuate cylinder" but adopted the position to demonstrate that even under the Patent Owner's framework, prior art designs inherently or obviously meet the <30% contact limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that the primary prior art references relied upon (Grieshaber and Lynch) were neither applied nor discussed during the original prosecution of the ’482 patent. Therefore, the grounds presented in the petition are substantially different from those previously considered by the USPTO.
• Petitioner also argued against discretionary denial under Fintiv, stating that the median time to trial in the parallel Delaware litigation is projected for May 2024. This date is after the IPR's statutory deadline for a Final Written Decision (FWD) in March 2024, weighing against denial on efficiency grounds.

6. Relief Requested

• Petitioner requested the institution of an IPR and the cancellation of claims 1-2, 5, 7-8, 10-11, 15, 18, 21, 23, 32-33, 36, 38-39, 41-42, 46, 49, 52, 54, 63, 65, 68-70, 73, 77, and 79-80 of the ’482 patent as unpatentable.