- PTAB · Nov 18, 2021 · IPR2021-00841 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR of claims 1–15 on all six asserted obviousness grounds, finding a reasonable likelihood of success on at least one ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions, we conclude Petitioner demonstrates a reasonable likelihood it would prevail in showing that claims of the ’648 patent are unpatentable under the presented grounds. Therefore, we institute inter partes review of all challenged claims (1–15) under the grounds raised in the Petition, pursuant to 35 U.S.C. § 314. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial) (“Guidance”).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“For purposes of this Decision, at this stage of the proceeding we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’648 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as also including a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers, and that these people may collaborate. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which includes a significant number of prior art references authored by PhDs, MDs, and BSs and combinations thereof. See, e.g., Ex. 1030 (we understand includes inventors that are PhDs and MDs); Ex. 1039 (we understand includes PhDs and MDs as inventors); Ex. 1040 (we understand inventor is a JD with a BS); Ex. 1041 (we understand authors are MDs); Ex. 1042 (we understand authors are PhDs, MD, and BS); Ex. 1043 (we understand authors are MDs); Ex. 1045 (we understand inventor is MD); Ex. 1046 (we understand the inventor is an MD); see also Ex. 1053; Ex. 1054; Ex. 1055; Ex. 2010; Ex. 2019.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“CLAIM CONSTRUCTION “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that, although dependent claim 12 is indefinite, its language, “to determine one or more axial locations of the anterior capsule of the lens; and or more anterior capsule axial locations,” should be construed to mean “to determine one or more axial locations of the anterior capsule of the lens (i.e., one or more anterior capsule axial locations).” Pet. 7–8; see also Ex. 1030, 18:46–50 (claim 12). Petitioner’s position is that, as it reads in the ’648 patent, claim 12’s language is “a nonsense phrase,” rendering it indefinite, but that for the purposes of this proceeding it may be understood by the definition set forth above. Pet. 7–8. Patent Owner does not ask that any claim language be expressly construed. See generally Prelim. Resp. Claim 12 depends from independent claim 1 and is but one of fifteen challenged claims. Ex. 1030, 17:30–18:61. It is not necessary for us to consider the Petition’s specific challenges to claim 12 to render our decision” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“At this stage of the proceeding, we find Petitioner has sufficiently explained how and why the cited prior art would have been combined, why the ordinarily skilled artisan would have had a reasonable expectation of success in doing so, and that such a combination teaches or suggests the limitations or steps of claims 1–5 and 12–15. We address Patent Owner’s preliminary arguments below. Patent Owner addresses Petitioner’s Grounds 1–3 together; each is based on a combination of Swinger, Baikoff, and Li. Prelim. Resp. 10–31 (citing, inter alia, Ex. 1001 (Izatt) ¶¶ 46–49, 143, 149, 159; Ex. 1030, 2:5– 13, 11:19–26, 17:38–45; Ex. 1039 (Swinger), 17:50–54, 19:23–28, 23:28– 31, 34:30–35:3, 35:18–36:17; Ex. 1041 (Baikoff), 1843–45, 1847, 1849, Fig. 10; Ex. 1043 (Hoppeler); Ex. 1044 (Li); Ex. 1046 (L’Esperance); Ex. 2002 (Kang) ¶¶ 32–39, 46–52, 55–57, 60; Ex. 2004 (Walter) ¶¶ 16–17; Ex. 2006, 286, 296–98).15 Patent Owner addresses the claims in this way as a set, presenting the same arguments for all claims, and addresses the dependent claims as not unpatentable because the additionally cited prior art (Hoppeler and L’Esperance) do not remedy the argued shortcomings regarding Swinger, Baikoff, and Li. Id. Patent Owner argues that the ordinarily skilled artisan would not have combined these references because Swinger requires a surgeon’s direct visualization for cataract surgery, foreclosing using OCT, and because Baikoff and Li teach that OCT is limited to the eye’s anterior chamber, which makes it impossible to obtain satisfactory imaging (e.g., of lens portions behind the iris’s shadow). Id. at 15–18. Patent Owner argues that Swinger’s use of direct visualization and Baikoff’s acknowledgement of an inability to OCT-image the lens where shadowed by the iris teaches away from using OCT in cataract surgery and the combination of the references. Id. at 15–19. Patent Owner argues that the prior art combination does not disclose a device that “generate[s] image data for the patient’s crystalline lens,” or “process[ing] the image data to determine an anterior capsule incision scanning pattern for scanning a focal zone of the laser beam for performing an anterior capsule incision,” as recited by claim 1. Id. at 21–30. Patent Owner also argues that Petitioner took positions before the Office contrary to those it now asserts, specifically that in 2010 OCT imaging could 15 Patent Owner cites this evidence by shorthand names, e.g., “Swinger” and “Kang.” Although Patent Owner is free to cite evidence by any manner it desires, it is more useful to the Board if citations reference exhibit numbers, which facilitates review of the record.” slip op. at 29
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,474,648 - PTAB · Nov 12, 2021 · IPR2021-00845 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on claims 1–17 and 20–26 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’024 patent. Accordingly, we institute an inter partes review of claims 1–17 and 20–26 of the ’024 patent. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level board ownDecided for patent owner
“For purposes of this Decision, we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosures of the ’024 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the appropriate level of ordinary skill in the art may be reflected in “the prior art itself”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which demonstrates individuals having a broad array of scientific degrees that collaborate as a team. We note, however, that our decision to institute trial in this proceeding would not change were we to adopt Patent Owner’s proposed definition.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“On this record, we agree with Patent Owner that the disputed preamble phrase is limiting. “[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mkt’g Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808–09 (Fed. Cir. 2002). Here, the Examiner expressly allowed the claims in view of the Examiner’s Amendment changing “[a] method” to “[a] cataract surgery method,” thereby transforming this portion of the preamble into a limitation. Ex. 1009, 14, 16, 19; see Catalina Mkt’g, 289 F.3d. at 808. system may be able to make additional types of incisions, we understand the current method steps to require a laser surgery system that is capable of creating the type of “cataract incision” discussed repeatedly in the ’024 patent, the Petition, the Preliminary Response, and Drs. Lubatschowski’s and Hatch’s declarations, i.e., the type of incisions traditionally used in the art when performing cataract surgery to allow for the insertion of slender surgical instruments. Ex. 1007, 3:10–13 (noting that the invention enables “the formation of very small and geometrically precise opening(s) and incision(s) in precise locations in and around the cornea and limbus”), 10:19–21, 11:7–10, Figs. 5A–B; Pet. 12 (noting that cataract incisions have been applied as part of cataract surgeries since the late 1800s), 29 (referencing the small cataract incisions discussed in Weikert); Prelim. Resp. 7–8 (asserting that a “cataract incision” is “a small incision” made in the cornea, limbus, or sclera, to provide access for “slender surgical instruments . . . to be inserted through a small opening in the cornea”); Ex. 1001 ¶¶ 23, 61 (Dr. Lubatschowski describing cataract incisions and noting that he “will apply the prior art as if the incision must be specifically for cataract surgery”); Ex. 2004 ¶¶ 16, 18 (Dr. Hatch asserting that the “cataract incisions” of the ’024 patent are small and made with the goal of minimizing refractive changes). In view of the foregoing, for purposes of this Decision, we construe the preamble phrase “[a] cataract surgery method” recited in independent claims 1, 8, 12, and 22 to be limiting and to require, inter alia, a method step of creating a cataract incision of the type commonly used in cataract surgery to allow for insertion of slender surgical instruments into the eye cavity.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“A petition must “identify with particularity the grounds for institution and evidence supporting such grounds,” including “the prior art relied upon and evidence that it qualifies as such.” Hulu, Paper 29 at 13 (citing 35 U.S.C. § 312(a)). The Petition identifies the grounds for institution and the evidence supporting such grounds, and presents evidence that Weikert qualifies as prior art under 35 U.S.C. § 102(b). Pet. 5, 26–27. For example, Petitioner and Dr. Lubatschowski assert that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists,” and that Weikert was included in the 2005 edition of CATARACT AND REFRACTIVE SURGERY as Chapter 14: Refractive Keratotomy: Does it Have a Future Role in Refractive Surgery? Ex. 1001 ¶ 73. Although minimal, given the type of document involved, and in the absence of any reason to question Petitioner’s and Dr. Lubatschowski’s assertions, Petitioner’s evidence is sufficient to present a reasonable likelihood that Weikert is prior art to the ’024 patent under 35 U.S.C. § 102(b). In addition, Hulu contemplates additional evidence being admitted in a reply to a patent owner preliminary response, as long as that evidence is responsive to the prior briefing. Hulu, Paper 29 at 14. In this case, Petitioner’s evidence submitted in its Reply is responsive to arguments made in the Preliminary Response, and confirms what was asserted in the Petition CATARACT AND REFRACTIVE SURGERY and the document bears a copyright date of 2005 (or, as asserted by Dr. Lubatschowski, is a “2005 edition”). Ex. 1060, 5, 12; Pet. 5, 26–27; Ex. 1001 ¶ 73. In addition, this evidence indicates that CATARACT AND REFRACTIVE SURGERY was published by “Springer,” which is a well-known publishing company, and is the type of document that would be expected to be made publically accessible. See Ex. 1001 ¶ 73 (asserting that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists”); Ex. 1019, 220, 224, 227, 228, 230, 232 (providing a “Summary for the Clinician” at the end of several sub-chapters); Ex. 1060, 4–5. In the absence of evidence or argument suggesting that Weikert was not publically available, at this stage of the proceeding, we find the information presented in the Petition, as confirmed by the Reply evidence submitted by Petitioner, demonstrates a reasonable likelihood that Weikert is prior art to the ’024 patent.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,233,024 - PTAB · Nov 12, 2021 · IPR2021-00843 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on all grounds for claims 1–17, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’023 patent. Accordingly, we institute an inter partes review of claims 1–17 of the ’023 patent. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“For purposes of this Decision, we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosures of the ’023 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the appropriate level of ordinary skill in the art may be reflected in “the prior art itself”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which demonstrates individuals having a broad array of scientific degrees that collaborate as a team. We note, however, that our decision to institute trial in this proceeding would not change were we to adopt Patent Owner’s proposed definition.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“On this record, we agree with Patent Owner that the disputed preamble phrase is limiting. “[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mkt’g Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808–09 (Fed. Cir. 2002). Here, the Examiner expressly allowed the claims in view of the Examiner’s Amendment changing “scanning system” to “cataract surgery scanning system,” thereby transforming this portion of the preamble into a limitation. Ex. 1006, 13, 15, 18; see Catalina Mkt’g, 289 F.3d. at 808. Furthermore, contrary to Petitioner’s arguments, the record appears to suggest that there are structural differences between the optical systems of cataract surgery systems on the one hand and corneal surgery systems on the other. See Ex. 2006, 5:30–36; Ex. 2009, 1209–10. Thus, on this record, we are not persuaded that the language added by the Examiner represents merely an intended use for the disclosed system. In view of the foregoing, for purposes of this Decision, we construe the preamble phrase “cataract surgery scanning system” recited in independent claims 1, 8, and 12 to be limiting.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The ’023 patent explains that a “cataract incision” is an incision created “to allow access for the lens removal instrumentation.” Ex. 1004, 10:17–19. The potential ambiguity in the claim comes, as Petitioner notes, from the fact that the cataract incision of claim 1 “only partially extend[s] through the target tissue,” which would not appear to provide immediate “access to an eye chamber of the patient’s eye.” Pet. 10; Ex. 1004, 10:19– 23, 14:15–21. Although somewhat ambiguous on its face, the prosecution history provides guidance as to how this claim phrase is to be interpreted. Phillips, 415 F.3d at 1317 (“Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent.”). During prosecution, the Applicants explained that the invention allows “straight cataract incisions [to be] made at the correct location,” and that partially penetrating cataract incisions are advantageous because they allow the laser delivery system to be located in an “unsterile field,” with the final penetrating incision to be made “by a physician after a patient has been moved to a sterile field.” Ex. 1006, 52–53. The Applicants then explained that despite the fact that partially penetrating cataract incisions do not fully for the lens removal instruments,” as that term is used in the ’023 patent. Id. at 52 (noting the purpose of “partially penetrating cataract incisions” is “to allow access for lens removal instruments”), 55 (“In short, none of the cited art teaches . . . to deliver the first treatment pattern to the target tissue to form partially penetrating cataract incisions – i.e. incisions that allow access for the lens removal instruments.”). The Examiner agreed with this reasoning. Id. at 15 (agreeing that the prior art did not teach or suggest partially penetrating cataract incisions that provide “access to the eye chamber of the patient’s eye”). Given these disclosures, we agree with Patent Owner that “provides access to an eye chamber of the patient’s eye” in claim 1 means that the partial incision is a starting incision, made in the appropriate shape and location, that allows complete access for lens removal instrumentation when completed, for example, by the surgeon. In view of the foregoing, we construe the claim phrase “cataract incision therein that provides access to an eye chamber of the patient’s eye, the incision . . . only partially extending through the target tissue” to require “a partially penetrating cataract incision that, when completed by the” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,233,023 - PTAB · Nov 10, 2021 · IPR2021-00839 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted IPR of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that at least one claim would have been shown obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’448 patent is unpatentable. Accordingly, an inter partes review of all of the claims and all of the grounds presented in the Petition is hereby instituted.” slip op. at 2
- Skill levelSkill level board ownOther
“For purposes of this Decision, at this stage of the proceeding we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’448 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as also including a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers, and that these people may collaborate. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which includes a significant number of prior art references authored by PhDs, MDs, and BSs and combinations thereof. See, e.g., Ex. 1021 (we understand includes inventors that are PhDs and MDs); Ex. 1039 (we understand includes PhDs and MDs as inventors); Ex. 1040 (we understand inventor is a JD with a BS); Ex. 1041 (we understand authors are MDs); Ex. 1042 (we understand authors are PhDs, MD, and BS); Ex. 1043 (we understand authors are MDs); Ex. 1045 (we understand inventor is MD); see also Ex. 1053; Ex. 1054; Ex. 1055; Ex. 2010; Ex. 2019. However, our decision to institute trial in this proceeding is not determinative on the specific definition of ordinarily skilled artisan and would not change were we to adopt Patent Owner’s proposed definition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not assert that any claim term requires express construction. See Pet. 7 (stating that it “reserves the right to respond to any constructions that PO submits”). Patent Owner does not present any remarks regarding claim construction. See generally, Prelim. Resp. On this record and for purposes of this Decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“summarized above, we determine that Petitioner has sufficiently identified where each limitation of the challenged claims are disclosed in Swinger, Baikoff, and Li. Petitioner also provides sufficient explanation as to why one of ordinary skill in the art would have combined the references to arrive at the claimed invention with a reasonable expectation of success. Pet. 27– 31. In particular, we note that Dr. Izatt testifies, a POSA would have understood Baikoff’s AC OCT assembly as having a controller integrated therein to facilitate its operation, as every OCT system requires a controller to coordinate synchronization of A-scan acquisition with x and y axis lateral scanning, among other functions. Ex. 1001 ¶ 195. Dr. Izatt also testifies, a POSA would have programmed the combined system to generate an anterior capsulotomy scanning pattern by processing the imaging data acquired by Baikoff. Specifically, as I explained in [¶¶ 153–159], Li teaches that an OCT system controller can be programmed to automatically measure anterior chamber width, anterior chamber depth, and lens vault in order to size an IOL. Ex. 1044 at 1–2. In my opinion, these measurements necessarily require identifying the anterior capsule, and therefore, I conclude that a POSA would have found it obvious to program the system to generate an anterior capsulotomy scanning pattern based on them. Id. at ¶ 197. While we recognize some merit to Patent Owner’s counterarguments, the issues identified by Patent Owner implicate disputed issues of fact more appropriately resolved after a full record is developed at trial. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact. . . . The presence or absence of a reasonable expectation of success is also a question of fact.”). We decline to engage in weighing of the evidence at this stage of the proceeding. We will evaluate both parties’ arguments and evidence once the record is fully developed further during trial.” slip op. at 28
Claim construction§ 103 obviousnessPatents in suitUS 9,101,448 - PTAB · Nov 10, 2021 · IPR2021-00840 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1, 2, 8–16, and 22–35 on all asserted grounds, finding a reasonable likelihood of success on at least one obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions, we conclude Petitioner demonstrates a reasonable likelihood it would prevail in showing that claims of the ’732 patent are unpatentable under the presented grounds. Therefore, we institute inter partes review of all challenged claims (1, 2, 8–16, 22–35) under the grounds raised in the Petition, pursuant to 35 U.S.C. § 314. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial) (“Guidance”).” slip op. at 2
- Skill levelSkill level petitioner adoptedSkill level board ownOther
“generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’732 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as also including a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers, and that these people may collaborate. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which includes a significant number of prior art references authored by PhDs, MDs, and BSs and combinations thereof. See, e.g., Ex. 1024 (we understand includes inventors that are PhDs and MDs); Ex. 1039 (we understand includes PhDs and MDs as inventors); Ex. 1040 (we understand inventor is a JD with a BS); Ex. 1041 (we understand authors are MDs); Ex. 1042 (we understand authors are PhDs, MD, and BS); Ex. 1043 (we understand authors are MDs); Ex. 1045 (we understand” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“CLAIM CONSTRUCTION “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party has suggested that any claim language need be expressly construed. See Pet. 7; see generally Prelim. Resp. We do not construe any claim language and accord all claim language its ordinary and customary meaning as it would have been understood by the person of ordinary skill in the art. C.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,107,732 - PTAB · Oct 28, 2021 · IPR2021-00835 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted review of claims 1–24 on all petition grounds after finding a reasonable likelihood that at least one claim would have been shown obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’415 patent is unpatentable. Accordingly, an inter partes review of all of the claims and all of the grounds presented in the Petition is hereby instituted.” slip op. at 2
- Skill levelSkill level board ownOther
“For purposes of this Decision, at this stage of the proceeding we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’415 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as also including a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers, and that these people may collaborate. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which includes a significant number of prior art references authored by PhDs, MDs, and BSs and combinations thereof. See, e.g., Ex. 1018 (we understand includes inventors that are PhDs and MDs); Ex. 1039 (we understand includes PhDs and MDs as inventors); Ex. 1040 (we understand inventor is a JD with a BS); Ex. 1041 (we understand authors are MDs); Ex. 1042 (we understand authors are PhDs, MD, and BS); Ex. 1043 (we understand authors are MDs); Ex. 1045 (we understand inventor is MD); see also Ex. 1053; Ex. 1054; Ex. 1055; Ex. 2010; Ex. 2019. However, our decision to institute trial in this proceeding is not determinative on the specific definition of ordinarily skilled artisan and would not change were we to adopt Patent Owner’s proposed definition.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not assert that any claim term requires express construction. See Pet. 7 (stating that it “reserves the right to respond to any constructions that PO submits”). Patent Owner does not present any remarks regarding claim construction. See, generally, Prelim. Resp. On this record and for purposes of this Decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successOther
“Patent Owner asserts that Petitioner’s arguments fail because “Swinger teaches that the surgeon should use ‘direct visualization’ to control the laser, the opposite of the image-guided surgery as claimed,” and because Petitioner presents no persuasive evidence that Baikoff’s OCT imaging “would be superior to” Swinger’s method of “direct visualization using HeNe aiming beams.” Prelim. Resp. 15–16 (citing Ex. 1039, 34:52–57; Ex. 1001 ¶ 46). Having considered the parties’ positions and evidence of record, summarized above, the parties’ arguments and evidence present a factual question that is best resolved on a complete trial record. First, we note that, although Swinger chooses to use “direct visualization,” we are directed to no teaching or disclosure in the reference that would counsel against using other visualization methods. Second, the evidence of record, including the” slip op. at 24
Claim construction§ 103 obviousnessPatents in suitUS 9,095,415 - PTAB · Oct 21, 2021 · IPR2021-00825 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted IPR on claims 1–8, 10–18, and 20 on all asserted grounds after finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’904 patent is unpatentable. Accordingly, an inter partes review of all of the claims and all of the grounds presented in the Petition is hereby instituted.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“For purposes of this Decision, at this stage of the proceeding we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’904 patent; however, we also agree with Patent Owner that 2 The parties use the acronym POSA to refer to the person of ordinary skill in the art. It is not preferred. such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as also including a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers, and that these people may collaborate. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which includes a significant number of prior art references authored by PhDs, MDs, and BSs and combinations thereof. See, e.g., Ex. 1006 (we understand includes inventors that are PhDs and MDs); Ex. 1039 (we understand includes PhDs and MDs as inventors); Ex. 1040 (we understand inventor is a JD with a BS); Ex. 1041 (we understand authors are MDs); Ex. 1042 (we understand authors are PhDs, MD, and BS); Ex. 1043 (we understand authors are MDs); Ex. 1045 (we understand inventor is MD); see also Ex. 1053; Ex. 1054; Ex. 1055; Ex. 2010; Ex. 2019. However, our decision to institute trial in this proceeding is not dependent upon the specific definition of ordinarily skilled artisan and would not change were we to adopt Patent Owner’s proposed definition.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that the following claim term requires construction: “continuous depth profile of the volume of the patient’s crystalline lens.” Pet. 6–8. Patent Owner does not specifically address Petitioner’s proffered construction, but, rather, “reserves the right to argue alternative and additional constructions in other proceedings, and should the Board institute, in this one.” Prelim. Resp. 10, n.5. Patent Owner proposes a construction for the claim term “control system operably coupled to the laser system and configured to . . . identify one or more boundaries [and] determine a lens fragmentation treatment region.” Id. at 10–11 (alterations in original). Upon review of the parties’ arguments and supporting evidence, we determine that no claim terms require construction for purposes of this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Having considered the parties positions and information of record, summarized above, we determine that Petitioner has sufficiently identified where each limitation of the challenged claims are disclosed in Swinger, Baikoff, and Li. Petitioner also provides sufficient explanation as to why one of ordinary skill in the art would have combined the references to arrive at the claimed invention with a reasonable expectation of success. Pet. 29– 36. In particular, we note that Petitioner contends that “Swinger discloses operating a laser surgical system to liquefy a cataractous lens, Ex.1039 at 23:17–24, and other lens-ablation procedures, id. at 35:18–36:17” (Pet. 45), and that Dr. Izatt testifies that the terms liquefy, fragment, and soften may be used “somewhat interchangeably” (Ex. 1001 ¶ 155). Although we recognize some merit to Patent Owner’s counterarguments, the issues identified by Patent Owner implicate disputed issues of fact more appropriately resolved after a full record is developed at trial. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact. . . . The presence or absence of a reasonable expectation of success is also a question of fact.”). We decline to engage in weighing of the evidence at this stage of the proceeding. We will evaluate both parties’ arguments and evidence once the record is fully developed further during trial.” slip op. at 26
Claim construction§ 103 obviousnessPatents in suitUS 9,693,904 - PTAB · Oct 21, 2021 · IPR2021-00824 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted IPR on claims 1–6, 8–15, and 17–18 on all petitioned grounds after finding a reasonable likelihood that at least one claim was obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’903 patent is unpatentable. Accordingly, an inter partes review of all of the claims and all of the grounds presented in the Petition is hereby instituted.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“For purposes of this Decision, at this stage of the proceeding we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’903 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as also including a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers, and that these people may collaborate. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Upon review of the parties’ arguments and supporting evidence, we determine that no claim terms require construction for purposes of this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Having considered the parties positions and information of record, summarized above, we determine that Petitioner has sufficiently identified where each limitation of the challenged claims are disclosed in Swinger, Baikoff, and Li. Petitioner also provides sufficient explanation as to why one of ordinary skill in the art would have combined the references to arrive at the claimed invention with a reasonable expectation of success. Pet. 29– 36. In particular, we note that Petitioner contends that “Swinger discloses operating a laser surgical system to liquefy a cataractous lens, Ex.1039 at 23:17–24, and other lens-ablation procedures, id. at 35:18–36:17” (Pet. 45), and that Dr. Izatt testifies that the terms liquefy, fragment, and soften may be used “somewhat interchangeably” (Ex. 1001 ¶ 155). While we recognize some merit to Patent Owner’s counterarguments, the issues identified by Patent Owner implicate disputed issues of fact more appropriately resolved after a full record is developed at trial. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact. . . . The presence or absence of a reasonable expectation of success is also a question of fact.”). We decline to engage in weighing of the evidence at this stage of the proceeding. We will evaluate both parties’ arguments and evidence once the record is fully developed further during trial.” slip op. at 25
Claim construction§ 103 obviousnessPatents in suitUS 9,693,903 - PTAB · Oct 21, 2021 · IPR2021-00817 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR of claims 1–21 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’084 patent. Accordingly, we institute an inter partes review of claims 1–21 of the ’084 patent. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018)” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“For purposes of this Decision, at this stage of the proceeding we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosures of the ’084 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which includes a significant number of prior art references authored by PhDs, MDs, and BSs, and combinations thereof. See, e.g., Ex. 1041 (several authors are MDs); Ex. 1042 (the authors’ degrees include PhDs, an MD, and a BS); see also Ex. 1053; Ex. 1054; Ex. 1055; Ex. 2010; Ex. 2019. We note, however, that our decision to” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “automatically” and “three-dimensional . . . imaging assembly capable of creating a continuous depth profile.” Pet. 7–10. Patent Owner provides a construction for the term “one or more controllers . . . programmed to automatically . . . identify one or more boundaries [and] identify one or more treatment regions based upon the boundaries.” Prelim. Resp. 11–12. Upon review of the parties’ arguments and supporting evidence, we determine that no claim terms require construction for purposes of this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). We note, however, that we address the term “automatically” below in the context of the grounds based on Swinger.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“order to plan and effect laser cataract surgery with improved accuracy. Id. at 33–34 (citing Ex. 1001 ¶ 167). According to Petitioner, “accurate incisions,” including those for anterior capsulorhexis, “are only beneficial to the extent they derive from an accurate understanding of the target anatomy” and “Baikoff’s OCT assembly represents a sophisticated imaging technique available at the time for obtaining precise measurements of the anterior segment in a fast and user-friendly manner.” Id. at 32–34 (citing Ex. 1001 ¶ 167; Ex. 1041, 1). Petitioner asserts that, beyond the need for improved accuracy, use of Baikoff’s OCT assembly in place of Swinger’s direct visualization method would have been obvious because it constitutes the mere substitution of one known imaging modality for another, and because there were “a finite number of identified and predictable imaging modalities” known in the art. Id. at 35–36 (citing Ex. 1001 ¶ 170). With respect to automatically identifying tissue boundaries and treatment regions, Petitioner asserts that Li teaches an OCT system that employs a computer algorithm to make tissue measurements automatically based on the boundaries of imaged tissues. Id. at 39. Petitioner further asserts that after integrating Baikoff’s OCT imaging system in Swinger, “it would have been obvious to program Swinger’s computer-control system to process the image data, as taught by Li, to identify the relevant boundaries and determine the treatment regions automatically.” Id. at 39–40 (citing Ex. 1001 ¶¶ 177–181; Ex. 1044, 1). Petitioner contends one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed combination because the prior art teaches “that integrating diagnostic imaging and but also straightforward.” Id. at 35, 40. Petitioner further contends that programming the control system with boundary detection algorithms that automatically evaluate image data and identify tissue boundaries was well within the skill of the art. Id. at 35, 40–41 (citing Ex. 1001 ¶ 181) (Petitioner asserting that the Sobel and Canny edge detection schemes were well known in the art and computationally efficient).” slip op. at 17
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,394,084 - PTAB · Oct 21, 2021 · IPR2021-00823 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1–23 under all eight asserted obviousness grounds, finding a reasonable likelihood of success based on Ground 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions, we conclude Petitioner demonstrates a reasonable likelihood it would prevail in showing that claims of the ’921 patent are unpatentable under the presented grounds. Therefore, we institute inter partes review of all challenged claims (1–23) under the grounds raised in the Petition, pursuant to 35 U.S.C. § 314. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial) (“Guidance”).” slip op. at 2
- Skill levelSkill level board ownOther
“skill and is not recognized by Petitioner; and (2) PhD education is not required for ordinary skill and a Bachelor’s degree will suffice for active workers in the field. Prelim. Resp. 9–10. In view of these issues, Patent Owner proposes the following: The person having ordinary skill at the time of the invention in or about January 2005 would include an engineer with a Bachelor’s degree in a laser-related engineering or optics field, with some experience working with medical optics or lasers. Kang ¶ 27. The engineer would have worked with a clinician having experience with ophthalmic surgery. Id. Conversely, a POSA would also include an ophthalmic surgeon with some experience working with medical optics or lasers, who would have worked with an engineer or a graduate from a related field with some experience working with medical optics or lasers. Id. Id. at 8–9. For purposes of this Decision, at this stage of the proceeding we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’921 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as also including a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers, and that these people may collaborate. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which includes a significant number of prior art references authored by PhDs, MDs, and BSs and combinations thereof. See, e.g., Ex. 1006 (we understand includes inventors that are PhDs and MDs); Ex. 1039 (we understand includes PhDs and MDs as inventors); Ex. 1040 (we understand inventor is a JD with a BS); Ex. 1041 (we understand authors are MDs); Ex. 1042 (we understand authors are PhDs, MD, and BS); Ex. 1043 (we understand authors are MDs); Ex. 1045 (we understand inventor is MD); see also Ex. 1053; Ex. 1054; Ex. 1055; Ex. 2010; Ex. 2019.” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner’s position that the plain meaning of the term “automatically,” within the context of the claims, means that the computer system can perform all the subsequently recited steps, including identify an anterior capsulotomy cutting region, and we agree with Petitioner that the plain meaning of “automatically” means that the computer can do this on its own, without user control or input. This is supported by the Specification, which states that “the entire system is controlled by the controller CPU.” Id. at 12:18–19. We also agree with Petitioner that just because the claimed computer system is programmed to perform tasks automatically, this does not mean user input (e.g., from a surgeon) is excluded from the process. Claim 10, which depends from independent claim 1, further recites that “the computer control system is programmed to receive input from a user input interface and identify one or more parameters of the cataract surgery procedure based at least in part on the received user input.” Id. at 18:1–5. Such optional user input is also supported by the Specification which describes embodiments where a surgeon can adjust the size, location, and shape of the treatment pattern, can determine the optimal cutting contours in patients, and can provide “user input” to define targets or adjust computer-defined parameters as necessary. Id. at 10:48–49; 10:60–62, 13:28–32, 13:58–14:2. Thus, we interpret the term “automatically” as used in the claims to mean that the claimed computer control system can be autonomous as to the subsequently recited steps, but that the claimed computer control system may also operate based on some user input; the two programming circumstances are not mutually exclusive.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“For the purposes of this Decision and at this stage of the proceeding we agree with and adopt Petitioner’s proposed, and at this stage unopposed, interpretation. Petitioner’s identified two lateral dimensions and axial dimension imaged and measured by the system would include the X, Y, and Z axes within the target, which would be three-dimensional scanning. See, e.g., id. at 8:2–49 (describing 3D scanning to determine location and thickness of lens and lens capsule, provide information about axial location of capsule, boundaries of cataract nucleus, depth of AC, axial limits of cutting and segmentation), 10:62–11:13 (describing imaging a 3D pattern and measuring size, location, positions, and/or dimensions of eye structures), 11:33–39 (describing using the optical system to scan along the Z axis and in the X and Y axes). We discern no disclosure in the ’921 patent that requires the system’s obtaining and rendering a 3-dimensional image of a lens that represents a complete volume. C.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,403,921
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.