UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________________
`
`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`HAAG-STREIT AG
`Petitioner
`
`v.
`
`EIDOLON OPTICAL, LLC
`Patent Owner
`
`_____________________________
`
`CASE IPR: 2018-_____
`
`U.S. PATENT NO. 6,547,394 B2
`
`_____________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`_____________________________
`
`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`HAAG-STREIT AG
`Petitioner
`
`v.
`
`EIDOLON OPTICAL, LLC
`Patent Owner
`
`_____________________________
`
`CASE IPR: 2018-_____
`
`U.S. PATENT NO. 6,547,394 B2
`
`_____________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Table of Contents
`
`I.
`
`INTRODUCTION……………………………………………...1
`
`II. MANDATORY NOTICES (37 C.F.R. § 42.8) ……………….1
`
`A. Real Parties-In-Interest ………………………………...1
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))……………….1
`
`C.
`
`D.
`
`Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3))…...2
`
`Service Information (37 C.F.R. § 42.8(b)(4))…………..2
`
`III. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a))………3
`
`IV.
`
`V.
`
`IDENTIFICATION OF CHALLENGES……………………..3
`
`BACKGROUND………………………………………………..4
`
`A.
`
`B.
`
`C.
`
`Technology……………………………………………….4
`
`The ‘394 Patent………………………………………….5
`
`Prosecution History……………………………………..6
`
`VI. PERSON OF ORDINARY SKILL IN THE ART…………...7
`
`VII. CLAIM CONSTRUCTION…………………………………...8
`
`VIII. IDENTIFICATION OF HOW EACH
`CHALLENGED CLAIM OF THE ’394
`PATENT IS UNPATENTABLE………………………………9
`
`ii
`
`
`
`A. Challenge #1: Claims 1, 5, 6, 8-10, 14 and 19 are obvious
`under pre-AIA 35 U.S.C. § 103(a) over Longobardi in view of
`Devonshire …………………………………………………………….10
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Claim 1………………………………….………………..11
`
`Claim 5……..…………………………………………….22
`
`Claim 6……..…………………………………………….26
`
`Claim 8…………………………………………………...28
`
`Claim 9…………………………………………………...29
`
`Claim 10………………………………………………….30
`
`Claim 14………………………………………………….31
`
`Claim 19………………………………………………….33
`
`B. Challenge #2: Claims 15 and 16 are anticipated under
`pre-AIA 35 U.S.C. § 102(b) by Longobardi…………………...35
`
`1.
`
`2.
`
`Claim 15..…………………………………………….…..35
`
`Claim 16……………………………………………….…40
`
`C. Challenge #3: Claims 1, 5, 6, 8-10, 14-16 and 19 are
`anticipated under pre-AIA 35 U.S.C. § 102(b) by
`Devonshire………………………………………………….…...40
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claim 1………………………………….………………..41
`
`Claim 5……..…………………………………………….47
`
`Claim 6……..…………………………………………….49
`
`Claim 8…………………………………………………...50
`
`Claim 9…………………………………………………...51
`
`iii
`
`
`
`6.
`
`7.
`
`8.
`
`9.
`
`Claim 10………………………………………………….52
`
`Claim 14………………………………………………….54
`
`Claim 15..………………………………………………...55
`
`Claim 16………………………………………………….58
`
`10. Claim 19………………………………………………….59
`
`IX. CONCLUSION………………………………………………………..60
`
`iv
`
`
`
`List of Exhibits
`
`Ex. 1001 United States Letters Patent No. 6,547,394 B2
`
`Ex. 1002 Declaration of Dr. Jianzhong Jiao, Ph.D.
`
`Ex. 1003 Prosecution history of U.S. Patent No. 6,547,394 B2
`
`Ex. 1004
`
`European Patent Application No. 0 554 643 A1 (“Longobardi”)
`
`Ex. 1005 UK Patent Application GB 2 077 946 A (“Devonshire”)
`
`Ex. 1006 U.S. Patent No. 4,350,676
`
`Ex. 1007 U.S. Patent No. 4,518,579
`
`Ex. 1008 U.S. Patent No. 4,995,716
`
`Ex. 1009 U.S. Patent No. 5,225,859
`
`Ex. 1010 U.S. Patent No. 5,346,689
`
`Ex. 1011 U.S. Patent No. 6,193,401
`
`Ex. 1012 U.S. Patent No. 6,350,275
`
`Ex. 1013 U.S. Patent No. 6,596,016
`
`Ex. 1014 U.S. Patent No. 5,301,090
`
`Ex. 1015 U.S. Patent No. 5,660,461
`
`Ex. 1016 U.S. Patent No. 6,069,687
`
`v
`
`
`
`I.
`
`INTRODUCTION
`
`Haag-Streit AG (“Petitioner”) hereby petitions for inter partes review of
`
`claims 1, 5, 6, 8-10, 14-16 and 19 (the “challenged claims”) of U.S. Patent No.
`
`6,547,394 (“the ‘394 Patent”) (Ex. 1001) under 35 U.S.C. §§ 311–319 and 37
`
`C.F.R. § 42. According to the assignment information contained in the records of
`
`the United States Patent & Trademark Office (the “USPTO”), the ‘394 Patent is
`
`assigned to, and therefore owned by, Eidolon Optical, LLC (the “Patent Owner”).
`
`For the reasons provided in detail below, the challenged claims should be found
`
`unpatentable and canceled.
`
`II. MANDATORY NOTICES (37 C.F.R. § 42.8)
`
`A. Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`The real parties-in-interest in this matter are Petitioner Haag-Streit AG and
`
`its parent companies, Haag-Streit Holdings AG and Metall Zug AG.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`As of the filing date of this Petition, Petitioner is unaware of any matters
`
`involving the ‘394 Patent currently pending in any United States court or
`
`administrative agency.
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`C.
`
`Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3))
`
`Lead Counsel:
`
`Donald R. McPhail (USPTO Reg. No. 35,811)
`TAFT, STETTINIUS & HOLLISTER LLP
`111 East Wacker, Suite 2800
`
`Chicago, IL 60604
`Tel: (312) 836-4155
`Fax: (312) 966-8600
`Email: dmcphail@taftlaw.com
`
`Backup Counsel:
`
`Ryan White (USPTO Reg. No. 45,541)
`TAFT, STETTINIUS & HOLLISTER LLP
`One Indiana Square, Suite 3500
`Indianapolis, IN 46204
`
`Tel: (317) 713-3455
`Fax: (317) 713-3699
`Email: rwhite@taftlaw.com
`
`Daniel J. Krieger (USPTO Reg. No. 33,600)
`TAFT, STETTINIUS & HOLLISTER LLP
`One Indiana Square, Suite 3500
`Indianapolis, IN 46204
`
`Tel: (317) 713-3458
`Fax: (317) 713-3699
`Email: dkrieger@taftlaw.com
`
`D.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Please address all correspondence to Lead Counsel at the mailing address
`
`shown above. Petitioner also consents to electronic service by email.
`
`2
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`III. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a))
`
`Petitioner hereby certifies that: (1) the ‘394 Patent issued on April 15, 2003
`
`and so is eligible for inter partes review; (2) Petitioner has not been served with a
`
`complaint alleging infringement of any of the claims of the ‘394 patent and so is
`
`therefore not barred or estopped from requesting inter partes review of the ‘394
`
`Patent on the grounds identified herein; and (3) Petitioner has not filed a complaint
`
`challenging the validity of the ‘394 Patent. This Petition is being filed in
`
`accordance with 37 C.F.R. § 42.106(a).
`
`IV.
`
`IDENTIFICATION OF CHALLENGES
`
`Petitioner asks that the Board review the accompanying prior art and
`
`analysis thereof, and the supporting evidence, institute a trial for Inter Partes
`
`Review of claims 1, 5, 6, 8-10, 14-16 and 19 of the ‘394 Patent, and cancel those
`
`claims as invalid under 35 U.S.C. § 102 or 35 U.S.C. § 103. More specifically,
`
`Petitioner requests cancellation of claims 1, 5, 6, 8, 9, 10, 14, 15, 16 and 19 of the
`
`‘394 Patent on the following grounds:
`
`Challenge #1: Claims 1, 5, 6, 8-10, 14 and 19 of the ‘394 Patent are
`
`unpatentable for being obvious under pre-AIA 35 U.S.C. § 103(a) over European
`
`Patent Application No. 0 554 643 A1 to Longobardi (Ex. 1004) in view of UK
`
`Patent Application GB 2 077 946 A to Devonshire (Ex. 1005). Longobardi was
`
`3
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`published on August 11, 1993, and Devonshire was published on December 23,
`
`1981. The earliest effective filing date in the United States to which the ‘394
`
`Patent claims benefit and is entitled is October 20, 1998. As such, both
`
`Longobardi and Devonshire are prior art to the ‘394 Patent under pre-AIA 35
`
`U.S.C. § 102(b).
`
`Challenge #2: Claims 15 and 16 of the ‘394 Patent are anticipated under
`
`pre-AIA 35 U.S.C. § 102(b) by European Patent Application No. 0 554 643 A1 to
`
`Longobardi (“Longobardi”; Ex. 1004).
`
`Challenge #3: Claims 1, 5, 6, 8-10, 14-16 and 19 of the ‘394 Patent are
`
`anticipated under pre-AIA 35 U.S.C. § 102(b) by UK Patent Application GB 2 077
`
`946 A by Devonshire et al. (“Devonshire”; Ex. 1005).
`
`V.
`
`BACKGROUND
`
`A.
`
`Technology
`
`Eye examinations are routinely made with a device known as an
`
`ophthalmoscope. The ophthalmoscope includes a light source providing light of a
`
`predetermined wavelength or wavelengths. Different parts of the eye, including
`
`the cornea, which includes epithelial tissue, the lens and the interior surface of the
`
`eye opposite the lens known as the fundus, can be illuminated to determine the
`
`4
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`health of the eye. The fundus includes the retina, the optic disc, the macula, the
`
`fovea, and the posterior pole.
`
`Ophthalmoscopes include different types of illumination devices such as an
`
`incandescent bulb, including those having a tungsten filament, a halogen bulb, a
`
`laser illumination device, and a light emitting diode. Ophthalmoscopes often
`
`include interference filters located between the illumination device and the eye to
`
`transmit light of a certain wavelength, particularly when the illumination device
`
`provides a white light. Since different parts of the eye are more clearly seen when
`
`examined with light of a certain wavelength, the interference filter provides the
`
`desired wavelength. For instance, certain parts of the eye are more easily seen
`
`when a fluorescein dye is applied to the eye and examined with a blue light.
`
`B.
`
`The ‘394 Patent
`
`According to the specification, the ‘394 Patent relates to “a device which is
`
`used to illuminate a patient’s eye that has been administered with a fluorescent dye
`
`for the purpose of examining the eye for epithelial defects. The invention in its
`
`simplest form utilizes four components: a battery, an electrical resistor, an
`
`electrical switch and a blue light emitting diode.” Ex. 1001 at 1:48-53.
`
`5
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`C.
`
`Prosecution History
`
`The ‘394 Patent issued from United States Patent Application No.
`
`09/768,731 (“the ‘731 Application”), which was filed on January 24, 2001. The
`
`‘731 Application is a continuation-in-part application of prior United States Patent
`
`Application No. 09/175,796, which was filed on October 20, 1998, and
`
`subsequently abandoned.
`
`The prosecution history of the ‘394 Patent (Ex. 1003) is relatively brief, with
`
`the claims being allowed after the applicant’s response to the first Office Action.
`
`Ex. 1003 at 82-86. Original claims 1-3, 8, 11-16, 18 and 20 (which correspond
`
`exactly to claims 1-3, 8, 11-16, 18 and 20 of the ‘394 Patent) were rejected under
`
`35 U.S.C. § 102(e) over U.S. Patent No. 6,340,868. Id. at 69-72. The remaining
`
`claims were objected to as being dependent upon a rejected base claim, but were
`
`deemed to be allowable if rewritten in independent form including all of the
`
`limitations of the base claims and any intervening claims. Id.
`
`In response to this rejection, the applicant did not amend the claims, but
`
`instead argued that the cited reference patent had an effective filing date after the
`
`priority date of the ‘731 Application. Id. at 78-81. In support of this argument,
`
`applicant asserted that
`
`Under 35 U.S.C. § 120 (see also M.P.E.P. 201.11), Applicant is at
`least entitled to a priority date of October 21, 1997 for the use of
`Fluorescein and a blue LED to examine an eye. Accordingly, the
`
`6
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`effective filing date of the present ‘731 Application for use of
`Fluorescein and a blue LED to examine the eye is October 21, 1997.
`All elements or step elements, respectively, of claims 1 and 15, listed
`in detail below, were taught and disclosed in [US Provisional Patent
`Application No. 60/063,131]. The invention of claims 1 and 15 in the
`‘731 Application are therefore entitled to a prior date of at least
`October 21, 1997, which is prior to the filing date of [the cited
`reference].
`
`Id. at 79. The examiner subsequently withdrew the rejection of the cited reference,
`
`and allowed all of the pending claims as originally filed. Id. at 82.
`
`VI. PERSON OF ORDINARY SKILL IN THE ART
`
`A United States patent is to be read and understood from the perspective of a
`
`person of ordinary skill in the relevant art (technical field) at the time the invention
`
`was made. Here, the relevant date is October 20, 1998, i.e. when the inventor
`
`named on the ‘394 Patent filed the original patent application to the subject matter
`
`now claimed in the ‘394 Patent and to which priority is claimed.
`
`A person of ordinary skill in the art is a hypothetical person presumed to
`
`know the relevant prior art. See, e.g., Gnosis S.p.A. v. South Alabama Med. Sci.
`
`Found., IPR2013-00116, Final Written Decision (Paper 68) at 9. Such a person is
`
`of ordinary creativity, not merely an automaton, and is capable of combining the
`
`teachings of the prior art. See id., citing KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`398, 420-21 (2007). The factors that may be used to determine the level of skill of
`
`7
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`a person of ordinary skill in the art may include the education level of those
`
`working in the field, the sophistication of the technology, the types of problems
`
`encountered in the art, prior art solutions to those problems and the speed at which
`
`innovations in the art are made and implemented.
`
`In this case, the ‘394 Patent is directed to “a device which is used to
`
`illuminate a patient’s eye that has been administered with a fluorescent dye for the
`
`purpose of examining the eye for epithelial defects.” Petitioner therefore submits
`
`that a person of ordinary skill should have at least some familiarity with the
`
`practical aspects of ophthalmologic instruments. Ex. 1002 at ¶ 31. Accordingly,
`
`Petitioner submits that a person of ordinary skill in the art of the ‘394 Patent as of
`
`October 20, 1998, would have had at least a bachelor of science or engineering
`
`degree in electrical or mechanical engineering, physics, optics, or a related field,
`
`and either an advanced degree (such as a masters) in such a subject or an
`
`equivalent amount of work experience, i.e. 2-3 years, in an area relating to
`
`ophthalmic instrument design and/or fabrication or a related technical field. Ex.
`
`1002 at ¶ 31.
`
`VII. CLAIM CONSTRUCTION
`
`The following constructions of certain claim terms are proposed by
`
`Petitioner using the “broadest reasonable interpretation” standard currently
`
`8
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`applicable for inter partes review. See 37 C.F.R. § 42.100(b); Cuozzo Speed
`
`Techs. v. Lee, 579 U.S. ___, ___, 136 S. Ct. 2131, ____ (2016). If, however, the
`
`“plain and ordinary meaning” standard was applicable, Petitioner would still
`
`propose the same constructions for the same reasons as provided below.
`
`1.
`
`“ophthalmic illuminator” (claims 1, 5, 6, 8-10 and 14)
`
`This term appears in the preamble of claims 1, 5, 6, 8-10 and 14. The
`
`specification of the ‘394 Patent does not expressly define this term, but does
`
`disclose that “[t]he subject of this invention is a device which is used to illuminate
`
`a patient’s eye that has been administered with a fluorescent dye for the purpose of
`
`examining the eye for epithelial defects.” Ex. 1001 at 1:48-51. Petitioner
`
`therefore proposes that the claim term ophthalmic illuminator be construed to
`
`mean “a device for illuminating a patient’s eye for ophthalmic examination.” Ex.
`
`1002 at ¶ 39.
`
`VIII. IDENTIFICATION OF HOW EACH CHALLENGED CLAIM OF
`THE ’394 PATENT IS UNPATENTABLE
`
`As discussed in detail below, the challenged claims are unpatentable over
`
`the prior art for at least the following grounds.
`
`9
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`A. Challenge #1: Claims 1, 5, 6, 8-10, 14 and 19 are obvious under
`pre-AIA 35 U.S.C. § 103(a) over Longobardi in view of Devonshire
`
`Longobardi was published on August 11, 1993, and Devonshire was
`
`published on December 23, 1981. The earliest effective filing date in the United
`
`States to which the ‘394 Patent claims benefit and is entitled is October 20, 1998.
`
`As such, both Longobardi and Devonshire are prior art to the ‘394 Patent under
`
`pre-AIA 35 U.S.C. § 102(b).
`
`“Obviousness” is when the claimed subject matter is not identically
`
`described, but would have been obvious, as a whole, to a person of ordinary skill in
`
`the art. 35 U.S.C. § 103(a); see KSR Int’l, Inc. v. Teleflex, Inc., 550 U.S. 398, 406–
`
`07 (2007). A proper obviousness analysis requires the following steps: (1)
`
`determining the scope and content of the prior art; (2) ascertaining the difference(s)
`
`between the prior art and the claimed invention; (3) resolving the level of ordinary
`
`skill in the art; and (4) evaluating the objective evidence relevant to obviousness, if
`
`any. See, e.g., Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); KSR, 550
`
`U.S. at 404.
`
`When obviousness is based on information from a combination of sources, a
`
`relevant factor is whether a person of ordinary skill in the art would have been
`
`motivated to select and combine this information, and with a reasonable
`
`10
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`expectation of achieving the desired result. See, e.g., Merck & Cie v. Gnosis
`
`S.p.A., 808 F.3d 829, 833 (Fed. Cir. 2015), cert. denied, 137 S. Ct. 297 (2016).
`
`As will be demonstrated in detail below, the combined teachings of
`
`Longobardi in view of Devonshire would have rendered the subject matter defined
`
`by claims 1, 5, 6, 8-10, 14 and 19 of the ‘394 Patent obvious and therefore
`
`unpatentable. In addition, a person of ordinary skill in the art would have been
`
`motivated to select and combine the respective teachings of Longobardi and
`
`Devonshire along the lines of the claimed invention, and by doing so, would have
`
`had a reasonable expectation of achieving the claimed invention. As a result, the
`
`challenged claims should be found unpatentable, and thereby consequentially
`
`canceled.
`
`1.
`
`Claim 1
`
`a.
`
`The preamble
`
`The preamble of claim 1 of the ‘394 Patent recites “[a]n ophthalmic
`
`illuminator . . ..” Ex 1001 at 4:12. To the extent that this preamble is deemed a
`
`limitation, a point Petitioner expressly does not concede, this limitation is
`
`expressly disclosed by Longobardi. Ex 1002 at ¶¶ 43-44.
`
`More specifically, Longobardi discloses methods and apparatus for “the
`
`illumination of the fundus of the eye.” Ex. 1004 at 6:29-35. Among the specific
`
`uses exemplified by Longobardi for this apparatus is as a device capable of
`
`11
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`performing fluoroscopic angiography. Id., Ex. 1002 at ¶ 43. In particular,
`
`Longobardi teaches that its design is suitable for producing “portable fluoroscopic
`
`angiographs.” Ex. 1004 at 7:24-27. In accordance with advantageous
`
`embodiments of the claimed invention, the portable device’s “light source may be
`
`a light-emitting diode (LED), which emits radiation at a predetermined
`
`wavelength, instead of an incoherent light source.” Ex. 1004 at 7:28-33.
`
`Accordingly, to the extent the preamble is limiting, this limitation is
`
`identically disclosed by Longobardi.
`
`b.
`
`a battery
`
`The first element of the ophthalmic illuminator of claim 1 is a battery. Ex.
`
`1001 at col. 4:13. Longobardi identically discloses this limitation. Ex. 1002 at ¶¶
`
`46-48.
`
`Longobardi discloses methods and apparatus for producing “a device for
`
`fluoroscopic angiography which uses a single light source of limited power, for
`
`example 20 W electric.” Ex. 1004 at 6:29-32. One such apparatus is presented in
`
`FIG. 1 of Longobardi. Ex. 1004 at 8:15-9:6; Ex. 1002 at ¶ 46. Referring to that
`
`FIG. 1, Longobardi teaches a device that comprises
`
`a continuous light source 1 of low power, for example 20 W electric,
`housed in a main housing body 3. . .. With an electric power of 20 W
`for the light source 1, a continuous luminous intensity of 0.7 mW
`reaches the fundus of the patient's eye. The electrical power and
`luminous intensity used are therefore very limited and do not
`
`12
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`cause any problems either in relation to the thermal effects on the
`interference filters or in relation to possible discomfort for the
`patient.
`
`Ex. 1004 at 8:15-45 (emphasis added). Although not expressly stated by
`
`Longobardi, one skilled in the art would inherently understand that the electrical
`
`power generated by the disclosed device includes a battery. Ex. 1002 at ¶ 47. In
`
`addition, as Longobardi teaches that its device is designed to be a portable
`
`fluoroscopic angiograph without a large power supply unit or cooling system, one
`
`skilled in the art would understand that a battery operated power supply would be
`
`contemplated. Ex. 1004 at 7:24-27; Ex. 1002 at ¶ 47.
`
`Longobardi therefore identically discloses the battery limitation of claim 1.
`
`c.
`
`an electrical resistor in circuit with the battery
`
`The second element of claim 1 is an electrical resistor in circuit with the
`
`battery. Ex. 1001 at 4:14. Longobardi does not expressly disclose an electrical
`
`resistor such as claimed; however, Devonshire does teach this feature. Ex. 1002 at
`
`¶ 50. More specifically, much like Longobardi, the secondary reference of
`
`Devonshire discloses an indirect ophthalmoscope (an instrument for examining the
`
`eye) that includes a light source. Ex. 1005 at 1:3-4. Devonshire teaches that
`
`the light projection system, and a converging lens used to form an
`aerial image of the fundus of the eye illuminated by the projection
`system, are combined in a single unit, which can be designed to be
`hand-held.
`
`13
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`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
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`Ex. 1005 at 1:30-35. Devonshire further teaches that
`
`The instrument has a housing 2 which is generally T-shaped and
`comprises a cylindrical tube 3 mounted across the wider end of a
`tapered tube 4. . .. The tube 4 may be attached to or form part of a
`hand grip which can contain a lamp bulb and battery, and optionally, a
`dimmer control.
`
`Ex. 1005 at 1:76-79, 2:16-18 (emphasis added). It is known by those skilled in the
`
`art that a dimmer control is an electrical resistor. Ex. 1002 at ¶ 52. Moreover, one
`
`skilled in the art would understand that in order to properly function, the battery
`
`and dimmer control would necessarily be a part of the same electrical circuit. Ex.
`
`1002 at ¶ 53.
`
`As noted in section VI. above, a person of ordinary skill in the relevant art as
`
`of October 20, 1998, would have had at least a bachelor of science or engineering
`
`degree in electrical engineering, physics, optics, or a related field, and either an
`
`advanced degree (such as a masters) in such a subject or an equivalent amount of
`
`work experience, i.e. 2-3 years, in an area relating to ophthalmic instrument design
`
`and/or fabrication or a related technical field.
`
`Taking the above into consideration, a person of ordinary skill in the
`
`relevant art would have been motivated at the time of the invention to combine the
`
`teachings of Longobardi with the dimmer control disclosed in Devonshire,
`
`particularly as the resulting device would be able to adjust and control the level
`
`(brightness) of light being output from the light-emitting diodes (LEDs). Ex. 1002
`
`14
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`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
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`at ¶ 55. In addition, since one of the disclosed benefits of Longobardi’s device is
`
`to produce a portable unit having a reduced level of illumination (to thereby
`
`eliminate patient discomfort during an examination procedure), the motivated
`
`person of ordinary skill in the art would have had a reasonable expectation of
`
`success in achieving the claimed device. Ex. 1004 at 8:15-45; Ex. 1002 at ¶ 56.
`
`Accordingly, the combined teachings of Longobardi in view of Devonshire
`
`therefore disclose and render obvious the electrical resistor in circuit with the
`
`battery limitation of claim 1. Ex. 1002 at ¶ 57.
`
`Finally, there is no evidence in the prosecution history of any secondary
`
`considerations that would overcome this very strong evidence that Claim 1 would
`
`have been obvious over Longobardi in view of Devonshire. Ex. 1002 at ¶ 58
`
`d.
`
`an electrical switch in circuit with the resistor
`
`The third element of claim 1 is an electrical switch in circuit with the
`
`resistor. Ex. 1001 at 4:15. Longobardi does not expressly disclose an electrical
`
`switch in circuit with the resistor such as claimed, however, in view of
`
`Devonshire’s teaching, this limitation is met and rendered obvious. Ex. 1002 at ¶¶
`
`60-66.
`
`As noted above Longobardi teaches a device that comprises
`
`a continuous light source 1 of low power, for example 20 W electric,
`housed in a main housing body 3. . .. With an electric power of 20 W
`for the light source 1, a continuous luminous intensity of 0.7 mW
`
`15
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`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`reaches the fundus of the patient's eye. The electrical power and
`luminous intensity used are therefore very limited and do not
`cause any problems either in relation to the thermal effects on the
`interference filters or in relation to possible discomfort for the
`patient.
`
`Ex. 1004 at 8:15-45 (emphasis added).
`
`Longobardi further teaches, with respect to the embodiment in FIG. 1A, that
`
`The light source consists of a set of three light-emitting diodes
`(LEDs) 1A, 1B, 1C. The light-emitting diodes 1A, 1B, 1C are
`supported by a movable member 2 indicated by broken lines (for
`example a slide) in such a way that they can be aligned alternately
`with the mirror 11. By using LEDs which emit at predetermined
`wavelengths, it is thus possible to avoid the use of interference filters,
`further simplifying the structure of the equipment. This is because
`each LED emits at one of the wavelengths usable for the examination
`of the fundus of the eye, and the selection of the correct wavelength of
`the light source is made simply by positioning the correct LED in the
`optical path of the device. The LEDs which are not in use may be
`kept switched off if necessary.
`
`Ex. 1004 at 9:39-57 (emphasis added). Moreover, because Longobardi’s LEDs
`
`selectively respond to signals from the light switch (which is well known by those
`
`skilled in the art to be a type of electrical switch), a skilled artisan would have been
`
`motivated to place Devonshire’s dimmer (electrical resistor) within the same
`
`circuit as Longobardi’s electrical switch such as claimed in order to create a device
`
`capable of having the brightness of the LEDs in use adjusted. Ex. 1002 at ¶ 65.
`
`As noted in section VI. above, a person of ordinary skill in the relevant art as
`
`of October 20, 1998, would have had at least a bachelor of science or engineering
`
`16
`
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`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`degree in electrical engineering, physics, optics, or a related field, and either an
`
`advanced degree (such as a masters) in such a subject or an equivalent amount of
`
`work experience, i.e. 2-3 years, in an area relating to ophthalmic instrument design
`
`and/or fabrication or a related technical field.
`
`Taking the above into consideration, a person of ordinary skill in the
`
`relevant art would have been motivated at the time of the invention to place
`
`Devonshire’s dimmer (electrical resistor) within the same circuit as Longobardi’s
`
`electrical switch, particularly as the resulting device would have been able to
`
`adjust and control the level (brightness) of light being output from the light-
`
`emitting diodes (LEDs). Ex. 1002 at ¶ 64. In addition, since one of the disclosed
`
`benefits of Longobardi’s device is to produce a portable unit having a reduced
`
`level of illumination (to thereby eliminate patient discomfort during an
`
`examination procedure), the motivated person of ordinary skill in the art would
`
`have had a reasonable expectation of success in achieving the claimed device. Ex.
`
`1004 at 8:15-45; Ex. 1002 at ¶ 64.
`
`Accordingly, the combined teachings of Longobardi in view of Devonshire
`
`therefore disclose and render obvious the electrical switch in circuit with the
`
`resistor limitation of claim 1. Ex. 1002 at ¶ 66.
`
`17
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`
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`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`Finally, there is no evidence in the prosecution history of any secondary
`
`considerations that would overcome this very strong evidence that Claim 1 would
`
`have been obvious over Longobardi in view of Devonshire. Ex. 1002 at ¶ 67.
`
`e.
`
`at least one light emitting diode . . .
`
`The fourth element of claim 1 is at least one light emitting diode, in circuit
`
`with the switch, for generating blue light energy in response to activation of the
`
`switch. Ex. 1001 at 4:16-18. Longobardi identically discloses this element, and in
`
`the same arrangement as recited in the claim. Ex. 1002 at ¶¶ 68-79.
`
`i.
`at least one light emitting diode, in circuit with the
`switch . . .
`
`The first feature of this element is at least one light emitting diode, in circuit
`
`with the switch. Ex. 1001 at 4:16. Longobardi identically discloses this feature.
`
`Ex. 1002 at ¶ 69-73.
`
`Longobardi expressly discloses “portable fluoroscopic angiographs” having
`
`a light-emitting diode (LED) light source, “which emits radiation at a
`
`predetermined wavelength, instead of an incoherent light source.” Ex. 1004 at
`
`7:24-33. Longobardi further teaches, with respect to the embodiment in FIG. 1A,
`
`that “[b]y using LEDs which emit at predetermined wavelengths, it is thus possible
`
`to avoid the use of interference filters, further simplifying the structure of the
`
`equipment.” Id. at 9:47-50. “This is because each LED emits at one of the
`
`18
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`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`wavelengths usable for the examination of the fundus of the eye, and the selection
`
`of the correct wavelength of the light source is made simply by positioning the
`
`correct LED in the optical path of the device.” Ex. 1004 at 9:50-55. Longobardi
`
`further teaches that “[t]he LEDs which are not in use may be kept switched off if
`
`necessary. Id. at 9:55-57. And, because the switch controls the amount of
`
`electrical current (on/off) to the LEDs, the LEDs and the light switch must be a
`
`part of the same electrical circuit. Ex. 1002 at ¶ 72.
`
`Longobardi therefore identically discloses the at least one light emitting
`
`diode, in circuit with the switch limitation of claim 1.
`
`ii.
`at least one light emitting diode . . . for generating
`blue light energy in response to activation of the switch
`
`The second feature of this limitation is that the at least one light emitting
`
`diode . . . generat[es] blue light energy in response to activation of the switch. Ex.
`
`1001 at 4:16-18. Longobardi identically discloses this feature too. Ex. 1002 at ¶¶
`
`74-79.
`
`Referring again to FIG. 1A, Longobardi teaches that
`
`By using LEDs which emit at predetermined wavelengths, it is thus
`possible to avoid the use of interference filters, further simplifying the
`structure of the equipment. This is because each LED emits at one of
`the wavelengths usable for the examination of the fundus of the eye,
`and the selection of the correct wavelength of the light source is made
`simply by positioning the correct LED in the optical path of the
`device.
`
`19
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`
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,547,394 B2
`
`Ex. 1004 at 9:47-55.
`
`Longobardi further discloses that in accordance with the embodiment
`
`illustrated in FIG. 1, the device comprises
`
`a continuous light source 1 of low power, for example 20 W electric,
`housed in a main housing body 3. The alignment source transmits a
`light beam R toward a filter carried by a filter support ring 7. The
`said filter support ring may be fitted with various interference
`filters to be used for various types of observation. In particular,
`filters with pass bands centered on the typical absorption and
`fluorescence wavelengths of the various tracers (fluorescein,
`indocyanine green) used for observation of the various layers of
`the fundus of the eye may be disposed on said ring. One of the
`filters carried by the ring 7 may be used both for alignment and for
`observation of the fluorescence phenomenon.
`
`Ex. 1004 at 8:16-30 (emphasis added).
`
`Longobordi further discloses that an “interference filter with a suitably
`
`predetermined pass band is interposed between the light source and the fundus of
`
`the eye. For retinal fluoroscopic angiography, two filters are normally used: one
`
`transmits blue light between 465 and 490 nm, representing the absorption peak of
`
`the excitation of fluorescein; the other transmits between 525 and 530 nm, where
`
`the emission peak of fluorescein is located.” Ex. 1004 at 4:7-15.
`
`Furthe
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