David A. Makman
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`Attachments:
`
`Dear Mr. Makman:
`
`
`
`Brown,Gregg,FORT WORTH,Legal [Gregg.Brown@AlconLabs.com]
`Wednesday, January 11, 2012 4:24 PM
`David Makman
`jngoog56@gmail.com; Kurtz,Ron,ALISO VIEJO,Alcon; Prejean,Jonathan,FORT
`WORTH,Legal; Zimanyi,Gergely,ALISO VIEJO,Alcon
`Your Letter of December 15, 2011
`Makman ltr 011112 _001.pdf; LenSx_US20090171327(A1).pdf
`
`Please refer to the attached materials.
`
`
`
`Gregg Brown
`Vice President, IP Legal
`
`6201 South Freeway, Fort Worth, TX 76134-2099, USA
`T 817-551-8663 | F 817-551-4610
`
`
`
`
`
`
`
`
`
`This e-mail (including any attachments) is confidential and may be legally privileged. If you are not an intended recipient
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`
`Thank you.
`
`1
`
`

`

`Alcon Research, Ltd.
`6201 South Freeway, Fort Worth, TX 76134-2099
`T: 817.293.0450
`www.alcon.com
`
`January 11,2012
`
`VIA EMAIL
`(david@makmanlaw.com)
`
`David A. Makman
`
`The Law Offices of David A. Makman
`
`90 New Montgomery Street, Suite 1015
`San Francisco, CA 94105
`
`Al
`
`®
`can
`
`Gregg C. Brown
`Direct Line:
`(817) 5 51-8663
`Telefax:
`(817) 551-4610
`Mail Code:
`TB4—8
`
`gregg.brown@alconlabs.com
`
`Re:
`
`Your Letter of December 15, 2011; Alleged Breach of License Agreement
`
`Dear Mr. Makman:
`
`We have received your letter of December 15, 2011, wherein you allege that Alcon
`LenSx is in breach of its obligations under the 2010 License Agreement between Alcon LenSx
`and your client, Joseph Neev, PhD, concerning US. Patent No. 6,482,199.
`
`Your contention that Alcon is in breach of the License Agreement is completely baseless
`and the manner in which you have asserted this claim is reckless and inflammatory.
`In
`particular, Alcon LenSx strongly objects to your allegation that it has made a decision “not to
`honor its license agreement with Dr. Neev.” Alcon LenSx places a very high value on both the
`quality of its products and the integrity of its relationships with physicians and others parties,
`including companies or individuals from which it licenses intellectual property rights, such as
`Dr. Neev. The simple truth is, Alcon LenSx is not utilizing the invention claimed in the Neev
`‘199 patent, and is not in breach of any of its obligations to Dr. Neev under the License
`Agreement.
`
`We are quite willing to provide additional information regarding the Alcon LenSx laser
`system, so that you can independently confirm the fact that the claims of the ‘199 patent are not
`applicable, and we have done so below. However, we sincerely wish that you had requested that
`such information be provided, rather than making accusations that are highly offensive and not
`conducive for a continuing business relationship between Dr. Neev and Alcon LenSx.
`
`Alcon LenSx owns a pending patent application (US 2009/0171327, “the ’327
`application”) that has been published and can be referenced by you and Dr. Neev to secure a
`better understanding as to the features and components of the LenSx system. A copy is provided
`with this letter.
`
`a Novart'is company
`
`

`

`David A. Makman
`
`January 11,2012
`Page 2
`
`The ‘327 application discusses in detail the motivation for utilizing certain pulse patterns
`with fixed beam parameters in order to avoid complications resulting from bubble formation.
`See,
`e. g., paragraphs [0078]—[0079],
`[0081]-[0083], Figs. 3-3B, and paragraphs [0097] and
`[0157]—[0158] of the ’327 application. The recognition of this problem in turn motivates the
`selection of particular cutting patterns with well-separated bubbles, as described in conjunction
`with Figs. SA-SK of the ”327 application.
`(Pagans shown in Figs. 5E-5H and described in
`paragraphs [0157]—[0158] et seq. are implemented in the software of the current LenSx laser
`system for use at the surgeon’s discretion.) As these patterns illustrate, there is clearly n0
`targeting of repeated pulses at the same location and no manipulation of beam parameters during
`such targeting.
`
`The analysis of the claims of the ‘199 patent presented in the Appendix of this letter
`further demonstrates why the claims are not applicable to the LenSx system. Specifically, the
`claims chart provided in the Appendix shows that limitations of various independent claims of
`the ‘199 patent are not present in the LenSx laser system. This analysis is by no means
`exhaustive as to the reasons why the claims are not infringed by the LenSx system, but it
`provides numerous examples of how the LenSx laser system does not include the recited claim
`elements.
`
`Although we believe that your review of the ‘327 application and other information
`provided with this letter should unequivocally resolve your concerns regarding the ‘199 patent,
`we are willing to consider any reasonable request for additional information that you may desire
`to present.
`
`Finally, we note that your letter does not address the points presented in our letter of
`August 4, 2011. Alcon LenSx remains willing to discuss those issues if Dr. Neev desires to do
`SO.
`
`Sincerely,
`
`Vice President, Chief IP Legal
`
`CC:
`
`Joseph Neev, PhD
`Ronald Kurtz, M.D.
`Jonathan Prej ean, Esq.
`Gergely Zimanyi, PhD
`
`Attachments/Enclosures:
`
`Appendix
`U. S. Patent Application Publication No. US 2009/0171327
`
`

`

`Appendix
`David Makman letter (January 11, 2012)
`Page 1 of 4
`
`APPENDIX
`
`l
`
`
`
`Excerpted Claim Elements
`
`’ 199 Patent, Claim 1
`
`“A method for a controlled variable rate
`
`material modification by a pulsed
`electromagnetic radiation beam irradiated on a
`target region of a target material, interactions
`between the pulsed electromagnetic radiation
`beam and the material providing a modification
`threshold volumetric power density, the
`method comprising:
`a) providing a source capable of generating an
`output beam comprised of a sequence of
`electromagnetic pulses .
`. .;
`b) preparing the target region of the target
`material by spatially or temporally varying at
`least one of an absorption characteristic of the
`material or a scattering characteristic of the
`material;
`0) operating the source and manipulating the
`beam parameters so that a deposited volumetric
`power density of the beam within a volume of
`the target region is greater than the threshold
`volumetric power density wherein control of
`the deposited volumetric power density is
`achieved by varying at least one of the
`following beam parameters:
`a beam spot size at the target region, a
`duration of the electromagnetic pulses, an
`energy of the electromagnetic pulses, or a
`wavelength of the electromagnetic pulses;
`
`e) operating the source at a pulse repetition rate
`greater than 0.1 pulses per second until a target
`volume of the material in the target region has
`been modified.”
`
`
`
`I
`
`
`
`Brief Summary of Absence of Element
`As noted previously, none of the listed beam
`parameters are lnodified’for the beam while
`performing the surgical procedure in the LenSx
`system, and none of the pulses are repeatedly
`directed to the same target region. Likewise,
`no scattering and/or absorption centers,
`defects, highly absorbing components or other
`kinds of doping agents are added to prepare the
`target material. Thus, at the very least,
`elements b), c) and e) are not performed by the
`LenSx system.
`
`
`
`
`
`

`

`Appendix
`David Makman letter (January 11, 2012)
`Page 2 of 4
`
`
`’199 patent, Claim 5
`
`
`
`“A method for a high precision, highly
`controllable, variable rate, material removal by
`a continuously emitting, continuous wave
`(CW) beam of electromagnetic radiation, and
`,the,material,beingsuchthatamaterialremovaL
`depth within is approximately equal to an
`energy deposition depth within the target
`material, the method comprising the steps of:
`a) providing a source capable of generating an
`output beam comprises of continuously emitted
`electromagnetic radiation;
`b) redistributing the beam in time and space to
`form at least one modified beam comprising a
`plurality of pulses;
`c) directing said modified beam(s) so that their
`energy distribution at any given location on the
`target material forms a sequence of
`electromagnetic pulses,. . .
`(1) operating said source and manipulating
`parameters of the beam so that the
`electromagnetic pulse’s power densities within
`the region targeted for modification are
`between approximately 104 W/cm3
`approximately [sic] 1018 W/cm3 and are larger
`than a power density threshold for material
`ablation;
`
`
`
`As a pulsed beam, the output beam of the laser
`source in the LenSx laser system is not
`continuously emitted, it is not redistributed in
`
`
`time and space, and it is directed so that any
`portion of the target receives a series of pulses.
`
`
`Likewise, the beam parameters are not
`
`
`,manipulatedduringbeam,delivery,to,control, 7
`
`
`the power density, and pulses are not
`
`
`repeatedly directed to any location. Thus, at
`
`
`the very least, elements a), b), c), d), and f) are
`
`
`lacking.
`
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` t) repeating said [sic] electromagnetic energy
`
`absorption, ablation, and energy removal steps
`
`at a pulse repetition rate greater than 0.1 pulses
`
`er second
`
`
`
`In addition to various distinctions identified
`
`’ 199 patent, Claim 79:
`“. .. compressing the electromagnetic pulses
`with respect to Claim 1 that apply equally to
`
`
`
`
`temporally as they propagate toward the target
`Claim 79, the additional limitation of
`
`
`compressing the electromagnetic pulses as they
`
`
`propagate toward the target is not present. As
`noted above, the pulse duration is not modified
`
`
`during the sur ical
`rocedure.
`
`
`
`
`In addition to various distinctions identified
`’199 patent, Claim 80:
`
`“. .. determining at least one characteristic of
`with respect to Claim 1 that apply equally well
`
`the target material;
`to Claim 80, the LenSx laser system does not
`operating the source and manipulating
`determine any characteristics of the target
`beam parameters based on the determined
`material, much less 0 erate the source and
`
`
`
`
`
`
`
`

`

`Appendix
`David Makrnan letter (January 11, 2012)
`
`Page 3 of 4
`
`I characteristic of the target material. . . .”
`
`
`
`I manipulate beam parameters (which are never
`modified during surgery in any case) based on
`the determined characteristic.
`
`
`
`Various distinctions identified with respect to
`’ 199 patent, Claim 81:
`Claim 1 apply equally well to Claim 81.
`In addition to various distinctions identified
`’ 199 patent, Claim 82:
`1...,creatinga pluralityofbeamletsfrom each, ,
`of the electromagnetic pulses at the target
`region ...”
`’ 199 patent, Claim 83:
`“. .. monitoring the material modification of
`the target material using a feedback device and
`further manipulating the beam parameters
`based on the monitoring.”
`
`,with respect-to,C1aim -1-that apply. equallyuwell ,
`to Claim 82, no beamlets are created by the
`LenSx laser system.
`In addition to various distinctions identified
`
`with respect to Claim 1 that apply equally well
`to Claim 83, the LenSx laser system does not
`monitor material modification or manipulate
`beam parameters (which are never modified
`during surgery in any case) based on the
`monitoring.
`Various arguments with respect to Claims 1
`and 79 apply equally well to Claim 84. For
`example, there is no controller adjusting beam
`characteristics while a beam is being generated
`by the LenSx laser system. Moreover, the
`“pulse repetition rate” clearly requires repeated
`pulses at the same target region.
`
`
`
`
`
`
`
`’ 199 patent, Claim 84:
`“A device for modifying a target material,
`comprising:
`
`
`
`a beam pulsing device, the beam pulsing
`device pulsing the generated electromagnetic
`radiation beam
`at a pulse repetition rate of
`about 0.1 pulses per second or greater... ;
`a controller, the controller adjusting
`characteristics of the electromagnetic radiation
`beam or the target region such that the
`generated electromagnetic radiation beam is
`capable of modifying a desired quantity of the
`target material, the characteristics including at
`least one of a diameter of the electromagnetic
`radiation beam at the target region, a pulse
`duration, an energy of the electromagnetic
`radiation beam, a wavelength of the
`electromagnetic beam, a spatial or temporal
`absorption of the target region, or a spatial or
`temporal scattering of the target region; and
`a pulse compressor, the pulse compressor
`temporally compressing the pulses of the
`pulsed electromagnetic radiation beam as the
`pulses of the pulsed electromagnetic beam
`propagate toward the target.”
`
`

`

`Appendix
`David Makman letter (January 11, 2012)
`Page 4 of 4
`
`
`
`’199 patent, Claim 85:
`“A device for modifying a target material,
`comprising:
`
`
`
`a beam pulsing device, the beam pulsing
`device pulsing the generated electromagnetic
`
`,radiation ,beam,.,.,,,at,a,pulserepetition rate
`between about 30 kHz and 100 kHz... ;
`a controller, the controller adjusting
`characteristics of the electromagnetic radiation
`beam or the target region such that the
`generated electromagnetic radiation beam is
`capable of modifying a desired quantity of the
`target material, the characteristics including at
`least one of a diameter of the electromagnetic
`radiation beam at the target region, a pulse
`duration, an energy of the electromagnetic
`radiation beam, a wavelength of the
`electromagnetic beam, a spatial or temporal
`absorption of the target region, or a spatial or
`temporal scattering of the target region; and
`a pulse compressor, the pulse compressor
`temporally compressing the pulses of the
`pulsed electromagnetic radiation beam as the
`pulses of the pulsed electromagnetic beam
`ro a ate toward the tar et.”
`
`’ 199 patent, Claim 86:
`“. .. a feedback device, the feedback device
`monitoring the material modification of the
`target material and further adjusting the
`characteristics of the generated electromagnetic
`
`lfldiation beam based on the monitorin .”
`
`Various arguments with respect to Claim 1 and
`apply equally well to Claim 85. For example,
`there is no controller adjusting beam
`characteristics while a beam is being generated
`by the LenSx laser system. Moreover, the
`“pulse repetition rate” clearly requires repeated
`pulses at the same target region.
`
`
`
`Various arguments with respect to Claim 1,
`Claim 83, and Claim 85 and apply equally well
`to Claim 86.
`
`