throbber
Patent No. 6,482,199
`Petition For Inter Partes Review
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`
`
`Alcon Research, Ltd.
`Petitioner
`
`v.
`
`Dr. Joseph Neev
`Patent Owner
`
`Patent No. 6,482,199
`Issue Date: November 19, 2002
`Title: METHOD AND APPARATUS FOR HIGH PRECISION VARIABLE
`RATE MATERIAL, REMOVAL AND MODIFICATION
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`Inter Partes Review No. ______
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`____________________________________________________________
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`DECLARATION OF THEODORE NORRIS, PH.D.
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`Alcon Research, Ltd.
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`I.
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`INTRODUCTION
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`1.
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`I have been retained by counsel for Alcon Research, Ltd.
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`(“Petitioner”) in this case as an expert in the relevant art.
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`2.
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`I have been asked to provide my opinions on the question of validity
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`of claims 1, 44, 46, 47, 81, 83, and 85 (“challenged claims”) of U.S. Patent No.
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`6,482,199 (“the ’199 patent”). The opinions discussed below are my own. In
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`formulating these opinions, I have reviewed a variety of materials and made use of
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`my own personal knowledge. The materials I have relied on in formulating my
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`opinions are all identified in this report, including in the attached Appendix List.
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`3.
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`I am being paid $300.00 per hour in connection with my work in this
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`case. My compensation is not contingent on my reaching any particular findings
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`or conclusions, or on any outcome of the case.
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`II. BACKGROUND AND QUALIFICATIONS
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`4.
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`I believe that my background and expertise qualify me as an expert in
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`the technical issues in this case. A detailed record of my professional
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`qualifications, including a list of publications, awards, and professional activities,
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`is set forth in my curriculum vitae attached to this declaration as Appendix A.
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`5.
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`I received a Bachelor of Arts in Physics with Highest Honors from
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`Oberlin College, Oberlin, Ohio, in 1982. I then received my Masters in Physics
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`from the University of Rochester, Rochester, New York, in 1984.
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`6.
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`I received my Ph.D. in Physics from the University of Rochester in
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`1989. While at the University of Rochester, and later at the University of
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`Michigan, I worked closely with Gerard Mourou, who for over 30 years has been a
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`pioneer in the field of ultrafast lasers and their applications. Mourou invented a
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`laser technique called chirped pulse amplification, which allowed for amplifying
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`an ultrashort laser pulse to very high optical powers. These lasers were used in the
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`discovery in the Mourou lab in 1993 of deterministic breakdown of dielectric
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`materials using femtosecond optical pulses.
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`7.
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`The main theme of my research for over 25 years has been the study
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`of laser-matter interactions, including both the underlying physics and various
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`applications to optoelectronic devices. I have also worked in close collaboration
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`with faculty at the University of Michigan Medical School to develop new
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`methods in biomedical optics, including optical fiber probes for in vivo
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`fluorescence measurements of targeted cancer therapeutics, in vivo flow
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`cytometry, photonic crystal biosensors for highly sensitive measurement of
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`molecular binding affinity, and laser-driven high frequency ultrasonic imaging.
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`8.
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`I am currently the Gerard A. Mourou Collegiate Professor of
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`Electrical Engineering and Computer Science at the University of Michigan. I
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`serve as Lab Director for Optics and Photonics at Michigan. I am also the
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`founding Director of the Center for Photonic and Multiscale Nanomaterials, a
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`National Science Foundation Materials Research and Engineering Center,
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`established in 2011. A detailed record of my professional qualifications, including
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`a list of publications, awards, and professional activities, is set forth in my
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`curriculum vitae attached to this declaration as Appendix A.
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`III. BASIS FOR OPINION
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`9. My opinions and views set forth in this declaration are based on my
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`education, training, and experience in the relevant field, as well as the materials I
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`reviewed in this case, and the scientific and technical knowledge regarding the
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`same subject matter that existed prior to the effective filing date of the ’199 patent.
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`IV. SUMMARY OF LEGAL PRINCIPLES
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`10.
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`In preparing my declaration and formulating my opinions, I have been
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`provided the following summaries of some of the relevant legal principles.
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`A.
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`11.
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`Prior Art
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`I have been informed that prior art is art (e.g., patents and printed
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`publications) that existed prior to the relevant time period for the patent. It has
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`been explained to me that there are several subsections of 35 U.S.C. § 102 that
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`pertain to the kinds of prior art at issue in my declaration.
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`1.
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`§ 102(b)
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`12. First, if the claimed invention was patented or described in a printed
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`publication in this or a foreign country more than one year prior to the date of the
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`application for patent in the United States, then the patent is invalid under section
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`35 U.S.C. §102(b) of the patent act. I have been informed that to qualify as a
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`“printed publication” a physical or electronic publication must be reasonably
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`accessible to those in the field.
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`2.
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`§ 102(a)
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`13. Second, if the invention was patented or described in a printed
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`publication in this or a foreign country, before its invention by the applicant, then
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`the patent is invalid under section 35 U.S.C. §102(a). I have also been informed
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`that the date of “invention by the applicant” (sometimes called the “priority date”)
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`is the earliest day on which he can establish both (i) conception followed by (ii)
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`uninterrupted diligence leading to reduction to practice.
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`3.
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`§ 102(e)
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`14. Third, if one party filed a patent application in the U.S. before a
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`second party’s priority date, which was later either published or issued according
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`to USPTO procedure, I have been told that the first patent application is prior art
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`under section 35 U.S.C. § 102(e) of the patent act. Again, for each asserted
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`§102(e) reference I have provided the filing date on which I base my understanding
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`that the reference is prior art.
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`B. Anticipation
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`15.
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`I have been informed that, for a patent claim to be invalid as
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`“anticipated,” a prior art patent or publication must embody or describe each of the
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`claim limitations arranged or combined in the same way as recited in the claim. I
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`have been informed that the disclosure in the prior art reference does not have to
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`use the same words as the claim, but all of the requirements of the claim must be
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`there (either stated or necessarily implied) in the same arrangement called for in
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`the claims, so that someone of ordinary skill in the art would be able to make and
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`use the claimed invention.
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`16.
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`I have also been informed that a claim element may be inherently
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`disclosed in a prior art reference if one of ordinary skill in the art would recognize
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`that the element must be necessarily present in the reference.
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`C. Obviousness
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`17.
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`I have also been informed that a patent claim is obvious if, although
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`not anticipated by a single prior art reference, the differences between the claim
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`and the prior art are such that the subject matter as a whole would have been
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`obvious to a person of skill in the art at the time of the invention. It is my
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`understanding that obviousness may be based either upon a single prior art
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`reference or upon multiple references if there is a reason a person of ordinary skill
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`in the art would have been prompted to combine those references into the invention
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`claimed in the patent. Such reasons can include, but are not limited to, the
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`existence of a teaching, suggestion or motivation to combine that is either
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`disclosed in the prior art, inherent to the nature of the problem being addressed, or
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`that exists in the common knowledge of persons of ordinary skill in the art. I
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`understand that prior art teachings are properly combined where a person of
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`ordinary skill in the art having the understanding and knowledge reflected in the
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`prior art and motivated by the general problem facing the inventor would have
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`been led to make the combination of elements recited in the claims. Under this
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`analysis, the prior art references themselves, or any need or problem known in the
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`field of endeavor at the time of the invention, can provide a reason for combining
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`the elements of multiple prior art references in the claimed manner. I understand
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`that a claim can be obvious in light of a single reference, without the need to
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`combine references, if the elements of the claim that are not found explicitly or
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`inherently in the reference can be supplied by the common sense of one of skill in
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`the art. I also understand that a claim is obvious if the difference between the prior
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`art and the claim is a “predictable variation” which a person of ordinary skill can
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`implement. I further understand that a claim is obvious if it was “obvious to try” to
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`a person of ordinary skill by applying her common sense in view of the prior art
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`and/or the common knowledge of one of ordinary skill in the art.
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`18.
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`I also understand that an obviousness determination includes the
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`consideration of various factors such as (1) the scope and content of the prior art,
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`(2) the differences between the prior art and the claims at issue, (3) the level of
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`ordinary skill in the pertinent art, and (4) the existence of secondary considerations
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`such as commercial success, praise, copying, long-felt but unresolved needs,
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`failure of others, skepticism of experts, teaching away from the invention,
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`licensing, and simultaneous invention.
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`V. A PERSON OF ORDINARY SKILL IN THE ART
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`19. The relevant art for the ’199 patent includes designing processes and
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`procedures using lasers to modify tissue
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`20.
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`I was working in these art areas at the time the invention was
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`allegedly made. Persons who were employed in this field at the time were familiar
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`with laser systems, particularly laser systems capable of generating pulses of
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`ultrashort duration, on the order of picoseconds and femtoseconds. Engineers
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`working in the field were also familiar with the effects of laser-tissue interaction,
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`including surface ablation and sub-surface photodisruption/ modification.
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`Knowledge of sub-surface photodisruption/ modification would include knowledge
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`of plasma-induced explosions and photoactive drug therapies. This field of
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`technology was considered to be quite sophisticated at the time and presented
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`many challenging problems and complex solutions. In addition, the field was
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`developing rapidly. Persons working within it needed to stay abreast of the most
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`current technologies.
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`21.
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`In light of all these facts, it is my opinion that a person of ordinary
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`skill in the art relevant to the ’199 patent would have had, at the time of the
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`purported invention, at least a Bachelor of Science degree in Physics and 3-5 years
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`of experience designing processes and procedures using lasers to modify tissue.
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`22. These qualifications are consistent with the background and
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`experience of individuals with whom I worked in the field at the time.
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`VI. OVERVIEW AND BACKGROUND OF THE TECHNOLOGY
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`23. As I explain below, each of the main elements of the ’199 patent
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`existed and was well-known in the prior art before the priority date. Moreover, the
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`prior art provides teachings, motivations, and suggestions to one of ordinary skill
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`in the art at the time of the alleged invention to combine the various prior art
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`references, as described below.
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`A. Use of Lasers in Tissue Modification
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`24. Lasers have been used in medicine since at least the 1960s. Over the
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`years, the number of therapies using lasers has increased substantially and lasers
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`are now used to stimulate healing, photoactivate a drug, cut tissue, remove
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`unwanted tissue, and modify tissue by altering its visco-elastic properties, to name
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`a few examples.
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`25. Lasers are used to modify, cut, or remove many different types of
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`tissue, such as teeth, skin, and ophthalmic tissues. Different laser parameters are
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`used for different applications; for example, altering the visco-elastic properties of
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`skin requires less energy than removing a portion of a tooth.
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`Alcon Research, Ltd.
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`26. One of the most often used traditional laser surgical techniques is
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`called laser ablation. In the laser ablation process a pulsed laser beam is directed to
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`the surface of the tissue such that each successive laser pulse expels small tissue
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`regions or volumes into the air, in essence carving into the tissue. After the tissue
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`is carved to the desired depth, the laser beam can be redirected to a nearby spot,
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`manually or under the control of an actuator. As the laser is moved from spot to
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`spot, the laser removes tissue from the target area down to a desired depth. This
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`ablation technique is typically used when a volume of target tissue is to be
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`removed.
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`27. The primary motivating force behind introducing lasers for medical
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`applications is the unparalleled precision they provide. The laser beam can be
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`focused down to a spot size of less than 10 microns, thus providing a cut size at
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`least an order of magnitude smaller than the smallest attainable by scalpels or other
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`traditional cutting devices. Further, the laser beam can be guided by its optics to a
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`predefined surgical location with a precision of the order of 10 microns, again
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`more than an order of magnitude better than any hand-held surgical device.
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`Finally, the energy imparted by the laser beam into the tissue can be varied in a
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`wide range, making the laser suitable to satisfy a wide variety of surgical needs.
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`B.
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`Lasers in Ophthalmic Surgery
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`28. After early explorations, research and development efforts started in
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`the mid-1990’s to apply the precision and control of lasers to the field of
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`ophthalmic surgery. Lasers were first adopted to cut incisions into the cornea in
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`order to improve the vision of myopic eyes by changing the curvature of the
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`cornea. Several types of lasers were tried for this purpose. However, the early
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`results were mixed, as the laser beams with pulse lengths in the micro, nano, and
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`even picosecond range deposited an excessive amount of energy into the cornea.
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`This energy caused an excessive amount of unwanted collateral damage in a region
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`much larger than the focal spot of the laser beam, making the edges of the cuts
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`ragged, hard-to-control and uneven. Post-operatively, the ragged cuts deformed
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`and scarred the ophthalmic tissue, distorting its optical performance.
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`29. The early work in femtosecond laser micromachining and surgery was
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`made possible through the development of ultrafast lasers that could achieve
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`microjoule to millijoule energies at repetition rates sufficiently high to enable
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`substantial material ablation rates. The first steps in this direction were taken by
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`Professor Norris and colleagues at the University of Michigan, where they
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`developed the first high repetition rate solid state ultrafast laser amplifiers. The
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`first kHz repetition rate solid state ultrafast amplifier was built by Professor Norris
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`in 1990.1 Shortly thereafter, Professor Norris developed the first system operating
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`with pulse regime at greater than 100 kHz.2 The laser designs demonstrated in
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`those works have formed the basis for all ultrafast regenerative amplification
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`systems using solid state laser media up to the present time (the main difference
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`between various systems being the type of solid state gain medium used, and
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`correspondingly the laser pump source).
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`30. A crucial step towards making corneal laser surgery a reality came
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`about in 1993, when the emergency-room attendant ophthalmic resident at the
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`University of Michigan Kellogg’s Eye Center, Dr. Ronald Kurtz, diagnosed a
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`laser-damaged eye of a researcher, and recognized that the accidental cut in the
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`researcher’s eye had clean and sharp edges. The laser that created the clean cut
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`was a femtosecond laser, emitting pulses with lengths of femtoseconds. To
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`explore this lead in depth, Dr. Kurtz, with the group of Prof. Mourou, explored
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`methods “for controlling configuration of laser induced breakdown and ablation,”
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`including by reducing the length of the laser pulses in the range of nanoseconds to
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`1 “Operation of a 1-kHz Pulse-Pumped Ti:sapphire Regenerative Amplifier,” G.
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`Vaillancourt, T.B. Norris, et al., Optics Letters 15, 317 (1990).
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`2 “Femtosecond Pulse Amplification at 250 kHz with a Ti:sapphire Regenerative
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`Amplifier, and Application to Continuum Generation,” T.B. Norris, Optics Letters
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`17, 1009 (1992).
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`femtoseconds. In Apr. 1994 they filed for a patent to protect their invention that
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`issued as U.S. 5,656,186.3 A critical discovery in this research was the recognition
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`that in any transparent dielectric material, including, e.g. corneal tissue,
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`femtosecond pulses enabled a much higher degree of control of the breakdown
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`than longer pulses.
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`31. At about the same time, Dr. Tibor Juhasz was developing
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`femtosecond lasers for research in the physical sciences also at the University of
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`Michigan. Dr. Juhasz was interested in possible medical applications of the
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`femtosecond laser. In exploratory studies, Dr. Juhasz investigated ways to adapt
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`lasers into efficient ophthalmic surgical tools by systematically looking for the
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`optimal laser beam parameters. When he systematically explored the parameter
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`ranges of his laser, he noted first that by reducing the pulse duration from
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`nanoseconds to picoseconds, “[a] strong reduction of collateral tissue damage has
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`been achieved with picosecond pulses.”4 Then, after extensive investigation of
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`femtosecond lasers, Dr. Juhasz concluded that femtosecond lasers result “in a
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`strong reduction in the magnitude of acoustic side effects,” resulting in “more
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`3 U.S. Patent No. 5,656,186.
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`4 “Time-Resolved Observations of Shock Waves and Cavitation Bubbles
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`Generated by Femtosecond Lasers in Corneal Tissue,” Juhasz et al., Lasers in
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`Surgery and Medicine, 19:23-31 (1996) (Exhibit 1022) (“Juhasz 1996”), Page 24.
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`localized” effects than picosecond pulses, which “indicates the potential of
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`femtosecond laser technology for applications in high precision intraocular
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`microsurgery.”5
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`32. Drs. Kurtz and Juhasz founded IntraLase Inc. in 1997 to develop
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`femtosecond lasers for corneal surgery. The IntraLase LASIK laser obtained FDA
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`clearance in 1999. Since its market introduction in 2000, approximately 1,500
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`IntraLase lasers have been sold, and over 4 million people have had their eyesight
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`improved by the IntraLASIK procedure worldwide. The IntraLase laser had no
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`competitor for about seven years after its release in 2000.
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`33. LASIK surgery alters vision by modifying the curvature of the cornea.
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`To reduce curvature, tissue is removed from a central corneal region; to increase
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`curvature, tissue is removed from a peripheral corneal region. The procedure
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`where the tissue is removed from the surface of the cornea by ablation is called
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`Photorefractive Keratectomy, or PRK.
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`34. Superior post-operative healing can be achieved if the tissue is
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`removed not from the surface of the cornea, but from an internal layer called the
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`stroma. As shown in the figure below, the stroma can be accessed by forming an
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`incomplete circular corneal incision, the so-called corneal flap that remains
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`attached to the cornea by a hinge.
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`5 Id. at 30.
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`35. Once the flap is formed, it is folded back at the hinge to expose the
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`stroma. The corneal tissue is then removed by ablating the stroma to the desired
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`depth in the central or peripheral region. Once the ablation is complete, the flap is
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`repositioned to close the treated region for accelerated healing.
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`36.
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`In order to create the flap, sub-surface photodisruption, rather than
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`ablation, is used. The laser must be configured to cut an incision inside the cornea
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`without damaging the surface. It is necessary to maintain precise control of the
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`incision because damage below the corneal flap can cause unwanted alterations to
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`the vision of the patient. IntraLase utilized the high precision of femtosecond
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`lasers to create the corneal flap. Thus, Dr. Juhasz’s 1996 research into
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`minimization of collateral damage using femtosecond lasers was partly the
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`foundation for the IntraLASIK procedure’s success.
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`C. Minimization of Collateral Damage in the ’199 patent
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`37. The invention of the ’199 patent relates generally to a method for
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`modifying materials, such as bodily tissues, using both pulsed laser bursts in a way
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`that minimizes collateral damage to the tissue.6 In the words of the Patent Owner:
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`6 See, e.g., ’199 patent (Exhibit 1001), Abstract (“A method and apparatus is
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`disclosed for fast precise material processing and modification which minimizes
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`collateral damage.”); id., Field of Invention (“[A] material removal and
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`modification method and apparatus in which pulsed electromagnetic sources . . .
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`efficiently and precisely remove substantial material volumes while substantially
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`eliminating collateral damage.”); id., Col. 7:7-15 (“Removing a substantial amount
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`of the energy absorbed by the material minimizes residual energy deposition while
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`ablating, so as to mitigate collateral thermal damage to the material.”); id., Col.
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`10:42-45 (“Removal of residual energy thus minimizes collateral thermal and
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`mechanical damage in material processing and also minimizes pain and suffering
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`during surgical procedures.”); id., Col. 17:54-61 (“Advantageously, the aspect of
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`the present invention relating to the method’s reliance on the system’s ability to
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`limit the amount of per-pulse-energy coupled to the material, and the system ability
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`to remove most of the residual deposited energy generated by the interaction itself,
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`results in a very significant reduction in the level of collateral damage while
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`allowing large volume removal at very rapid rates.”); id., Col. 21:26-31 (“The
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`practice of the present invention maximizes deposition of the incoming radiation
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`within the area targeted for ablation or alteration, and minimizes deposition or
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`The ’199 patent covers material modification and processing
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`using pulsed electromagnetic energy having ultrashsort pulse
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`duration in order to minimize collateral damage to regions of
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`the material surrounding a targeted region. By minimizing
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`collateral damage to the surrounding material regions, precise
`and controlled material modification can be achieved.7
`38. The ’199 patent primarily describes a method of surface ablation.8 In
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`further transport of the energy to adjacent region thus minimizing the depth of the
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`zone of matter which has been permanently modified.”).
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`7 AMO Litigation, Neev’s Opening Markman Brief (Exhibit 1015), Page 1.
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`8 See, e.g., Exhibit 1001, Abstract (“Advantageously, removal of cumulative pulse
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`train residual energy is further maximized through the rapid progression of the
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`ablation front which move faster than the thermal energy diffusion front, thus
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`ensuring substantial removal of residual energy to further minimize collateral
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`thermal damage.”) (emphasis added); id., Field of Invention (“[A] material
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`removal and modification method and apparatus in which pulsed electromagnetic
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`sources of high ablation-to-deposition depth ratios are operable at pulse
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`repetition rates ranging up to approximately several hundreds of thousands of
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`pulses per second so as to efficiently and precisely remove substantial material
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`volumes while substantially eliminating collateral damage.”) (emphasis added); id.,
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`Col. 7:7-15 (“Removing a substantial amount of the energy absorbed by the
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`particular, the ’199 patent teaches a pulse regime that minimizes collateral damage
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`by removing deposited energy with material ejected in the ablation process.9 The
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`laser pulses interact sequentially with the target material so that later pulses eject
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`energy that has been absorbed by tissue around the target spots of earlier pulses.10
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`material minimizes residual energy deposition while ablating, so as to mitigate
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`collateral thermal damage to the material.”) (emphasis added).
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`9 See Footnote 8.
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`10 See, e.g., id., Col. 7:19-22 (“The material is preferably ablated using a laser
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`having a sufficiently high pulse repetition rate to cause a substantial amount of the
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`energy absorbed by the material to subsequently be removed therefrom with the
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`ejected material..”); id., Col. 9:36-41-61 (“Preferably, the electromagnetic energies
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`absorbed by the material to complete the material disintegration and explosive
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`ejection of the targeted material deposition volume, so that substantially most of
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`the deposited energy is removed from the target material with the ejected portion
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`of the material.”); id., Col. 17:67-18:3 (“Specifically, the parameter regime of the
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`present invention, ensures that most of the incoming electromagnetic pulse energy
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`that is absorbed by the material is subsequently removed with the ejected
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`material.”).
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`Alcon Research, Ltd.
`Exhibit 1002 - Page 18
`
`

`
`39. The ’199 patent’s “Detailed Description of the Preferred Invention”
`
`spans 60 columns.11 More than 57 columns of that description are devoted to
`
`surface ablation, with very little description of sub-surface tissue modification.
`
`Further, the brief description of sub-surface tissue modification does nothing to
`
`explain how the ’199 patent achieves its goal of minimizing collateral damage in
`
`sub-surface applications.12
`
`40. At the time of filing the ’199 patent, many others had successfully
`
`studied the effects of collateral damage in surface ablation and sub-surface laser-
`
`tissue interactions. For example, Lai13 teaches a method and system for improved
`
`laser-based corneal and intraocular surgery. The laser source emits ultrashort
`
`pulses for precise control of tissue removal, including removal of laser pulse
`
`energy with plasma explosions.14 More specifically, Lai teaches using short laser
`
`11 Id., Col. 17 to Col. 77.
`
`12 Id., Col. 42:59-45-33.
`
`13 WO Publication No. 94/25107 to Lai (Exhibit 1017).
`
`14 Id., Page 14:14-21 (“Thus, ablation can be achieved at a low ablation threshold
`
`energy using such extremely short duration laser pulses. Further, tissue damage
`
`from acoustic shock and kinetic action from dissociated matter is directly
`
`proportional to energy deposited at the laser interaction point. If the ablation
`
`threshold is achieved at less than the total pulse energy, the remaining energy in
`
`sd-631378
`
`19
`
`Alcon Research, Ltd.
`Exhibit 1002 - Page 19
`
`

`
`pulses to couple pulse energy to the created plasma, allowing the energy of each
`
`pulse to be expelled with the consequent explosion.15 This arrangement minimizes
`
`collateral damage to the surrounding tissue.16
`
`41.
`
`Juhasz ’438 teaches a method of optical surgery using laser pulses.17
`
`Specifically, Juhasz ’438 teaches focusing laser pulses at a series of spots, which
`
`
`the pulse is completely absorbed by the generated plasma, thereby contributing to
`
`the explosive effect of the tissue ablation.”)
`
`15 Id.
`
`16 Id., Page 14:22 (“Both acoustic shock and kinetic action are decreased by
`
`reducing the pulse duration.”); id., Page 14:23-24 (“Another benefit from reducing
`
`the pulse duration is limitation of damage to tissue surrounding the laser
`
`interaction point due to energy migration.”).
`
`17 U.S. Patent No. 5,993,438 to Juhasz et al. (Exhibit 1020).
`
`sd-631378
`
`20
`
`Alcon Research, Ltd.
`Exhibit 1002 - Page 20
`
`

`
`are arranged side-by-side.18 A volume of tissue is disrupted at each spot, to
`
`creating a layer of disrupted tissue.19
`
`42.
`
`Juhasz ’438 teaches that it is preferable that the size of the cavitation
`
`bubble equal the size of the focal spot of the laser beam, that is, that the collateral
`
`damage around the focal spot is reduced.20
`
`
`
`
`18 Id., Col. 1:63-67 (“In accordance with the present invention, a method for
`
`performing photodisruption and removal of tissue in a stroma in a cornea of an eye
`
`uses a pulsed laser beam which is sequentially focused to individual spots at a
`
`plurality of points in the stroma.”).
`
`19 Id., Col. 1:67-2:3 (“Each focus spot has a finite volume, rather than being a
`
`single point.”); id., Col. 3:14-18 (“This process is continued, proceeding from
`
`point to point along a spiral through the stroma, until a ten micrometer (10 µm)
`
`thick layer of stromal tissue has been photodisrupted and removed. The layer of
`
`photodisrupted tissue is substantially symmetrical to the optical axis.”).
`
`sd-631378
`
`21
`
`Alcon Research, Ltd.
`Exhibit 1002 - Page 21
`
`

`
`43. Neev ’894 teaches a method of ablating tissue using picosecond to
`
`femtosecond pulses, to reduce collateral damage.21 Neev ’894 was considered
`
`during prosecution of the ’199 patent, but never for the claims added in the second
`
`reexamination (Claims 17-86). I understand that Neev ’894 is a new reference for
`
`those claims.
`
`44. Additionally, Fisher22 teaches a method of photo-dynamic therapy,
`
`wherein a pair of incoming photons simultaneously excite a molecule to a higher
`
`energy level.23 Fisher teaches that simultaneous two-photon excitation reduces the
`
`extent of collateral damage to the surrounding tissue.24
`
`
`20 Id., Col. 5:45-47 (“[I]t is preferable that diameter 38 of each of the cavitation
`
`bubbles 36a-36f be the same as the diameter 34 of the corresponding focal spot
`
`32a-32f.”); see also id., Figure 4.
`
`21 U.S. Patent No.5,720,894 to Neev et al. (Exhibit 1019), Abstract (“The duration
`
`of each laser pulse is on the order of about 1 fs to less than 50 ps such that energy
`
`deposition is localized in a small depth and occurs before significant hydrodynamic
`
`motion and thermal conduction, leading to collateral damage, can take place.”).
`
`22 U.S. Patent No. 5,829,448 to Fisher et al. (Exhibit 1023).
`
`23 See, e.g., id., Abstract (“[T]reating the particular volume of the plant or animal
`
`tissue with light sufficient to promote a simultaneous two-photon excitation of at
`
`sd-631378
`
`22
`
`Alcon Research, Ltd.
`Exhibit 1002 - Page 22
`
`

`
`45. As discussed in more detail below, the prior art references Lai, Juhasz
`
`’438, Neev ’894, and Fisher either anticipate the challenged claims of the ’199
`
`patent or a person of ordinary skill in the art, considering the ’199 patent’s claims
`
`in light of the prior art, would have understood that the prior art references Lai,
`
`Juhasz ’438, Neev ’894, and Fisher render obvious the challenged claims of t

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