IP Law Daily Patentability of device utilizing blue LED to illuminate patient’s eye affirmed
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Wednesday, January 20, 2021

Patentability of device utilizing blue LED to illuminate patient’s eye affirmed

By Brian Craig, J.D.

Substantial evidence supports the PTAB’s finding that the patent claims utilizing a blue LED for optical exams are not obvious in light of prior art.

Substantial evidence supports a final decision by the Patent Trial and Appeal Board in an inter partes review, upholding the validity of a patent that utilizes a blue LED to illuminate a patient’s eye during optical exams, the U.S. Court of Appeals for the Federal Circuit has held. The court affirmed the Board’s rejection of a challenger’s assertion that the patent claims were unpatentable based on obviousness. The Federal Circuit held that a person of ordinary skill in the art would not understand the functionality of the challenged patent to be the same of that disclosed in a prior art reference. The Federal Circuit also found that conflicting expert opinion was presented before the Board, and it was not for the appellate court to second-guess the Board’s assessment of that evidence (Haag-Streit AG v. Eidolon Optical, LLC, January 19, 2021, O'Malley, K.).

Eidolon Optical, LLC ("Eidolon") owns U.S. Patent No. 6,547,394 B2 ("the ’394 patent") which 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. A figure for the ’394 patent indicates utilizing a blue LED source. Haag-Streit AG petitioned for inter partes review (IPR) of certain claims of the ’394 patent. Haag-Streit challenged certain claims as obvious in light of European Patent Application 0 554 643 A1 (Longobardi), which was filed on February 5, 1992. Longobardi discloses "an apparatus for visualizing an object and/or recording images of said object under low lighting conditions." The Board concluded that Haag-Streit failed to prove that the challenged claims were unpatentable. Haag-Streit appealed to the Federal Circuit.

Functionality. The Federal Circuit first concluded that one of ordinary skill in the art would not have understood the embodiments shown in the figures for the prior art reference and the ’394 patent to be identical embodiments of the same invention with a different light source and the same functionality. A prior art reference must be considered not only for what it expressly teaches, but also for what it fairly suggests. The Federal Circuit concluded that the Board’s determination that the prior art reference is more limited than the invention taught in the figure in the ’394 patent is supported by substantial evidence. One of ordinary skill in the art would not understand the functionality of the two figures to be the same.

Expert testimony. Second, the Federal Circuit agreed with the Board’s finding that expert testimony did not support the position that one of ordinary skill in the art would have understood Longobardi to implicitly disclose the presence of a blue LED. Whether a person of ordinary skill in the art would view a prior art reference as containing an implicit disclosure is a question of fact, which the Federal Circuit reviews for substantial evidence. The Board carefully considered the expert testimony whether one of ordinary skill in the art would have understood Longobardi to implicitly disclose the presence of a blue LED. The Board found that conflicting testimony created a genuine issue of material fact. The Federal Circuit recognized that it is not the place of the appellate court to second-guess the Board’s assessment of the evidence. Accordingly, the Board’s conclusions were supported by expert testimony.

Limitation. Finally, the Federal Circuit concluded that substantial evidence supports the Board’s factual finding that Haag-Streit did not prove by a preponderance of the evidence that the prior art reference implicitly discloses the "blue light energy" limitation of certain claims of the ’394 patent. Haag-Streit argued that a blue LED with sufficient power output to cause sodium fluorescein to fluoresce existed as of February 5, 1992—the relevant point in time to assess the alleged implicit disclosures in Longobardi. The Board found that Haag-Streit did not carry its burden to establish that a blue LED with sufficient power output to cause sodium fluorescein to fluoresce existed as of 1992. Eidolon presented expert testimony that, at the time of Longobardi, in 1992, an LED capable of generating blue light energy suitable for diagnostic medical applications such as retinal angiography simply did not exist. Haag-Streit failed to establish that blue LEDs sufficient to excite sodium fluorescein existed as of February 5, 1992.

Because substantial evidence supports the Board’s determination of patentability, the Federal Circuit affirmed the Board’s decision.

This case is No. 20-1485.

Attorneys: Richard Eric Gaum (Taft, Stettinius & Hollister, LLP) for Haag-Streit AG. Jodi McLane (McInnes & McLane, LLP) for Eidolon Optical, LLC.

Companies: Haag-Streit AG; Eidolon Optical, LLC

MainStory: TopStory Patent FedCirNews GCNNews

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