UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`
`
`MAKO SURGICAL CORP.,
`Petitioner
`
`v.
`
`BLUE BELT TECHNOLOGIES, INC.,
`Patent Owner
`
`______________________
`
`Case IPR2015-00629
`Patent No. 6,757,582 B2
`_______________________
`
`
`PETITIONER MAKO SURGICAL CORP.’S REPLY
`TO PATENT OWNER RESPONSE
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`sf-3622458
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`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`
`
`MAKO SURGICAL CORP.,
`Petitioner
`
`v.
`
`BLUE BELT TECHNOLOGIES, INC.,
`Patent Owner
`
`______________________
`
`Case IPR2015-00629
`Patent No. 6,757,582 B2
`_______________________
`
`
`PETITIONER MAKO SURGICAL CORP.’S REPLY
`TO PATENT OWNER RESPONSE
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`sf-3622458
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2015-00629
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`PATENT OWNER’S ARGUMENT RELIES ON AN IMPROPERLY
`NARROW INTERPRETATION OF THE CLAIMS ..................................... 1
`
`III. Claim 1 Is Anticipated By Taylor.................................................................... 5
`
`A.
`
`B.
`
`Taylor Discloses Tracking Data Associated with the Workpiece ........ 5
`
`Taylor Discloses Controlling the Cutting Tool Based on Tracking
`Data ........................................................................................................ 8
`
`IV. Claim 17 Is Anticipated By Taylor ................................................................. 8
`
`V.
`
`Claim 24 Is Invalid Over The Prior Art ........................................................... 9
`
`VI. Dependent Claims Are Invalid In Light Of Prior Art ...................................11
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Claims Depending from Claim 1 are Also Anticipated by Taylor .....11
`
`Claims Depending from Claim 17 are Also Anticipated by Taylor ...14
`
`Claims Depending from Claim 24 are Also Anticipated by Taylor ...16
`
`Claim 3 is Obvious in Light of Taylor Combined with Glassman .....18
`
`Claim 7 is Obvious over Taylor in Combination with DiGioia ..........20
`
`Claim 11 is Obvious Over Taylor .......................................................22
`
`Claims 48 and 49 are Obvious over Taylor Combined with Delp ......23
`
`VII. CONCLUSION ..............................................................................................25
`
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`Petitioner’s Reply to Patent Owner’s Response
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`CASES
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`Dippin’ Dots, Inc. v. Mosey,
`476 F.3d 1337 (Fed. Cir. 2007) .......................................................................................24
`
`Eli Lilly & Co. v. Barr Labs., Inc.,
`251 F.3d 955 (Fed. Cir. 2001.) ............................................................................11, 12, 18
`
`In re Bond,
`910 F.2d 831, 15 U.S.P.Q.2d 1566 (Fed. Cir. 1990) ..................................................15
`
`In re Dance,
`160 F.3d 1339 (Fed. Cir. 1998.) ......................................................................................22
`
`In re Schwemberger,
`410 F. App’x 298 (Fed. Cir. 2010) .................................................................................25
`
`Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
`485 F.3d 1157 (Fed. Cir. 2007) .......................................................................................25
`
`Santarus, Inc. v. Par Pharm., Inc.,
`694 F.3d 1344 (Fed. Cir. 2012) .................................................................................11, 21
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.100(b) ................................................................................................................1
`
`U.S. Patent No. 5,408,409.......................................................................................................19
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`Petitioner’s Reply to Patent Owner’s Response
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`PETITIONER’S EXHIBIT LIST
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`Exhibit Description
`
`U.S. Patent No. 6,757,582 (“the ’582 patent”)
`
`Exhibit #
`
`1001
`
`Defendant Blue Belt Technologies, Inc.’s Second Amended
`Answer to Plaintiffs’ Mako Surgical Corp. & All-Of-Innovation
`GmbH Complaint; Affirmative Defenses and Counterclaims,
`filed September 2, 2014, Case No. 0:14-cv-61263-DPG (S.D.
`Fla.)
`Assignment Search for U.S. Patent No. 6,757,582 at
`http://assignment.uspto.gov
`
`Declaration of Robert D. Howe
`
`Prosecution History of U.S. Patent No. 6,757,582
`
`Prosecution History of U.S. Application No. 10/876,204
`
`Defendant Blue Belt Technologies, Inc.’s Preliminary Disclosure
`of Asserted Claims and Infringement Contentions for U.S. Patent
`No. 6,757,582
`Russell H. Taylor et al., An Image-Directed Robotic System for
`Precise Orthopaedic Surgery, IEEE TRANSACTIONS ON ROBOTICS
`AND AUTOMATION, Vol. 10, No. 3, June 1994 (“Taylor”)
`
`U.S. Patent No. 5,408,409 (“Glassman”)
`
`U.S. Patent No. 6,205,411 (“DiGioia”)
`
`Scott L. Delp et al., An Interactive Graphics-Based Model of the
`Lower Extremity to Study Orthopaedic Surgical Procedures, Vol.
`37, No. 8, Aug. 1990 (“Delp”)
`Catherina Burghart et al., Robot Controlled Osteotomy in
`Craniofacial Surgery, 1st International Workshop on Haptic
`Devices in Medical Applications Proceedings, Paris – France,
`pp. 12-22, June 23, 1999 (“Burghart”)
`Jocelyn Troccaz et al., The Use of Localizers, Robots and
`Synergistic Devices in CAS, LECTURE NOTES IN COMPUTER
`SCIENCE (Troccaz et al. eds., 1997) (“Troccaz”)
`
`
`sf-3622458
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`iii
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
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`1010
`
`1011
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`1012
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`1013
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`Petitioner’s Reply to Patent Owner’s Response
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`Exhibit Description
`A.M. DiGioia et al., “HipNav: Pre-operative Planning and
`Intraoperative Navigational Guidance for Acetabular Implant
`Placement in Total Hip Replacement Surgery,” 2nd CAOS
`Symposium, 1996 (“HipNav”)
`*Petitioner’s Exhibits 1001 – 1014 were previously filed and are simply listed
`based on 37 C.F.R. § 42.63.
`Kevin Cleary et al., “Image-Guided Interventions: Technology
`Review and Clinical Applications,” Annual Reviews of
`Biomedical Engineering (2010)
`
`Exhibit #
`
`1014
`
`1015
`
`Transcript of Deposition of Dr. Kevin Cleary (January 12, 2016)
`
`THE AMERICAN HERITAGE COLLEGE DICTIONARY (3rd ed. 2000)
`
`RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY (1997)
`
`THE NEW OXFORD AMERICAN DICTIONARY (2001)
`
`1016
`
`1017
`
`1018
`
`1019
`
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`sf-3622458
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2015-00629
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`I.
`
`INTRODUCTION
`
`In its response, Patent Owner relies heavily on a claim construction
`
`argument for “tracking” that cannot be supported. The prior art Taylor reference
`
`indisputably detects motion by the workpiece, generates a signal based on such
`
`detected movement, and uses that signal to control the cutting tool. Patent Owner
`
`nonetheless contends that the Taylor system does not perform “tracking” because it
`
`does not generate a position for the workpiece “in a coordinate system.”
`
`(Response at 18.) But there is nothing in the broadest reasonable construction of
`
`“tracking” which requires detecting an object’s position in a “coordinate system,”
`
`as Patent Owner contends. Once the Patent Owner’s overly narrow interpretation
`
`is rejected, its arguments fall away, reinforcing the conclusion that the claims are
`
`invalid in light of Taylor and other prior art.
`
`II.
`
`PATENT OWNER’S ARGUMENT RELIES ON AN IMPROPERLY
`NARROW INTERPRETATION OF THE CLAIMS
`
`Patent Owner’s response rests primarily on a claim construction position that
`
`deviates from 37 C.F.R. § 42.100(b), which requires that “[a] claim in an
`
`unexpired patent shall be given its broadest reasonable construction in light of the
`
`specification of the patent in which it appears.” (Emphasis added.) Patent Owner
`
`argues that “track the cutting tool and the workpiece” recited in claim 17 (Ex. 1001
`
`at 21:45-46) should be construed narrowly as “identify a position of the cutting
`
`tool and of the workpiece over time within a coordinate system.” (Patent Owner
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`Response (“Response”) at 9.) Patent Owner similarly contends that the term
`
`“tracking data” should be narrowly construed as limited to “data that identifies a
`
`position of an object over time within a coordinate system.” (Id. at 8.) Patent
`
`Owner is wrong on both counts.
`
`The ’582 patent does not provide an explicit definition of the term “track” or
`
`“tracking.” Rather, it uses the term according to its ordinary meaning, which is “to
`
`observe the progress of” or “follow” something. (Ex. 1017 at 1432-1433; see also
`
`Ex. 1018 at 1362 (“to follow the course of progress of; keep track of”); Ex. 1019 at
`
`1793 (“follow the course or trail of (someone or something), typically in order to
`
`find them or note their location at various points,” “follow and note the course or
`
`progress of”).) The specification and claims provide no persuasive reason to adopt
`
`a narrower definition.
`
`The patent specification does not require that tracking data be “in a
`
`coordinate system.” The patent mentions a “coordinate system,” but makes it clear
`
`the tracking data are not necessarily in a coordinate system:
`
`As provided herein relative to at least FIG. 1, tracking data can be
`
`received, where such tracking data can be associated with the
`
`workpiece and/or the cutting element 120, 122. Based on tracking
`
`data that can be transformed to the image coordinate system, 120,
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`122, collision detection can be performed and a control command
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`computed 124.
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`(Ex. 1001 at 13:33-39 (emphasis added).) Here the specification explains that
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`tracking data “can,” but need not, be capable of being transformed to a coordinate
`
`system. Nothing in the specification requires that tracking data must be in a
`
`coordinate system.
`
`The specification explains that “[i]n an embodiment, the workpiece and the
`
`cutting tool can be tracked . . . in x, y, and z dimensions, and in three angles of
`
`yaw, pitch, and roll.” (Id. at 9:51-53 (emphasis added).) In that embodiment, the
`
`system would track an object along six degrees of freedom. (Id. at 2:48-49 (“in
`
`one embodiment, the tracker can track in three positions and three angles to
`
`provide six degrees of freedom”).) But the specification makes it clear that the
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`“tracking” contemplated for the invention does not require monitoring six degrees
`
`of freedom, as “fewer or more degrees of freedom” can be tracked:
`
`A sensor tracking module . . . can receive the signal data from the
`
`sensor collection module . . . and process the data to provide
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`measurements that can include coordinates of the cutting tool . . . and
`
`workpiece . . . in x, y, z coordinates, and angles of yaw, pitch, and
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`roll, although other coordinates can be used, and fewer or more
`
`degrees of freedom, or combinations thereof, can be used.
`
`(Id. at 16:5-11 (emphasis added).) As the specification further explains, in one
`
`embodiment the system will “measure” or “determine” only one dimension and
`
`one angle for the object:
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`The tracker can measure and/or determine at least one position and at
`
`least one angle associated with the workpiece and/or the cutting tool,
`
`where in one embodiment, the tracker can track in three positions and
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`three angles to provide six degrees of freedom.
`
`(Id. at 2:45-49 (emphasis added).) As this part of the specification shows, the
`
`invention described in the patent does not require “tracking” of an object’s position
`
`along six degrees of freedom; in certain embodiments data along only one
`
`dimension and one angle is sufficient to constitute “tracking.” Even Patent
`
`Owner’s expert, Dr. Kevin Cleary, admits that the patent contemplates “tracking in
`
`only two degrees of freedom.” (Ex. 1016 at 22:15-23:15.)
`
`At other parts of the specification, the verb “track” is used, consistent with
`
`its ordinary meaning, to describe monitoring of characteristics other than the
`
`position of an object. For example, “in some systems and methods, the cutting tool
`
`can include an ultrasonic motor that can transmit an encoder signal to allow the
`
`computer to track the motor characteristics (e.g., speed, rotation, etc.).” (Ex. 1001
`
`at 14:40-43.) Here the patent uses the term “track” in its ordinary way: to monitor
`
`the course of some object or parameter. Nothing in this usage shows that Patent
`
`Owner’s proposed narrow definition focused on “a coordinates system” is correct.
`
`Thus, the Patent Owner’s argument that tracking requires identifying an
`
`object’s position “within a coordinate system” imposes a limitation that is simply
`
`not present in the broad term “track.” Although determining position within a
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`coordinate system is disclosed for certain embodiments, the claims do not include
`
`such limitations; they simply use the term “track.” If the Patent Owner had wanted
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`to limit the claims to determining an object’s position in a coordinate system, it
`
`could have included such limitations in the claims. It did not. Patent Owner’s
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`narrow construction should be rejected.
`
`III. CLAIM 1 IS ANTICIPATED BY TAYLOR
`
`A. Taylor Discloses Tracking Data Associated with the Workpiece
`
`Contrary to Patent Owner’s assertion, Taylor clearly anticipates claim 1.
`
`Patent Owner maintains that Taylor fails to disclose “tracking data” as required by
`
`the claim. (Response at 15-21.) But Taylor clearly discloses tracking (and
`
`generating tracking data) for both the workpiece and the cutting tool. Taylor
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`discloses tracking of the cutting tool, in that “specialized IO hardware . . . track[s]
`
`the position and orientation of the robot end effector during the cutting phase of the
`
`surgery, and checks to verify that the cutter tip never strays more than a
`
`prespecified amount outside of the defined implant volume.” (Ex. 1008 at 265.)
`
`With respect the workpiece, Taylor discloses an “independent checking [] system”
`
`that verifies the “bone does not move relative to the fixator.” (Id. at 270.) This
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`independent checking system includes strain gauges that are capable of detecting
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`movement of the limb (the workpiece) during surgery. “The redundant motion
`
`monitoring subsystem . . . monitors strain gauges that can detect possible shifts of
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`the bone relative to the fixation device. If [such a] condition is detected, a ‘freeze
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`motion’ signal is sent to the robot controller.” (Id. at 265.)
`
`Patent Owner’s argument is based on its incorrect claim construction. Patent
`
`Owner contends that Taylor does not constitute “tracking” because the Taylor
`
`system does not generate a “position and location” for the workpiece “in a
`
`coordinate system.” (Response at 18.) As shown above, however, the patent
`
`claims properly construed do not require generating the position and location of the
`
`workpiece “in a coordinate system.” Taylor’s device tracks the movement of the
`
`bone using the strain gauges and thus anticipates claim 1.
`
`Patent Owner also argues that Taylor does not anticipate claim 1 as it does
`
`not disclose “placing tracking markers on the target” to track the workpiece.
`
`(Response at 17-20.) However, claim 1 states “the tracker includes at least one of:
`
`at least one first marker associated with the workpiece, and at least one second
`
`marker associated with the cutting tool.” (Ex. 1001 20:41-44 (emphasis added).)
`
`Taylor discloses a marker associated with the cutting tool, which Patent Owner
`
`does not dispute. (Ex. 1008 at 270, Fig. 7 (“To verify end effector motion, we used
`
`a Northern Digital OptotrakTM 3D digitizer, which is capable of tracking light
`
`emitting diodes . . . We fabricated a rigid PC card with eight such beacons and
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`affixed it to the robot’s wrist.”).) Taylor therefore satisfies this element of claim 1,
`
`which requires the use of markers to track either the workpiece or the cutting tool.
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`Patent Owner also argues that Taylor cannot disclose tracking the workpiece
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`because it fixes the bone in place. (See Response at 20.) But there is nothing in
`
`the claim which excludes bone fixation. Patent Owner’s argument ignores the fact
`
`that Taylor explicitly contemplates using bone fixation along with tracking
`
`movement of the bone, and states motion of the workpiece can be tracked relative
`
`to the fixation device using strain gauges. (Ex. 1008 at 264-265.) Taylor states
`
`that it is “important that systematic shifts (such as might arise from the bone
`
`slipping relative to the fixator) be detected promptly” and contemplates systems
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`“where an optical system is also taking a more active role, for example, in tracking
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`the patient’s anatomy.” (Id. at 264, 273-274.)
`
`Patent Owner’s argument that bone fixation and tracking are mutually
`
`exclusive is also contradicted by numerous references citing redundant safety
`
`systems including both fixation and tracking. (See, e.g., id. at 264-266, 274; Ex.
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`1009 at 2:35-42; Ex. 2001 at 221-222; Ex. 2003 at 55:22-59:18.) Dr. Cleary
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`admits that “it’s a good idea to have redundant safety checks with robot systems”
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`and that, if the bone were fixed in place, movement could still be tracked “[i]f you
`
`physically screwed a marker into the bone and were tracking that to see if that
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`marker moved.” (Ex. 1016 at 65:22-67:6.) Taylor therefore discloses “tracking
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`the data associated with the workpiece” as found in claim 1.
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`B.
`
`Taylor Discloses Controlling the Cutting Tool Based on Tracking
`Data
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`Patent Owner argues that Taylor does not disclose “a controller to control
`
`the cutting tool based on the tracking data associated with . . . the workpiece.”
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`(Response at 21-23.) But the Taylor reference explicitly discloses the “redundant
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`motion monitoring subsystem” which “monitors strain gauges that can detect
`
`possible shifts of the bone relative to the fixation device. If [such a] condition is
`
`detected, a ‘freeze motion’ signal is sent to the robot controller.” (Ex. 1008 at
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`265.) Thus, the Taylor system clearly discloses control of the cutting tool based on
`
`tracking data for the workpiece. Patent Owner’s argument to the contrary, as with
`
`its argument about “tracking data,” is based solely on its strained claim
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`interpretation. (See Response at 22 (arguing that Taylor does not disclose control
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`of the cutting tool based on tracking data because the tracking data supposedly
`
`does not “actually exist” in Taylor).)
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`IV. CLAIM 17 IS ANTICIPATED BY TAYLOR
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`Patent Owner’s response for claim 17 repeats its argument as to claim 1.
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`Patent Owner contends “for the same reasons discussed above with respect to
`
`Claim 1, Taylor fails to disclose a tracking system that tracks the location of the
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`workpiece or provides tracked data associated with the location of the workpiece.”
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`(Id. at 29.) As shown above, however, Taylor discloses a system that tracks the
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`location of the workpiece and detects whether the workpiece has moved. Taylor
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`also describes “an optical system [that] is also taking a more active role, for
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`example, in tracking the patient’s anatomy” and states Optotrak can “provide
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`realtime tracking of markers placed on the patient at the time of surgery.” (Ex.
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`1008 at 273.)
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`Patent Owner also ignores that Taylor has a “control system” tracking the
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`workpiece, because if movement is detected using the strain gauges, the system
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`expressly shuts down the cutting tool. Taylor describes a system where “[e]ach of
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`the major control components . . . is able to freeze all robot motion or to turn off
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`manipulator and cutter power in response to recognized exception conditions.” (Id.
`
`at 266.) Even Dr. Cleary admits that a signal cutting off power to a tool
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`“constitutes a control signal” as described in the patent. (Ex. 1016 at 37:14-38:13.)
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`Taylor therefore discloses a system disclosing all the limitations found in claim 17.
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`V. CLAIM 24 IS INVALID OVER THE PRIOR ART
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`Patent Owner contends that claim 24 is not anticipated because the prior art
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`purportedly “fails to disclose 4-D images associated with the workpiece and the
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`cutting tool.” (Response at 37-38.) Patent Owner’s argument misconstrues both
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`the claim and the prior art.
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`Patent Owner attempts to read in a limitation that the method “disclose 4-D
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`images associated with the workpiece and the cutting tool.” (Id. at 38 (emphasis
`
`added).) The claimed method, however, need only “track[] at least one of the
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`workpiece and the cutting tool,” not both. (Ex. 1001 at 22:36 (emphasis added).)
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`This interpretation is supported by Patent Owner’s expert. (See Ex. 1016 at 23:16-
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`24:15 (admitting “if [the claim] does say tracking at least one, then I assume that
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`you could track either one and satisfy that requirement.”).)
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`Taylor explicitly discloses 3D images associated with both the workpiece
`
`and the cutting tool that are updated over time. Taylor describes a real-time
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`display of the progress of a procedure by changing “the color of the portions of the
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`cross-sectional images corresponding to the cutting stroke.” (Ex. 1008 at 269.)
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`Taylor also describes using 3D images as it discloses:
`
`• taking “a CT scan [] of the leg”;
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`• an “interactive docking subsystem integrates 3D image display and
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`computer graphics techniques to support positioning of a 3D CAD model
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`of the desired prosthesis shape relative to the CT image of the patient’s
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`anatomy”; and
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`• using “a 3D digitizer such as the Optotrak to point out anatomical
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`features, and then to provide realtime tracking of markers placed on the
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`patient at the time of surgery.”
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`(Id. at 262, 267, and 273.)
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`Contrary to Patent Owner’s assertions, Taylor does not “teach away” from
`
`using 3D images simply by mentioning potential issues with the use of 3D images.
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`See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1356 (Fed. Cir. 2012)
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`(“Describing a formulation as ‘second best’ is not a ‘clear discouragement’ as is
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`required” by the “teach[ing] away” standard as it does not “rule[] out” the
`
`alternative.). The authors simply state that they decided to “use orthogonal 2D
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`cross-sections to represent the 3D information” due to convenience and lack of
`
`errors, and the authors expect computer developments will improve the display in
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`the future. (Ex. 1008 at 267-268.) Therefore, claim 24 is invalid as it is
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`anticipated by Taylor.
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`VI. DEPENDENT CLAIMS ARE INVALID IN LIGHT OF PRIOR ART
`
`A. Claims Depending from Claim 1 are Also Anticipated by Taylor
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`Dependent claims 5, 6, 8, 9, 13, 14, and 16, each of which depends from
`
`independent claim 1, are anticipated by Taylor. Claim 5 specifies that “the
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`controller transmits a control signal to the cutting tool.” (Ex. 1001 at 20:61-62.)
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`Patent Owner contends that Taylor does not anticipate this claim as it does not
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`disclose transmitting a control signal to the cutting tool. (Response at 24-25.)
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`Taylor discloses a “freeze motion signal” in which “each of the major control
`
`components . . . is able to freeze all robot motion or to turn off manipulator and
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`cutter power in response to recognized exception conditions.” (Ex. 1008 at 266.)
`
`Dr. Cleary admits a signal cutting off power to a tool “constitutes a control signal”
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`to the cutting tool. (Ex. 1016 at 37:14-38:13.) Dr. Cleary also states Taylor
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`discloses a transmission of a control signal that “controls the robot that holds the
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`cutting tool,” and “since the robot is holding the cutting tool, naturally the motions
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`of the cutting tool are controlled by the robot.” (Id. at 33:1-25.) As the control
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`signals provide control over at least the power of the cutting tool, Taylor inherently
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`discloses the claimed limitation and anticipates claim 5 for the purposes of inter
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`partes review.
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`Claim 9 depends on claim 1 and adds that “at least one workpiece image is
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`registered to the workpiece, and . . . at least one cutting tool image is registered to
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`the cutting tool.” (Ex. 1001 at 21:9-11.) Patent Owner argues claim 9 is not
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`anticipated by Taylor as it fails to disclose a “cutting tool image.” (Response at
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`25.) However, Taylor discloses using a 3D computer-aided-design model as a
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`cutting tool image and solid geometry tree “check volumes” corresponding to
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`implant and cutter selection to determine if the cutter is out of bounds. (Ex. 1008
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`at 261-262, 267-270.) The patent states “[t]he disclosed methods and systems can
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`[] include generating one or more computer models and/or a workpiece image that
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`includes the target shape and a cutting tool image . . . .” (Ex. 1001 at 7:5-7.) Dr.
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`Cleary agrees that this statement means the cutting tool image could be a model
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`“and most likely in practice it is a model.” (Ex. 1016 at 42:2-24.) Furthermore,
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`Taylor discloses “geometric calibration” of a kinematic model of a robot arm and
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`cutting tool. (Ex. 1008 at 268-269.) “Register[ing]” in the patent, as described by
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`sf-3622458
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`12
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2015-00629
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`Dr. Cleary, involves representing the cutting tool “by a model so you can kind of
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`show its 3D position in orientation and space.” (Ex. 1016 at 43:7-15.) As
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`described above, Taylor discloses using a model to show the 3D position in
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`orientation and space. (Ex. 1008 at 261-262, 267-269.) Taylor anticipates the
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`limitations of claim 9.
`
`Claim 13 depends on claim 1 and adds that the workpiece is comprised of
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`material such as “bone, cartilage, tendons, [or] ligament.” (Ex. 1001 at 21:25-28.)
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`Although Patent Owner argues Taylor does not describe a system wherein the
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`workpiece comprises any of the claimed options, Taylor expressly describes a
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`workpiece consisting of bone, as Dr. Cleary admits. (Response at 26; Ex. 1008 at
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`263; Ex. 1016 at 45:1-6.) Indeed, Figures 1 to 5, 9, and 11 of Taylor depict a bone
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`or uses the word “bone” to describe the workpiece. (See Ex. 1008 at Figs. 1-5, 9,
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`11.) Taylor anticipates the limitations of dependent claim 13.
`
`Claim 16 depends on claim 1 and adds that the controller includes “at least
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`one of a collision detection module and an intersection detection module.” (Ex.
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`1001 at 21:36-38.) Patent Owner argues “Taylor does not disclose a ‘collision
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`detection module’ or ‘an intersection detection module.’” (Response at 27.)
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`Taylor discloses a system that evaluates whether the end effector strays from the
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`prespecified positional envelope in which it is supposed to cut. (Ex. 1008 at 269-
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`270.) Taylor discloses a system relying on independent sensing to track the
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`sf-3622458
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`13
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2015-00629
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`position and orientation of the robot and effector and “checks to verify that the
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`cutter tip never strays more than a prespecified amount outside of the defined
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`implant volume.” (Id. at 265.) The patent describes collision detection and
`
`intersection detection as comparing the cutting tool and the target shape to see
`
`whether there is cutting in areas that are not part of the target shape; Taylor clearly
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`discloses this limitation. (Ex. 1001 at 3:34-40; Ex. 1016 at 51:23-52:7.) Dr.
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`Cleary admits Taylor’s disclosed monitoring of the cutting tool to ensure it does
`
`not cut outside the target area “fall[s] in that same category” as collision detection
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`and intersection detection as described by the patent. (Ex. 1016 at 52:8-53:17.)
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`Taylor therefore anticipates the limitations of dependent claim 16.
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`Dependent claims 6, 8, and 14 are also expressly disclosed in Taylor as
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`described in the original petition and the institution decision. (Petition at 23-25;
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`Decision at 12-13.) Patent Owner does not offer any argument why the additional
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`limitations added by dependent claims 6, 8, and 14 are not anticipated by Taylor.
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`(See Response at 23-28.)
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`B. Claims Depending from Claim 17 are Also Anticipated by Taylor
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`Dependent claims 21-23, each of which depends from independent claim 17,
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`are anticipated by Taylor. Claim 21 specifies that “where the instructions to
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`determine a relationship include instructions to: represent the workpiece as a group
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`of volume pixels (voxels), based on the tracker data, perform at least one of
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`14
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2015-00629
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`classify the voxels and update the voxels.” (Ex. 1001 at 22:12-17.) Patent Owner
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`argues Taylor does not disclose “classifying or updating voxels using the tracking
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`data.” (Response at 31.) As discussed above in regard to claim 24, Taylor
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`discloses using 3D images that are updated in realtime using tracking data. (Ex.
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`1008 at 262, 267, and 273.) This dependent limitation is anticipated by Taylor.
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`Claim 22 depends from claim 17, “where the instructions to classify voxels
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`corresponding to the target shape include classifying voxels as target shape and
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`classifying voxels as waste.” (Ex. 1001 at 22:18-21.) Patent Owner claims
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`“Taylor does not inherently disclose classifying any element as ‘waste.’”
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`(Response at 35.) This argument improperly focuses on the words rather than the
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`substance of the claims. See In re Bond, 910 F.2d 831, 832-33, 15 U.S.P.Q.2d
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`1566 (Fed. Cir. 1990) (holding anticipation is not an “ipsissimis verbis” [in the
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`identical words] test.) Taylor clearly discloses a system where color-coded voxels
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`are effectively classified as “waste” elements, as it describes a graphical
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`representation displaying the “shape to be cut” (i.e. the waste), cutting “to remove
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`the excess material” from the bone, and updating the color-coded display once this
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`waste “layer is cut out.” (Ex. 1008 at 267, 269.) Dr. Cleary also describes Taylor
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`as “monitor[ing] the cutting tool and therefore checks that it doesn’t go into a no-
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`fly zone, into a zone it doesn’t want to go,” i.e. non-waste areas. (Ex. 1016 at
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`52:3-17.) Taylor therefore either expressly or inherently discloses a system in
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`sf-3622458
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`15
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2015-00629
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`which some material is visually classified as removable waste and other material is
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`classified as to be preserved. (See Ex. 1008 at 269.) Taylor anticipates claim 22.
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`Claim 23 depends from claim 17, where “the instructions to classify voxels
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`corresponding to the target shape include instructions to color-code voxels
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`corresponding to the target shape.” (Ex. 1001 at 22:22-25.) Contrary to Patent
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`Owner’s claims, Taylor expressly discloses color coding the target shape:
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`[C]ross sections through the 3D CT data set used to plan the surgery
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`are displayed together with corresponding cross sections of the shape
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`to be cut . . . . As each successive cutting stroke is made, the robot
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`controller sends short messages to the display computer, which then
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`changes the color of the portions of the cross-sectional images
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`corresponding to the cutting stroke. Once a complete layer is cut out,
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`that entire portion changes color yet again.
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`(Ex. 1008 at 269.) Taylor also discloses a “[c]olor-map mode us[ing] different
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`hues (red, blue, etc.) to represent different tissue classes (cortical bone, trabecular
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`bone, etc.)” (Id. at 267.) Patent Owner also improperly attempts to read a 3D
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`limitation into this claim with no basis in any of the claim terms. (Response at 36;
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`Ex. 1001 at 22:22-25.) Taylor meets every limitation of claim 23, either explicitly
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`or inherently, and therefore anticipates claim 23.
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`C. Claims Depending from Claim 24 are Also Anticipated by Taylor
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`Dependent claims 25-30, 34-42, 47, and 50-58, each of which depends from
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`and includes the elements of independent claim 24, are also anticipated by Taylor.
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`sf-3622458
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`16
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2015-00629
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`As shown above, Taylor discloses classifying or updating voxels using th
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