`571-272-7822
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`Date Entered: July 15, 2016
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`
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`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 6,757,582 B2
`____________
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`
`I.
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`INTRODUCTION
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`We have jurisdiction to hear this inter partes review under 35 U.S.C.
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`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
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`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
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`shown by a preponderance of the evidence that claims 1, 3, 5–9, 11, 13, 14,
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`and 17 of U.S. Patent No. 6,757,582 B2 are unpatentable, but has not shown
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`by a preponderance of the evidence that claims 16, 21–30, 34–42, and 47–58
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`of U.S. Patent No. 6,757,582 B2 are unpatentable.
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`A. Procedural History
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`Petitioner, Mako Surgical Corporation, filed a Petition requesting an
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`inter partes review of claims 1, 3, 5–14, 16–30, 34–42, and 47–58 of U.S.
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`Patent No. 6,757,582 B2 (Ex. 1501, “the ’582 patent”). Paper 1 (“Pet.”).
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`Patent Owner, Blue Belt Technologies, Inc., did not file a Preliminary
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`Response. Upon consideration of the Petition, on July 30, 2015, we
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`instituted an inter partes review of claims 1, 3, 5–9, 11, 13, 14, 16, 17, 21–
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`30, 34–42, and 47–58, pursuant to 35 U.S.C. § 314. Paper 6 (“Dec.”).
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`Subsequent to institution, Patent Owner filed a Patent Owner
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`Response (Paper 10 (“PO Resp.”)) and Petitioner filed a Reply (Paper 13
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`(“Pet. Reply”)).
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`Patent Owner filed a Motion to Exclude (Paper 17; “PO Mot.
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`Exclude”) certain portions of Exhibit 1016. Petitioner filed an Opposition to
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`the Motion to Exclude (Paper 18; “Pet. Exclude Opp.”), and Patent Owner
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`filed a Reply (Paper 20; “PO Exclude Reply”).
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`An oral hearing was held on April 7, 2016, and a transcript of the
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`hearing is included in the record (Paper 23; “Tr.”).
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`B. Related Proceedings
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`The ’582 patent is involved in the following lawsuit: Mako Surgical
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`Corp. v. Blue Belt Technologies, Inc., No. 0:14-cv-61263-MGC (S.D. Fla.).
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`Pet. 1.
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`C. The ’582 Patent
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`The ’582 patent relates to a method and system for providing control
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`to a cutting tool. Ex. 1001, Abstract. The specification of the ’582 patent
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`2
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`describes a workpiece (e.g., a bone) that includes a target shape. Id. at 1:22–
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`37. Markers can be associated with or otherwise affixed to the cutting tool
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`and workpiece. Id. at 9:5–6. The markers may be tracked using the system,
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`resulting in tracking data that can be used to provide a control for the cutting
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`tool. Id. at 9:54–61.
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`D. Illustrative Claim
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`Claims 1, 17, and 24 are independent claims. Claims 3, 5–9, 11, 13,
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`14, and 16 directly or indirectly depend from claim 1; claims 21–23 directly
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`or indirectly depend from independent claim 17; and claims 25–30, 34–42,
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`and 47–58 directly or indirectly depend from claim 24. The independent
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`claims 1, 17, and 24 are reproduced below.
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`1. A system, comprising:
`
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`a cutting tool;
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` a
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` workpiece that includes a target shape;
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` a
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` tracker to provide tracking data associated with the
`cutting tool and the workpiece, where 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; and
`
` a
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` controller to control the cutting tool based on the
`tracking data associated with the cutting tool and the tracking
`data associated with the workpiece.
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`Ex. 1001, 20:37–47.
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`
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`17. A system, comprising:
`
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`a workpiece having a target shape included therein,
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`a tracker to track at least one of: a cutting tool and the
`workpiece, and,
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` a
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` control system, the control system including
`instructions to cause a processor to track the cutting tool and the
`workpiece, to associate the tracked data to an image associated
`with the cutting tool and an image associated with the
`workpiece, where the workpiece includes an image associated
`with the target shape, to determine a relationship between the
`cutting tool and at least one of the workpiece and the target
`shape, and to provide a control to the cutting tool based on at
`least one of the relationship of the cutting tool and the
`workpiece, and the relationship of the cutting tool and the target
`shape.
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`Id. at 21:39–53.
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`24. A method, the method comprising:
`
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`providing a workpiece that includes a target shape,
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`providing a cutting tool,
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`providing a 4-D image associated with the workpiece,
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`identifying the target shape within the workpiece image,
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`providing a 4-D image associated with the cutting tool,
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`registering the workpiece with the workpiece image,
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`registering the cutting tool with the tuning tool image,
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`tracking at least one of the workpiece and the cutting
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`tool,
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`transforming the tacking data based on image coordinates
`to determine a relationship between the workpiece and the
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`cutting tool, and based on the relationship, providing a control
`to the cutting tool.
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`Id. at 22:27–41.
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`
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`E. Grounds of Unpatentability
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`We instituted an inter partes review of claims 1, 3, 5–9, 11, 13, 14,
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`16, 17, 21–30, 34–42, and 47–58 on the following grounds:
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`Claim(s)
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`Basis
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`Reference(s)
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`1, 5, 6, 8, 9, 13, 14,
`16, 17, 21–30, 34–42,
`47, and 50–58
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`§ 102(b)
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`Taylor1
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`3
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`§ 103(a)
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`Taylor and Glassman2
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`48 and 49
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`§ 103(a)
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`Taylor and Delp3
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`7
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`11
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`§ 103(a)
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`Taylor and DiGioia4
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`§ 103(a)
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`Taylor
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`1 Russell H. Taylor, et al., An Image-Directed Robotic System for Precise
`Orthopaedic Surgery, 10(3) IEEE TRANSACTIONS ON ROBOTICS AND
`AUTOMATION, 261–75 (June 1994) (Ex. 1008) (“Taylor”).
`2 U.S. Patent No. 5,408,409, issued Apr. 18, 1995 (Ex. 1009) (“Glassman”).
`3 Scott L. Delp, et al., An Interactive Graphics-Based Model of the Lower
`Extremity to Study Orthopaedic Surgical Procedures, 37(8) IEEE
`TRANSACTIONS ON BIOMEDICAL ENGINEERING, 757–67 (Aug. 1990)
`(Ex. 1011) (“Delp”).
`4 U.S. Patent No. 6,205,411 B1 (issued Mar. 20, 2001) (Ex. 1010)
`(“DiGioia”).
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`II. ANALYSIS
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`
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`A. Level of Skill of Person in the Art
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`We find that the level of ordinary skill in the art is reflected by the
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`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
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`Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
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`Oelrich, 579 F.2d 86, 91 (CCPA 1978).
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`B. Claim Interpretation
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`In an inter partes review, we construe claim terms in an unexpired
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`patent according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
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`also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1277–78 (Fed. Cir.
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`2015) (“We conclude that Congress implicitly approved the broadest
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`reasonable interpretation standard in enacting the AIA”), aff’d sub nom.
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`Cuozzo Speed Techs. LLC v. Lee, No. 15–446, 2016 WL 3369425, at *12
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`(U.S. June 20, 2016). Consistent with the broadest reasonable interpretation,
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`claim terms are presumed to have their ordinary and customary meaning as
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`understood by a person of ordinary skill in the art in the context of the entire
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`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
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`Cir. 2007). Also, we must be careful not to read a particular embodiment
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`appearing in the written description into the claim if the claim language is
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`broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
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`(Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the
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`specification”). However, an inventor may provide a meaning for a term
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`that is different from its ordinary meaning by defining the term in the
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`specification with reasonable clarity, deliberateness, and precision. In re
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`Petitioner proposes interpretations for the following claim terms:
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`
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`“means to provide at least one image associated with the workpiece, and
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`means to provide at least one image associated with the cutting tool” (claim
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`11, “means to provide at least one image”), “the tuning tool image” (claim
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`24), and “4-D image” (claim 24). Pet. 9–12. In our Decision to Institute, we
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`agreed with Petitioner’s interpretations for “means to provide at least one
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`image” (claim 11) and “the tuning tool image” (claim 24). Dec. 6, 8.
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`Neither party has indicated that the interpretations for those phrases were
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`improper and we do not perceive any reason or evidence that now compels
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`any deviation from our initial determinations. Moreover, both parties
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`apparently agree that, to the extent the term needs construing, the term “4-D
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`image” means a 3-D image that is updated over time. PO Resp. 6–7, 37; Pet.
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`Reply 10. We also agree with that interpretation.
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`Accordingly, the following interpretations are not in dispute and apply
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`to this Decision:
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`Claim Term
`
`Interpretation
`
`means to provide at least one image
`(claim 11)
`
`tuning tool image
`4-D image
`
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`(corresponding structure) Computer
`Aided Design (CAD), CT, MRI, X-
`Ray, fluoroscopy and/or ultrasound
`cutting tool image
`3-D image that is updated over time
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`For purposes of this decision, it is necessary to construe the phrases
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`“tracking data associated with the workpiece” (claim 1) and “track the
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`cutting tool and the workpiece” (claim 17).
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`Tracking Data (claim 1)/Track the Cutting Tool and Workpiece (claim 17)
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`Claim 1 recites a tracker to provide “tracking data associated with the
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`cutting tool and the workpiece” and a controller to control the cutting tool
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`based on the tracking data. Ex. 1001, 20:40–47. Independent claim 17
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`recites a processor to “track the cutting tool and the workpiece.” Id. at
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`21:45–47.
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`Patent Owner argues that the broadest reasonable interpretation of
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`“tracking data associated with the workpiece” recited in claim 1 is “data that
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`identifies a position of an object over time within a coordinate system.” PO
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`Resp. 8 (citing Ex. 2004 ¶¶ 33–34). Patent Owner argues that the broadest
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`reasonable interpretation of “track the cutting tool and the workpiece”
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`recited in claim 17 is “identify a position of the cutting tool and of the
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`workpiece over time within a coordinate system.” Id. at 8–9 (citing Ex.
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`2004 ¶ 35). Petitioner disagrees with Patent Owner’s proposed
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`interpretations and argues that the term “track” or “tracking” is not explicitly
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`defined in the Specification of the ’582 patent, and, therefore, the term
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`“track” is used “according to its ordinary meaning, which is ‘to observe the
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`progress of’ or ‘follow’ something.” Pet. Reply 1–2 (citing dictionary
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`definitions for track); Tr. 5.
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`It is necessary for us to interpret the phrases because there is a dispute
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`about whether the prior art (Taylor) describes tracking data associated with
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`the workpiece (claim 1) or describes a system that tracks the workpiece
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`(claim 17). In particular, Patent Owner disagrees that Taylor describes
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`tracking the position or movement of the workpiece over time within a
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`defined coordinate system. See, e.g., PO Resp. 17–19. For the reasons that
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`follow, we do not adopt Patent Owner’s narrow proposed interpretation.
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`We begin with the language of claims 1 and 17. Claim 1 recites a
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`tracker to provide tracking data associated with the cutting tool and the
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`workpiece. A controller controls the cutting tool based on the tracking data
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`associated with the cutting tool and the tracking data associated with the
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`workpiece. Claim 1 does not define or further explain what the phrase
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`“tracking data associated with the workpiece” means. For example, there is
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`nothing in claim 1 that limits tracking data to data that identify a position of
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`an object over time within a coordinate system. Like claim 1, independent
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`claim 17 does not define or further modify the phrase to “track the cutting
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`tool and the workpiece.” Unlike claim 1, claim 17 uses the term as a verb
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`“to track” as opposed to claim 1, where the adjective “tracking” modifies the
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`noun “data.”
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`As discussed above, Petitioner submits that the ordinary meaning of
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`the word track means “to observe the progress of” or “follow” something.
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`Pet. Reply 2 (citing Ex. 1017, 1432–33). Petitioner argues that the ordinary
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`meaning of “track” encompasses monitoring characteristics in general. PO
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`Resp. 4. Neither Patent Owner nor Patent Owner’s Declarant, Dr. Kevin
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`Cleary, considers or presents an ordinary meaning of the word track or
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`tracking.
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`Claims 1 and 17 lack an indication as to what about the workpiece is
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`being tracked or what constitutes tracking data. In other words, there is
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`nothing in the claims themselves that explicitly indicates that the position of
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`the workpiece is being tracked, as opposed to motion (i.e., tracking if
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`something moved), shape (i.e., tracking the shape of the workpiece after a
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`portion has been cut), or size of the workpiece (i.e., tracking the size of the
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`workpiece after a portion has been cut), or some other parameter associated
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`with the workpiece. The record evidence supports Petitioner’s argument that
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`the ordinary meaning of the word track encompasses monitoring
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`characteristics in general of an object. In other words, “to observe the
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`progress of” or “to follow” something does not necessarily mean that it is the
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`movement or position of something that is being observed or followed (i.e.,
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`that an object moved from point A to point B) as Patent Owner’s
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`construction would seem to require. Indeed, the Specification of the ’582
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`patent itself describes that “in some systems and methods, the cutting tool
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`can include an ultrasonic motor that can transmit an encoder signal to allow
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`the computer to track the motor characteristics (e.g., speed, rotation, etc.).”
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`Ex. 1001, 14:40–43 (emphasis added). Thus, it appears to us that Patent
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`Owner is reading limitations into the claims, because its proposed
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`interpretation for at least to “track the cutting tool and the workpiece” would
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`read out of the claim the embodiment that includes tracking a characteristic
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`of the motor of the cutting tool, such as speed or rotation.
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`We next turn to Patent Owner’s arguments regarding specific
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`embodiments in the Specification of the ’582 patent. Patent Owner focuses
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`on three passages from the Specification of the ’582 patent in support of its
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`interpretations for “tracking data associated with . . . the workpiece” and “to
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`track the cutting tool and the workpiece.” PO Resp. 8. Those passages are
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`reproduced as follows:
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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 three angles to provide six degrees of
`freedom.
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`Ex. 1001, 2:45–52.
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`In the disclosed systems, the relationship between the cutting tool
`and the workpiece can be based on position data and/or angle
`data associated with the cutting tool(s) and/or the workpiece,
`where the position data and angle data can be based on the
`tracker. The relationship between the cutting tool and the target
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`shape can thus be based on position data and/or angle data
`associated with the cutting tool and/or the target shape, where the
`position data and angle data are based on the tracker. The
`instructions to determine a relationship between the cutting tool
`and the target shape and/or workpiece can also include
`instructions to represent the workpiece as a group of volume
`pixels (voxels), classify voxels corresponding to the target shape,
`represent the cutting tool as a group of voxels, a surface model,
`and/or using constructive solid geometry or other geometric
`modeling, and, based on the tracker data, classify and/or update
`the voxels. The instructions to classify voxels corresponding to
`the target shape can include classifying voxels as target shape
`and classifying voxels as waste, and/or instructions to color-code
`voxels corresponding to the target shape. In an embodiment, the
`workpiece can be represented as a surface model.
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`Id. at 4:62–5:16.
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`FIG. 2A provides additional detail for one exemplary
`embodiment for the tracking and control method 114. As FIGS.
`1 and 2 indicate, after image integration, probe calibration, and
`image registration, markers or other tracking scheme can be used
`to track the workpiece and the cutting tool 120. In an
`embodiment, the workpiece and the cutting tool can be tracked
`120 in x, y, and z dimensions, and in three angles of yaw, pitch,
`and roll. As provided previously herein, in one system the
`OPTOTRAK system can be used to track LEDs or other markers
`placed on the workpiece and/or cutting tool. In some
`embodiments, inertial data from, for examples, gyroscopes
`and/or accelerometers may be available to provide tracking data.
`The tracking data can be transformed to image coordinates 122
`and intersection and/or collision detection can be performed or
`otherwise computed to provide a control for the cutting tool 124.
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`Id. at 9:46–61.
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`Patent Owner does not provide an explanation in the Patent Owner
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`Response tying the above passages to its proposed interpretations, but
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`merely concludes that the above passages support interpreting the phrases as
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`proposed, directing attention to paragraphs 33–35 of Dr. Kevin Cleary’s
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`Declaration (Ex. 2004). PO Resp. 8–9. For example, the above passages
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`refer to “tracker,” “track” and “tracking data.” They are presumed to be
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`separate terms, not one in the same. Yet Patent Owner’s reference to
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`passages that include a description of the tracker, for example, without an
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`explanation is not particularly helpful in determining what are tracking data
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`or what it means to track the workpiece. The tracker does a whole host of
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`things, one of which is to track, and another is to include tracking data.
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`We also have reviewed Dr. Cleary’s testimony in support of the
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`proposed interpretations.5 Ex. 2004 ¶¶ 33–35. But, like Patent Owner, Dr.
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`Cleary focuses only on certain embodiments. In doing so, Dr. Cleary never
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`explains why the tracking data or the verb to track refers to the position of
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`the workpiece, as opposed to some other characteristic of the workpiece.
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`His testimony is based on the assumption that it is, and then based on that
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`starting point, focuses on why the tracking of the position of the cutting tool
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`or workpiece must be in a coordinate system updated over time. Ex. 2004
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`¶¶ 33–35.
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`There are several other descriptions in the ’582 patent Specification,
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`besides the ones discussed above, that are not explained by Patent Owner
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`and that we find would indicate to a person of ordinary skill in the art that
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`claims 1 and 17 are not necessarily as limited in scope as proposed. The
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`5 Patent Owner improperly incorporates four pages of Dr. Cleary’s testimony
`into its Patent Owner Response. The Declaration contains arguments and
`explanation that should have been contained in the brief, in violation of 37
`C.F.R. § 42.6(a)(3). In any event, even considering what is contained in
`paragraphs 33–35 of Dr. Cleary’s Declaration, we decline to interpret the
`disputed phrases as proposed.
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`Specification of the ’582 patent describes using the OPTOTRAK 3-D
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`motion and position measurement and tracking system. Dr. Cleary does not
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`tell us what this system contains, how it tracks, or all that it does. It would
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`appear to us that it would at least include motion tracking—monitoring
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`whether an object has moved. Moreover, the Specification of the ’582
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`patent describes that “other tracking systems and mechanisms capable of
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`tracking a rigid body can be used.” Ex. 1001, 8:61–63. Yet, neither Patent
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`Owner nor Dr. Cleary discuss any of the other systems that a person of
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`ordinary skill in the art could have used. And as explained above, the
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`Specification of the ’582 patent describes that at least with respect to the
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`cutting tool, other parameters besides the position of the cutting tool may be
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`tracked contrary to Patent Owner’s assertions.
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`For all of the reasons discussed above, we are not persuaded by Patent
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`Owner’s arguments that “tracking data associated with the workpiece”
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`recited in claim 1 means “data that identifies a position of an object over
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`time within a coordinate system” or that “track the cutting tool and the
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`workpiece” recited in claim 17 means “identify a position of the cutting tool
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`and of the workpiece over time within a coordinate system.” Based on the
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`record before us, we determine that the broadest reasonable interpretation of
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`the term “track” should be accorded its plain, ordinary meaning, which
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`encompasses monitoring a characteristic of an object, and that tracking data
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`would be data that result from such monitoring.
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`C. Anticipation of Claims by Taylor
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`Petitioner contends that claims 1, 5, 6, 8, 9, 13, 14, 16, 17, 21–30, 34–
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`42, 47, and 50–58 are anticipated by Taylor. Pet. 12–34. To support its
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`contentions, Petitioner provides detailed explanations as to how Taylor
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`meets each claim limitation. Id. Petitioner also relies upon a Declaration of
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`Robert D. Howe, who has been retained as an expert witness by Petitioner
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`for the instant proceeding. Ex. 1004.
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`Taylor describes an image-directed robotic system to augment the
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`performance of surgeons in precise bone machining procedures in
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`orthopaedic surgery. Ex. 1008, 261. The system consists of an interactive
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`CT-based presurgical planning component and a surgical system consisting
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`of a robot, redundant motion monitoring, and man-machine interface
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`components. Id.
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`Taylor describes a cutting tool, for example a ball probe cutter bit
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`inserted into the collet of a cutting tool affixed to the robot end effector. Id.
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`at 263. The system further includes a workpiece that includes a target shape,
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`for example a model of prosthesis shape relative to a patient’s anatomy. Id.
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`at 267. Taylor also describes IO hardware to track position and orientation
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`of a robot end effector and possible shifts of bone. Id. at 265.
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`Initially, titanium pins are implanted in a patient’s femur and a CT
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`scan is made of the patient’s leg. Id. at 262. To enable tracking of the
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`cutting tool, Taylor describes using a Northern Digital OptotrakTM 3D
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`digitizer, which is capable of tracking light emitting diodes that may be
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`affixed to the robot’s wrist so that the cutting tool may be registered and
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`tracked. Id. at 270. Taylor also describes a wrist-mounted force sensor that
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`computes forces and torques at the cutter tip. Id. The system includes a
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`robot controller that controls the cutting tool by using the pin location
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`information to compute an appropriate transformation from CT coordinates
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`to robot coordinates. Id. at 263. Taylor also describes that the system
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`monitors the position of the robot’s cutting tool relative to the shape that it is
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`to cut and stops cutting if the robot strays out of the desired area. Id. at 264.
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`A redundant motion monitoring subsystem checks to verify that the cutter
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`tool never strays more than a specified amount outside a defined implant
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`volume. It also monitors strain gauges that can detect possible shifts of
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`bone. If either condition is detected, a freeze motion signal is sent to the
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`robot controller. Id. at 265.
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`Claim 1
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`Claim 1 requires a system comprising a cutting tool and a workpiece
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`that includes a target shape. Ex. 1001, 20:37–39. For these limitations,
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`Petitioner contends that Taylor discloses a system comprising a cutting tool
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`and a workpiece. Pet. 21; Ex. 1008, 261, 263, and 267. As pointed out by
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`Petitioner, Taylor describes an “Image-Directed Robotic System for Precise
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`Orthopaedic Surgery” that includes a ball probe cutter bit inserted into collet
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`of cutting tool, and positioning of 3D CAD model of desired prosthesis
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`shape relative to CT image of anatomy. Id. We are persuaded by
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`Petitioner’s showing, and adopt it as our own, that Taylor discloses a system
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`comprising a cutting tool and a workpiece that includes a target shape.
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`Petitioner also contends that Taylor describes a tracker to provide
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`tracking data associated with the cutting tool and the workpiece, directing
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`our attention to page 265 of Taylor that describes “specialized IO
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`hardware . . . track[s] the position and orientation of the robot end effector
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`during the cutting phase of the surgery” and also to page 270 of Taylor
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`which describes an “independent checking subsystem” that verifies that the
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`bone (e.g., workpiece) does not move relative to the fixator. Pet. 21–22.
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`Petitioner also contends that Taylor describes a first marker associated with
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`the cutting tool by directing attention to page 270 of Taylor which describes
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`light emitting diodes attached to the robot’s wrist, and a second marker
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`associated with the workpiece, directing attention to page 262 of Taylor
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`regarding implanting three titanium pins into a patient’s femur. Id. at 22.
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`Patent Owner argues that claim 1 requires that the tracking data
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`associated with the workpiece are derived from a first marker associated
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`with the workpiece and that Taylor does not describe “at least one first
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`marker associated with the workpiece.” PO Resp. 15, 16, 20. However,
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`Patent Owner’s arguments are not commensurate in scope with the language
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`of claim 1. Claim 1 does not recite that the tracking data associated with the
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`workpiece are derived from a first marker associated with the workpiece.
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`Moreover, claim 1 recites “where the tracker includes at least one of: at least
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`one first marker associated with the workpiece, and at least one second
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`marker associated with the cutting tool.” Emphasis added. Accordingly, a
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`marker associated with the workpiece is not even required. As long as the
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`prior art describes a marker associated with either the workpiece or the
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`cutting tool, the limitation is satisfied. Taylor describes a marker associated
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`with the cutting tool as described above and Patent Owner does not present
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`arguments that Taylor does not describe a marker associated with the cutting
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`tool. In any event, we agree with Petitioner’s showing (Pet. 22) that Taylor
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`also describes a marker associated with the patient’s femur (workpiece), for
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`example, titanium pins implanted into the patient’s femur. Ex. 1008, 262.
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`While the markers (titanium pins inserted in femur) are for the purpose of
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`imaging the femur (workpiece) pre-operatively, there is nothing in claim 1
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`that requires that the tracking data be derived from such markers. Claim 1
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`does not require that the tracking data be derived from markers associated
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`with either of the workpiece or the cutting tool.
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`We also have considered Patent Owner’s argument that Taylor
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`describes bone fixation, which is the exact disadvantageous system
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`described in the Specification of the ’582 patent. PO Resp. 17, 20.
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`However, Patent Owner has not shown this argument to be particularly
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`relevant to the anticipation inquiry. In other words, Patent Owner does not
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`contend that claim 1 forecloses bone fixation, and we conclude that it does
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`not.
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`Patent Owner argues that Taylor does not describe tracking data
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`associated with a workpiece because Taylor’s system does not provide
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`tracking data that identify the location and position of the workpiece over
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`time within a coordinate system. PO Resp. 15–21. As explained above in
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`the claim interpretation section, Patent Owner has not shown that the term
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`“tracking data” necessarily includes data that identify a position (location) of
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`the workpiece over time within a coordinate system. Rather, as explained
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`above, “tracking data” include data associated with monitoring a
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`characteristic of the workpiece. Taylor describes a redundant motion
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`monitoring subsystem that, among other things, monitors strain gauges that
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`can detect possible shifts of bone relative to a fixation device. Taylor further
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`describes that in using the strain gauge system for detecting shifts or motions
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`of the bone relative to the fixator, motions on the order of 0.1 mm could be
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`detected. Id. at 270.6 Taylor further describes that if such a shift is detected
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`6 This description in Taylor contradicts Dr. Cleary’s testimony that the
`“strain gauge described in Taylor, however, only signals whether the
`workpiece has moved.” Ex. 2004 ¶ 44. By detecting that the bone has
`moved by a certain amount, (e.g., described in Taylor as being on the order
`of 0.1 mm), we find that Taylor describes doing more than signaling whether
`a workpiece has moved, and, thus, would appear to meet even Patent
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`a “freeze motion” signal is sent to the robot controller. Ex. 1008, 265.
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`Under the correct interpretation, Petitioner has shown, by a preponderance
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`of the evidence that Taylor meets the claim 1 “tracking data associated with
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`the workpiece” limitation.
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`Claim 1 recites “a controller to control the cutting tool based on the
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`tracking data associated with the cutting tool and the tracking data associated
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`with the workpiece.” Petitioner relies on the description on pages 264 and
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`265 of Taylor (Ex. 1008) of the system monitoring the position of the
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`robot’s cutting tool relative to the shape that it is supposed to cut and stop
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`cutting if it strays out of the desired volume for any reason. Pet. 22.
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`Petitioner further relies on the description on page 265 of Taylor (Ex. 1008)
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`of the system monitoring strain gauges that can detect possible shifts of bone
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`relative to the fixation device and if either a shift is detected or the cutter tip
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`strays more than a prespecified amount outside of the defined implant
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`volume, a freeze motion signal is sent to the robot controller. Id. at 22–23.
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`Patent Owner argues that Taylor does not provide any tracking data
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`about the actual location of the bone, or any data about the position of the
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`bone relative to the cutting tool. PO Resp. 21–23. Patent Owner’s
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`arguments are based on its narrow interpretation of tracking data, which, as
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`explained above, we do not adopt.
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`Claims 5, 6, 8, 9, 13, 14, and 16
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`Claim 5 depends from claim 1 and recites that “the controller
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`transmits a control signal to the cutting tool, where the control signal
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`Owner’s narrow interpretation of “tracking data associated with the
`workpiece.” In any event, and as explained in this Decision, we are not
`persuaded that claim 1 should be interpreted so narrowly.
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`includes at least one of: an analog signal, a digital signal, and no signal.”
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`Ex. 1001, 20:61–64. Petitioner contends that Taylor’s description that its
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`system will monitor the position of the robot’s cutting tool relative to the
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`shape that it is supposed to cut and stop cutting if it strays out of the desired
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`volume for any reason inherently must result from a control signal that is
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`analog, digital, or null. Pet. 14, 23 (citing Ex. 1008, 264).
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`Patent O