`Trials@uspto.gov
`571-272-7822
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`Date Entered: July 30, 2015
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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.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I. INTRODUCTION
`
`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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`IPR2015-00629
`Patent 6,757,582 B2
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`Response. We have jurisdiction under 35 U.S.C. § 314, which provides that
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`an inter partes review may not be instituted “unless . . . the information
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`presented in the petition . . . shows that there is a reasonable likelihood that
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`the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.”
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`
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`For the reasons that follow, we institute an inter partes review of
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`claims 1, 3, 5–9, 11, 13, 14, 16, 17, 21–30, 34–42, and 47–58 of the ’582
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`patent.
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`A. Related Proceeding
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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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`B. 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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`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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`C. Illustrative Claim
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`Claims 1, 17, and 24 are independent claims. Claims 3, 5–14, and 16
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`directly or indirectly depend from claim 1; claims 18–23 directly or
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`indirectly depend from independent claim 17; and claims 25–30, 34–42, and
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`47–58 directly or indirectly depend from claim 24. Claim 1 is reproduced
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`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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`3
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`D. Asserted Grounds of Unpatentability
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`Petitioner asserts that claims 1, 3, 5–14, 16–30, 34–42, and 47–58 are
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`unpatentable based on the following grounds:
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`References
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`Basis
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`Challenged Claims
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`Taylor1
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`Taylor and Glassman2
`Taylor and Delp3
`Taylor
`Taylor and DiGioia4
`
`§ 102(b)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
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`§ 103(a)
`
`Burghart5
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`§ 102(a)/(b)
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`Burghart and Taylor6
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`§ 103(a)
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`1, 5, 6, 8–10, 12–
`14, 16, 17, 21–30,
`34–42, 47, and 50–
`58
`3 and 18–20
`
`48 and 49
`
`11
`
`7
`1, 3, 5–9, 12–14,
`16, 17, 24, 37–39,
`47, 53–55, and 58
`10, 11, 18–23, 25–
`30, 34–36, 40–42,
`48–52, 56, and 57
`
`
`1 Taylor, et al., “An Image-Directed Robotic System for Precise Orthopaedic
`Surgery,” IEEE TRANSACTIONS ON ROBOTICS AND AUTOMATION, Vol. 10,
`No. 3, June 1994 (Ex. 1008) (“Taylor”).
`2 U.S. Patent No. 5,408,409, issued Apr. 18, 1995 (Ex. 1009) (“Glassman”).
`3 Delp, et al., “An Interactive Graphics-Based Modeil of the Lower
`Extremity to Study Orthopaedic Surgical Procedures,” IEEE TRANSACTIONS
`ON BIOMEDICAL ENGINEERING, Vol. 37, No. 8, August 1990 (Ex. 1011)
`(“Delp”).
`4 U.S. Patent No. 6,205,411, issued Mar. 20, 2001 (Ex. 1010) (“DiGioia”).
`5 Burghart, et al., “Robot Controlled Osteotomy in Craniofacial Surgery,” 1st
`International Workshop on Haptic Devices in Medical Applications
`Proceedings, pp. 12–22, June 23, 1999 (Ex. 1012) (“Burghart”).
`6 A table in the Petition at page 35 indicates that Delp is combined with
`Burghart, however, there does not appear to be such a combination in the
`text of the Petition.
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`4
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`References
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`
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`Basis
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`Challenged Claims
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`DiGioia
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`§ 102(a)/(b)/(e)
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`DiGioia and Taylor7
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`§ 103(a)
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`
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`II. ANALYSIS
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`A. Claim Interpretation
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`1, 3, 5–10, 12–14,
`16–20, 24, 34, 37–
`39, 47, 54, 55, and
`58
`8, 10–12, 18, 21–
`23, 25–30, 35, 36,
`40–42, and 48–58
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`In an inter partes review, claim terms in an unexpired patent are given
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`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
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`Speed Techs., LLC, No. 2014-1301, 2015 WL 4097949, *7-8 (Fed. Cir. July
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`8, 2015) (“Congress implicitly approved the broadest reasonable
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`interpretation standard in enacting the AIA,” and “the standard was properly
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`adopted by PTO regulation.”). Under the broadest reasonable construction
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`standard, claim terms are given their ordinary and customary meaning, as
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`would be understood by one of ordinary skill in the art in the context of the
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`entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
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`Cir. 2007).
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`Petitioner proposes constructions for the following claim terms:
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`“means to register” (claims 10 and 18), “means to provide at least one
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`image” (claim 11), “means to transform tracking data” (claim 12), “the
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`tuning tool image” (claim 24), and “4-D image” (claim 24). Pet. 9–12.
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`7 The Petition at page 47 indicates that Delp is combined with DiGioia,
`however, there does not appear to be such a combination in the text of the
`Petition.
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`5
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`Claims with Means Plus Function Limitations
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`Section 112, ¶ 68 permits an element in a claim for a combination to
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`be expressed as a means for performing a specified function without the
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`recital of structure in support thereof, but with the provision that “such claim
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`shall be construed to cover the corresponding structure, material, or acts
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`described in the specification and equivalents thereof.” “[T]he
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`corresponding structure for a § 112 ¶ 6 claim for a computer-implemented
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`function is the algorithm disclosed in the specification.” Aristocrat Techs.
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`Austl. Party. Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)
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`(quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir.
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`2005)).
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`Petitioner argues, and we agree, that dependent claims 10, 11, 12, and
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`18 recite means-plus-function limitations under 35 U.S.C. § 112, ¶ 6. Pet. 9.
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`Claim 11 depends from claim 1 and recites “means to provide at least one
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`image associated with the workpiece, and means to provide at least one
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`image associated with the cutting tool.” The specification of the ’582 patent
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`describes that the means for providing an image associated with the
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`workpiece and the means to provide an image associated with the cutting
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`tool can include Computer Aided Design (CAD), CT, MRI, X-Ray,
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`fluoroscopy and/or ultrasound. Ex. 1001, 4:16–21. Petitioner contends (Pet.
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`10), and we agree, based on the record before us, that the means to provide
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`the image recited in claim 11 is a CAD, CT, MRI, X-Ray, fluoroscopy
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`and/or ultrasound, and equivalent structures.
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`8 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6 as
`35 U.S.C. § 112(f). Because the ’582 patent has a filing date before
`September 16, 2012 (effective date of AIA), we use the citation § 112, ¶ 6.
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`Petitioner argues that claims 10, 12, and 18 lack corresponding
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`
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`structure as required under 35 U.S.C. § 112, ¶ 6. Pet. 9, 10. Claim 12
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`depends from claim 1 and recites “means to transform the tracking data to at
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`least one of: at least one workpiece image and at least one cutting tool
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`image.” The specification of the ’582 patent describes that the system can
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`update images with tracking data using means to transform the tracking data
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`between different coordinate systems and that such transformations can be
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`mathematically effectuated. We are persuaded by Petitioner’s arguments
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`that the specification of the ’582 patent only describes the use of computers
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`and processors to execute instructions, but describes no specific structure,
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`such as an algorithm that performs the transformation of the tracking data to
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`at least one of a workpiece image or cutting tool image. Id. at 10 (citing,
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`e.g., Ex. 1001, 19:35–65).
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`We also agree with Petitioner that claims 10 and 18 lack
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`corresponding structure in the specification as required under 35 U.S.C.
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`§ 112, ¶ 6. Claims 10 and 18 are similar and recite “means to register”
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`(“image registration means”) a workpiece to at least one image associated
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`with the workpiece and an image associated with the cutting tool. The
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`specification of the ’582 patent describes that the means to register
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`(registration means) “can include a probe that can be calibrated prior to
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`registration.” Ex. 1001, 4:12–13. Petitioner argues, and we agree, that a
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`probe alone cannot perform the function of registering a workpiece to an
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`image, for example. Pet. 9. Some type of algorithm would be required to
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`complete the function of registration, which is missing from the description
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`of the ’582 patent.
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`For all of these reasons, we agree with Petitioner that dependent
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`claims 10, 12, and 18 lack corresponding algorithms as required for
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`computer-implemented functions. Thus, we are unable to interpret
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`dependent claims 10, 12 and 18 (and claims 19 and 20, which depend from
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`claim 18) due to the lack of disclosed structures. A lack of sufficient
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`disclosure of structure under 35 U.S.C. § 112, sixth paragraph renders a
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`claim indefinite, and thus not amenable to construction. See In re Aoyama,
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`656 F.3d 1293, 1298 (Fed Cir. 2011) (quoting Enzo Biochem, Inc. v. Applera
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`Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (“If a claim is indefinite, the
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`claim, by definition, cannot be construed.”)).
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`Tuning Tool Image
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`Petitioner contends that the “tuning tool image” recited in claim 24 is
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`an error and should be construed as the “cutting tool image.” Pet. 11. In
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`particular, Petitioner directs attention to the final amendment that included
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`“cutting tool image” and not “tuning tool image.” Ex. 1005, 109. The
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`Office, nonetheless, printed the claim to include “tuning tool image.” We
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`construe claim 24 as containing an obvious error such that “tuning tool
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`image” is construed as “cutting tool image.” See Novo Indus., L.P. v. Micro
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`Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003) (holding a claim can be
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`construed to resolve obvious errors only if (1) the correct construction is not
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`subject to reasonable debate based on consideration of the claim language
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`and the specification and (2) the prosecution history does not suggest a
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`different interpretation of the claims).
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`4-D Image
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`Petitioner argues that the recitation of “4-D image” is indefinite
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`because a person of ordinary skill in the art would not be able to determine if
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`4-D was intended, or 3-D was intended. Pet. 11–12. In essence, Petitioner
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`argues that the term “4-D” that was added per amendment lacks written
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`description support in the originally filed application. Id. (“The
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`specification refers only to ‘3-D images’ and discusses only three
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`dimensions, with no suggestion of what ‘fourth dimension’ is purportedly
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`addressed in claim 24.”)
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`We are not persuaded by Petitioner’s arguments. Petitioner does not
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`argue, for example, that the claim with the term “4-D image” is not
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`discernible as to the meaning of the term. Indeed, Petitioner points out that
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`Patent Owner, in the related district court case, asserted that the term “4-D”
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`in the context of the claim means updating in real-time, and Petitioner does
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`not suggest or explain that such an interpretation is incorrect. Pet. 12.
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`Rather, Petitioner argues that the claim is indefinite, or lacks written
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`description support. Inter partes reviews are not a vehicle for making such
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`challenges to claims. 35 U.S.C. § 311(b).
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`B. Principles of Law
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`Anticipation requires the disclosure in a single prior art reference of
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`each and every element of the claimed invention, arranged as in the claim.
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`Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730
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`F.2d 1452, 1458 (Fed. Cir. 1984).
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are such that
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`the subject matter, as a whole, would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations including: (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art; and (4) objective evidence of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`In that regard, an obviousness analysis “need not seek out precise
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`teachings directed to the specific subject matter of the challenged claim, for
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`a court can take account of the inferences and creative steps that a person of
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`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see
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`Translogic, 504 F.3d at 1259. A prima facie case of obviousness is
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`established when the prior art itself would appear to have suggested the
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`claimed subject matter to a person of ordinary skill in the art. In re Rinehart,
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`531 F.2d 1048, 1051 (CCPA 1976).
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`The level of ordinary skill in the art is reflected by the prior art of
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`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
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`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
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`579 F.2d 86, 91 (CCPA 1978).
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`C. Claims 10, 12, and 18–20
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`As discussed above in the claim construction section, claims 10, 12,
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`18, as well as claims 19 and 20, by way of their dependency from claim 18,
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`recite means-plus-function limitations that we are unable to construe because
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`these claims lack corresponding disclosed structure. For this reason, we
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`decline to institute as to claims 10, 12, and 18–20. See Aoyama, 656 F.3d at
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`1298.
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`D. Anticipation of Claims over 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 collet of a cutting tool affixed to the robot end effector. Id. at
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`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 patient’s anatomy. Id. at
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`267. Taylor also describes IO hardware to track position and orientation of a
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`robot end effector and possible shifts of bone. Id. at 265.
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`To enable tracking of bone, titanium pins are implanted in a patient’s
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`femur and a CT scan is made of the patient’s leg. Id. at 262. To enable
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`tracking of the cutting tool, Taylor describes using a Northern Digital
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`OptotrakTM 3D digitizer, which is capable of tracking light emitting diodes
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`that may be affixed to the robot’s wrist so that the cutting tool may be
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`registered and tracked. Id. at 270. Taylor also describes a wrist-mounted
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`force sensor that computes forces and torques at the cutter tip. Id. Taylor
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`describes a robot controller that controls the cutting tool by using the pin
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`location information to compute an appropriate transformation from CT
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`coordinates to robot coordinates. Id. at 263. Taylor also describes that the
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`system monitors the position of the robot’s cutting tool relative to the shape
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`that it is to cut and stops cutting if the robot strays out of the desired area.
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`Id. at 264. Taylor describes a redundant motion monitoring subsystem that
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`checks to verify that the cutter tool never strays more than a specified
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`amount outside a defined implant volume. It also monitors strain gauges
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`that can detect possible shifts of bone. If either condition is detected, a
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`freeze motion signal is sent to the robot controller. Id. at 265.
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`The present record supports the contention that Taylor describes a
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`system that includes a cutting tool and a workpiece that includes a target
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`shape. Pet. 21; Ex. 1008, 263, 267. The present record also supports the
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`contention that Taylor describes markers associated with the workpiece
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`(e.g., titanium pins implanted into patient’s leg) and associated with the
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`cutting tool (e.g., LEDs attached to robot’s wrist and a tracker to provide
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`tracking data associated with the cutting tool and the workpiece). Pet. 22;
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`Ex. 1008, 262, 263, 270. Lastly, the record supports the contention that
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`Taylor describes a controller to control the cutting tool based on the tracking
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`data associated with the cutting tool and tracking data associated with the
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`workpiece. Pet. 22–23; Ex. 1008, 264–65. We are persuaded, at this
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`juncture of the proceeding, that Petitioner has established a reasonable
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`likelihood that Petitioner would prevail in its challenge to independent
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`claims 1, 17, and 24.
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`Petitioner also asserts that dependent claims 5, 6, 8, 9, 13, 14, 16, 21–
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`23, 25–30, 34–42, 47, and 50–58 are anticipated by Taylor. Pet. 23–34. We
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`have reviewed the Petition and the contentions made, and are persuaded, at
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`this juncture of the proceeding, that Petitioner has established a reasonable
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`likelihood that Petitioner would prevail in its challenge to dependent claims
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`5, 6, 8, 9, 13, 14, 16, 21–23, 25–30, 34–42, 47, and 50–58.
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`For example, claim 13 depends directly from claim 1 and recites
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`wherein the workpiece comprises at least one of: bone, cartilage, tendon,
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`ligament, muscle, connective tissue, fat, neuron, hair, skin, a tumor, and an
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`organ. The present record supports the contention that Taylor’s description
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`of the surgical procedure involving the femur of a patient as meeting this
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`limitation. Pet. 25; Ex. 1008, 262.
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`As another example, several of the dependent claims, such as claims
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`21, 22, 26–30, 40–42, 52, and 56 recite classifying, distinguishing between,
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`and color coding voxels used to represent the workpiece. The present record
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`supports the contention that Taylor describes that the CT scan made of the
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`workpiece (femur) is generated using voxels (Ex. 1008, 266) and that the
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`system tracks the changes of the voxels throughout the surgery procedure.
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`Pet. 15–16.
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`For all of the above reasons, we are persuaded, at this juncture of the
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`proceeding, that Petitioner has established a reasonable likelihood that
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`Petitioner would prevail in its challenge to claims 1, 5, 6, 8, 9, 13,14, 16, 17,
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`21–30, 34–42, 47, and 50–58 as anticipated by Taylor.
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`E. Obviousness of Claim 3 over Taylor and Glassman
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`Petitioner contends that claim 3 is unpatentable under 35 U.S.C.
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`§ 103(a) as obvious over Taylor and Glassman. Pet. 18–19, 23. To support
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`its contention, Petitioner provides detailed explanations as to how the prior
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`art meets each claim limitation of claim 3. Id. Petitioner also relies upon the
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`Declaration of Robert D. Howe for support. Ex. 1004.
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`Glassman describes a robotic surgical system that includes a multiple
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`degree of freedom manipulator arm having a surgical tool. Ex. 1009,
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`Abstract. The surgical tool is described as a cylindrical high-speed (65,000
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`rpm) pneumatic surgical cutting tool. Id. at 3:32–36.
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`Claim 3 depends directly from claim 1 and specifies that the cutting
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`tool includes at least one cutting element, and where the cutting element
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`comprises at least one of: at least one blade, at least one rotatable blade, at
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`least one retractable blade, at least one water jet, at least one particulate jet,
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`at least one lithotripter, and at least one ultrasonic lithotripter.
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`Petitioner relies on Glassman for its description of a cylindrical high-
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`speed (65,000 rpm) pneumatic surgical cutting tool, which Petitioner
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`characterizes as a drill or rotatable blade. Pet. 18–19, 23; Ex. 1004 ¶ 37.
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`Petitioner concludes that it would have been obvious to modify the ball
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`cutter in Taylor with other known cutting elements, such as the one
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`described in Glassman. Id.
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`We have reviewed the proposed ground of obviousness over Taylor
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`and Glassman against claim 3, and we are persuaded, at this juncture of the
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`proceeding, that Petitioner has established a reasonable likelihood that
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`Petitioner would prevail in its challenge to claim 3 on this ground.
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`F. Obviousness of Claims over Taylor and Delp
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`Petitioner contends that claims 48 and 49 are unpatentable under
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`35 U.S.C. § 103(a) as obvious over Taylor and Delp. Pet. 20–21, 32. To
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`support its contentions, Petitioner provides detailed explanations as to how
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`the prior art meets each claim limitation. Id. Petitioner also relies upon the
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`Declaration of Robert D. Howe for support. Ex. 1004.
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`Delp describes an interactive graphics-based model of a lower
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`extremity to study orthopaedic surgical procedures. Ex. 1011, 757. Delp
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`describes a user interface for developing and using the lower extremity
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`model. Four software tools help the user to modify and analyze the
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`musculoskeletal model. Id. at 761. A view controller allows the user to
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`rotate, scale, and translate the model into any viewing perspective. Id.
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`Claim 48 depends from independent claim 24 and recites a control
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`that includes increasing the size of the cutting tool image to determine
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`whether the increased size cutting tool image intersects with the target shape
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`in the workpiece image. Claim 49 depends from claim 48 and recites that
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`increasing the size includes at least one of increasing the size by a fixed
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`amount, and increasing the size based on tracking data associated with the
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`cutting tool.
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`Petitioner relies on Delp for its description of allowing the user to
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`rotate, scale, and translate the model into any viewing perspective and
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`concludes that it would have been obvious to combine Delp with Taylor to
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`produce the predictable result of a cutting tool image that can be scaled or
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`rotated for better visualization of the procedure. Pet. 20–21; Ex. 1004 ¶ 50.
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`We have reviewed the proposed ground of obviousness over Taylor
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`and Delp against claims 48 and 49, and we are persuaded, at this juncture of
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`the proceeding, that Petitioner has established a reasonable likelihood that
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`Petitioner would prevail in its challenge to claims 48 and 49 on this ground.
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`G. Obviousness of Claim 7 over Taylor and DiGioia
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`Petitioner contends that claim 7 is unpatentable under 35 U.S.C.
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`§ 103(a) as obvious over Taylor and DiGioia. Pet. 19–20. To support its
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`contention, Petitioner provides detailed explanations as to how the prior art
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`meets each claim limitation of claim 7. Id. Petitioner also relies upon the
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`Declaration of Robert D. Howe for support. Ex. 1004.
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`DiGioia describes an apparatus for facilitating the implantation of an
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`artificial component in, for example, a hip joint. The apparatus includes a
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`pre-operative geometric planner and a pre-operative geometric kinematic
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`biomechanical simulator in communication with the pre-operative geometric
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`planner. Ex. 1010, 4:59–65. During intra-operative stages, a computer
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`system is used to display relative locations of the objects being tracked with
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`a tracking device. The tracking device uses markers that may be attached to
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`bones, tools or other objects to provide precision tracking of the objects.
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`The markers are described as including any of emitter/detector systems
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`including optic, acoustic, video-based, mechanical, electromagnetic and
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`radio frequency (RF) systems, and one embodiment describes using a
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`camera to track light emitting from light emitting diodes. Id. at 6:24–43.
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`Claim 7 depends indirectly from claim 1 and specifies the claimed
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`markers include at least one of an infrared source, RF source, ultrasound
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`source, and transmitter.
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`Petitioner relies on DiGioia for its description of infrared markers.
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`Pet. 19–20, 23; Ex. 1004 ¶ 47. Petitioner concludes that it would have been
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`obvious to substitute the titanium pin markers in Taylor for other known
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`markers, such as the ones described in DiGioia. Id.
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` We have reviewed the proposed ground of obviousness over Taylor
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`and DiGioia against claim 7, and we are persuaded, at this juncture of the
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`proceeding, that Petitioner has established a reasonable likelihood that
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`Petitioner would prevail in its challenge to claim 7 on this ground.
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`H. Obviousness of Claim 11 over Taylor
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`Petitioner contends that claim 11 is unpatentable under 35 U.S.C.
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`§ 103(a) as obvious over Taylor. Pet. 20, 24–25. To support its contention,
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`Petitioner provides detailed explanations as to how the prior art meets each
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`claim limitation of claim 11. Id. Petitioner also relies upon the Declaration
`
`of Robert D. Howe for support. Ex. 1004.
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`Claim 11 depends directly from claim 1 and recites means to provide
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`at least one image associated with the workpiece, and means to provide at
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`least one image associated with the cutting tool. As discussed above in the
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`claim construction section, the corresponding structure for the means in both
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`instances is a CAD, CT, MRI, X-Ray, fluoroscopy and/or ultrasound, and
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`equivalent structures.
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`Petitioner argues that while Taylor describes providing an image of
`
`the workpiece using CT, Taylor does not expressly describe any of the
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`structures to provide an image of the cutting tool. Pet. 20. Petitioner
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`concludes that it would have been obvious to a person having ordinary skill
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`in the art to modify Taylor and use a CAD model for the cutting tool in order
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`to accurately track cutting progress that is described in Taylor. Pet. 20; Ex.
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`1004 ¶ 48.
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`We have reviewed the proposed ground of obviousness over Taylor
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`against claim 11, and we are persuaded, at this juncture of the proceeding,
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`that Petitioner has established a reasonable likelihood that Petitioner would
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`prevail in its challenge to claim 11 on this ground.
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`I. Remaining Grounds Challenging the Claims of the ’582 Patent
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`Pursuant to 35 U.S.C. § 316(b), rules for inter partes proceedings
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`were promulgated to take into account the “regulation on the economy, the
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`integrity of the patent system, the efficient administration of the Office, and
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`the ability of the Office to timely complete proceedings.” The promulgated
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`rules provide that they are to “be construed to secure the just, speedy, and
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`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). As a
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`result, and in determining whether to institute an inter partes review of a
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`patent, the Board, in its discretion, may “deny some or all grounds for
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`unpatentability for some or all of the challenged claims.” 37 C.F.R.
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`§ 42.108(b).
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`We exercise our discretion and decline to institute review based on
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`any of the other asserted grounds advanced by Petitioner that are not
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`identified below as being part of the trial. 37 C.F.R. § 42.108(a).
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`III. CONCLUSION
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`For the foregoing reasons, we determine that the information
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`presented establishes a reasonable likelihood that Petitioner would prevail in
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`showing that claims 1, 3, 5–9, 11, 13, 14, 16, 17, 21–30, 34–42, and 47–58
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`of the ’582 patent are unpatentable. At this stage of the proceeding, the
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`Board has not made a final determination with respect to the patentability of
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`the challenged claims.
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`IV. ORDER
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`For the foregoing reasons, it is
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`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
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`review is hereby instituted for the following grounds of unpatentability:
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`Claims
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`Basis
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`References
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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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`Taylor
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`3
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`§ 103(a)
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`Taylor and Glassman
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`48 and 49
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`§ 103(a)
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`Taylor and Delp
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`7
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`11
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`§ 103(a)
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`Taylor and DiGioia
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`§ 103(a)
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`Taylor
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`FURTHER ORDERED that no other ground of unpatentability
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`asserted in the Petition is authorized for this inter partes review; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
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`will commence on the entry date of this decision.
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`Patent 6,757,582 B2
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`PETITIONER:
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`Matthew I. Kreeger
`mkreeger@mofo.com
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`Wwu@mofo.com
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`
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`PATENT OWNER:
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`Brian Buroker
`bburoker@gibsondunn.com
`
`Stuart Rosenburg
`srosenburg@gibsondunn.com
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`
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