UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`MAKO SURGICAL CORP.,
`Petitioner,
`
`v.
`
`BLUE BELT TECHNOLOGIES, INC.,
`Patent Owner.
`
`______________________
`
`Case IPR2015-00629
`Patent No. 6,757,582 B2
`_______________________
`
`PETITIONER MAKO SURGICAL CORP.’S
`NOTICE OF APPEAL
`
`
`
`via PRPS
`Patent Trial and Appeal Board
`
`via Hand Carry
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22314
`
`via CM/ECF
`United States Court of Appeals for the Federal Circuit
`
`
`
`

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`
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`Case IPR2015-00629
`Petitioner’s Notice of Appeal
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`Please take notice that under 35 U.S.C. §§ 141(c), 142, 319; 37 C.F.R.
`
`§§ 90.2(a), 90.3(a); and Federal Rules of Appellate Procedure/Federal Circuit Rule
`
`15, Petitioner Mako Surgical Corp. hereby appeals to the United States Court of
`
`Appeals for the Federal Circuit from the Patent Trial and Appeal Board’s Final
`
`Written Decision in the above captioned inter partes review of United States
`
`Patent No. 6,757,582 B2 (“the ’582 patent”) entered on July 15, 2016 (Paper 24)
`
`(the “Final Written Decision”), and from all orders, decisions, rulings, and
`
`opinions underlying the decision. This notice is timely filed within 63 days of the
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`Board’s Final Written Decision. 37 C.F.R. § 90.3(a)(1).
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner notes that the issues
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`on appeal will likely include, but are not limited to, whether the Board erred in
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`finding that Petitioner failed to meet its burden of proving, by a preponderance of
`
`the evidence, that claims 16, 21-30, 34-42, 47, and 50-58 of the ’582 patent are not
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`unpatentable as anticipated by 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) (“Taylor”) under 35
`
`U.S.C. § 102(b); that claims 48 and 49 are not unpatentable for obviousness over
`
`the combination of Taylor and 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.
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`sf-3693817
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`1
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`Case IPR2015-00629
`Petitioner’s Notice of Appeal
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`1990) (“Delp”) under 35 U.S.C. § 103(a); and any findings or determinations
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`supporting or related to those issues.
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`Simultaneously with this submission, Petitioner is filing a true and correct
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`copy of this Notice of Appeal with the Patent Trial and Appeal Board and true and
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`correct copies of the same with the Clerk of the United States Court of Appeals for
`
`the Federal Circuit, along with the required filing fee, as set forth in the
`
`accompanying Certificates of Filing. Furthermore, a copy of this Notice of Appeal
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`is being served on Patent Owner Blue Belt Technologies, Inc.
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`
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`Dated: September 15, 2016
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`
`
`
`Respectfully submitted,
`
`By: /s/ Matthew I. Kreeger
`Matthew I. Kreeger
`Registration No. 56,398
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, California 94105-2482
`Tel: (415) 268-6467
`Fax: (415) 268-7522
`Attorney for Petitioner Mako Surgical
`Corp.
`
`sf-3693817
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`2
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`Case IPR2015-00629
`Petitioner’s Notice of Appeal
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`Certificate of Filing (37 C.F.R. § 90.2(a)(1))
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`Pursuant to 37 C.F.R. §§ 90.2(a)(1) and 104.2(a), I hereby certify that, in
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`addition to being filed electronically through the Patent Trial and Appeal Board’s
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`Patent Review Processing System (PRPS), a true and correct original version of the
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`foregoing Petitioner Mako Surgical Corp.’s Notice of Appeal was filed by hand on
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`this 15th day of September, 2016, with the Director of the United States Patent and
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`Trademark Office, at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street,
`Alexandria, Virginia
`
`
`
`Dated: September 15, 2016
`
`/s/ Matthew I. Kreeger
`Matthew I. Kreeger
`Registration No. 56,398
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, California 94105-2482
`(415) 268-7000
`
`Attorney for Petitioner Mako Surgical
`Corp.
`
`
`
`sf-3693817
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`

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`Case IPR2015-00629
`Petitioner’s Notice of Appeal
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`Certificate of Filing (37 C.F.R. § 90.2(a)(2))
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`Pursuant to 37 C.F.R. §§ 90.2(a)(2) and Federal Circuit Rules 15(a)(1),
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`25(a), (b), and 52(a), (e), I hereby certify that a true and correct copy of the
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`foregoing Petitioner Mako Surgical Corp.’s Notice of Appeal, along with the
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`required docket fee, was filed in the United States Court of Appeals for the Federal
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`Circuit electronically via CM/ECF and by hand on this day, September 15, 2016, at
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`the following address:
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`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W.
`Washington, D.C. 20439
`
`
`
`Dated: September 15, 2016
`
`/s/ Matthew I. Kreeger
`Matthew I. Kreeger
`Registration No. 56,398
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, California 94105-2482
`(415) 268-7000
`
`Attorney for Petitioner Mako Surgical
`Corp.
`
`sf-3693817
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`

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`Case IPR2015-00629
`Petitioner’s Notice of Appeal
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`Certificate of Service (37 C.F.R. § 42.6(e)(4))
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`I hereby certify that the above captioned Petitioner Mako Surgical Corp.’s
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`Notice of Appeal was served as of the below date via electronic mail by agreement
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`on the Patent Owner at the following correspondence address:
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`
`
`Brian M. Buroker
`GIBSON, DUNN & CRUTCHER LLP
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036-5306
`bburoker@gibsondunn.com
`srosenberg@gibsondunn.com
`gstark@slwip.com
`
`
`
`
`Dated: September 15, 2016
`
`/s/ Matthew I. Kreeger
`Matthew I. Kreeger
`Registration No. 56,398
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, California 94105-2482
`(415) 268-7000
`
`Attorney for Petitioner Mako Surgical
`Corp.
`
`
`
`sf-3693817
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`

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`Trials@uspto.gov Paper 24
`571-272-7822
`
`Date Entered: July 15, 2016
`
`
`
`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
`
`
`I.
`
`INTRODUCTION
`
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`
`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`
`shown by a preponderance of the evidence that claims 1, 3, 5–9, 11, 13, 14,
`
`and 17 of U.S. Patent No. 6,757,582 B2 are unpatentable, but has not shown
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`IPR2015-00629
`Patent 6,757,582 B2
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`
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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.
`
`A. Procedural History
`
`Petitioner, Mako Surgical Corporation, filed a Petition requesting an
`
`inter partes review of claims 1, 3, 5–14, 16–30, 34–42, and 47–58 of U.S.
`
`Patent No. 6,757,582 B2 (Ex. 1501, “the ’582 patent”). Paper 1 (“Pet.”).
`
`Patent Owner, Blue Belt Technologies, Inc., did not file a Preliminary
`
`Response. Upon consideration of the Petition, on July 30, 2015, we
`
`instituted an inter partes review of claims 1, 3, 5–9, 11, 13, 14, 16, 17, 21–
`
`30, 34–42, and 47–58, pursuant to 35 U.S.C. § 314. Paper 6 (“Dec.”).
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`
`Response (Paper 10 (“PO Resp.”)) and Petitioner filed a Reply (Paper 13
`
`(“Pet. Reply”)).
`
`Patent Owner filed a Motion to Exclude (Paper 17; “PO Mot.
`
`Exclude”) certain portions of Exhibit 1016. Petitioner filed an Opposition to
`
`the Motion to Exclude (Paper 18; “Pet. Exclude Opp.”), and Patent Owner
`
`filed a Reply (Paper 20; “PO Exclude Reply”).
`
`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.”).
`
`B. Related Proceedings
`
`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.).
`
`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
`
`to a cutting tool. Ex. 1001, Abstract. The specification of the ’582 patent
`
`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
`
`and workpiece. Id. at 9:5–6. The markers may be tracked using the system,
`
`resulting in tracking data that can be used to provide a control for the cutting
`
`tool. Id. at 9:54–61.
`
`D. Illustrative Claim
`
`Claims 1, 17, and 24 are independent claims. Claims 3, 5–9, 11, 13,
`
`14, and 16 directly or indirectly depend from claim 1; claims 21–23 directly
`
`or indirectly depend from independent claim 17; and claims 25–30, 34–42,
`
`and 47–58 directly or indirectly depend from claim 24. The independent
`
`claims 1, 17, and 24 are reproduced below.
`
`1. A system, comprising:
`
`
`a cutting tool;
`
` a
`
` workpiece that includes a target shape;
`
` a
`
` 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
`
` controller to control the cutting tool based on the
`tracking data associated with the cutting tool and the tracking
`data associated with the workpiece.
`
`Ex. 1001, 20:37–47.
`
`
`
`17. A system, comprising:
`
`
`a workpiece having a target shape included therein,
`
`
`3
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`IPR2015-00629
`Patent 6,757,582 B2
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`a tracker to track at least one of: a cutting tool and the
`workpiece, and,
`
` a
`
` 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.
`
`Id. at 21:39–53.
`
`24. A method, the method comprising:
`
`
`providing a workpiece that includes a target shape,
`
`providing a cutting tool,
`
`providing a 4-D image associated with the workpiece,
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`identifying the target shape within the workpiece image,
`
`providing a 4-D image associated with the cutting tool,
`
`registering the workpiece with the workpiece image,
`
`registering the cutting tool with the tuning tool image,
`
`tracking at least one of the workpiece and the cutting
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`tool,
`
`
`transforming the tacking data based on image coordinates
`to determine a relationship between the workpiece and the
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`4
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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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`
`
`E. Grounds of Unpatentability
`
`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:
`
`Claim(s)
`
`Basis
`
`Reference(s)
`
`1, 5, 6, 8, 9, 13, 14,
`16, 17, 21–30, 34–42,
`47, and 50–58
`
`§ 102(b)
`
`Taylor1
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`3
`
`§ 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)
`
`Taylor
`
`
`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”).
`
`5
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`II. ANALYSIS
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`
`
`A. Level of Skill of Person in the Art
`
`We find that the level of ordinary skill in the art is reflected by the
`
`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`
`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).
`
`B. Claim Interpretation
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`In an inter partes review, we construe claim terms in an unexpired
`
`patent according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`
`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
`
`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
`
`(U.S. June 20, 2016). Consistent with the broadest reasonable interpretation,
`
`claim terms are presumed to have their ordinary and customary meaning as
`
`understood by a person of ordinary skill in the art in the context of the entire
`
`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`
`Cir. 2007). Also, we must be careful not to read a particular embodiment
`
`appearing in the written description into the claim if the claim language is
`
`broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
`
`(Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the
`
`specification”). However, an inventor may provide a meaning for a term
`
`that is different from its ordinary meaning by defining the term in the
`
`specification with reasonable clarity, deliberateness, and precision. In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`6
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`Petitioner proposes interpretations for the following claim terms:
`
`
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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
`
`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
`
`image” (claim 11) and “the tuning tool image” (claim 24). Dec. 6, 8.
`
`Neither party has indicated that the interpretations for those phrases were
`
`improper and we do not perceive any reason or evidence that now compels
`
`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
`
`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.
`
`Accordingly, the following interpretations are not in dispute and apply
`
`to this Decision:
`
`Claim Term
`
`Interpretation
`
`means to provide at least one image
`(claim 11)
`
`tuning tool image
`4-D image
`
`
`(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
`
`For purposes of this decision, it is necessary to construe the phrases
`
`“tracking data associated with the workpiece” (claim 1) and “track the
`
`cutting tool and the workpiece” (claim 17).
`
`Tracking Data (claim 1)/Track the Cutting Tool and Workpiece (claim 17)
`
`Claim 1 recites a tracker to provide “tracking data associated with the
`
`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
`
`21:45–47.
`
`Patent Owner argues that the broadest reasonable interpretation of
`
`“tracking data associated with the workpiece” recited in claim 1 is “data that
`
`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
`
`reasonable interpretation of “track the cutting tool and the workpiece”
`
`recited in claim 17 is “identify a position of the cutting tool and of the
`
`workpiece over time within a coordinate system.” Id. at 8–9 (citing Ex.
`
`2004 ¶ 35). Petitioner disagrees with Patent Owner’s proposed
`
`interpretations and argues that the term “track” or “tracking” is not explicitly
`
`defined in the Specification of the ’582 patent, and, therefore, the term
`
`“track” is used “according to its ordinary meaning, which is ‘to observe the
`
`progress of’ or ‘follow’ something.” Pet. Reply 1–2 (citing dictionary
`
`definitions for track); Tr. 5.
`
`It is necessary for us to interpret the phrases because there is a dispute
`
`about whether the prior art (Taylor) describes tracking data associated with
`
`the workpiece (claim 1) or describes a system that tracks the workpiece
`
`(claim 17). In particular, Patent Owner disagrees that Taylor describes
`
`tracking the position or movement of the workpiece over time within a
`
`defined coordinate system. See, e.g., PO Resp. 17–19. For the reasons that
`
`follow, we do not adopt Patent Owner’s narrow proposed interpretation.
`
`We begin with the language of claims 1 and 17. Claim 1 recites a
`
`tracker to provide tracking data associated with the cutting tool and the
`
`workpiece. A controller controls the cutting tool based on the tracking data
`
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`IPR2015-00629
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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
`
`“tracking data associated with the workpiece” means. For example, there is
`
`nothing in claim 1 that limits tracking data to data that identify a position of
`
`an object over time within a coordinate system. Like claim 1, independent
`
`claim 17 does not define or further modify the phrase to “track the cutting
`
`tool and the workpiece.” Unlike claim 1, claim 17 uses the term as a verb
`
`“to track” as opposed to claim 1, where the adjective “tracking” modifies the
`
`noun “data.”
`
`As discussed above, Petitioner submits that the ordinary meaning of
`
`the word track means “to observe the progress of” or “follow” something.
`
`Pet. Reply 2 (citing Ex. 1017, 1432–33). Petitioner argues that the ordinary
`
`meaning of “track” encompasses monitoring characteristics in general. PO
`
`Resp. 4. Neither Patent Owner nor Patent Owner’s Declarant, Dr. Kevin
`
`Cleary, considers or presents an ordinary meaning of the word track or
`
`tracking.
`
`Claims 1 and 17 lack an indication as to what about the workpiece is
`
`being tracked or what constitutes tracking data. In other words, there is
`
`nothing in the claims themselves that explicitly indicates that the position of
`
`the workpiece is being tracked, as opposed to motion (i.e., tracking if
`
`something moved), shape (i.e., tracking the shape of the workpiece after a
`
`portion has been cut), or size of the workpiece (i.e., tracking the size of the
`
`workpiece after a portion has been cut), or some other parameter associated
`
`with the workpiece. The record evidence supports Petitioner’s argument that
`
`the ordinary meaning of the word track encompasses monitoring
`
`characteristics in general of an object. In other words, “to observe the
`
`9
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`IPR2015-00629
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`progress of” or “to follow” something does not necessarily mean that it is the
`
`movement or position of something that is being observed or followed (i.e.,
`
`that an object moved from point A to point B) as Patent Owner’s
`
`construction would seem to require. Indeed, the Specification of the ’582
`
`patent itself describes that “in some systems and methods, the cutting tool
`
`can include an ultrasonic motor that can transmit an encoder signal to allow
`
`the computer to track the motor characteristics (e.g., speed, rotation, etc.).”
`
`Ex. 1001, 14:40–43 (emphasis added). Thus, it appears to us that Patent
`
`Owner is reading limitations into the claims, because its proposed
`
`interpretation for at least to “track the cutting tool and the workpiece” would
`
`read out of the claim the embodiment that includes tracking a characteristic
`
`of the motor of the cutting tool, such as speed or rotation.
`
`We next turn to Patent Owner’s arguments regarding specific
`
`embodiments in the Specification of the ’582 patent. Patent Owner focuses
`
`on three passages from the Specification of the ’582 patent in support of its
`
`interpretations for “tracking data associated with . . . the workpiece” and “to
`
`track the cutting tool and the workpiece.” PO Resp. 8. Those passages are
`
`reproduced as follows:
`
`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.
`
`Ex. 1001, 2:45–52.
`
`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
`
`10
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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.
`
`Id. at 4:62–5:16.
`
`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.
`
`Id. at 9:46–61.
`
`Patent Owner does not provide an explanation in the Patent Owner
`
`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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`
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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
`
`explanation is not particularly helpful in determining what are tracking data
`
`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
`
`proposed interpretations.5 Ex. 2004 ¶¶ 33–35. But, like Patent Owner, Dr.
`
`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
`
`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
`
`¶¶ 33–35.
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`There are several other descriptions in the ’582 patent Specification,
`
`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
`
`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
`
`Owner nor Dr. Cleary discuss any of the other systems that a person of
`
`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
`
`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.
`
`Claim 1
`
`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
`
`shape relative to CT image of anatomy. Id. We are persuaded by
`
`Petitioner’s showing, and adopt it as our own, that Taylor discloses a system
`
`comprising a cutting tool and a workpiece that includes a target shape.
`
`Petitioner also contends that Taylor describes a tracker to provide
`
`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
`
`during the cutting phase of the surgery” and also to page 270 of Taylor
`
`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
`
`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
`
`associated with the workpiece are derived from a first marker associated
`
`with the workpiece and that Taylor does not describe “at least one first
`
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