IPR2015-00629, Paper No. 23
`IPR2015-00630, Paper No. 41
`May 27, 2016
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`trials@uspto.gov
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`571-272-7822
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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.1,
`Exclusive Licensee and Patent Owner.
`____________
`
`Case IPR2015-00629
`Patent 6,757,582 B2
`Case IPR2015-00630
`Patent 6,205,411 B1
`____________
`
`Held: April 7, 2016
`____________
`
`
`
`
`
`BEFORE: SALLY C. MEDLEY, KEVIN F. TURNER, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Wednesday,
`April 7, 2016, commencing at 2:03 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`IPR2015-00630, Paper No. 41
`May 27, 2016
`
`trials@uspto.gov
`
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MAKO SURGICAL CORP.,
`Petitioner,
`
`v.
`
`BLUE BELT TECHNOLOGIES, INC.1,
`Exclusive Licensee and Patent Owner.
`____________
`
`Case IPR2015-00629
`Patent 6,757,582 B2
`Case IPR2015-00630
`Patent 6,205,411 B1
`____________
`
`Held: April 7, 2016
`____________
`
`
`
`
`
`BEFORE: SALLY C. MEDLEY, KEVIN F. TURNER, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Wednesday,
`April 7, 2016, commencing at 2:03 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`Case IPR2015-00629, Patent 6,757,582 B2
`Case IPR2015-00630, Patent 6,205,411 B1
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`
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`
`
`
`
`
`
`MATTHEW I. KREEGER, ESQUIRE
`WALTER WU, M.D.
`Morrison & Foerster LLP
`425 Market Street
`San Francisco, California 94105-2482
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`
`BRIAN M. BUROKER, ESQUIRE
`STUART M. ROSENBERG, ESQUIRE
`Gibson, Dunn & Crutcher LLP
`1881 Page Mill Road
`Palo Alto, California 94304-1211
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`ON BEHALF OF PATENT OWNER:
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`Case IPR2015-00629, Patent 6,757,582 B2
`Case IPR2015-00630, Patent 6,205,411 B1
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`P R O C E E D I N G S
`- - - - -
`JUDGE MEDLEY: Good afternoon. This is the
`hearing for IPR2015-00629 and IPR2015-00630 between
`Petitioner Mako Surgical and Patent Owner Blue Belt
`Technologies. Per our March 17th order, each party will have 60
`minutes of total time to present arguments.
`Petitioner, you can proceed first, present your case and
`thereafter, Patent Owner, you can respond and also present
`arguments for your motion to amend with respect to the 630 case
`and each party may reserve rebuttal time.
`Petitioner, during your rebuttal time, you may respond
`to all matters argued by the Patent Owner and, Patent Owner,
`during your rebuttal time you may respond only to Petitioner's
`arguments in connection with your motion to amend in the 630
`case.
`
`And I want to remind the parties that in the 630 case,
`we have confidential information that was filed under seal. This
`proceeding today, this hearing today, is public, so neither party
`requested that we keep anything confidential, so just to keep that
`in mind.
`So at this time we'd like the parties to please introduce
`themselves beginning with Petitioner and who will argue for you.
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`Case IPR2015-00629, Patent 6,757,582 B2
`Case IPR2015-00630, Patent 6,205,411 B1
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`MR. KREEGER: Thank you, Your Honor. Matthew
`Kreeger from Morrison & Foerster for the Petitioner and I'll argue
`in both cases.
`MR. BUROKER: Yes, Brian Buroker from Gibson
`Dunn. With me is my colleague, Stuart Rosenberg, who you --
`who's backup counsel, and my colleague, Omar Amin, sitting at
`the counsel table with me and then in-house counsel, David
`Chambers, from Smith & Nephew is here.
`In the course of these proceedings, as we notified the
`Board, Blue Belt Technologies was acquired by Smith & Nephew
`and that's why he is present. Thank you.
`JUDGE MEDLEY: And you'll be presenting?
`MR. BUROKER: I will be presenting, yes.
`JUDGE MEDLEY: Okay. Great. Just give us one
`
`second.
`
`Okay. You may proceed.
`MR. KREEGER: Thank you, Your Honor. May my
`colleague approach, Your Honor?
`JUDGE MEDLEY: Yes, please.
`MR. KREEGER: Thank you.
`Matthew Kreeger from Morrison & Foerster for the
`Petitioner and I want to begin with the '582 patent and I would
`like to reserve 20 minutes for 9rebuttal.
`So in my argument about the '582 patent, I'm going to
`begin with a claim construction issue involving tracking and
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`tracking data and then I'm going to turn to various claims and
`establish why for each of them the claims are either anticipated or
`obvious according to the grounds laid out in the Institution
`Decision.
`There's no motion to amend with respect to this claim --
`this patent.
`All right. So the claim construction issue, if you look at
`the claims of the '582 patent, they're quite broad. So, for
`example, in Claim 1, which I'm showing here -- this is Exhibit
`1001 at column 20.
`Claim 1 specifies a cutting tool, a workpiece with a
`target shape, a tracker to provide tracking data associated with the
`cutting tool and the workpiece, where the tracker has to have
`markers and a controller to control the cutting tool based on the
`tracking data, and that's it.
`A key question that's arisen in this case is what does it
`mean when the patent uses the term track or tracking data. We
`submit that what's meant by that given its broadest reasonable
`interpretation is its ordinary meaning, which would be to observe
`the progress or to follow something, and there's nothing in the
`specification that disclaims that meaning or provides a more
`narrow definition and, in fact, we think the specification makes it
`clear that that broadest reasonable interpretation is correct.
`So, for example, on column 13 of the patent, beginning
`at line 33, you'll see it says, tracking data -- as provided herein
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`Case IPR2015-00630, Patent 6,205,411 B1
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`relative to Figure 1, tracking data can be received, where such
`tracking data can be associated with the workpiece and/or the
`cutting element. Based on tracking data that can be transformed
`to the image coordinate system, collision detection can be
`performed.
`So I should make clear that what the Patent Owner is
`saying about this limitation is that in order for a tracking data to
`exist, it must be within a coordinate system and we submit that's
`just not correct.
`This excerpt makes it clear that the data can be
`transformed or can be capable of being transformed into the
`image, but it doesn't say that it must be transformed or it must be
`capable of being transformed. It just simply says that there has to
`be tracking data received and it can be used. And the claim
`simply required the tracking data be used to control the effector.
`There's nothing in the claims that limit it to a particular
`coordinate system or any coordinate system.
`Now, in some embodiments the patent discloses
`tracking in the X, Y, Z, pitch, yaw and roll, the six degrees of
`freedom, but the patent is clear that that is not necessarily
`required. It says that fewer or more degrees of freedom can be
`tracked. That's in column 16.
`So looking at column 16 at line 15, it talks about X, Y,
`Z, roll, pitch and yaw, and it says fewer or more degrees of
`freedom can be tracked at line 11.
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`Case IPR2015-00629, Patent 6,757,582 B2
`Case IPR2015-00630, Patent 6,205,411 B1
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`In one place it says that monitoring can be done in only
`two degrees of freedom, one position and one angle. So it's clear
`that there's no requirement that tracking be all six degrees of
`freedom or that it be even any particular degrees of freedom. All
`that's required is that tracking data be generated and used to
`control the effector.
`So we respectfully ask -- suggest that the broadest
`reasonable interpretation does not support the Patent Owner's
`proposal that it be within a coordinate system.
`Now, turning to Taylor, Taylor is, of course, our lead
`reference and was a relatively famous article describing what was
`known as the Robodoc system. And as described in the abstracts,
`Taylor describes an interactive CT-based presurgical planning
`component and a surgical system consisting of a robot, redundant
`motion monitoring and man-machine interface components.
`And it's this redundant motion monitoring system that is
`particularly important in this case. What does it say about that?
`If we turn to page 265 of the reference, we see the redundant
`motion monitoring subsystem is implemented on an IBM PC/AT.
`It relies on independent sensing to track the position and
`orientation of the robot end effector during the cutting phase and
`checks to verify that the cutter never strays more than a
`prespecified amount.
`It goes on to say, it also monitors strain gages that can
`detect possible shifts of a bone relative to the fixation device. If
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`Case IPR2015-00629, Patent 6,757,582 B2
`Case IPR2015-00630, Patent 6,205,411 B1
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`either condition is detected, a freeze motion signal is sent to the
`robotic controller stopping motion.
`So here we have in Taylor a system that both tracks the
`position of the robot and the effector and also monitors for
`motion of the bone. If it determines that there's been motion of
`the bone or that the cutter is moving outside of the desired area, it
`sends a free signal, which is all the claims require you have,
`control of the effector based on data that tracks either the
`workpiece or the tool.
`Now, the dispute is about the workpiece. Patent Owner
`maintains that the redundant motion monitoring system does not
`track the workpiece, but, again, under the broadest reasonable
`interpretation we suggest that's wrong.
`What the Taylor article makes clear is that the
`redundant motion sensing system can detect if the bone moves
`and how far it moves. It includes data that shows the amount of
`movement and amount of displacement it detects. That data is
`continually monitored and fed to the subsystem and it then sends
`out a control signal based on that data. If the bone moves too far,
`it then sends a signal to stop it. That's all that's required to track
`the tool. So that's with respect to Claim 1.
`Now, for Claim 24, Claim 24 adds the requirement of a
`4D image associated with the cutting tool. And here the clear --
`the key dispute between the parties is what is meant by a 4D
`image. But what the Patent Owner fundamentally argues is that
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`Case IPR2015-00630, Patent 6,205,411 B1
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`in order for it to be an image it has to be -- well, you might think
`of it colloquially as an image. It can't be a mathematical model
`and we respect that the experts are clear that that's not correct.
`So Dr. Howe explains in his declaration that as used in
`the patent, the term image often refers to, for example, a CAD file
`or some other computer model for either the effector or the
`workpiece. And I asked Dr. Cleary, the expert, for the Patent
`Owner about that and he agreed.
`So if we look at Exhibit 1016, which is his cross
`examination, at page 42 I ask him, all right, but the cutting tool
`could be a model, and he answered, yes, the cutting tool could be
`a model. And I asked him, so when it says at least one cutting
`tool image is registered to the cutting tool, that can be satisfied by
`registering the tool to a model.
`And there was an objection and he went on to finally
`respond at line 19 right. So I do say in 53 -- that would be
`paragraph 53 of his declaration -- that at least one cutting tool
`image is registered to the cutting tool. And in that case the
`cutting tool image could be a model, yeah, and most likely in
`practice it is a model.
`So what Taylor is disclosing is for the workpiece they
`did, a CT scan of the patient's leg, and for the cutting tool they
`often rely on CAD or other models that show what the tool looks
`like. And Dr. Cleary agreed that in practice that's how this is
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`operated. So the idea that Taylor doesn't disclose a cutting tool
`image or a 4D image associated with a cutting tool is just wrong.
`There's also the issue about whether this image is
`updated over time and Taylor discloses that as well.
`If you look at page --
`JUDGE MEDLEY: Could you walk through there
`Taylor discloses a 3D -- I think they construe 4D to be 3D --
`MR. KREEGER: That's right.
`JUDGE MEDLEY: -- changing in real time, so I'm
`having a hard time finding where that's described for -- with
`respect to the tool.
`MR. KREEGER: Thank you. I'd very much like to do
`
`that.
`
`So on page 267 -- well, let me start at page 266. 266
`introduces -- and we're talking about the workpiece, right? That's
`the issue that they dispute.
`So it mentions that a CT scanner used for the veterinary
`clinical trial produced images on a magnetic tape with voxel sizes
`of .39 by .39 by 1.5 millimeters thick and that is necessarily a 3D
`image because it's a CT scan in voxels. So the workpiece is
`imaged in a 3D form.
`Over time if we continue on to page 269, the
`intraoperative display, we see that the presurgical planning
`system is also used in the operating room to provide displays
`showing the progress of the cutting phase of the surgery. During
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`Case IPR2015-00629, Patent 6,757,582 B2
`Case IPR2015-00630, Patent 6,205,411 B1
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`surgery, the planning system is connected to the robot controller
`via a standard serial communication line, and rechristened the
`real time monitor. So that same monitor that was previously used
`to do a CT scan is now the real time monitor.
`Three orthogonal cross-sections through this 3D CT
`data set used to plan the surgery are displayed together with
`corresponding cross-sections of the shape to be cut, just as in
`presurgical planning. So although these are displayed as
`orthogonal images on the screen, they represent 3D data, which is
`all the claim requires. When it refers to a 3D image, it's referring
`to a 3D model. It doesn't have to actually be displayed in 3D. It
`can be displayed in 2D, which is what is often done and done
`here.
`
`JUDGE MEDLEY: Well, the claim also required
`providing a 4D image associated with the cutting tool?
`MR. KREEGER: Yes. That's satisfied as well.
`JUDGE MEDLEY: So could you explain where that is
`satisfied?
`MR. KREEGER: Yes. So for the cutting tool, we have
`what's called a kinematic model. So on page 270 of the
`reference, the robot is described as having a kinematic model
`with detail about how exactly the robot is modeled in multiple
`dimensions.
`You'll see them all listed here at the second column on
`page 268, including multiple dimensions and multiple pitch, yaw
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`and roll. Then it goes on and that is updated over time on page
`270 as part of the independent motion monitoring checks where,
`again, you'll see at the second column in 270 to verify end
`effector motion. They used a digitizer and used that to update
`their image of the tool over time.
`JUDGE MEDLEY: So it's that -- which column are you
`pointing to?
`MR. KREEGER: The second column on page 270 is
`updated over time because they're continuing to monitor end
`effector motion during the course of the surgery.
`JUDGE MEDLEY: Okay. And where do you point
`this out in your petition?
`MR. KREEGER: We do. These are the portions of the
`specification we point to in the petition. I can find --
`JUDGE MEDLEY: Just tell me the page.
`MR. KREEGER: Absolutely, Your Honor. So if you
`look at pages 28 through 30 of the petition and the associated
`references, sometimes those cross reference to other portions, but
`those patients -- those portions describe the 4D element required
`by Claim 24.
`JUDGE MEDLEY: So on page 29 for the 4D image
`associated with the cutting tool, you direct us to 8.2?
`MR. KREEGER: 8.2 and pages 11 to 12 of the petition.
`JUDGE MEDLEY: Well, 11 and 12 you're talking
`about the construction, the term 4D.
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`MR. KREEGER: Right. So 8.2 refers to page 268 of
`the kinematic model and page 270 the mathematical model.
`Those are the two pages I just referenced you to, Your Honor.
`JUDGE MEDLEY: Okay. Thank you.
`MR. KREEGER: Now, I want to turn to the dependent
`claims. Claim 5 specifies that there has to be a control signal
`that's sent to the cutting tool and I've already discussed that.
`That's clearly described by the redundant motion monitoring
`system, which sends that free signal, if the cutting tool strays
`from where it's supposed to go or if the bone moves too far.
`Claim 9 adds that at least one workpiece image is
`registered to the workpiece and at least one cutting tool image is
`registered to the cutting tool. And here Patent Owner contends
`there's no cutting tool image, but, again, that's based on its theory
`that a mathematical model cannot be an image, which even its
`own expert does not agree with. And Taylor clearly discloses a
`mathematical model, the cutting tool which we went through
`before.
`
`Claim 16 requires a collision detection or intersection
`detection. And if we turn to the patent itself, the '582 patent,
`there's some disclosure that explains what's meant by collision
`detection and intersection detection. And if I could direct the
`Board to page -- to column 3 of the patent. Zoom in a little bit.
`At lines 33 through 40 it says, in the disclosed methods
`and systems, identifying the target shape includes classifying
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`voxels. And then it goes on to say, accordingly, providing
`control to the cutting tool can include performing at least one of
`collision detection and intersection detection between at least part
`of the cutting tool and the target shape voxels.
`That's where the patent talks about collision detection
`and intersection detection. And I asked Dr. Cleary, the expert for
`the Patent Owner, about that and here's what he had to say: This
`is Exhibit 1016, the cross examination of Dr. Cleary beginning at
`page 51. And, again, I pointed him to that part of the
`specification and I said, let me point you -- beginning at page 51,
`line 4, so let me point you to column 3 of the patent that describes
`these concepts a little bit. He says yep.
`I said, at line 33 it says, in the disclosed methods and
`systems, identifying the target shape includes classifying voxels
`associated with the workpiece. He's with me. I went on and read
`the sentence I just read you about collision detection and
`intersection detection and I said, do you see that? He said, yes, I
`see that.
`And I said, so when the patent's talking about collision
`detection and intersection detection, it's comparing the cutting
`tool and the target shape, correct? And he said, that's correct.
`And I asked, so when it's looking for a collision, it's looking to
`see whether you're cutting in areas that are not target? And he
`said, yes, I would say that is correct.
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`And I said, all right, with all that -- so with that
`understanding in mind, would you agree that Taylor discloses
`that? And he says, I would say that Taylor does say that he -- it's
`a redundant motion monitoring system, does monitor the cutting
`tool and therefore checks that it doesn't go into a no-fly zone, into
`a zone it doesn't want to go. So I would agree with that.
`So Dr. Taylor agrees that -- I'm sorry, Dr. Cleary agrees
`that Taylor meets this definition and does, in fact, disclose
`collision detection as it's described in the patent.
`Certain other claims, Claim 21 and its dependent claim
`specify classifying, updating and identifying voxels. And, again,
`that's also disclosed in Taylor.
`Taylor describes the voxels as I think we already hit on
`that beginning with the way it scans the patient in a CT scan. It
`does so by starting the CT data in voxels. It says, a CT scanner
`used was of a particular type and the voxel size was as specified,
`so the CT scan data begins as voxels.
`The patent goes on -- I'm sorry, the Taylor article goes
`on in the pin location algorithms to go through and classify
`certain of those voxels as pin voxels and certain of those voxels
`as not pin voxels. And that's, again, on page 266 where it's
`classifying the voxels.
`Taylor then integrates a 3D CAD model of the target
`shape with the CT scan and, again, stored that in voxels. That's
`on page 267 where it talks about the interactive docking
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`Case IPR2015-00629, Patent 6,757,582 B2
`Case IPR2015-00630, Patent 6,205,411 B1
`
`subsystem integrates 3D image display and computer graphics
`techniques to support portioning of a 3D CAD model of the
`prosthetic shape relative to the CT image of the patient's anatomy.
`And then over time those get updated as shown in page
`269 in the intraoperative display discussion where it talks about --
`we read this before, the orthogonal cross-sections through the 3D
`CT data set are used to -- that were used to plan a surgery are
`displayed together with corresponding cross-sections of the shape
`to be cut, just as in presurgical planning.
`So here this 3D data, which was again stored in voxels
`is being displayed to the user. And as each successive cutting
`stroke is made, the robot controller sends short messages to the
`display computer, which changes the colors of the portions of the
`image corresponding to the cutting stroke. So those voxels are
`both displayed and updated as a surgery proceeds.
`Claims 35 and 36 require calibrating a probe. Taylor
`discloses calibrating a robot by placing the ball probe cutter at
`various points and this inherently discloses calibrating a probe.
`That's as we pointed out in our reply brief.
`Okay. I have sort of a laundry list of claims. We have a
`lot of claims in this patent. Let's turn to Claim 3. Claim 3
`specifies a system, according to Claim 1, wherein the cutting tool
`includes one cutting element and where the cutting element
`comprises at least one of a series of possibilities, including a ball
`cutter.
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`Case IPR2015-00629, Patent 6,757,582 B2
`Case IPR2015-00630, Patent 6,205,411 B1
`
`
`And for this reference we used a combination of Taylor
`and Glassman, which is a patent that describes the same Robodoc
`system that's described in Taylor. So it would be natural for one
`of skill in the art to look at both references together, and Patent
`Owner doesn't contend otherwise.
`And Patent Owner's only response to this argument was
`that Glassman supposedly does not disclose tracking the
`workpiece. So they argue that neither Taylor, their article, or
`Glassman, the patent, discloses the tracking -- the workpiece
`limitation. But even under Patent Owner's constrained coordinate
`system limitation or construction, Glassman does, in fact, disclose
`tracking of the workpiece and let me show you about that.
`So if we look --
`JUDGE MEDLEY: You did not rely on Glassman for
`that feature, correct?
`MR. KREEGER: We relied on Glassman in
`combination with Taylor to render it obvious. We didn't rely --
`we relied on -- we didn't call out the portions of Glassman and
`discuss the strain gages, but let me just be clear. There are strain
`gages in Taylor, which we pointed to, which show detect the
`motion.
`
`Glassman also discusses a strain gauge with a little bit
`of additional detail and that additional detail, which makes it clear
`that the strain gauges can actually detect motion in three
`dimensions and, therefore, would meet this coordinate system
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`Case IPR2015-00629, Patent 6,757,582 B2
`Case IPR2015-00630, Patent 6,205,411 B1
`
`limitation if the Board would find it appropriate. And that
`appears at Exhibit 1009, which is Glassman, in column 5 and this
`is called out in our reply brief, so this is not -- I'm not -- this isn't
`the first time we raise this argument.
`So we'll see beginning at line 28, processor 38 monitors
`a bone slippage detector which, in accordance with an aspect of
`the invention, is comprised of strain gages which are physically
`coupled to a tissue, such as a bone, that is being surgically
`altered. The strain gages are disposed to measure in three
`dimensions any displacement of the bone relative to a bone
`fixator.
`
`So these are the same strain gages that we discussed in
`Taylor, but here there's additional detail and it shows that it
`actually -- it doesn't just detect movement in one dimension. It
`detects it in three dimensions.
`And then it goes on to say on line 49, if slippage of the
`bone is detected, at least two options are available. The first
`option would be to recalibrate the system and the second option
`involves a mathematical determination of the amount of bone
`slippage to derive a compensation factor that is applied to
`subsequent robot motions.
`So if the Board were to construe the claims as being
`limited as to a coordinate system, Glassman would meet that
`limitation with Taylor.
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`Case IPR2015-00629, Patent 6,757,582 B2
`Case IPR2015-00630, Patent 6,205,411 B1
`
`
`Now, let's turn to Claim 7. Claim 7 specifies a system
`of -- according to Claim 6 where at least one first marker and at
`least one second marker is either infrared radiofrequency or
`ultrasound. And here we relied on a combination of Taylor and
`the DiGioia reference because DiGioia discloses the markers.
`The Patent Owner argues that adding markers to the
`bone is unnecessary because they already have strain gages to
`detect motion, but there's no reason why you wouldn't have
`redundant motion sensors. I mean, that's what Dr. Cleary agreed
`with when asked about that, that redundant motion sensors are
`completely appropriate.
`And I should point out more generally when it comes to
`the tracking limitation in Taylor, Patent Owner argued that there
`is no reason that -- I'm sorry, that Taylor can't meet the
`requirements because it fixes the bone in place and somehow
`bone fixation is inherently incompatible with an idea of tracking
`the workpiece, but that's not correct and Dr. Cleary agreed on that
`point.
`
`I'm looking at Exhibit 2016. Dr. Cleary is, of course,
`Patent Owner's expert. Beginning at page 65 he was asked, in
`general in robot-assisted surgery, redundant systems for safety are
`important, aren't they? He said, yeah, I think so. And I went on
`to -- he said, you know, I -- thinking off the top of my head, I
`think in the general idea it's a good idea to have redundant safety
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`Case IPR2015-00629, Patent 6,757,582 B2
`Case IPR2015-00630, Patent 6,205,411 B1
`
`systems with robot systems. Sure. I wouldn't trust them on me
`without that.
`And I asked him, so if you were designing a robot
`system such as Taylor which fixed the bone in place, it makes
`sense to develop a system to ensure the bone doesn't move? And
`he answered yes. I think if your assumption is that the bone was
`rigidly attached, you would definitely want to know if the bone
`moves or slips.
`And using a tracker that could be one way to ensure that
`the bone -- that you would detect any motion of the bone,
`wouldn't it? He answered, yeah, I think if you -- and there was an
`objection. If you physically screwed a marker onto the bone and
`were tracking that to see if the marker moved, then that would be
`one way to determine that.
`So the fact that there is a fixed bone in Taylor does not
`make it -- take it outside the scope of the claims.
`How am I doing on time, Your Honor?
`JUDGE MEDLEY: You have about 34 minutes.
`MR. KREEGER: All right. And unless there are
`further questions about the '582, I think I'm going to move to the
`'411.
`
`JUDGE MEDLEY: Okay.
`MR. KREEGER: Can you pass out the binders, please?
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`Case IPR2015-00629, Patent 6,757,582 B2
`Case IPR2015-00630, Patent 6,205,411 B1
`
`
`All right. So now we're moving to the '411 patent. And
`the first issue I want to address is whether the -- what is the status
`of the prior art that we have asserted against this patent?
`As I believe Your Honor knows, the '411 -- the
`reference we're relying on is dated at least as early as 1996. The
`'411 patent is a CIP. It discloses and it refers to a parent
`application, which discloses a preoperative biomechanical
`simulator for use in surgery, and it includes -- the parent includes
`a specific example for a hip surgery.
`The CIP patent discloses all that, but adds an additional
`specific example for knee surgery and a list of particular joints,
`hand, wrist, elbow, shoulder, foot and ankle. So a key issue in
`this case is whether the CIP -- these claims in the CIP application
`at issue is this patent are entitled to the priority of the parent. If
`not, then our art is 102(b) art.
`Well, let's look at those claims. I'm sorry, I've got the
`wrong patent here. Can I have the '411?
`So what's claimed here is an apparatus for facilitating
`the implantation of an artificial component and one of a hip joint,
`a knee joint, a hand and wrist joint, an elbow joint, a shoulder
`joint and a foot and ankle joint comprising two steps. And
`although these specific joints are in the preamble, there's no
`dispute that there are limitations. They provide support for the
`reference to the joint that occurs later in the claim. So in order
`for them -- for the claim to be entitled the benefit of the parent
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`Case IPR2015-00629, Patent 6,757,582 B2
`Case IPR2015-00630, Patent 6,205,411 B1
`
`case, the parent case would have to adequately support all these
`joints.
`
`JUDGE MEDLEY: Is that correct? I mean, if you have
`-- so this is the genus of the species. The species that was in the
`parent is a hip joint and then they also describe it as joint.
`MR. KREEGER: Yes, and they cite some cases about
`species and genus and I was going to get to that. But if they had
`tried to claim joint, we could talk about whether the hip joint is
`representative of that genus, but this is not a genus. This is a list
`of several specific joints.
`And in order to support that, they needed to support
`each of those joints. If they wanted to create a genus that
`encompasses their joint and try to claim that, we'd have a
`different argument. It would be argument of whether the hip is
`really representative of those. But by calling out specifically the
`hand, wrist, elbow, shoulder, they have to support those. That's
`our position, Your Honor, and none of the cases they've cited
`suggest otherwise.
`The Patent Owner argues that the hip joint is
`representative of a larger species, but as I -- a larger genus, and
`that, as I say, might work if they were claiming joint, but that
`doesn't work here.
`The Patent Owner also offers expert testimony that one
`of ordinary skill in the art would have been able to adapt the
`discussion of hip surgery to provide -- to apply to these other
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