Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 40
`Date: January 13, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`IPR2018-01247
`Patent 8,479,969 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 40
`Date: January 13, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`IPR2018-01247
`Patent 8,479,969 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`IPR2018-01247
`Patent 8,479,969 B2
`
`I. INTRODUCTION
`Intuitive Surgical, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 19–26 of U.S. Patent No.
`8,479,969 B2 (Ex. 1001, “the ’969 patent”). Ethicon LLC (“Patent Owner”)
`filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition.
`After the filing of the Petition, Patent Owner filed a statutory disclaimer of
`claim 23. Ex. 2002; see Prelim. Resp. 3–4. In our Decision on Institution
`(Paper 7, “Dec. on Inst.”), we determined that the information presented in
`the Petition and Preliminary Response established a reasonable likelihood
`that Petitioner would prevail in its challenge of claims 19–22 and 24–261 of
`the ’969 patent as unpatentable under 35 U.S.C. § 103 and, accordingly, we
`instituted inter partes review as to those claims. See 35 U.S.C. § 314(a)
`(2012).
`During the course of trial, Patent Owner filed a Patent Owner
`Response (Paper 14, “PO Resp.”), Petitioner filed a Reply to Patent Owner
`Response (Paper 18, “Pet. Reply”), and Patent Owner filed a Sur-reply to
`Petitioner’s Reply (Paper 25, “PO Sur-reply”). A combined hearing for this
`case and related cases IPR2018-01248 and IPR2018-01254 was held on
`October 17, 2019, and a transcript of the hearing is included in the record.
`Paper 37.
`We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden
`of proving unpatentability of the challenged claims, and the burden of
`persuasion never shifts to Patent Owner. To prevail, Petitioner must prove
`
`
`1 In our Decision on Institution, we treated claim 23 as having never been
`part of the ’969 patent and did not institute inter partes review of this claim.
`See Dec. on Inst. 2, n. 1.
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`2
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`Patent 8,479,969 B2
`unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e);
`37 C.F.R. § 42.1(d) (2017).
`This decision is a Final Written Decision under 35 U.S.C. § 318(a) as
`to the patentability of claims 19–22 and 24–26 of the ’969 patent. For the
`reasons discussed below, we hold that Petitioner has demonstrated by a
`preponderance of the evidence that claims 19 and 20 of the ’969 patent are
`unpatentable under § 103(a). We also hold that Petitioner has not
`demonstrated by a preponderance of the evidence that claims 21, 22, and
`24–26 of the ’969 patent are unpatentable under § 103(a).
`
`II. BACKGROUND
`A. The ’969 Patent
`The ’969 patent issued July 9, 2013 from an application filed February
`9, 2012, and claims priority, as a continuation, to an application filed May
`27, 2011, which claims priority, as a continuation-in-part, to an application
`filed January 10, 2007. Ex. 1001, codes (45), (22), (63).2 The ’969 patent is
`titled “Drive Interface for Operably Coupling a Manipulatable Surgical Tool
`to a Robot,” and generally relates to endoscopic surgical instruments. Id. at
`code (54), 1:54–57. The ’969 patent summarizes its disclosure as
`encompassing a surgical instrument “for use with a robotic system that has a
`control unit and a shaft portion,” which together with an electrically
`conductive elongated member, “transmit[s] control motions from the robotic
`system to an end effector.” Id. at code (57). Figure 26 of the ’969 patent is
`reproduced below:
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. § 100 et seq. effective on March 16, 2013. Because the ’969 patent
`issued from an application filed before March 16, 2013, we apply the pre-
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`Figure 26 depicts “a perspective view of a surgical tool embodiment
`of the present invention.” Id. at 5:19–20. Figure 26 illustrates surgical tool
`1200 with end effector 2012, elongated shaft assembly 2008, and
`articulation joint 2011. Id. at 24:66–25:5. The ’969 patent describes that
`surgical tool 1200 is coupled to a robotic manipulator (not shown) by tool
`mounting portion 1300. Id. at 25:5–7.
`Figure 31 of the ’969 patent is reproduced below:
`
`
`AIA versions of the statutory bases for unpatentability.
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`Figure 31 depicts “a partial bottom perspective view of the surgical
`tool embodiment of FIG. 26.” Id. at 5:27–28. Figure 31 illustrates that “tool
`mounting portion 1300 includes a tool mounting plate 1302 that operably
`supports a plurality of (four are shown in FIG. 31) rotatable body portions,
`driven discs or elements 1304, that each include a pair of pins 1306 that
`extend from a surface of the driven element 1304.” Id. at 25:11–16. Figure
`31 further depicts that “[i]nterface 1230 includes an adaptor portion 1240
`that is configured to mountingly engage the mounting plate 1302.” Id. at
`25:19–22. The ‘969 patent describes that “adapter portion 1240 generally
`includes a tool side 1244 and a holder side 1246.” Id. at 25:30–31.
`Figure 27 of the ’969 patent is reproduced below:
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`Patent 8,479,969 B2
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`Figure 27 depicts “an exploded assembly view of an adapter and tool
`holder arrangement for attaching various surgical tool embodiments to a
`robotic system.” Id. at 5:21–23. More particularly, Figure 27 illustrates that
`tool drive assembly 1010 “is operatively coupled to a master controller
`1001.” Id. at 24:62–66.
`
`
`B. The Challenged Claims
`Petitioner challenges claims 19–22 and 24–26 of the ’969 patent.
`
`Challenged claims 19, 21, and 24 are independent. Claim 20 ultimately
`depends from claim 19, claim 22 ultimately depends from claim 21, and
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`Patent 8,479,969 B2
`claims 25 and 26 ultimately depend from claim 24. Claims 19 and 24 are
`illustrative and are reproduced below:
`19.
` A surgical tool for use with a robotic system that has a
`tool drive assembly that is operatively coupled to a control unit
`of the robotic system that is operable by inputs from an operator
`and is configured to provide at least one rotary output motion to
`at least one rotatable body portion supported on the tool drive
`assembly, said surgical tool comprising:
`
`a surgical end effector comprising:
`
` a surgical staple cartridge; and
` a cutting instrument that is axially movable within said
`surgical staple cartridge between a starting position and
`an ending position in response to control motions
`applied thereto and wherein said surgical tool further
`comprises:
`an elongated shaft assembly operably coupled to said
`surgical end effector, said elongated shaft assembly
`comprising at least one gear-driven portion comprising
`a knife bar that is movably supported within said
`elongated shaft assembly for selective axial travel
`therein, said knife bar interfacing with said cutting
`instrument;
`a tool mounting portion operably coupled to said
`elongated shaft assembly, said tool mounting portion
`being configured to operably interface with the tool
`drive assembly when coupled thereto, said tool
`mounting portion comprising:
`a driven element rotatably supported on said tool
`mounting portion and configured for driving
`engagement with a corresponding one of the at least
`one rotatable body portions of the tool drive
`assembly to receive corresponding rotary output
`motions therefrom; and
`a transmission assembly in operable engagement with
`said driven element and in meshing engagement
`with the knife bar to apply actuation motions thereto
`to cause said knife bar to apply at least one control
`motion thereto.
`
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`Patent 8,479,969 B2
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`Ex. 1001, 93:25–56.
`
`24. A surgical tool for use with a robotic system that has a tool
`drive assembly that is operatively coupled to a control unit of the
`robotic system that is operable by inputs from an operator and is
`configured to provide at least one rotary output motion to at least
`one rotatable body portion supported on the tool drive assembly,
`said surgical tool comprising:
`a surgical end effector comprising at least one component
`portion that is selectively movable between first and
`second positions relative to at least one other
`component portion thereof in response to control
`motions applied to said selectively movable component
`portion;
`an elongated shaft assembly defining a longitudinal tool
`axis and comprising:
` a distal spine portion operably coupled to said end
`effector; and
` a proximal spine portion pivotally coupled to said distal
`spine portion at an articulation joint to facilitate
`articulation of said surgical end effector about an
`articulation axis that is substantially transverse to said
`longitudinal tool axis; and
` at least one gear-driven portion that is in operable
`communication with said at least one selectively
`movable component portion of said surgical end
`effector and wherein said surgical
`tool further
`comprises:
`to a
` a
`tool mounting portion operably coupled
`proximal[3] end of said proximal spine portion, said
`tool mounting portion being configured to operably
`interface with the tool drive assembly when coupled
`thereto, said tool mounting portion comprising:
`
`
`3 A Certificate of Correction, mailed January 23, 2018, deleted the term
`“distal” here in claim 24 of the ’969 patent, and inserted in its place the term
`“proximal.” Ex. 1002, 686.
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` a driven element rotatably supported on said tool
`mounting portion and configured
`for driving
`engagement with a corresponding one of the at least
`one rotatable body portions of the tool drive assembly
`to receive corresponding rotary output motions
`therefrom; and
`a transmission assembly in operable engagement with said
`driven element and in meshing engagement with a
`corresponding one of said at least one gear-driven
`portions to apply actuation motions thereto to cause
`said corresponding one of said at least one gear driven
`portions to apply at least one control motion to said
`selectively movable component.
`
`
`Id. at 95:35–96:14.
`
`C. Related Proceedings
`The parties indicate that the ’969 patent is involved in Ethicon LLC v.
`Intuitive Surgical, Inc., No. 1:17-cv-00871 in the United States District
`Court for the District of Delaware (“the Delaware litigation”).4 Pet. 6; Paper
`4, 2.
`
`Petitioner is also challenging the ’969 patent as well as other related
`patents in the following proceedings before the Board: (1) Case No.
`IPR2018-00933 (the ’601 patent); (2) Case No. IPR2018-00934 (the ’058
`patent); (3) Case No. IPR2018-00938 (the ’874 patent); (4) Case Nos.
`IPR2018-01248 and IPR2018-01254 (the ’969 patent); (5) Case No.
`IPR2018-00936 (the ’658 patent); (6) Case No. IPR2018-01703 (the ’431
`
`
`4 Patent Owner contends that U.S. Patent Nos. 9,585,658 B2 (“the ’658
`patent”), 8,616,431 B2 (“the ’431 patent”), 9,113,874 B2 (“the ’874
`patent”), 9,113,874 B2 (“the ’874 patent”), 9,084,601 B2 (“the ’601
`patent”), and 8,998,058 B2 (“the ’058 patent”) are also asserted in the
`Delaware litigation. Paper 4, 2–3
`
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`Patent 8,479,969 B2
`patent); and (7) Case No. IPR2019-00880 (U.S. Patent No. 7,490,749).
`
`D. Real Parties in Interest
`Petitioner identifies itself as the only real party in interest. Pet. 1.
`Patent Owner identifies itself as a real party in interest. Paper 4, 2. Patent
`Owner indicates that it is “an indirect subsidiary of Johnson & Johnson.” Id.
`
`E. Evidence Relied Upon
`Petitioner relies on the following references in asserting that claims
`19–22 and 24–26 of the ’969 patent are unpatentable:
`
`Reference
`
`Exhibit No.
`
`U.S. Patent No. 6,699,235 B2 issued Mar. 2, 2004
`(“Wallace”)
`
`U.S. Patent No. 6,783,524 B2 issued Aug. 31, 2004
`(“Anderson”)
`
`U.S. Patent No. 7,510,107 B2 issued Mar. 31, 2009
`(“Timm”)
`
`U.S. Patent No. 5,465,895 issued Nov. 14, 1995 (“Knodel”)
`
`U.S. Patent No. 5,954,259 issued Sept. 21,1999 (“Viola”)
`
`1008
`
`1010
`
`1011
`
`1012
`
`1013
`
`F. Instituted Grounds of Unpatentability
`We instituted review of claims 19–22 and 24–26 of the ’969 patent
`based on the following asserted grounds of unpatentability. Pet. 1–91.
`
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`References
`Anderson, Timm
`Anderson, Timm, Wallace
`Anderson, Knodel
`Anderson, Viola
`
`35.
`U.S.C. §
`103
`103
`103
`103
`
`Claims Challenged
`
`24
`25, 26
`19, 20
`21, 22
`
`In support of its asserted grounds of unpatentability, Petitioner relies
`on the testimony of its expert witness, Dr. Bryan Knodel. Ex. 1004
`(“Knodel Decl.”); Ex. 1017 (“Knodel Supp. Decl.”). In support of its
`response, Patent Owner relies on the testimony of its expert witness, Dr.
`Shorya Awtar. Ex. 2006 (“Awtar Decl.”). Patent Owner also relies on the
`testimony of Dr. Elliott Fegelman. Ex. 2007 (“Fegelman Decl.”). Dr.
`Knodel and Dr. Awtar were both cross-examined. See Ex. 1019 (deposition
`transcript of Dr. Shorya Awtar, “Awtar Dep. I”); Ex. 2010 (deposition
`transcript of Dr. Bryan Knodel, “Knodel Dep.”).
`
`III. ANALYSIS
`A. Claim Construction
`In an inter partes review filed before November 13, 2018, such as this
`one, a claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.5
`37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`
`5 This Petition was filed before the effective date of the amendment to 37
`C.F.R. § 42.100 that changed the claim construction standard applied in inter
`partes reviews. See Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R.
`§ 42.100(b) effective November 13, 2018). Thus, we use the broadest
`reasonable interpretation claim construction standard for this proceeding.
`
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`Patent 8,479,969 B2
`2144–46 (2016) (upholding the use of the broadest reasonable interpretation
`standard). Consistent with the broadest reasonable construction, 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). The presumption may be overcome by providing a definition of the
`term in the specification with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
`absence of such a definition, limitations are not to be read from the
`specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993). Only those terms that are in controversy need be
`construed, and only to the extent necessary to resolve the controversy. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999);
`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter
`partes review).
`Here, neither Petitioner nor Patent Owner identifies terms for
`construction or provides any proposed constructions. Pet. 10; PO Resp. 12;
`see generally Pet. Reply. Instead, the parties agree that the challenged
`claims of the ’969 patent should be construed according to their broadest
`reasonable interpretation. Pet. 10; PO Resp. 12. We determine that no claim
`term needs express interpretation. See Vivid Techs., 200 F.3d at 80 (“[O]nly
`those terms need be construed that are in controversy, and only to the extent
`
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`Patent 8,479,969 B2
`necessary to resolve the controversy.”).
`
`B. Level of Ordinary Skill in the Art
`Petitioner’s expert, Dr. Knodel, testifies the following in connection
`with the level of ordinary skill in the art:
`A person of ordinary skill in the art at the time of the
`alleged invention (“POSITA”) would have had the equivalent of
`a Bachelor’s degree or higher in mechanical engineering with at
`least 3 years working experience in the design of comparable
`surgical devices. Additional education in a relevant field, such
`as mechanical engineering or robotics (to the extent pertinent),
`or industry experience may compensate for a deficit in one of the
`other aspects of the requirements stated above.
`Ex. 1004 ¶ 24.
`Patent Owner does not appear to dispute Petitioner’s definition of one
`of ordinary skill in the art. See generally PO Resp. Neither party argues that
`the outcome of this case would differ based on our adoption of any particular
`definition of one of ordinary skill in the art. In light of the record now
`before us, we adopt Petitioner’s definition of one of ordinary skill in the art.
`The level of ordinary skill in the art is consistent with the references
`themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001) (“[T]he absence of specific findings on the level of skill in the art does
`not give rise to reversible error ‘where the prior art itself reflects an
`appropriate level and a need for testimony is not shown.’”); In re GPAC
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent
`Appeals and Interferences did not err in concluding that the level of ordinary
`skill in the art was best determined by the references of record).
`
`C. Post-Institution Summary
`In our Decision on Institution, we concluded that the arguments and
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`evidence advanced by Petitioner demonstrated a reasonable likelihood that:
`(1) claim 24 of the ’969 patent is unpatentable under 35 U.S.C. § 103(a) over
`Anderson and Timm; (2) claims 25 and 26 of the ’969 patent are
`unpatentable under 35 U.S.C. § 103(a) over Anderson, Timm, and Wallace;
`(3) claims 19 and 20 of the ’969 patent are unpatentable under 35 U.S.C.
`§ 103(a) over Anderson and Knodel; and (4) claims 21 and 22 of the ’969
`patent are unpatentable under 35 U.S.C. § 103(a) over Anderson and Viola.
`Dec. on Inst. 11–45.
`We must now determine whether Petitioner has established by a
`preponderance of the evidence that the specified claims are unpatentable
`over the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent
`Owner that “any arguments for patentability not raised in the [Patent Owner
`Response] will be deemed waived.” Paper 8, 5; see also In re NuVasive,
`Inc., 842 F.3d 1376, 1379–1382 (Fed. Cir. 2016) (holding patent owner
`waived argument addressed in preliminary response by not raising argument
`in the patent owner response); 37 C.F.R. § 42.23(a) (“Any material fact not
`specifically denied may be considered admitted.”). Additionally, the
`Board’s Trial Practice Guide states that the patent owner response “should
`identify all the involved claims that are believed to be patentable and state
`the basis for that belief.” Patent Trial and Appeal Board Consolidated Trial
`Practice Guide 66 (Nov. 2019), available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
`
`D. Ground 2: Claim 24 – Obviouness over Anderson and Timm6
`Petitioner contends that claim 24 would have been obvious over
`
`
`6 We begin our analysis with Ground 2 because Ground 1, as asserted in the
`Petition, challenged disclaimed claim 23 and, thus, is not addressed in the
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`Anderson and Timm. Pet. 29–56.
`
`1. Principles of Law
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, objective indicia of non-obviousness (i.e.,
`secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). We analyze this asserted ground based on obviousness with the
`principles identified above in mind.7
`
`2. Overview of Anderson (Ex. 1010)
`Anderson is titled “Robotic Surgical Tool with Ultrasound
`Cauterizing and Cutting Instrument.” Ex. 1010, code (54). Anderson’s
`Abstract reads in part as follows:
`A surgical instrument for enhancing robotic surgery
`generally includes an elongate shaft with an ultrasound probe, an
`end effector at the distal end of the shaft, and a base at the
`proximal end of the shaft. The end effector includes an
`ultrasound probe tip and the surgical instrument is generally
`configured for convenient positioning of the probe tip within a
`surgical site by a robotic surgical system. Ultrasound energy
`
`Decision.
`7 We note that the record does not contain any evidence or argument directed
`to objective indicia of non-obviousness.
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`delivered by the probe tip may be used to cut, cauterize, or
`achieve various other desired effects on tissue at a surgical site.
`In various embodiments, the end effector also includes a gripper,
`for gripping tissue in cooperation with the ultrasound probe tip.
`The base is generally configured to removably couple the
`surgical instrument to a robotic surgical system and to transmit
`forces from the surgical system to the end effector, through the
`elongate shaft.
`Id. at code (57). Figure 2 of Anderson is reproduced below.
`
`
`Figure 2 depicts a perspective view of a robotic surgical tool that may
`be used with a robotic surgical system according to the present invention.
`Id. at 8:30–31. More particularly, Figure 2 illustrates a surgical instrument
`28, which “includes an elongate shaft 28.1 having a proximal end 33 and a
`distal end 31, a pivot 32 and end effector 38 disposed at the distal end, and
`an instrument base 34 disposed at the proximal end.” Id. at 11:32–36.
`Anderson further discloses:
`Base 34 is generally configured to releasably engage a robotic
`surgical system, such as robotic surgical system 10 in FIG. 1. In
`general, instrument 28 is engaged with system via base 34 (base
`not shown in FIG. 1) such that instrument 28 is releasably
`mountable on a carriage 37 which can be driven to translate along
`a linear guide formation 38 of the arm 26 in the direction of
`arrows P.
`Id. at 11:36–42.
`Figure 10 of Anderson is reproduced below.
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`Figure 10 depicts a perspective view of a distal portion of a robotic
`surgical tool according to the present invention. Ex. 1010, 8:58–60. More
`particularly, Figure 10 illustrates a distal portion of a robotic surgical
`instrument 80, which “includes a shaft 84, covered by a sheath 86, with an
`end effector 81 at the distal end of shaft 84. End effector 81 includes a
`gripper 82 hingedly attached to shaft 84 at a hinge 83.” Id. at 15:29–55.
`Figures 14A and 14B of Anderson are reproduced below.
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`Figures 14A and 14B depict a top view and side view, respectively, of
`a tool base according to the present invention. Id. at 9:15–18. More
`particularly, Figures 14A and 14B illustrate tool base 90 including one or
`more “drive shafts 144 for coupling pulleys with a robotic surgical system.”
`Id. at 17:10–13. Anderson discloses that “gripper 82 of end effector 81 is
`movable by one or more actuator rods housed within shaft 86” and “force for
`actuating the rod is supplied by actuator spool 95 which engages an interface
`member (not shown) on a robotic surgical system.” Id. at 16:62–66.
`Anderson also describes that force for actuating the one or more rods may be
`provided alternatively by “a gear train or other mechanical transmission
`means, e.g., a right-angled helical gear pair, may be used to rotationally
`couple the interface member 344 with the receiver 335.” Id. at 23:26–30.
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`3. Overview of Timm (Ex. 1011)
`Timm is titled “Cable Driven Surgical Stapling and Cutting
`Instrument with Apparatus for Preventing Inadvertent Cable
`Disengagement.” Ex. 1011, code (54). Timm’s Abstract reads as follows:
`A cable driven surgical instrument that has an elongate
`channel assembly that is constructed to operably support a staple
`cartridge assembly therein. The instrument may have a knife
`assembly that is oriented for travel within the elongate channel
`assembly and at least one cable transition support that is operably
`mounted to at least one of the elongate channel assembly and the
`knife assembly. A drive cable operably extends around at least
`a portion of the cable transition support and interfaces with a
`cable drive system to drive the knife assembly within the
`elongate channel. A cable retention arrangement may be
`included for retaining the drive cable around at least a portion of
`the cable transition support.
`Id. at code (57). Figure 1 of Timm is reproduced below.
`
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`Figure 1 depicts “a perspective view of a surgical stapling and
`severing instrument.” Id. at 3:1–3. More particularly, Figure 1 depicts that
`surgical instrument 1
`may include a housing 3 that has distal and proximal ends 4 and
`6, respectively, an elongated shaft 20 mounted to housing 3,
`preferably to its distal end 4, and a handle assembly generally
`designated as 5. Shaft 20 may have a distal end 20a to which
`may be operatively attached by attachment mechanism 20b to a
`disposable loading unit 10. As also shown in FIG. 1, disposable
`loading unit (DLU) 10 may comprise a tool assembly 100 and a
`shaft connector portion 20c which may be pivotally and
`operatively attached to each other through connector mechanism
`C.
`Id. at 7:49–58. Timm discloses “[a] handle assembly for actuating the
`approximation member(s) can be selected from a variety of actuating
`mechanisms including toggles, rotatable and slideable knobs, pivotable
`levers or triggers, and any combination thereof.” Id. at 11:64–12:1. To
`accomplish this, Timm describes that proximal end 24 of its shaft “can be
`permanently or removably associated with a handle or other actuating
`assemblies of a manually (or other, e.g., robotic or computer) operated open
`or endoscopic surgical stapler 1.” Id. at 8:3–8; see also id. at 12:1–3, 28:45–
`49.
`
`Discussion
`4.
`Petitioner contends that claim 24 of the ’969 patent would have been
`obvious in view of the combined teachings of Anderson and Timm. Pet. 29–
`56. We have reviewed the Petition, Patent Owner Response, Petitioner
`Reply, Patent Owner Sur-reply, as well as the relevant evidence discussed in
`those papers and other record papers, and as discussed in greater detail
`below, we determine that Petitioner has failed to make the requisite showing
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`to support its contention that claim 24 of the ’969 patent would have been
`obvious in view of the combined teachings of Anderson and Timm.
`
`Petitioner’s Contentions
`5.
`The preamble8 of independent claim 24 sets forth
`[a] surgical tool for use with a robotic system that has a tool drive
`assembly that is operatively coupled to a control unit of the
`robotic system that is operable by inputs from an operator and is
`configured to provide at least one rotary output motion to at least
`one rotatable body portion supported on the tool drive assembly.
`Ex. 1001, 95:35–40. Petitioner asserts that Anderson discloses a surgical
`instrument that is “configured to releasably engage a robotic surgical
`system.” Pet. 32; see also id. at 13 (citing Ex. 1010, 16:7–23; 11:32–42;
`10:65–11:31; 4:7–11, Fig. 2; Ex. 1004 ¶¶ 47–51). Petitioner asserts that
`Anderson discloses that “‘surgical work station’ 20 (which includes the tool
`drive assembly) [is] operatively coupled to ‘control station 12,’” and is
`“operable [using] inputs from ‘a surgeon or other user.’” Pet. 32; see also
`id. at 13–15 (citing Ex. 1010, 10:21–64, 10:40–64, 11:59–65, 5:61–6:8, Fig.
`1; Ex. 1004 ¶¶ 47–51). Petitioner provides the following Figure 3 of
`Anderson, annotated to show shafts 70.1, 72.1, 74.1, and 76.1:
`
`
`8 We need not decide whether the preamble of claim 24 is limiting for
`purposes of this Decision, because Petitioner has shown that the cited art
`teaches the preamble.
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`
`Figure 3 is a “perspective illustration of [Anderson’s] robotic surgical
`tool . . . with a cover of a tool base removed to show internal structures of
`the tool base.” Ex. 1010, 8:33–35. Petitioner explains that “[t]he engaging
`members of the robotic arm assembly receive rotary motion from ‘actuators’
`such as ‘electric motors or the like, to cause selective angular displacement
`of each engaging member’ to cause ‘angular displacement’ (e.g., rotation) of
`the spools or gears mounted on the rotatable shafts within the base 34.” Pet.
`15 (citing Ex. 1010, 11:66–12:22, code (57), Fig. 3; Ex. 1004 ¶ 51); see also
`Pet. 32.
`Petitioner also explains how Anderson and Timm account for each of:
`(1) an “end effector . . . that is selectively movable . . . relative to at least one
`other component portion thereof in response to control motions applied to
`said selectively movable component portion” (Pet. 32–34); (2) “an elongated
`shaft . . . comprising: a distal spine portion operably coupled to said end
`effector; and a proximal spine portion pivotally coupled to said distal spine
`portion at an articulation joint” (id. at 34–39); (3) “at least one gear-driven
`portion that is in operable communication with said at least one selectively
`movable component portion” (id. at 39–51); (4) “a tool mounting portion
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`operably coupled to a [proximal]9 end of said proximal spine portion . . . to
`operably interface with the tool drive assembly” (id. at 51–52); (5) “a driven
`element rotatably supported on said tool mounting portion and configured
`for driving engagement with a corresponding one of the at least one rotatable
`body portions of the tool drive assembly to receive corresponding rotary
`output motions therefrom” (id. at 52–54); and, finally, (6) “a transmission
`assembly in operable engagement with said driven element and in meshing
`engagement with a corresponding one of said at least one gear-driven
`portions to apply actuation motions thereto to cause said corresponding one
`of said at least one gear-driven portions to apply at least one control motion
`to said selectively movable component” (id. at 54–56).
`In connection with the requirement noted above of “a proximal spine
`portion pivotally coupled to said distal spine portion at an articulation joint
`to facilitate articulation of said surgical end effector,” Petitioner further
`asserts that Timm discloses an articulating surgical stapler. Pet. 30, 34–39
`(citing Ex. 1011, 2:25–55, 1:42–53, 22:56–65; 9:2–4, code (57), Figs. 1, 52).
`Petitioner explains that “[a] POSITA would have been motivated to use
`Timm’s end effector with Anderson for several reasons.” Pet. 31–32, 38–39
`(citing Ex. 1010, 6:43–54, 7:15–23, 9:12–21, 11:59–65; Ex. 1011, 8:3–16;
`13:4–26, 28:41–29:3; 35:36–63; Ex. 1004 ¶¶ 75–83, 89–91). For example,
`Petitioner contends that “a POSITA would have recognized that such a
`configuration would provide ‘the ability to articulate in multiple directions
`relative to the proximal spine segment,’ thereby allowing a surgeon to better
`
`
`9 As noted above, on January 23, 2018, the PTO entered a Cert
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