IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Shelton, IV
`In re Patent of:
`
`8,479,969
`U.S. Pat. No.:
`July 9, 2013
`Issue Date:
`Appl. Serial No.: 13/369,609
`Filing Date:
`Feb. 9, 2012
`Title:
`DRIVE INTERFACE FOR OPERABLY COUPLING A
`MANIPULATABLE SURGICAL TOOL TO A ROBOT
`
`
`
`Attorney Docket No.: 11030-0049IP5
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,479,969
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`TABLE OF CONTENTS
`
`I.
`INTRODUCTION ........................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8 .................................... 4
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................... 4
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ........................................... 4
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ...................... 4
`D. Service Information .................................................................................... 4
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 5
`III.
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 5
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) .................................. 5
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ................. 5
`SUMMARY OF THE ’969 PATENT ............................................................. 6
`V.
`VI. PROSECUTION HISTORY ........................................................................... 8
`VII. PRIORITY DATE ........................................................................................... 9
`VIII. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3) .................. 10
`IX. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’969 PATENT IS UNPATENTABLE .................... 10
`A. Ground 1: Claim 23 Would Have Been Obvious Under § 103 over
`Anderson in View of Cooper .................................................................... 10
`B. Ground 2: Claim 24 Would Have Been Obvious Under § 103 over
`Anderson in View of Timm ...................................................................... 29
`C. Ground 3: Claims 25-26 Would Have Been Obvious Under § 103
`over Anderson in View of Timm and Wallace ........................................ 57
`D. Ground 4: Claims 19-20 Would Have Been Obvious Under § 103
`over Anderson in View of Knodel ........................................................... 65
`E. Ground 5: Claims 21-22 Would have Been Obvious Under § 103
`over Anderson in View of Viola .............................................................. 79
`CONCLUSION .............................................................................................. 92
`
`X.
`
`i
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`
`EXHIBITS
`
`U.S. Pat. No. 8,479,969 to Shelton, IV (“the ’969 Patent”)
`
`Prosecution History of the ’969 Patent (Serial No. 13/369,609)
`
`Reserved
`
`Declaration of Dr. Bryan Knodel (Anderson as Primary
`Reference)
`
`Reserved
`
`Reserved
`
`U.S. Patent No. 6,817,974 to Cooper et al. (“Cooper”)
`
`U.S. Patent No. 6,699,235 to Wallace et al. (“Wallace”)
`
`U.S. Patent No. 6,331,181 to Tierney et al. (“Tierney”)
`
`U.S. Patent No. 6,783,524 to Anderson et al. (“Anderson”)
`
`U.S. Patent No. 7,510,107 to Timm et al. (“Timm”)
`
`U.S. Patent No. 5,465,895 to Knodel et al. (“Knodel”)
`
`U.S. Patent No. 5,954,259 to Viola et al. (“Viola”)
`
`U.S. Patent App. No. 2008/0167672 to Giordano et al.
`(“Giordano”)
`
`
`
`
`
`
`
`
`
`
`
`
`IS1001
`
`IS1002
`
`IS1003
`
`IS1004
`
`IS1005
`
`IS1006
`
`IS1007
`
`IS1008
`
`IS1009
`
`IS1010
`
`IS1011
`
`IS1012
`
`IS1013
`
`IS1014
`
`
`
`ii
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`
`I.
`
`INTRODUCTION
`Intuitive Surgical, Inc. (“Petitioner”) petitions for Inter Partes Review
`
`(“IPR”) of claims 19-26 of U.S. Patent 8,479,969 (“the ’969 Patent”). The ’969
`
`Patent is entitled “Drive Interface for Operably Coupling a Manipulatable Surgical
`
`Tool to a Robot.” Drive interfaces for surgical robots were well-known in the prior
`
`art. In fact, the ’969 Patent incorporates by reference, and largely copies, the prior
`
`art drive interfaces of Petitioner:
`
`[T]he tool arrangement described above may be well-suited for use with
`those robotic systems manufactured by Intuitive Surgical, Inc. of
`Sunnyvale, Calif., U.S.A., many of which may be described in detail in
`various patents incorporated herein by reference. The unique and novel
`aspects of various embodiments of the present invention serve to utilize
`the rotary output motions supplied by the robotic system to generate
`specific control motions….
`IS1001, 31:56-59.1
`
`Indeed, the Anderson reference, which serves as the basis for all Grounds in
`
`this petition, is a prior art patent assigned to Petitioner that discloses a robotic
`
`surgical system of the type described in the ’969 Patent. The prior art Anderson
`
`system is specifically designed to interface with a variety of surgical instruments,
`
`including those described in the ’969 Patent, such as surgical staplers, tissue
`
`graspers, and tissue cutters. IS1010, 7:6-25; 11:32-65; 16:25-36; FIGs. 2-3; 12A-
`
`
`1 Emphasis in quotations added throughout unless otherwise stated.
`
`1
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`D. The robotic surgical system described in the ’969 Patent is uncannily similar to
`
`Petitioner’s robotic surgical system described in the prior art Anderson patent:
`
`Robotic Controller
`
`’969 Patent
`
`Anderson
`
`
`
`Robotic Manipulator
`
`’969 Patent
`
`Anderson
`
`
`
`2
`
`
`
`
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`Surgical Tool With Proximal Tool Holder
`
`’969 Patent
`
`Anderson
`
`
`
`
`
`Not only did the ’969 Patent incorporate Petitioner’s prior art disclosures
`
`into its patent, but the applicant originally drafted claims that read directly on
`
`Petitioner’s prior art patents. Specifically, the originally-filed independent claims
`
`were rejected as anticipated and obvious over Petitioner’s prior art “Tierney”
`
`reference (U.S. Patent No. 6,331,181). IS1002, 280-284; IS1009 (“Tierney”).
`
`The applicant then amended the claims, adding details it contended were not
`
`disclosed in Tierney. However, the details supposedly absent from Tierney were
`
`well-known in Petitioner’s prior art surgical patents, as exemplified by Anderson
`
`and Cooper, and in the other references relied upon in this Petition. IS1004, ¶27.
`
`Anderson in combination with Cooper renders at least the challenged claims
`
`invalid as obvious. Petitioner requests IPR of the challenged claims on Grounds 1-
`
`5 below.
`
`3
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Intuitive Surgical, Inc. is the real party-in-interest. No other party had
`
`access to the Petition, and no other party had any control over, or contributed to
`
`any funding of, the preparation or filing of the present Petition.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The ’969 Patent is the subject of Civil Action No. 1:17-cv-00871-LPS, filed
`
`on June 30, 2017, in the United States District Court for the District of Delaware.
`
`Concurrently with this petition, Petitioner is filing two more IPR petitions related
`
`to the ’969 Patent directed to different sets of claims, different statutory bases,
`
`and/or different primary references.
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`Steven R. Katz, Reg. No. 43,706
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 617-542-5070 / Fax: 877-769-7945
`
`BACK-UP COUNSEL
`John C. Phillips, Reg. No. 35,322
`Tel: 858-678-5070
`Ryan P. O’Connor, Reg. No. 60,254
`Tel: 858-678-5070
`
`D.
`Service Information
`Please address all correspondence to the address above. Petitioner consents
`
`to electronic service by email at IPR11030-0049IP5@fr.com (referencing No.
`
`11030-0049IP5 and cc’ing PTABInbound@fr.com, katz@fr.com, phillips@fr.com,
`
`4
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`
`and oconnor@fr.com).
`
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103
`Petitioner authorizes the Office to charge Deposit Account No. 06-1050 for
`
`the petition fee set in 37 C.F.R. § 42.15(a) and for any other required fees.
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’969 Patent is available for IPR, and Petitioner is
`
`not barred or estopped from requesting IPR.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`Petitioner requests IPR of claims 19-26 of the ’969 Patent on the grounds
`
`listed below. A declaration from Dr. Bryan Knodel (IS1004) is provided in
`
`support.
`
`Grounds
`
`Claims
`
`Basis for Rejections under 35 U.S.C. § 103
`
`Ground 1
`
`Ground 2
`
`23
`
`24
`
`Ground 3
`
`25-26
`
`Ground 4
`
`19-20
`
`Ground 5
`
`21-22
`
`Obvious over Anderson (U.S. 6,783,524) in view
`of Cooper (U.S. 6,817,974)
`
`Obvious over Anderson in view of Timm (U.S.
`7,510,107)
`
`Obvious over Anderson in view of Timm and
`Wallace (U.S. 6,699,235)
`
`Obvious over Anderson in view of Knodel (U.S.
`5,465,895)
`Obvious over Anderson in view of Viola (U.S.
`5,954,259)
`
`5
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`Anderson, Cooper, Timm, Wallace, Knodel, and Viola each qualify as prior
`
`art under at least 35 U.S.C. § 102(b) because they are all patents that issued more
`
`than one year before May 27, 2011, the earliest priority date for the challenged
`
`claims (as explained below).
`
`The published application related to the Anderson patent was cited during
`
`prosecution but never discussed by the examiner or applicant. IS1002, 280-285.
`
`Cooper, Timm, Wallace, Knodel, and Viola were each made of record during
`
`prosecution as part of an 82-page IDS that listed over 2,000 references. IS1002,
`
`357-438. None of these references were substantively addressed or cited in any
`
`office action during prosecution. IS1002, 280-285. Additionally, the
`
`combinations presented here were not considered by the examiner.
`
`V.
`
`SUMMARY OF THE ’969 PATENT
`The ’969 Patent contains subject matter related to both hand-held surgical
`
`instruments and robotic surgical instruments, but the claims all relate to the robotic
`
`embodiments. The title also makes this clear: “DRIVE INTERFACE FOR
`
`OPERABLY COUPLING A MANIPULATABLE SURGICAL TOOL TO A
`
`ROBOT.” IS1001, Title; 11:12-42; 23:50-24:39. The disclosed robotic surgical
`
`system includes the typical and expected components, such as a “master controller
`
`and robotic arm cart” with a “tool drive assembly” including multiple rotary drive
`
`members (referred to as “rotatable body portions” in the claims) that control
`
`6
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`surgical tools. IS1001, 23:50-62; 24:62-25:29; FIGs. 26-27. Each of these
`
`components was copied from Petitioner’s prior art patents. For example, the tool
`
`drive assembly of the ’969 Patent is found in the prior art Tierney patent (IS1009).
`
`’969 Patent
`
`Prior Art Tierney Reference
`
`The tool drive assembly on the robotic arm drives driven disks on an
`
`adapter, which in turn, drives driven disks on the attached surgical tool itself. This
`
`robotic drive interface was copied from Petitioner as well:
`
`
`
`7
`
`

`

`’969 Patent
`
`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`Prior Art Tierney Reference
`
`
`
`
`
`Driven disks
`
`
`
`
`Each challenged claim adds to this prior art robotic interface details that, as
`
`shown in this petition, relate to well-known prior art surgical tool structures, such
`
`as tube gears for rotating end effectors, articulation joints for articulating end
`
`effectors, and gear-driven structures for driving a knife through a surgical stapler.
`
`
`
`As demonstrated below, none of these features was novel as of the filing of
`
`the ’969 Patent or the parent application to which the ’969 Patent claims priority.
`
`VI. PROSECUTION HISTORY
`During prosecution, the USPTO issued a single office action rejecting the
`
`broad independent claims, but indicated that two independent picture claims and a
`
`variety of dependent claims contained allowable subject matter. IS1002, 280-284.
`
`The broad claims were rejected over Petitioner’s Tierney patent. IS1009
`
`(Tierney); IS1002, 280-284. The applicant subsequently amended the independent
`
`claims to include subject matter deemed allowable and added new dependent
`
`8
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`claims containing the allowable subject matter of original dependent claim 7
`
`(issued claim 19), claim 9 (issued claim 21), claim 12 (issued claim 23), and claim
`
`14 (issued claim 24). IS1002, 304-311. The examiner then issued a notice of
`
`allowance. Rather than allow the patent to issue, applicant filed an RCE and
`
`submitted an IDS listing over 2,000 references. IS1002, 328-333; 357-483. A
`
`notice of allowance promptly followed, and the ’969 Patent issued on July 9, 2013.
`
`IS1002, 547-552; IS1001, Face.
`
`VII. PRIORITY DATE
`The ’969 Patent is directed to robotic embodiments. The robotic
`
`embodiments were added in the CIP application filed on May 27, 2011 (U.S.
`
`Application No. 13/118,259). The prior application, U.S. Application No.
`
`11/651,807 does not provide support for any of the challenged claims. IS1014.
`
`For example, each of the challenged independent claims (19, 21, 23-24) recites a
`
`“tool mounting portion” “being configured to operably interface with the tool drive
`
`assembly” that has at least one “rotatable body portion.” The claims further state
`
`that the “tool drive assembly” is part of a robotic system: “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.” The parent ’807 application provides no
`
`support for these recitations. IS1004, ¶¶28-29. Rather, the ’807 parent application
`
`9
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`is directed toward handheld “endoscopic surgical instrument[s]” with only a
`
`passing reference to “robotic-assisted surgery.” IS1014, ¶¶15, 89, FIGs. 1-2.
`
`VIII. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3)
`For the purposes of IPR only, Petitioner submits that the terms of the ’969
`
`Patent are to be given their broadest reasonable interpretation as understood by one
`
`of ordinary skill in the art at the time in view of the specification (“BRI”). 37
`
`C.F.R. § 42.100(b).2
`
`IX. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’969 PATENT IS UNPATENTABLE
`As detailed below, claims 19-26 of the ’969 Patent are rendered invalid for
`
`obviousness by Anderson in view of one or more references.
`
`A. Ground 1: Claim 23 Would Have Been Obvious Under § 103 over
`Anderson in View of Cooper
`Claim 23 generally relates to a robotic instrument that rotates using a tube
`
`gear. Anderson discloses such a device, although it does not use the term “tube
`
`gear.” Cooper clearly teaches that the Anderson structure is a tube gear.
`
`
`2 The Office has proposed a change to the claim construction standard. See 83 Fed.
`
`Reg. 21221 (proposed May 9, 2018). The prior art discussed herein invalidates the
`
`challenged claims under either standard. If the Office applies the new standard to
`
`this proceeding, then due process requires the Office afford Petitioner an
`
`opportunity to provide additional argument and evidence on that issue.
`
`10
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`Specifically, Anderson describes a robotic surgical system with a surgical tool
`
`substantially similar to the surgical tool in the ’969 Patent. The surgical tool
`
`includes an end effector connected via an elongate shaft to a base which mounts
`
`the tool to a robotic surgical system, as shown in FIG. 2:
`
`
`
`IS1010, FIG. 2; 11:32-65. The shaft can rotate with respect to the base in the
`
`directions E about the longitudinal axis, as shown in FIG. 2 (above). The end
`
`effector can include, for example, a pivotable gripper for gripping tissue. IS1010,
`
`15:30-60. The base contains multiple “transmission members” to transmit
`
`rotational motion from the robotic arm to the end effector. IS1010, 11:66-12:22;
`
`16:7-23. Anderson discloses that the end effector may be rotated using a cable-
`
`driven system, but also discloses that “a gear train” may be used, and specifically
`
`“a right-angled helical gear pair.” IS1010, 16:37-46; 23:25-36.
`
`
`
`Cooper discloses a surgical tool similar to that disclosed in Anderson, but
`
`11
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`

`

`the focus of Cooper is on articulating wrists:
`
`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`
`IS1007, FIG. 36; 17:26-50. Whereas Anderson does not have a figure of its “right-
`
`angled helical gear pair,” Cooper does have such a figure. Figure 64 of Cooper
`
`discloses a tube gear in a right-angled helical gear pair for rotating the end effector:
`
`
`
`Tube gear for rotating
`shaft and end effector
`(“follower gear 842”)
`
`IS1007, FIG. 64; 24:1-23; IS1004, ¶¶42-46. This is the same tube gear as
`
`
`
`12
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`
`disclosed in the ’969 Patent.
`
`[23.P] 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:
`If the preamble is deemed limiting, Anderson discloses it, as explained
`
`below. IS1004, ¶¶47-51.
`
`“A surgical tool for use with a robotic system”
`
`FIG. 2 shows an example embodiment of a “surgical instrument 28” that is
`
`“configured to releasably engage a robotic surgical system:”
`
`
`
`IS1010, FIG. 2; 16:7-23; 11:32-42; 10:65-11:31; 4:7-11 (“a robotic surgical
`
`instrument for use with a robotic surgical system”); Abstract.
`
`
`
`The robotic system “has a tool drive assembly that is operatively coupled to
`
`a control unit…”
`
`FIG. 1 of Anderson shows the “robotic surgical system 10” having a
`
`13
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`“surgical work station” 20 (which includes the tool drive assembly) operatively
`
`coupled to “control station 12.” A user at the “control station” controls operation
`
`of the surgical tool attached to the tool drive assembly of the surgical work station.
`
`The control station alone, or alternatively, in conjunction with portions of the
`
`“surgical work station” other than the tool drive assembly, form(s) the recited
`
`“control unit”:
`
`IS1010, FIG. 1; 10:21-64.
`
`
`
`The control unit is “operable by inputs from an operator”
`
`The control station 12 portion of the control unit is operable by inputs from
`
`“a surgeon or other user.” IS1010, 10:40-64; 11:59-65; 5:61-6:8 (“operator control
`
`
`
`14
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`
`input”).
`
`The tool drive assembly is “configured to provide at least one rotary output
`
`motion to at least one rotatable body portion supported on the tool drive assembly”
`
`The surgical work station 20 includes a plurality of robotic arm assemblies
`
`26 that include motors and “engaging members” for coupling to, and providing
`
`rotary output motion to, shafts 70.1, 72.1, 74.1, and 76.1 (shown in red below) that
`
`extend from the base 34 of the surgical instrument 28:
`
`
`
`IS1010, FIG. 3; 11:66-12:22; Abstract. The 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. Id. The engaging members are thus the recited
`
`“rotatable body portions supported on the tool drive assembly.” IS1004, ¶51.
`
`15
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`[23.1] 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;
`Anderson discloses element [23.1], as explained below. IS1004, ¶¶52-54.
`
`“selectively movable” component portions
`
`Anderson discloses various end effector embodiments that have “selectively
`
`movable” components. For example, in FIG. 10, Anderson discloses an “end
`
`effector 81” that “includes a gripper 82 hingedly attached to shaft 84” that closes
`
`against an ultrasonic probe tip 85b:
`
`IS1010, FIG. 10; 15:3-38; 15:48-60.
`
`
`
`16
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`FIGs. 20-22 disclose other embodiments that have a “pivotally mounted
`
`gripper or clamp 303” which mates with an “ultrasonic blade 304”:
`
`
`
`IS1010, FIG. 20; 22:8-20; 24:54-65 (“reciprocating actuation of paddle shafts 351
`
`causes the grip or [clamp] 303 to alternately open and close”).
`
`“in response to control motions”
`
`Anderson explains that the gripper 82 moves in response to control motions,
`
`explaining that “components of base 90 enable forces originating at one or more
`
`master controllers of a robotic surgical system to be transmitted to end effector 81
`
`to achieve an effect at a surgical site.” IS1010, 16:7-23; see also 16:62-17:22
`
`(“gripper 82 of end effector 81 is movable by one or more actuator rods housed
`
`within shaft 86”); 10:40-12:22 (generally describing actuation of the end effector
`
`in response to control motions); 24:54-65.
`
`17
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`Likewise, “gripper 303” also moves in response to control motions.
`
`Although the control motions are not explicitly discussed with respect to gripper
`
`303, a POSITA would understand that it would use the same control motions as the
`
`gripper on end effector 81 of FIG. 10. IS1004, ¶54.
`
`[23.2] an elongated shaft assembly including a distal end operably coupled
`to said surgical end effector and defining a longitudinal tool axis, said
`elongated shaft assembly including a tube gear segment on a proximal end
`thereof; and
`Anderson in view of Cooper discloses element [23.2], as explained below.
`
`IS1004, ¶¶55-62.
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`The “elongated shaft assembly …”
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`The “end effector 302” of Anderson’s instrument 300 “is coupled to the
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`distal end of the shaft 307,” which is part of Anderson’s elongated shaft assembly,
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`which may include shaft 307, outer sheath 312, actuator rods, and spools or gears.
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`IS1010, 22:8-19; 5:11-17; 23:25-30. As shown in FIG. 20 (supra), the shaft 307
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`defines a longitudinal “instrument axis 311.” IS1010, 21:66-22:11.
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`The “tube gear”
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`Anderson discloses two shaft rotation mechanisms: a cable-driven
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`mechanism and a gear-driven mechanism. Only the cable mechanism is depicted
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`in the figures. In one embodiment of the cable mechanism, a “roll barrel 336” is
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`rotated (see arrow B) via a cable connected to “roll interface member 344”:
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`18
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`

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`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`
`IS1010, FIG. 22; 22:8-28; 22:59-23:14. Another cable-driven embodiment having
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`a roll barrel (“roll barrel 96”) to rotate the shaft of the instrument is shown in FIG.
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`
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`13:
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`Shaft 86
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`Roll barrel 96
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`
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`19
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`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`The two roll barrels function “in generally the same manner,” and both impart
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`rotational motion to the shaft. IS1010, 22:59-61; 16:36-61.
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`Anderson further describes an alternative mechanism for rotating the shaft of
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`the instrument: a tube gear embodiment in which “a gear train or other mechanical
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`transmission means, e.g., a right-angled helical gear pair, may be used to
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`rotationally couple the interface member 344 with the receiver 335.” IS1010,
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`22:59-23:30. In the tube gear embodiment, the roll barrel 336 (shown in yellow,
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`below) would be replaced by a helical tube gear, interface member 344 (shown in
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`green, below) would also be replaced with a helical gear, and their positions would
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`be adjusted so that they were in meshing engagement:
`
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`IS1010; FIG. 22 (partial); IS1004, ¶59. Or to put it another way, in the alternate
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`embodiment the roll barrel 336 would have helical gear teeth added to it so that it
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`would become a tube gear, and interface member 344 would have helical gear
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`20
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`teeth added to it so that it could meshingly interface with the tube gear. IS1004,
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`¶59.
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`Because Anderson has no figure depicting the “right-angled helical gear
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`pair,” this petition relies on the teachings of Cooper, which shows what the “right-
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`angled helical gear pair” looks like. Cooper discloses “a surgical instrument 400”
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`having a base (“back end mechanism 410”) for coupling to a robotic surgical
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`system and a shaft that rotates “as indicated by arrows H”:
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`IS1007, FIG. 36; 17:26-50.
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`
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`Furthermore, Cooper discloses that a “helical drive gear 840” is in meshing
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`engagement with tube gear (“follower gear 842”) to drive the shaft rotation, as
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`
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`shown in FIG. 64:
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`21
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`

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`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`
`
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`IS1007, FIG. 64; 24:1-23; IS1004, ¶60.
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`As can be seen in FIG. 64, the “helical drive gear 840” is positioned at a
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`right angle relative to the tube gear (“follower gear 842”) that drives shaft rotation.
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`A POSITA would have recognized that Cooper’s helical drive gear 840 and tube
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`gear (“follower gear 842”) form the “right-angled helical gear pair” disclosed in
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`Anderson. IS1004, ¶61.
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`A comparison of FIG. 64 of Cooper with FIG. 13 of Anderson shows that
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`Anderson discloses a cable mechanism for rotating the shaft of the instrument in
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`which (1) a drive spool (“spool 94”) is in virtually the same location as Cooper’s
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`22
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`

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`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`helical drive gear 840, and (2) a roll drum 96 is in virtually the same location as
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`Cooper’s tube gear (“follower gear 842”).
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`Cooper
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`Anderson
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`IS1010, FIG. 13; 16:25-61; 22:59-23:30; IS1007, FIG. 64; 24:1-23. A POSITA
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`would have been motivated to replace the spool 94 and roll drum 96 of FIG. 13 of
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`Anderson with the helical drive gear 840 and tube gear (“follower gear 842”) of
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`Cooper’s FIG. 64 based on the explicit disclosure in Anderson that a roll drum and
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`spool may be replaced by a “right-angled helical gear pair.” IS1010, 22:59-23:30;
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`IS1004, ¶61.
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`Multiple reasons would have prompted a POSITA to modify Anderson’s
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`FIG. 13 and/or FIG. 22 to use the gear arrangement of Cooper. First, a POSITA
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`would have recognized that the teaching of a “right-angled helical gear pair” in
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`Anderson describes the tube gear structure of Cooper. IS1010, 22:59-23:30;
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`23
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`

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`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`
`IS1004, ¶61.
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`Second, a POSITA would have recognized that such a configuration would
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`lead to “improved efficiency and cost-effectiveness” over other methods of con-
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`veying rotational motion. IS1007, 24:21-23. For example, a gear pair requires
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`fewer parts and can provide greater torque than a comparable cable arrangement.
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`IS1010, 22:59-23:30; IS1004, ¶61.
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`Third, a POSITA would have been prompted to modify Anderson’s device
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`to include Cooper’s helical drive gear and tube gear because doing so would be
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`merely the application of a known technique (use of tube gears to generate shaft
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`rotation) to a known system (e.g., Anderson’s surgical instrument) ready for im-
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`provement to yield predictable results. IS1004, ¶61; KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398, 417 (2007). Here, both Anderson and Cooper disclose surgical in-
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`struments configured to releasably couple to a robotic surgical system to receive
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`rotational driving motion from the robotic surgical system and a POSITA would
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`have recognized that applying Cooper’s suggestions to Anderson’s surgical instru-
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`ment would have led to predictable results without significantly altering or hinder-
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`ing the functions performed by Anderson’s surgical instrument, as contemplated by
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`Anderson. IS1004, ¶61; IS1010, 25:10-11. Finally, both Anderson and Cooper are
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`assigned to the same entity—Intuitive Surgical, Inc.—and both relate to similar
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`surgical tools for robotic-assisted surgery and thus a POSITA would look to both
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`24
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`

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`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`
`references. IS1010, 1:14-18; IS1007, 1:44-47.
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`[23.3] 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,
`Anderson discloses element [23.3]. IS1004, ¶¶63-65. In Anderson, the
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`“instrument base,” which interfaces the surgical tool to the arm assembly of a
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`robotic surgical system’s “surgical work station 20,” is the tool mounting portion.
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`IS1010, 11:35-38 (“Base 34 is generally configured to releasably engage a robotic
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`surgical system, such as robotic surgical system 10 in FIG. 1.”), FIG. 3; 22:8-19
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`(“The surgical instrument 300 includes a base 330”), FIG. 20; 23:30-35 (noting
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`that in the “examples of the invention shown in FIGS. 10-25, [] a mechanical
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`robotic actuator interface is described”). In each embodiment, an elongate shaft
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`assembly is coupled to the base. IS1010, 11:32-36; 22:10-14; FIGS. 11-22.
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`The base is configured to engage “[a] robotic surgical system interface.”
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`IS1010, 22:20-33; 22:59-67. Anderson describes that for instrument 28 “[a]t the
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`outer surface, each shaft 70.1, 72.1, 74.1, 76.1 includes an engaging member (not
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`shown) configured to releasably couple with a complementary engaging member
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`(not shown) rotatably mounted on the carriage 37 of a robotic arm assembly 26
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`(see FIG. 1).” IS1010, 11:66-12:22. FIG. 3 shows the shafts configured to couple
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`to engaging members of the robotic arm assembly:
`
`25
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`
`
`
`IS1010, FIG. 3 (partial).
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`Anderson states that this description for instrument 28 applies to the similar
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`features of instrument 300 as well. IS1010, 18:19-24.
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`[23.4] said tool mounting portion comprising a rotational transmission
`assembly comprising a rotational gear assembly in meshing engagement
`with the tube gear segment and operably coupled to one of the at least one
`rotatable body portions supported on the tool drive assembly
`Anderson in view of Cooper discloses element [23.4], as explained below.
`
`IS1004, ¶¶66-68.
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`“tube gear”
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`Anderson’s base 330 has two alternate rotational transmission assemblies: a
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`cable-driven assembly, as depicted in the figures, such as FIG. 21, and a gear-
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`driven assembly described in the text:
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`26
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP5
`
`
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`IS1010, FIG. 21; 16:36-61; 22:8-19; 22:59-23:30 (“a right-angled helical gear
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`pair”). A POSITA would have understood that the driven gear replacing the roll
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`barrel would have been a tube gear. IS1004, ¶67. In addition, Cooper explicitly
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`discloses a rotational transmission system in which the driven gear in the right-
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`angled helical gear pair used to rotate the end effector is a tube gear. IS1004, ¶68.
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`The rotational gear assembly includes the drive gear in the right-angled helical
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`gear pair (helical drive gear 840 in Cooper). See discussion for element [23.2].
`
`
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`“operably coupled to one of the at least one rotatable body portions
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`supported on the tool drive assembly”
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`Anderson’s transmission assembly (which includes “transmission members
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`70, 72, 74, and 76”) engages with rotatable “e