Trials@uspto.gov
`571-272-7822
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`Paper 7
`January 15, 2019
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case 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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 7
`January 15, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case 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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`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. We have authority under 35 U.S.C. § 314(a), which provides that
`an inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” Moreover, a decision to institute
`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
`in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`Upon consideration of the Petition and the Preliminary Response, we
`conclude that the information presented shows there is a reasonable
`likelihood that Petitioner would prevail in showing the unpatentability of at
`least one challenged claim. Accordingly, we authorize an inter partes
`review to be instituted as to claims 19–22 and 24–26 of the ’969 patent on
`the grounds raised in the Petition.1 Our factual findings and conclusions at
`this stage of the proceeding are based on the evidentiary record developed
`thus far (prior to Patent Owner’s Response). This is not a final decision as
`to patentability of claims for which inter partes review is instituted. Any
`final decision will be based on the record, as fully developed during trial.
`
`
`1 Although the Petitioner initially sought to challenge claim 23 of the ’969
`patent, Patent Owner has statutorily disclaimed that claim. See Ex. 2002.
`For the reasons discussed infra, claim 23 is no longer regarded as a claim
`challenged in the Petition.
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`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, and claims priority, as a continuation-in-part, to an application
`filed January 10, 2007. Ex. 1001, [45], [22], [63]. The ’969 patent is titled
`“Drive Interface for Operably Coupling a Manipulatable Surgical Tool to a
`Robot,” and generally relates to endoscopic surgical instruments. Ex. 1001,
`[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.” Ex. 1001, [57]. Figure 26 of the ’969 patent is reproduced below:
`
`
`Figure 26 depicts “a perspective view of a surgical tool embodiment
`of the present invention.” Ex. 1001, 5:19–20. Figure 26 illustrates surgical
`tool 1200 with an end effector 2012, elongated shaft assembly 2008, and
`articulation joint 2011. Ex. 1001, 24:66–25:5. The ’969 patent describes
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`Patent 8,479,969 B2
`that surgical tool 1200 is coupled to a robotic manipulator (not shown) by a
`tool mounting portion 1300. Ex. 1001, 25:5–7.
`Figure 31 of the ’969 patent is reproduced below:
`
`
`Figure 31 depicts “a partial bottom perspective view of the surgical
`tool embodiment of FIG. 26.” Ex. 1001, 5:27–28. Figure 31 illustrates “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.” Ex. 1001, 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.” Ex.
`25:19–22. The ‘969 patent describes that “adapter portion 1240 generally
`includes a tool side 1244 and a holder side 1246.” Ex. 1001, 25:30–31.
`Figure 27 of the ’969 patent is reproduced below:
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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.” Ex. 1001, 5:21–23. More particularly, Figure 27 illustrates
`that tool drive assembly 1010 “is operatively coupled to a master controller
`1001.” Ex. 1001, 24:62–66.
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`B. Illustrative Claims
`Challenged claims 19, 21, and 24 are independent. Claim 20
`
`ultimately depends from claim 19, claim 22 ultimately depends from claim
`21, and claims 25 and 26 ultimately depend from claim 24. Claim 19 is
`illustrative and is 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
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`Patent 8,479,969 B2
`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.
`
`
`
`C. Related Proceedings
`The parties indicate that the ’969 patent is involved in: Ethicon LLC
`et al. v. Intuitive Surgical, Inc. et al., No. 1:17-cv-00871 in the United States
`District Court for the District of Delaware (“the Delaware litigation”).2 Pet.
`4; 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); and (6) Case No. IPR2018-01703 (the
`’431 patent).
`
`D. Earliest Effective Filing Date
`Petitioner asserts that May 27, 2011, the day the ’969 patent
`application was filed as a continuation-in-part, is the earliest effective filing
`date. Pet. 9.
`Patent Owner asserts that the ’969 patent “claims priority to
`application No. 11/651,807, which was filed on Jan. 10, 2007.” Prelim.
`
`2 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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`Resp. 11 (citing Ex. 1001, (63). Patent Owner further asserts
`[b]ecause the Petition should be denied, for the reasons set forth
`herein, regardless of the effective filing date of the challenged
`claims, Patent Owner does not address Petitioner’s priority date
`arguments herein, but reserves all rights to subsequently contend
`in any instituted IPR or in any other proceeding that the
`challenged claims are entitled to their earliest claimed effective
`filing date.
`Prelim. Resp. 11. In view of the above, and at this stage, we do not resolve
`this issue at this time.
`
`E. Real Parties in Interest
`Petitioner identifies itself as the only real party-in-interest. Pet. 1.
`F. Evidence Relied Upon
`Petitioner relies on the following references3 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 issued Mar. 2, 2004 (“Wallace”)
`
`1008
`
`U.S. Patent No. 6,783,524
`(“Anderson”)
`
`issued Aug. 31, 2004
`
`1010
`
`U.S. Patent No. 7,510,107 issued Mar. 31, 2009 (“Timm”)
`
`1011
`
`U.S. Patent No. 5,465,895 issued Nov. 14, 1995 (“Knodel”)
`
`1012
`
`
`3 We note that the Petition identifies U.S. Patent No. 6,817,974 issued
`Nov. 16, 2004 (“Cooper”) with respect to Ground 1. See Pet. 5. However,
`given that Ground 1 only addresses disclaimed independent claim 23, our
`decision makes no reference to Ground 1 or the Cooper reference.
`
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`U.S. Patent No. 5,954,259 issued Sept. 21,1999 (“Viola”)
`
`1013
`
`Petitioner also relies upon a Declaration of Dr. Bryan Knodel.
`Ex. 1004.
`
`G. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 19–22 and 24–26 are unpatentable based
`on the following grounds4:
`References
`Anderson and Timm
`Anderson, Timm, and Wallace
`Anderson and Knodel
`Anderson and Viola
`
`Claim(s) Challenged
`24
`25 and 26
`19 and 20
`21 and 22
`
`Basis
`§ 103
`§ 103
`§ 103
`§ 103
`
`
`
`III. ANALYSIS
`A. Claim Construction
`The claim construction standard to be employed in an inter partes
`review recently has changed. 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 (Nov. 13, 2018) (to be codified at 37
`C.F.R. pt. 42). That new standard, however, applies only to proceedings in
`which the petition is filed on or after November 13, 2018. This Petition was
`filed on June 14, 2018. Under the standard in effect at that time, “[a] claim
`in an unexpired patent . . . shall be given its broadest reasonable construction
`
`
`4 We note that the Petition identifies U.S. Patent No. 6,817,974 issued
`Nov. 16, 2004 (“Cooper”) with respect to Ground 1. See Pet. 5. However,
`given that Ground 1 only addresses disclaimed independent claim 23, our
`decision makes no reference to Ground 1 or the Cooper reference.
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`Patent 8,479,969 B2
`in light of the specification of the patent in which it appears.” 37 C.F.R.
`§ 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2142 (2016) (upholding the use of the broadest reasonable interpretation
`standard). Accordingly, we determine whether to institute trial in this
`proceeding using the broadest reasonable construction standard. In
`determining the broadest reasonable construction, we presume that claim
`terms carry their ordinary and customary meaning. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A patentee may define a
`claim term in a manner that differs from its ordinary meaning; however, any
`special definitions must be set forth in the specification with reasonable
`clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994).
`Here, neither Petitioner nor Patent Owner identifies terms for
`construction or provides any proposed constructions. See Pet. 10; Prelim.
`Resp. 11–12. Instead, the parties agree that claims of ’969 patent should be
`construed according to their broadest reasonable interpretation. Pet. 10;
`Prelim. Resp. 11. For the purposes of this Decision, we determine that no
`claim term needs express interpretation. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`B. Level of Ordinary Skill in the Art
`Petitioner’s Declarant, 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
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`Patent 8,479,969 B2
`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 challenge the above-noted testimony or offer
`any assessment of its own as to the level of ordinary skill in the art. For
`purposes of this Decision, we adopt Dr. Knodel’s assessment of the level of
`ordinary skill in the art. We further find that the cited prior art references
`reflect the appropriate level of skill at the time of the claimed invention and
`that the level of appropriate skill reflected in these references is consistent
`with the definition of a person of ordinary skill in the art proposed by
`Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`C. Ground 2: Claim 24 – Obvious over Anderson and Timm
`Petitioner contends that claim 24 would have been obvious over
`Anderson and Timm. Pet. 29–56. Patent Owner opposes. Prelim. Resp.
`25–32.
`
`1. Overview of Anderson (Ex. 1010)
`Anderson is titled “Robotic Surgical Tool With Ultrasound
`Cauterizing and Cutting Instrument.” Ex. 1010, (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
`delivered by the probe tip may be used to cut, cauterize, or
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`IPR2018-01247
`Patent 8,479,969 B2
`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.
`Ex. 1010, (57). Figure 2 of Anderson is reproduced below.
`
`
`Figure 2 depicts a perspective view of a robotic surgical tool which may be
`used with a robotic surgical system according to the present invention.
`Ex. 1010, 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.” Ex. 1010,
`11:32–36. Anderson further discloses
`[b]ase 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.
`Ex. 1010, 11:36–42.
`
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`Patent 8,479,969 B2
`Figure 10 of Anderson is reproduced below.
`
`
`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.” Ex. 1010, 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. Ex. 1010, 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.”
`Ex. 1010, 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.” Ex. 1010, 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.” Ex. 1010, 26–30.
`
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`
`Overview of Timm (Ex. 1011)
`2.
`Timm is titled “Cable Driven Surgical Stapling and Cutting
`Instrument with Apparatus for Preventing Inadvertent Cable
`Disengagement.” Ex. 1011, (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.
`Ex. 1011, (57). Figure 1 of Timm is reproduced below.
`
`Figure 1 depicts “a perspective view of a surgical stapling and severing
`instrument.” Ex. 1011, 3:1–3. More particularly, Figure 1 depicts surgical
`
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`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.
`Ex. 1011, 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.” Ex. 1011, 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.” Ex. 1011, 8:3–8; see also id. at 12:1–3,
`28:45–49.
`
`Petitioner’s Contentions
`3.
`Petitioner contends that claim 24 of the ’969 patent would have been
`obvious in view of the combined teachings of Anderson and Timm.
`Petitioner provides detailed assessment of the content of the prior art in
`advocating that all the features of claim 24 are shown therein. See Pet. 29–
`56. Petitioner also supports that assessment with citation to the Declaration
`testimony of Dr. Knodel (Ex. 1004).
`For example, the preamble of independent claim 24 sets forth
`[a] surgical tool for use with a robotic system that has a tool drive
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`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:
`
`
`
`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
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`the spools or gears mounted on the rotatable shafts within the base 34.” Pet.
`15 (citing Ex. 1010, 11:66–12:22, Abs., 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
`operably coupled to a [proximal]5 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 further respect in connection with the requirement noted above of
`
`
`5 On January 23, 2018, the PTO entered a Certificate of Correction replacing
`the word “distal” with the word “proximal.” See Ex. 1002, 686.
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`“a proximal spine portion pivotally coupled to [a] distal spine portion at an
`articulation joint to facilitate articulation of said surgical end effector,”
`Petitioner 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, Abstract,
`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). And, in connection with the requirement noted above of “at least one
`gear-driven portion that is in operable communication with said at least one
`selectively movable component portion of surgical end effector,” Petitioner
`asserts that “[a]lthough Anderson is primarily directed toward embodiments
`that rely on spool-and-cable assemblies to drive motion of the end effector,
`Anderson also contemplates ‘other actuation interface devices’ such as ‘a
`gear train or other mechanical transmission means.” Pet. 39 (citing Ex.
`1010, 15:48–60; 16:62–17:9; 23:25–36). Given that Anderson contemplates
`other mechanical transmission means, Petitioner explains
`[a] POSITA would have understood that the combination of
`Anderson and Timm would include Timm’s surgical stapler end
`effector and shaft (as described above), and would have included
`part or all of any of the specific gear-driven actuation assemblies
`described by Timm to drive the motions of Timm’s surgical tool.
`Pet. 45 (citing Ex. 1004 ¶ 99). Petitioner reasons that “a POSITA would
`have understood that in the combination of Anderson and Timm, the surgical
`stapler end effector, closure tube, and actuation assemblies of Timm (as
`described above) would be driven by Anderson’s rotary robotic interface in
`the tool mounting portion.” Pet. 50–51 (citing Ex. 1004 ¶ 104).
`
`19
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`IPR2018-01247
`Patent 8,479,969 B2
`
`Patent Owner’s Contentions
`4.
`Patent Owner contends that Petitioner’s ground of unpatentability
`based on Anderson and Timm is deficient. See Prelim. Resp. 25–32. Patent
`Owner first contends that “Petitioner provides no explanation for how the
`robotic ultrasound tool of Anderson and the handheld endocutter of Timm
`would be combined with each other as proposed in Ground 2.” Prelim.
`Resp. 25. More particularly, Patent Owner argues
`Petitioner does not clarify whether the combined surgical
`instrument would have retained any physical controls on a
`handle, as in Timm, or whether all control motions would be
`provided through the robotic system, as in Anderson. Critically,
`to the extent that the Petition is understood to suggest the latter,
`Petitioner does not explain how Anderson’s instrument base
`would be modified to provide additional rotary outputs to
`provide the necessary control motions for firing Timm’s
`endocutter or articulating the shaft about the articulation joint.
`Prelim. Resp. 21–22. Patent Owner also contends that “Petitioner does not
`clarify, for example, how the gears from the handle and/or intermediate
`closure tube segment of Timm’s instrument would have been incorporated
`into Anderson’s device.” Id. at 31 (citing Pet. 45, 50). And, because “the
`proposed combination of Anderson with Timm is incompatible and
`inoperable” (id. at 32), Patent Owner contends that Petitioner has not
`provided any evidence of a reasonable expectation of success in combining
`Anderson and Timm. Id. at 25–26.
`
`Discussion
`5.
`Having considered the conflicting positions of the parties, we
`conclude that, at this stage of the proceeding, Petitioner has shown a
`reasonable likelihood that it would prevail in challenging the patentability of
`claim 24. In our view, Petitioner’s obviousness approach, on this record,
`
`20
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`
`IPR2018-01247
`Patent 8,479,969 B2
`adequately identifies where all the elements of claim 24 are found in the
`prior art, and Petitioner demonstrates adequate reasoning to combine the
`teachings of Anderson and Timm.
`At this stage of the proceeding, we are not persuaded by Patent
`Owner’s argument that a person of ordinary skill in the art would not have
`understood how, or had insufficient reason, to combine the teachings of
`Anderson and Timm because Anderson is directed to “a robotic ultrasound
`tool” while Timm is directed to a “handheld endocutter.” Prelim. Resp. 21–
`25. At the outset, we note that Anderson contemplates that “[f]or
`convenience and to minimize manufacturing costs, selected OEM
`components of commercially available instruments may optionally be
`included in the instrument 300.” Ex. 1010, 18:25–29. More particularly,
`Anderson describes that
`[i]n further examples, the instrument probe assembly may
`include suitable OEM components of biopsy probes, suction
`probes,
`substance
`injection probes,
`surgical accessory
`application probes, stapler probes, tissue grasping and cutting
`probes, and the like. Likewise, the instrument probe assembly
`may combine more than one of the medical functions of the
`above described instruments.
`Ex. 1010, 7:19–25. As such, we agree with Petitioner that one of ordinary
`skill in the art would have had adequate reason to use Timm’s “handheld
`endocutter,” which includes an end effector with a surgical stapler, at least
`because it is one of the stated possible uses of the Anderson robotic system.
`See Pet. 31; Ex. 1004 ¶¶ 74–82. In our view, these statements suffice as an
`articulated reason with a rationale underpinning to support combining
`Anderson and Timm.
`Patent Owner’s argument that the Petition “does not explain how
`
`21
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`IPR2018-01247
`Patent 8,479,969 B2
`Anderson’s instrument base would be modified to provide additional rotary
`outputs to provide the necessary control motions for firing Timm’s
`endocutter or articulating the shaft about the articulation joint” (Prelim.
`Resp. 29) is, at this stage, unpersuasive. Patent Owner’s argument appears
`to be premised on the physical combinability of Anderson and Timm.
`However, “it is not necessary that the inventions of the references be
`physically combinable to render obvious the invention under review.” In re
`Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); see, e.g., In re Mouttet, 686
`F.3d 1322, 1333 (Fed. Cir. 2012) (“It is well-established that a determination
`of obviousness based on teachings from multiple references does not require
`an actual, physical substitution of the elements.”). Rather, the relevant
`inquiry is whether the claimed subject matter would have been obvious to
`those of ordinary skill in the art in light of the combined teachings of those
`references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Based on the
`record before us, we are persuaded that Petitioner sufficiently explains how
`to incorporate the gear-driven surgical stapler end effector, closure tube, and
`actuation assemblies of Timm with Anderson’s rotary robotic interface in
`the tool mounting portion. See Pet. 39–51; see also Ex. 1004 ¶¶ 92–103.
`Having considered the arguments and evidence, we find at this stage
`of the proceeding that Petitioner has sufficiently shown that a person of
`ordinary skill in the art would have had a reason to combine Anderson and
`Timm with a reasonable expectation of success given that Anderson
`expressly suggests use of its robotic surgical system with “stapler probes,
`tissue grasping and cutting probes” (Ex. 1010, 7:19–25, 18:25–29) like the
`one utilized by the surgical instrument disclosed in Timm. We also note that
`Timm suggests operation by a robotic sy
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