Trials@uspto.gov
`571-272-7822
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`Paper 7
`February 7, 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 IPR2018-01248
`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
`February 7, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01248
`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
`
`
`
`
`
`IPR2018-01248
`Patent 8,479,969 B2
`
`I. INTRODUCTION
`Intuitive Surgical, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 23–26 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 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.
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`Figure 27 of the ’969 patent is reproduced below:
`
`
`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. The ’969 patent discloses that tool
`drive assembly 1010 “is operatively coupled to a master controller 1001.”
`Ex. 1001, 24:62–66.
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`B. Illustrative Claim
`Challenged claim 24 is independent. Claims 25 and 26 ultimately
`
`depend from claim 24. Claim 24 is illustrative and is reproduced below.
`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[2] end of said proximal spine portion, said
`tool mounting portion being configured to operably
`
`
`2 A Certificate of Correction, mailed January 23, 2018, deleted the term
`“distal,” and inserted in its place the term “proximal” in claim 24 of the ’969
`patent. See Ex. 1002, 686.
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`Patent 8,479,969 B2
`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 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.
`
`
`
`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”).3 Pet.
`7; 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.
`IPR2018-01247 and IPR2018-01254 (the ’969 patent); (5) Case No.
`
`
`3 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”), 8,991,677 (“the ’677 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.
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`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. 8–9.
`Patent Owner asserts that the ’969 patent “claims priority to
`application No. 11/651,807, which was filed on Jan. 10, 2007.” Prelim.
`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 in this paper, 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. 3.
`F. Evidence Relied Upon
`Petitioner relies on the following references in asserting that claims
`24–26 of the ’969 patent are unpatentable:
`
`Reference
`
`Exhibit No.
`
`U.S. Patent No. 8,545,515 issued Oct. 1, 2013 (“Prisco”)
`
`1006
`
`U.S. Patent No. 6,817,974 issued Nov. 16, 2004 (“Cooper”)
`
`1007
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`IPR2018-01248
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`U.S. Patent No. 6,331,181 issued Dec. 18, 2001 (“Tierney”)
`
`1009
`
`U.S. Patent No. 6,699,235 issued Mar. 2, 2004 (“Wallace”)
`
`1008
`
`Petitioner also relies upon a Declaration of Dr. Bryan Knodel.
`Ex. 1003.
`
`G. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 24–26 are unpatentable based on the
`following grounds:
`References
`
`Prisco
`Prisco and Cooper
`Prisco, Cooper, and Tierney
`Prisco, Cooper, Wallace, and
`Tierney
`
`
`
`Basis
`§ 102
`§ 103
`§ 103
`§ 103
`
`Claim(s) Challenged
`24–26
`24–26
`24–26
`25 and 26
`
`III. ANALYSIS
`A. Statutory Disclaimer of Claim 23
`As noted above, along with claims 24–26, Petitioner sought inter
`partes review of claim 23 of the ’969 patent. After the filing of the Petition,
`Patent Owner filed a statutory disclaimer of claim 23. Ex. 2002; see Prelim.
`Resp. 4.
`Patent Owner contends that “[b]ased on this disclaimer, the [’969
`patent] is to be treated as though claim 23 never existed.” Prelim. Resp. 4
`(citing Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Circ.
`1998)(“This court has interpreted the term ‘considered as part of the original
`patent’ in section 253 to mean that the patent is treated as though the
`disclaimed claims never existed.”). We also observe that our rules state that
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`“[n]o inter partes review will be instituted based on disclaimed claims.” 37
`C.F.R. §42.107(e).
`In considering Federal Circuit precedent and our rules, we conclude
`that we cannot institute a trial on a claim that has been disclaimed, and, thus,
`no longer exists. That conclusion is consistent with other panel decisions in
`inter partes review proceeding that addressed a near identical circumstance
`as we do here. See, e.g., Vestas-American Wind Technology, Inc. and Vestas
`Wind Systems A/S v. General Electric Co., IPR2018-01015, Paper 9, 12–14
`(PTAB, Nov. 14, 2018)(“the ’1015 IPR”). We share the same view as the
`panel in the ’1015 IPR that such a conclusion is consistent with the statutory
`scope of inter partes review as laid out in 35 U.S.C.§§ 311(b) and 318(a),
`and is not at odds with the Supreme Court’s recent decision in SAS. See id.
`Accordingly, we treat claim 23 as having never been part of the ’969 patent,
`and Petitioner cannot seek inter partes review of that claim.
`
`B. 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
`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
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`Patent 8,479,969 B2
`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. 28–29;
`Prelim. Resp. 11–12. Instead, the parties agree that claims of ’969 patent
`should be construed according to their broadest reasonable interpretation.
`Pet. 28–29; 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.”).
`C. 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 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.
`
`11
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`IPR2018-01248
`Patent 8,479,969 B2
`Ex. 1003 ¶ 25.
`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).
`
`D. Ground 1: Claims 24–26 – Anticipation by Prisco
`Petitioner contends that claims 24–26 are anticipated by Prisco. Pet.
`51–74. Patent Owner opposes. Prelim. Resp. 24–31.
`
`1. Overview of Prisco (Ex. 1006)
`Prisco is titled “CURVED CANNULA SURGICAL SYSTEM.” Ex.
`1006, (54). Prisco’s Abstract reads-in-part as follows:
`A robotic surgical system is configured with rigid, curved
`cannulas that extend through the same opening into a patient’s
`body. Surgical instruments with passively flexible shafts extend
`through the curved cannulas. The cannulas are oriented to direct
`the instruments towards a surgical site. Various port features that
`support the curved cannulas within the single opening are
`disclosed. Cannula support fixtures that support the cannulas
`during insertion into the single opening and mounting to robotic
`manipulators are disclosed. A teleoperation control system that
`moves the curved cannulas and their associated instruments in a
`manner that allows a surgeon to experience intuitive control is
`disclosed.
`Ex. 1006, (57). Figure 2B of Prisco is reproduced below.
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`
`Figure 2B depicts a perspective view of a patient side manipulator (PSM)
`“with an illustrative instrument 110 mounted.” Ex. 1006, 8:12–13. With
`reference to Figure 2B, Prisco discloses
`[m]atching force transmission disks in mounting carriage 212
`and instrument force transmission assembly 230 couple actuation
`forces from actuators 232 in PSM 204 to move various parts of
`instrument 110 in order to position, orient, and operate
`instrument end effector 234. Such actuation forces may typically
`roll instrument shaft 218 (thus providing another DOF [degree of
`freedom] through the remote center), operate a wrist 236 that
`provides yaw and pitch DOF’s, and operate a movable piece or
`grasping jaws of various end effectors ( e.g., scissors (cautery or
`non-cautery capable), dissectors, graspers, needle drivers,
`electrocautery hooks, retractors, clip appliers, etc.).
`Ex. 1006, 8:34–44.
`Figure 4A of Prisco is reproduced below.
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`
`Figure 4A depicts “a schematic view of a portion of a patient side robotic
`manipulator that supports and moves a combination of a curved cannula and
`a passively flexible surgical instrument.” Ex. 1006, 10:31–34. More
`particularly, Figure 4A illustrates
`a telerobotically operated surgical instrument 402a includes a
`force transmission mechanism 404a, a passively flexible shaft
`406a, and an end effector 408a. Instrument 402a is mounted on
`an instrument carriage assembly 212a of a PSM 204a (previously
`described components are schematically depicted for clarity).
`Interface discs 414a couple actuation forces from servo actuators
`in PSM 204a to move instrument 402a components. End
`effector 408a illustratively operates with a single DOF (e.g.,
`closing jaws).
`Ex. 1006, 10:34–43. Prisco discloses that “[a] wrist to provide one or more
`end effector DOF’s (e.g., pitch, yaw; see e.g., U.S. Pat. No. 6,817,974 (filed
`
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`Jun. 28, 2002) (disclosing ‘Surgical Tool Having Positively Positionable
`Tendon-Actuated Multi-Disk Wrist Joint’), which is incorporated herein by
`reference) is optional and is not shown.” Ex. 1006, 10:43–48. Prisco
`describes that “[o]mitting the wrist simplifies the number of actuation force
`interfaces between PSM 204a and instrument 402a, and the omission also
`reduces the number of force transmission elements (and hence, instrument
`complexity and dimensions) that would be necessary between the proximal
`force transmission mechanism 404a and the distally actuated piece.” Ex.
`1006, 10:49–55; cf. id. at 16:38–43, 17:53–56.
`Figure 7D of Prisco is reproduced below.
`
`
`Figure 7D depicts “a perspective view of another force transmission
`mechanism used in a push/pull instrument design.” Ex. 1006, 3:33–34.
`Figure 7D illustrates that pinion drive gears 782 engage rack gear 784
`between them. Ex. 1006, 16:19–20. Prisco describes that push/pull drive
`element rod 764 is coupled to rack gear 784 using a free rolling bearing 768
`(not shown). Ex. 1006, 16:19–23, 15:55–16:7.
`Figures 9D and 9E are reproduced below.
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`
`Figure 9D depicts “an exploded perspective view of another implementation
`of the distal end of a flexible shaft instrument.” Ex. 1006, 19:28–29. More
`particularly, Figure 9D illustrates that “push/pull drive rod connector 926
`extends through end cap 920 and seal 924 to couple with the movable
`component of the end effector.” Ex. 1006, 19:32–34. Figure 9E depicts “a
`diagrammatic view of a push/pull type end effector.” Ex. 1006, 3:51–52.
`Prisco discloses that “pushing on the drive rod closes the end effector jaws,
`and pulling on the drive rod opens the end effector jaws.” Ex. 1006, 19:45–
`47.
`
`Prisco incorporates Cooper by reference to provide a more detailed
`discussion on a wrist joint to provide additional end effector DOFs. Ex.
`
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`1006, 10:43–48. Prisco also incorporates Tierney by reference to provide a
`more detailed discussion on “surgical robotic tools, data architecture, and
`use.” Ex. 1006, 15:16–20. Accordingly, we discuss Cooper and Tierney
`below.
`
`Overview of Cooper (Ex. 1007)
`2.
`Cooper is titled “Surgical Tool Having Positively Positionable
`Tendon-Actuated Multi-Disk Wrist Joint.” Ex. 1007, (54). Cooper is
`directed to “various wrist mechanisms in surgical tools for performing
`robotic surgery.” Ex. 1007, 1:44–46. Figure 36 is reproduced below.
`
`
`
`Figure 36 depicts a perspective view of Cooper’s surgical instrument
`according to one embodiment of the present invention. Ex. 1007, 9:33–34.
`More particularly, Figure 36 illustrates “a surgical instrument 400 having an
`elongate shaft 402 and a wrist-like mechanism 404 with an end effector
`406.” Ex. 1007, 17:25–27.
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`Figure 37 is reproduced below.
`
`
`Figure 37 depicts “a perspective view of the wrist and end effector of the
`surgical instrument of FIG. 36.” Ex. 1007, 9:35–36. More particularly,
`Figure 37 illustrates proximal disk 412 connected to the distal end of shaft
`402, distal disk 416, and end effector 406 which is connected to distal disk
`416 by grip support 420. Ex. 1007, 17:51–59.
`
`Overview of Tierney (Ex. 1009)
`3.
`Tierney is titled “Surgical Robotic Tools, Data Architecture, and
`Use.” Ex. 1009, [54]. More particularly, Tierney is directed to “surgical
`tools having improved mechanical and/or data interface capabilities to
`enhance the safety, accuracy, and speed of minimally invasive and other
`robotically enhanced surgical procedures.” Ex. 1009, 1:11–15. Tierney
`describes that robotic surgery generally involves the use of robotic arms
`which “often support a surgical tool which may be articulated (such as jaws,
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`scissors, graspers, needle holders, microdissectors, staple appliers, tackers,
`suction/irrigation tools, clip appliers, or the like) or non-articulated (such as
`cutting blades, cautery probes, irrigators, catheters, suction orifices, or the
`like).” Ex. 1009, 6:20–28.
`
`Petitioner’s Contentions
`4.
`In support of its contention that Prisco anticipates claims 24–26 of the
`’969 patent, Petitioner discusses the teachings of Prisco—as well as the
`teachings of Cooper and Tierney, both of which Prisco incorporates by
`reference. 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.
`51–69. Petitioner also supports that assessment with citation to the
`Declaration testimony of Dr. Knodel (Ex. 1003).
`For example, the preamble 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 Prisco discloses a surgical
`instrument which is used by a robotic surgical system for minimally invasive
`surgery. Pet. 51 (citing Ex. 1003 ¶ 78); see also id. at 30–31 (citing Ex.
`1006, 6:14–15, 6:26–28, 6:38–42, 10:31–41, Figs. 1A, 1B, 1C, 4A, 5; Ex.
`1003 ¶¶ 52–53). Petitioner asserts that Prisco’s robotic system includes a
`tool drive assembly comprising “actuators 232” and “mounting carriage
`212” (Pet. 51 (citing Ex. 1003 ¶ 78); see also id. at 32–33 (citing Ex. 1006,
`8:15–17, 8:34–38, 10:37–41, Fig. 2B; Ex. 1009, 11:33–35, 4:33–35, 7:65–
`8:7, 10:12–15, 11:3–6, Figs. 3A, 7A, 7F–7M, 8A, 8B; Ex. 1003 ¶¶ 50, 54–
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`Patent 8,479,969 B2
`55)) which is “coupled to a control unit” (Pet. 51 (citing Ex. 1003 ¶ 78); see
`also id. at 34 (citing Ex. 1006, 6:7–12, 6:38–43, 6:47–52, Fig. 23; Ex. 1003
`¶¶ 54, 56)), “operable by inputs from an operator” ” (Pet. 51 (citing Ex. 1003
`¶ 78); see also id. at 34 (citing Ex. 1006, 2:53–57, 6:3–46; Ex. 1003 ¶ 57)),
`and “configured to provide at least one rotary output motion to at least one
`rotatable body portion supported on the tool drive assembly.” Pet. 51 (citing
`Ex. 1003 ¶ 78); see also id. at 35–37 (citing Ex. 1006, 8:34–38, 10:39–41,
`Fig. 4A; Ex. 1003 ¶¶ 49, 58, 59; Ex. 1009, 10:46–51; 11:3–10, Figs. 6–7L,
`7C, 7F; Ex. 1001, Figs. 29, 30).
`Petitioner also explains how Prisco accounts for each of: (1) an “end
`effector comprising at least one component portion 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. 52 (citing Ex. 1003 ¶ 79); see also id. at 37–41); (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 52–58); (3) “at least one
`gear-driven portion that is in operable communication with said at least one
`selectively movable component portion” (id. at 58–62); (4) “a tool mounting
`portion operably coupled to a [proximal]4 end of said proximal spine
`portion . . . to operably interface with the tool drive assembly” (id. at 62–
`64); (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
`
`
`4 On January 23, 2018, the PTO entered a Certificate of Correction replacing
`the word “distal” with the word “proximal.” See Ex. 1002, 686.
`
`20
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`IPR2018-01248
`Patent 8,479,969 B2
`corresponding rotary output motions therefrom” (id. at 65–66); 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 67–69).
`In further respect 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 said surgical end
`effector,” Petitioner identifies Prisco’s end effector jaws as being the
`“selectively movable component.” Pet. 52, emphasis omitted (citing Ex.
`1003 ¶ 79); see also id. at 37–41 (citing Ex. 1006, 6:38–7:2, 8:12–15, 8:41–
`44, 19:42–48; 14:65–15:8, 15:55–16:7, Figs. 7C, 9E). Petitioner explains
`“[a] POSITA would have understood that each jaw is at least one component
`portion of the end effector that is selectively movable between first (e.g.,
`open) and second (e.g., closed) positions relative to the other jaw.” Pet. 39
`(citing Ex. 1003 ¶ 61). 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 said surgical end
`effector,” Petitioner provides the following copy of Figure 7D of Prisco,
`annotated to identify rack gear 784 and pinion drive gears 782.
`
`21
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`IPR2018-01248
`Patent 8,479,969 B2
`
`
`
`Figure 7D, annotated, depicts “a perspective view of another force
`transmission mechanism used in a push/pull instrument design.” Ex. 1006,
`3:33–34. Petitioner asserts that Prisco’s “rack gear 784” constitutes “at least
`one gear-driven portion.” Pet. 58–59 (citing Ex. 1003 ¶ 86; Ex. 1006,
`16:17–37, Fig. 7D). Petitioner explains
`rack gear 784 is in operable communication with the at least one
`selectively movable component portion of the surgical end
`effector (e.g., the jaws) such that movement of the rack opens
`and closes the jaws: “The push/pull drive element rod [764] is
`coupled to the rack (e.g., with a free rolling bearing as described
`above).”
`Pet. 59 (citing Ex. 1006, 15:55–16:7, 16:22–23, Fig. 7C; Ex. 1003 ¶ 87).
`Petitioner also provides the following copies of Figures 9D and 9E of Prisco,
`annotated to identify, among several items, “push/pull drive rod connector
`926” and “push/pull drive element rod 764.”
`
`22
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`IPR2018-01248
`Patent 8,479,969 B2
`
`
`Figure 9D depicts “an exploded perspective view of the distal end of another
`flexible shaft instrument” and Figure 9E depicts “a diagrammatic view of a
`push/pull type end effector.” Ex. 1006, 3:49–52. Petitioner alternatively
`asserts that the combination of Prisco’s “push/pull drive rod connector 926,
`drive element rod 764, and rack gear 784” comprises “a gear-driven portion
`that operably communicates with the end effector jaws.” Pet. 60 (citing Ex.
`1003 ¶ 88).
`In further respect 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 about
`an articulation axis that is substantially transverse to said longitudinal axis,”
`Petitioner asserts Prisco’s incorporation of Cooper discloses a “proximal
`
`23
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`IPR2018-01248
`Patent 8,479,969 B2
`spine portion,” i.e., “Prisco’s ‘shaft 506,’” and “distal spine portion,” i.e.,
`“Cooper’s ‘distal disk 416.’” Pet. 52–54 (citing Ex. 1006, 16:38; 10:31–55;
`Ex. 1007, 17:25–64, 14:14–59, 21:49–22:41, 17:1–3, 17:25–64, Figs. 14–21,
`36–39; Ex. 1003 ¶¶ 81–83). Petitioner explains that Prisco’s shaft 506 is
`pivotally coupled to Cooper’s distal disk 416 at an “articulation joint” which
`Petitioner identifies as “the pivot points between the proximal disk 412 and
`the distal disk 416 that together form a ‘Multi-Disk Wrist Joint’[] to
`facilitate articulation of end effector 406.” Pet. 54 (citing Ex. 1003 ¶ 83).
`Petitioner provides similar detailed analysis, supported by the
`testimony of Dr. Knodel, for claims 25 and 26. See Pet. 69–74.
`
`Patent Owner’s Contentions
`5.
`Patent Owner contends that Petitioner’s ground of unpatentability
`based on Prisco is deficient. See Prelim. Resp. 24–31. Patent Owner first
`contends that neither Prisco’s “cable-driven embodiment” nor “drive-rod
`embodiment” discloses “a gear-driven portion that is in operable
`communication with and applies a control motion to one of the end effector
`jaws,” as required by independent claim 24. Prelim. Resp. 25–27. Patent
`Owner contends that “a POSITA would not have understood Prisco to
`clearly and unequivocally disclose Cooper’s wrist mechanism and Prisco’s
`instrument, arranged as in claim 24, in the same embodiment” (Prelim. Resp.
`31). More particularly, Patent Owner argues that a person of ordinary skill
`in the art
`would not have understood Prisco’s purported incorporation of
`Cooper’s disclosure to disclose that Prisco’s instrument includes
`“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
`
`24
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`IPR2018-01248
`Patent 8,479,969 B2
`substantially transverse to said longitudinal axis,” arranged as in
`claim 24.
`Prelim. Resp. 27–28, 31 (citing Microsoft Corp. v. Biscotti, Inc., 878 F.3d
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