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.: 11030-0049IP9
`
`
`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. 11030-0049IP9
`TABLE OF CONTENTS
`
`I.
`INTRODUCTION ........................................................................................... 3
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8 .................................... 7
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................... 7
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ........................................... 7
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ...................... 7
`D. Service Information .................................................................................... 7
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 8
`III.
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 8
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) .................................. 8
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ................. 8
`SUMMARY OF THE ’969 PATENT ............................................................. 9
`V.
`VI. SUMMARY OF THE PRIOR ART .............................................................. 11
`A. Prisco ........................................................................................................ 11
`B. Cooper ...................................................................................................... 22
`C. Wallace ..................................................................................................... 24
`D. Tierney ...................................................................................................... 26
`VII. PROSECUTION HISTORY ......................................................................... 27
`VIII. PRIORITY DATE ......................................................................................... 28
`IX. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) .................. 28
`X.
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’969 PATENT IS UNPATENTABLE .................... 29
`A. Ground 1: Claims 23-26 are Anticipated under § 102(e) by Prisco ......... 29
`B. Ground 2: Claims 23-26 Would Have Been Obvious Under § 103
`over Prisco in View of Cooper ................................................................. 74
`C. Ground 3: Claims 23-26 Would Have Been Obvious over Prisco in
`View of Cooper and Tierney .................................................................... 77
`D. Ground 4: Claims 25-26 Would Have Been Obvious Under § 103
`over Prisco in View of Cooper and Wallace, and, If Necessary,
`Tierney ...................................................................................................... 79
`XI. CONCLUSION .............................................................................................. 87
`
`
`
`
`1
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`
`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)
`
`Declaration of Dr. Bryan Knodel (Prisco as Primary Reference)
`
`Reserved
`
`Reserved
`
`U.S. Patent No. 8,545,515 to Prisco et al. (“Prisco”)
`
`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”)
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`U.S. Patent App. No. 2008/0167672 to Giordano et al.
`
`(“Giordano”)
`
`
`
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`
`
`
`
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`
`
`
`
`
`
`
`
`
`
`
`
`IS1001
`
`IS1002
`
`IS1003
`
`IS1004
`
`IS1005
`
`IS1006
`
`IS1007
`
`IS1008
`
`IS1009
`
`IS1010
`
`IS1011
`
`IS1012
`
`IS1013
`
`IS1014
`
`
`
`2
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`
`
`
`I.
`
`INTRODUCTION
`Intuitive Surgical, Inc. (“Petitioner”) petitions for Inter Partes Review
`
`(“IPR”) of claims 23-26 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 designed by Petitioner and disclosed in its prior art patents:
`
`[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 at 31:52-59.1 Not surprisingly, the robotic surgical system described in the
`
`’969 Patent is uncannily similar to the prior art robotic surgical system described in
`
`Petitioner’s patents, including, for example, Petitioner’s prior art “Tierney” patent
`
`(U.S. Patent No. 6,331,181). IS1002 at 280-284; IS1009 (“Tierney”):
`
`
`1 Emphasis added in quotations throughout.
`
`3
`
`

`

`’969 Patent
`
`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`Tierney Prior Art
`
`Robotic Controller
`
`
`
`
`
`
`
`Robotic Manipulator
`
`
`
`4
`
`

`

`’969 Patent
`
`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`Tierney Prior Art
`
`Surgical Tool With Proximal Tool Holder
`
`
`Tool Drive Assembly
`
`
`
`
`
`
`IS1001, FIGs. 23, 25-27; IS1009, FIGs. 3A, 4, 7A, 7J, 8B.
`
`The grandparent application to the ’969 Patent was directed to a hand-held
`
`5
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`surgical instrument. Essentially, the ’969 Patent simply adds a surgical robot and
`
`attempts to patent the obvious combination of a surgical instrument adapted for a
`
`robot. Moreoever, the ’969 Patent does not add just any surgical robot, but
`
`specifically the prior art surgical robot of Petitioner, Intuitive Surgical, Inc.
`
`Not surprisingly, the Examiner found that the original claims of the ’969
`
`Patent read directly on Petitioner’s prior art patents. Specifically, the originally-
`
`filed independent claims were rejected as anticipated and obvious over 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 other robotic surgical patents, as exemplified by Prisco,
`
`Cooper, and Wallace. IS1003, ¶28. Indeed, the Prisco reference, which serves as
`
`the primary reference 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. In addition, the system disclosed in the Prisco prior art patent is
`
`specifically designed to interface with a variety of surgical instruments, including
`
`those of the type described in the ’969 Patent, such as surgical scissors, tissue
`
`graspers, and needle drivers. IS1006, 6:7-37; 8:34-44; 13:38-48; FIGs. 1A-3; 9A-
`
`9E.
`
`Prisco (alone or in combination with other references) renders at least the
`
`challenged claims invalid as anticipated and/or obvious. Petitioner requests IPR of
`
`6
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`
`the challenged claims on Grounds 1-4 below.
`
`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 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 IPR11030-0049IP9@fr.com (referencing No.
`
`7
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`11030-0049IP9 and cc’ing PTABInbound@fr.com, katz@fr.com, phillips@fr.com,
`
`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 23-26 of the ’969 Patent on the grounds
`
`listed below. A declaration from Dr. Bryan Knodel (IS1003) is provided in
`
`support.
`
`Grounds
`
`Claims
`
`Ground 1
`Ground 2
`
`23-26
`23-26
`
`Ground 3
`
`23-26
`
`Ground 4
`
`25-26
`
`Basis for Rejections under
`35 U.S.C. § 102 and §103
`Anticipated by Prisco (U.S. 8,545,515)
`Obvious over Prisco in view of Cooper (U.S.
`6,817,974)
`Obvious over Prisco in view of Cooper and
`Tierney (U.S. 6,331,181)
`Obvious over Prisco in view of Cooper and
`Wallace (U.S. 6,699,235), and, if necessary,
`Tierney
`
`As explained in greater detail in Section VIII, infra, the ’969 Patent is
`
`8
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`entitled to a priority date no earlier than May 27, 2011 (filing date of the parent of
`
`the ’969 Patent). The application that resulted in the Prisco patent was filed Nov.
`
`13, 2009, and claims priority to a provisional application filed Sep. 23, 2009.
`
`Prisco therefore qualifies as prior art under at least pre-AIA 102(e). Prisco was not
`
`cited during prosecution. See IS1002. Wallace issued March 2, 2004, and
`
`therefore qualifies as prior art under at least pre-AIA 102(b). Cooper issued on
`
`Nov. 16, 2004, and therefore qualifies as prior art under at least pre-AIA 102(b).
`
`Cooper was made of record during prosecution as part of an 82-page IDS filed
`
`after a notice of allowability that listed over 2,000 references, but Cooper was not
`
`substantively addressed or cited in any office action during prosecution. IS1002,
`
`357-438; 280-285. The specific combinations applied in this petition were not
`
`considered by the Examiner.
`
`V.
`
`SUMMARY OF THE ’969 PATENT
`The ’969 Patent discloses subject matter related to hand-held surgical
`
`instruments and to robotic surgical instruments, but the claims all relate to the
`
`robotic embodiments. As the title states, the ’969 Patent is directed to a “drive
`
`interface for operably coupling a manipulatable surgical tool to a robot.” IS1001,
`
`Title. The disclosed robotic surgical system includes the typical and expected
`
`components, for example, a “master controller and robotic arm cart” and a “tool
`
`drive assembly” that control the surgical tools. IS1001, 23:50-62; 24:62-25:29;
`
`9
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`FIGs. 26-27. As explained above, the robotic surgical system disclosed in the ’969
`
`Patent was copied from Petitioner’s prior art. Various embodiments of the claimed
`
`features are found in the prior art, for example, (1) a tool mounting portion; (2) an
`
`end effector (such as a surgical stapler); (3) a shaft assembly for coupling the end
`
`effector to the tool mounting portion; (4) an articulation joint; and/or (5) a “tube
`
`gear segment 5114” on the shaft of the instrument, which is used to rotate the shaft
`
`and end effector relative to the tool mounting portion:
`
`
`
`10
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`
`End Effector
`
`IS1001, FIGs. 26, 102; 25:1-26:56; 27:19-47; 30:26-64; 65:32-64; 82:42-83:23.
`
`
`
`
`
`None of these features were novel as of the filing of the ’969 Patent or its
`
`parent application (filed on May 11, 2011) to which the ’969 Patent claims priority.
`
`In fact, these features were found in petitioner’s own prior art patents as described
`
`below.
`
`VI. SUMMARY OF THE PRIOR ART
`A.
`Prisco
`Prisco describes various embodiments of a surgical tool for use with a
`
`robotic surgical system. IS1006 at 6:7-22; 8:4-44. “FIG. 1A is a front elevation
`
`view of the patient side cart component 100 of [Petitioner’s prior art] da Vinci®
`
`11
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`

`

`Surgical System.” IS1006, 6:14-15.
`
`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`
`Instrument
`Arm -
`
`Surgical
`Instrument
`
`IS1006, FIG. 1A.
`
`Patient Side Cart
`
`
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`“FIG. 1A further shows interchangeable surgical instruments 110a, 110b, 110c
`
`mounted on the instrument arms 106a, 106b, 106c . . . .” IS1006, 6:26-28. “FIG.
`
`1B is a front elevation view of a surgeon’s console 120 component of [Petitioner’s
`
`prior art] da Vinci ® Surgical System. The surgeon’s console is equipped with left
`
`and right multiple DOF [(degree of freedom)] master tool manipulators (MTMs)
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`122a, 122b . . . that are used to control the surgical tools[.]” IS1006, 6:38-42.
`
`- Surgeon’s Console
`
`12
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`
`IS1006, FIG. 1B.
`
`
`
`As shown below in FIG. 2A, each “[instrument] arm [106a, 106b, 106c] is
`
`divided into two portions. The first portion is the ‘set-up’ portion 202, in which
`
`unpowered joints couple the links. The second portion is powered, robotic
`
`manipulator portion 204 (patient side manipulator; ‘PSM’) that supports and
`
`moves the surgical instrument.” IS1006, 8:2-6, Fig. 2A.
`
`13
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`
`- Set-Up Portion
`
` - “Patient Side
` Manipulator” (PSM)
`
`“FIG. 2B [(below)] is a perspective view of a manipulator [PSM (patient side
`
`manipulator) 204] with an instrument [110] mounted.” IS1006, 3:4-5, FIG. 2B.
`
`
`
`14
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`
`Mounting
`Carriage
`
`Actuators
`
`Surgical
`Instrument
`
`- PSM
`
`Force Transmission Assembly
`
`Shaft
`- Wrist
`
`- End Effector
`
`
`
`PSM (patient side manipulator) 204 transmits rotary motion to the removable
`
`surgical instrument via “force transmission disks.” A driving set of force
`
`transmission disks is mounted on “mounting carriage 212” of PSM 204 and a
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`driven set of force transmission disks is mounted on the “force transmission
`
`assembly 230” of the surgical instrument (which is the “tool mounting portion” of
`
`Prisco). Prisco explains:
`
`Matching force transmission disks in mounting carriage
`212 and force transmission assembly 230 couple actuation
`forces from actuators 232 in PSM 204 to move various
`
`15
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`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
`DOFs, and operate a movable piece or grasping jaws of
`various end effectors. . . .
`
`IS1006, 8:34-44.
`
`Figure 4A of Prisco provides another view of the mounted surgical
`
`instrument, this time with a flexible shaft for use in a curved cannula. In this
`
`figure, the interface disks 414a “couple actuation forces from servo actuators in
`
`PSM 204a to move instrument 402a components” (e.g., to open and close end
`
`effector 408a):
`
`
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`16
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`
`- Interface Discs
`
`- Force Transmission Mechanism
`- Mounting Carriage
`
`PSM -
`
`Instrument -
`
`- Shaft
`
`- Cannula
`
`- End Effector
`
`
`
`IS1006, 10:31-41, FIG. 4A. Prisco explains:
`
`FIG. 4A is a schematic view of a portion of a patient side
`robotic manipulator [(PSM)] that supports and moves a
`combination of a curved cannula [416a] and a passively
`flexible surgical instrument [402a]. As depicted in FIG.
`
`17
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`4A, 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 [a mounting carriage] 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.
`
`IS1006, 10:31-41, FIG. 4A.
`
`Figures 5 and 6 of Prisco illustrate a surgical instrument with a flexible shaft
`
`in both curved and straight positions, respectively. “FIG. 5 is a diagrammatic view
`
`of an illustrative flexible instrument 500 used with a curved cannula. Instrument
`
`500 includes a proximal end force transmission mechanism 502, a distal end
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`surgical end effector 504, and a shaft 506 that couples force transmission
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`mechanism 502 and end effector 504.” IS1006, 12:8-13, FIG. 5.
`
`Shaft -
`
`Force -
`Transmission
`Mechanism
`
`
`“FIG. 6B is a diagrammatic view that illustrates aspects of a push/pull
`
`End -
`Effector
`
`18
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`[surgical] instrument design. As shown in FIG. 6B, a force transmission
`
`mechanism 620 is coupled to a grip type end effector 622 by a flexible shaft body
`
`624.” IS1006, 14:29-32, FIG. 6B.
`
`- Flexible Shaft Body
`Instrument -
`Force Transmission Assembly
`
`- End Effector
`
`
`
`Figure 9E provides a close up view of one of Prisco’s end effectors. In
`
`particular, “FIG. 9E is a diagrammatic view that illustrates a push/pull type end
`
`effector that may be at the distal end of the flexible shaft instruments (an
`
`illustrative clip applier end effector is shown).” IS1006, 19:42-45, FIG. 9E.
`
`19
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`
`
`It is typically necessary to rotate the shaft of a surgical instrument to
`
`reposition the end effector. Like the ’969 Patent, Prisco uses a tube gear to rotate
`
`the shaft. Prisco specifically discloses that the shaft is rotated by a “helical drive
`
`gear” that drives a tube gear called the “shaft roll gear,” as shown in FIG. 7C:
`
`20
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`
`
`
`IS1006, FIG. 7C; 15:36-16:7.
`
`
`
`Prisco also discloses articulation of the end effector via a “wrist” of the
`
`surgical instrument. For the wrist mechanism, Prisco incorporates Cooper, which
`
`is another surgical robotic reference: “A wrist to provide one or more end effector
`
`DOF’s [Degrees of Freedom] (e.g., pitch, yaw; see e.g., U.S. Pat. No. 6,817,974
`
`(filed 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.” IS1006, 10:43-48. This statement
`
`incorporates at least Cooper’s wrist mechanism as if it were set out expressly rather
`
`than through incorporation. IS1003, ¶42.
`
`Finally, Prisco discloses gear-driven actuation of the end effector. For
`
`21
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`example, Prisco discloses a “rack gear 784” that operates the grasping jaws of
`
`various end effectors. Pinion drive gears 782 cause rack gear 784 to move back
`
`and forth along the shaft’s longitudinal axis, thus pushing and pulling a drive rod
`
`that runs through the shaft and is coupled to the end effector jaws. IS1006, 16:13-
`
`23; FIG. 7D.
`
`Rack Gear
`
`Pinion Drive
`Gears
`
`
`
`B. Cooper
`As noted above, Prisco incorporates by reference at least the wrist
`
`mechanism disclosed in Cooper. Much like Prisco, Cooper discloses “a surgical
`
`instrument 400 having an elongate shaft” configured to releasably couple to “a
`
`robotic arm or system.” IS1007, 17:26-50. As shown in FIG. 36, the instrument
`
`400 includes an end effector 406 and a base 410, which couples the instrument to a
`
`robotic system. A shaft connects the end effector to the base and the shaft rotates
`
`in either direction to rotate the end effector, “as indicated by arrows H.”
`
`22
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`
`
`
`IS1007, FIG. 36; 17:35-50; see also FIG. 64; 24:1-23.
`
`Furthermore, Cooper’s surgical instrument includes an articulation system
`
`comprising a proximal disk 412 and a distal disk 416 coupled via grip support 420
`
`to an end effector 406. IS1003, ¶45. As shown in FIG 37, there are several pivot
`
`points between the proximal disk 412 and the distal disk 416 that supports end
`
`effector 406. Together these form an articulation joint (a wrist):
`
`23
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`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`
`Pivot Point
`
`Pivot Point
`
`Pivot Point
`
`Pivot Point
`
`
`
`IS1007, 5:54-6:3; 13:22-49, 17:25-64; FIGs. 14-21, 36-39, 51-56; see also 14:14-
`
`59 (“hinge mechanisms disposed on opposite sides of the disks guide the disks in
`
`pitch and yaw rotations to produce, for instance, the 90° pitch of the wrist 140”),
`
`21:49-22:41, FIGS. 17-21 (disclosing another embodiment having proximal and
`
`distal disks).
`
`C. Wallace
`Wallace discloses “a robotic surgical tool for use in a robotic surgical
`
`system” that, much like the surgical instrument of Prisco, includes a shaft for
`
`supporting a surgical end effector, the shaft supported by a “tool base 62 [that]
`
`24
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`includes an interface 64 which mechanically and electrically couples the tool 50 to
`
`a manipulator on the robotic arm cart” as shown in FIGs. 1 and 2A:
`
`End
`Effector
`
`Wrist
`Joint
`
`
`
`
`
`IS1008, FIGs. 1, 2A; Abstract; 7:33-56; IS1003, ¶46. Wallace further discloses an
`
`articulation assembly comprising a “wrist joint or mechanism” that is actuated by
`
`“a plurality of rods” that are driven by a gear assembly including “sector gears
`
`312” and “gears 400” to advance and retract rods to cause articulation of the
`
`articulation wrist joint. IS1008, 7:57-65; 13:6-14:15, FIG. 30; IS1003, ¶47.
`
`
`
`25
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`
`Wrist Articulation
`Gear Assembly
`
`Articulation Rods
`
`
`
`D. Tierney
`Prisco broadly and unequivocally incorporates Tierney by reference.
`
`IS1006, 15:17-20, IS1009. This incorporates all of Tierney into Prisco as if it were
`
`set out expressly rather than through incorporation. Harari v. Lee, 656 F.3d 1331,
`
`1335 (Fed. Cir. 2011) (holding that “the broad and unequivocal language” stating
`
`that “[t]he disclosures of the two applications are hereby incorporate[d] by
`
`reference” incorporated the entire disclosures of the two applications);2 Advanced
`
`
`2 See also Biscotti Inc. v. Microsoft Corp., No. 2:13-CV-01015-JRG-RSP, 2017
`
`U.S. Dist. LEXIS 144164, at *12 (E.D. Tex. May 11, 2017) (confirming that
`
`Harari, which addressed incorporation by reference in the context of written
`
`description, also applies to anticipation because “[t]he incorporation by reference
`
`doctrine . . . does not vary across different applications of the doctrine.”).
`
`26
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000)
`
`(“Material not explicitly contained in [a] single, prior art document may still be
`
`considered for purposes of anticipation if that material is incorporated by reference
`
`into the document.”); IS1003, ¶48. As noted above, the robotic surgical system
`
`described in the ’969 Patent appears to be the prior art robotic surgical system
`
`described in Petitioner’s Tierney patent. See Section I.
`
`VII. PROSECUTION HISTORY
`During prosecution, the USPTO issued a single office action rejecting the
`
`broad independent claims, but indicating 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. IS1002, 280-284.
`
`The applicant subsequently amended the independent claims to include subject
`
`matter deemed allowable and added new dependent 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, 311; 304-310. The examiner then issued a notice of allowance. Rather
`
`than allowing the patent to issue, the applicant filed an RCE and submitted an IDS
`
`listing over 2,000 references. IS1002 at 328-333; 357-483. A notice of allowance
`
`promptly followed, and the ’969 Patent issued on July 9, 2013. IS1002, 547-552;
`
`IS1001, Face.
`
`27
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`
`VIII. PRIORITY DATE
`The ’969 Patent issued from U.S. Application No. 13/369,609, which is a
`
`continuation of U.S. Application No. 13/118,259, filed on May 27, 2011, which is
`
`a continuation-in-part of U.S. Application No. 11/651,807, which issued as U.S.
`
`Patent No. 8,459,520. The grandparent ’807 application (IS1014) does not provide
`
`support for any of the challenged claims and therefore the ’969 Patent is entitled
`
`only to the priority date of the ’259 application: May 27, 2011. For example, each
`
`of the challenged independent claims (23-24) recites “[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.” Each of the challenged independent claims
`
`further recites that the surgical tool has a tool mounting portion “being configured
`
`to operably interface with the tool drive assembly” that has at least one “rotatable
`
`body portion.” IS1001, claims 23-24. The grandparent ’807 application provides
`
`no support for these recitations. IS1003, ¶¶29-31. Rather, the ’807 application is
`
`directed toward handheld “endoscopic surgical instrument[s]” with only a passing
`
`reference to “robotic-assisted surgery.” IS1014, ¶¶15, 89, FIGs. 1-2.
`
`IX. 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 a
`
`28
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`POSITA in view of the specification (“BRI”).3 37 CFR § 42.100(b).
`
`X. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’969 PATENT IS UNPATENTABLE
`As detailed below, claims 23-26 of the ’969 Patent are anticipated by Prisco
`
`or obvious over Prisco in view of Cooper, Tierney, and/or Wallace.
`
`A. Ground 1: Claims 23-26 are Anticipated under § 102(e) by Prisco
`[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 of claim [23] is deemed to be limiting, then Prisco discloses
`
`it. IS1003, ¶¶52-59. In addition, Prisco incorporates Tierney, which the PTO has
`
`already found discloses the preamble of claim 23. IS1006, 15:16-20; IS1002, 282-
`
`83 (rejecting original claim 1 as anticipated by Tierney).
`
`
`3 Petitioner acknowledges that the Office has proposed to change from the BRI
`
`standard to the standard applied in District Courts. See 83 Fed. Reg. 21221 (pro-
`
`posed May 9, 2018). Petitioner submits that the prior art discussed herein invali-
`
`dates the challenged claims under either standard. If the Office changes the rule
`
`after the filing of the Petition and applies the new standard to this proceeding, then
`
`due process requires the Office afford Petitioner an opportunity to provide addi-
`
`tional argument and evidence on that issue.
`
`29
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`“A surgical tool for use with a robotic system”
`
`Prisco discloses a surgical tool (e.g., surgical instruments 402a, 500) for use
`
`with a robotic system (Petitioner’s prior art da Vinci® Surgical System). IS1003,
`
`¶¶52- 53; IS1006, 6:14-15, 6:26-28, 6:38-42, 10:31-41, FIGs., 1A, 1C, 4A, 5. For
`
`example, FIG. 4A depicts surgical instrument 402a mounted to the PSM (patient
`
`side manipulator) 204a portion of an instrument arm via carriage 212a:
`
`- Interface Discs
`
`- Force Transmission Mechanism
`- Mounting Carriage
`
`PSM -
`
`Instrument -
`
`FIG. 4A
`
`- End Effector
`
`
`
`30
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`FIGs. 1A and 1B depict the robotic system on which the instrument is
`
`mounted. FIG. 1A shows the patient side cart 100 to which the surgical
`
`instruments are mounted, and FIG. 1B shows the surgeon’s console 120 used to
`
`control movement of the surgical instruments:
`
`
`
`IS1006, 6:14-15 (“FIG. 1A is a front elevation view of the patient side cart
`
`component 100 of the da Vinci ® Surgical System.”), 6:38-39 (“FIG.1B is a front
`
`elevation view of a surgeon’s console 120 component of the da Vinci ® Surgical
`
`System.”), Fig. 1A, 1B.
`
`31
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`The robotic system “has a tool drive assembly”
`
`
`
`Prisco’s robotic system contains a tool drive assembly (e.g., the combination
`
`of “actuators 232” and “mounting carriage 212”). “An illustrative surgical
`
`instrument 110 is shown mounted at an instrument mounting carriage 212” in FIG.
`
`2B of Prisco. IS1006, 8:15-17, FIG. 2B; IS1003, ¶¶54-55.
`
`Mounting
`Carriage
`
`Actuators
`
`- PSM
`
`Surgical
`Instrument
`
`Prisco explains that “actuators 232 in PSM [(patient side manipulator)] 204 . . .
`
`move various parts of instrument 110 in order to position, orient, and operate
`
`instrument end effector 234.” IS1006, 8:34-38; see also 10:37-41 (“Instrument
`
`
`
`32
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`402a is mounted on [a mounting carriage] 212a of a PSM 204a . . . . Interface
`
`discs 414a couple actuation forces from servo actuators in PSM 204a to move
`
`instrument 402a components.”).
`
`
`
`In addition, Prisco’s incorporation of Tierney discloses the same tool drive
`
`assembly as the ’969 Patent:
`
`’969 Patent
`
`Tierney
`
`Rotatable Bodies 1250
`Adapter
` |
`
` |
`Adapter
`
`Rotatable
`- Bodies
`
`Tool Drive -
`Assembly
` |
`Tool Holder
`
`Tool Holder -
`
`Drive
`Elements -
`
`Drive
`Elements
`1271
`
`
`
`
`Compare IS1001, FIG. 27 with IS1009, FIG. 7A, 7J, 7F; IS1003, ¶50; see also
`
`IS1009, 11:33-35, 4:33-35, 7:65-8:7, 10:12-15, 11:3-6, FIGs. 3A, 8A, 8B, 9FIGs.
`
`7F-7M.
`
`33
`
`

`

`IPR of U.S. Pat. No.: 8,479,969
`Attorney Docket No. 11030-0049IP9
`The tool drive assembly “is operably coupled to a control unit”
`
`Prisco’s tool drive assembly (the combination of “actuators 232” and
`
`“mounting carriage 212”) is operably coupled to a control unit (“surgeon’s console
`
`120” alone or in combination with “patient side cart 100”). IS1003, ¶56. “The
`
`surgeon’s console [120] is equipped with . . . master tool manipulators (MTMs)
`
`122a, 122b . . . that are used to control the surgical too