UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`v.
`ETHICON LLC,
`Patent Owner
`
`IPR2018-01248
`U.S. Patent No. 8,479,969
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`v.
`ETHICON LLC,
`Patent Owner
`
`IPR2018-01248
`U.S. Patent No. 8,479,969
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .......................................................................................... 1
`
`STATUTORY DISCLAIMER ........................................................................ 4
`
`III. THE 969 PATENT .......................................................................................... 5
`
`A. Overview ............................................................................................... 5
`
`B.
`
`Priority Date ........................................................................................ 11
`
`IV. CLAIM CONSTRUCTION .......................................................................... 11
`
`V.
`
`THE PRIOR ART .......................................................................................... 12
`
`A.
`
`B.
`
`Prisco ................................................................................................... 12
`
`Cooper ................................................................................................. 17
`
`C. Wallace ................................................................................................ 21
`
`D.
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`Tierney ................................................................................................. 24
`
`VI. REASONS WHY THE PETITION SHOULD BE DENIED ....................... 24
`
`A. Grounds 1 And 4 Fail Because They Do Not Disclose All
`Limitations Of The Respective Challenged Claims ............................ 24
`
`1.
`
`Ground 1 Fails Because Prisco Does Not Disclose All Of
`The Elements Of Claim 24, Arranged As In The Claim .......... 24
`
`a)
`
`b)
`
`Prisco’s Cable-Driven Embodiment Does Not
`Disclose The Claimed Gear-Driven Portion In
`Operable Communication With A Selectively
`Moveable Component ..................................................... 26
`
`Prisco’s Drive Rod Embodiment Does Not Disclose
`The Claimed Articulation Joint ...................................... 27
`
`i
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`
`
`2.
`
`Ground 4 Fails Because The Proposed Combination Does
`Not Disclose All Limitations Of Claim 24, From Which
`Claims 25 And 26 Depend ........................................................ 31
`
`B.
`
`Grounds 2-4 Fail Because Petitioner Does Not Establish A
`Motivation To Combine Or Reasonable Expectation of Success ....... 32
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Grounds 2-4: No combination of any asserted prior art
`with Prisco’s cable-driven embodiment renders claims 24-
`26 obvious ................................................................................. 34
`
`Grounds 2 and 3: Petitioner provides no explanation for
`how to combine the incompatible systems of Prisco’s
`drive rod embodiment and Cooper ........................................... 34
`
`Grounds 2-4: Prisco teaches away from combining its
`embodiments with Cooper’s wrist mechanism ......................... 36
`
`Ground 4: Petitioner provides no explanation for how to
`combine the incompatible systems of Prisco, Cooper, and
`Wallace ...................................................................................... 38
`
`Petitioner fails to show a reasonable expectation of
`success ....................................................................................... 40
`
`VII. CONCLUSION .............................................................................................. 42
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`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Arctic Cat Inc. v. Bombardier Recreational Prod. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017), cert. denied, 2018 WL 2766092
`(U.S. Oct. 1, 2018) .......................................................................................... 3, 33
`In re Arkley,
`455 F.2d 586 (Fed. Cir. 1972) ............................................................................ 25
`Compass Bank v. Intellectual Ventures II,
`IPR2014-00786, Paper 46 (P.T.A.B. Sept. 23, 2015)................................... 36, 41
`Connell v. Sears, Roebuck & Co.,
`722 F.2d 1542 (Fed. Cir. 1983) .......................................................................... 25
`Corning Inc. v. DSM IP Assets,
`IPR2013-00050, Paper 77 (P.T.A.B. May 1, 2014) ..................................... 36, 41
`Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. De C.V.,
`865 F.3d 1348 (Fed. Cir. 2017) .......................................................................... 33
`Institut Pasteur v. Focarino,
`738 F.3d 1337 (Fed. Cir. 2013) .......................................................................... 33
`Kinetic Concepts Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 33
`Microsoft Corp. v. Biscotti, Inc.,
`878 F.3d 1052 (Fed. Cir. 2017) .................................................................... 25, 31
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .......................................................................... 24
`Panasonic Corp. v. Optical Devices, LLC,
`IPR2014-00302, Paper 9 (P.T.A.B. July 11, 2014) ............................................ 25
`Symantic Corp. v. RPost Comm’cns, Ltd.,
`IPR2014-00357, Paper 14 (P.T.A.B. July 15, 2014) .......................................... 25
`
`iii
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`
`
`
`
`Vectra Fitness, Inc. v. TNWK Corp.,
`162 F.3d 1379 (Fed. Cir. 1998) ............................................................................ 4
`Statutes
`35 U.S.C. § 253(a) ..................................................................................................... 4
`Other Authorities
`37 C.F.R. § 1.321(a) ................................................................................................... 4
`37 C.F.R. § 42.65(a) ........................................................................................... 36, 41
`37 C.F.R. § 42.100(b) .............................................................................................. 12
`37 C.F.R. § 42.107(e) ................................................................................................. 4
`37 CFR § 42.6(a)(2)(ii) ............................................................................................ 44
`37 CFR § 42.6(a)(2)(iii) ........................................................................................... 44
`37 CFR § 42.8 .......................................................................................................... 44
`37 CFR § 42.24(a)(1)(i) ........................................................................................... 44
`77 Fed. Reg. 48,756 (Aug. 14, 2012)....................................................................... 12
`83 Fed. Reg. 51,340 (Oct. 11, 2018) ........................................................................ 12
`
`
`
`iv
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`EXHIBIT LIST
`
`Exhibit #
`
`2001
`
`2002
`
`Description
`Excerpts of a technology tutorial filed in Ethicon v. Intuitive
`Surgical, C.A. No. 1-17:cv-871 (LPS) (CJB) (D. Del. June 28,
`2018)
`Patent Statutory Disclaimer for U.S. Patent No. 8,479,969 filed on
`October 15, 2018
`
`v
`
`
`
`
`
`I.
`
`INTRODUCTION
`Ethicon is a market leader in developing endocutter1 technology and
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`commercially released its first endocutter in 1996. Since then, Ethicon has
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`developed numerous endocutters to address changing surgical needs. In 2011,
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`Ethicon introduced its first motor-powered endocutter – the ECHELON FLEX™
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`Powered ENDOPATH® Stapler. Ethicon’s motor-powered endocutters offer
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`numerous benefits including dramatically reducing the force required to operate an
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`endocutter and providing reliability across a broad range of tissue thicknesses.
`
`The challenged claims of U.S. Patent No. 8,479,969 (“the 969 Patent”) are
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`directed to an articulating endocutter surgical tool that operatively couples to a robot
`
`surgical system. More specifically, the 969 Patent improves upon prior robotic
`
`surgical tools, such as an ultrasound probe, that were known to be “unable to
`
`generate the magnitude of forces required to effectively cut and fasten tissue” as is
`
`required of an endocutter. Ex. 1001, 23:6-29. The 969 Patent’s innovative tool base
`
`for an endocutter overcame these limitations of the prior art systems.
`
`
`1 An endocutter is a surgical instrument that both staples and cuts tissue. The term
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`“stapler” can also be used to refer to this type of device, but can also refer to a device
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`that only staples. Exhibit 2001 includes excerpts of a technology tutorial on
`
`endocutters that was filed in the District of Delaware on June 28, 2018.
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`1
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`
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`Petitioner’s obviousness challenge is primarily based on U.S. Patent No.
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`8,545,515 (“Prisco”), a patent issued in 2013 that is assigned to Petitioner. Prisco
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`discloses an endoscopic surgery instrument that extends through a rigid, curved
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`cannula. Ex. 1006, Abstract. The instrument has an end effector comprised of two
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`jaws that open and close. Ex. 1006, Fig. 9A, 9C, 9E. Prisco does not disclose any
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`capability for stapling or cutting tissue.
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`Prisco’s instrument couples to a robotic system through a comparatively
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`rudimentary tool base that controls the shaft rotation and end effector. Prisco
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`discloses two different embodiments of the tool base: one in which the end effector
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`is controlled by cables, and one in which the end effector is controlled by a drive rod
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`mechanism. In order to arrive at the more sophisticated instruments claimed by the
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`969 Patent, Petitioner proposes to combine, either through incorporation by
`
`reference or by an obviousness argument, Prisco with aspects of various other
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`surgical instruments disclosed in U.S. Patent Nos. 6,817,974 (“Cooper”), 6,699,235
`
`(“Wallace”), and 6,331,181 (“Tierney”).
`
`Petitioner’s anticipation ground based on Prisco fails, however, because
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`Prisco does not disclose all of the elements as arranged in the challenged claims of
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`the 969 Patent. Specifically, Prisco does not disclose a surgical instrument that
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`includes an end effector with a selectively moveable component, a rotating shaft,
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`and an articulating wrist, as required by claim 24. Although Petitioner contends that
`
`2
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`
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`Prisco includes such a disclosure through incorporation by reference of Cooper,
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`Prisco expressly teaches the benefits that are attained by not including an articulating
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`wrist in its device, such that a POSITA would not have understood Prisco to disclose
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`arranging all of the elements of claim 24 as they are in the claim.
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`Petitioner’s obviousness grounds fail to satisfy the basic standard for
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`establishing obviousness. Petitioner does not explain how Prisco’s tool base could
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`be adapted to preserve the functionality of Prisco’s instrument while also supporting
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`the additional functionalities that Petitioner proposes to incorporate from Cooper,
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`Tierney, and Wallace. Indeed, as discussed in detail herein, none of the prior art
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`references Petitioner relies upon discloses a robotic instrument base that provides a
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`sufficient number of control motions to operate an instrument having all of the
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`functionalities recited in the challenged claims.
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`Additionally, Petitioner fails to offer any evidence of reasonable expectation
`
`of success in the combination of any of the references. This failure alone is grounds
`
`to deny institution. See Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 876
`
`F.3d 1350, 1360-61 (Fed. Cir. 2017) (“where a party argues a skilled artisan would
`
`have been motivated to combine references, it must show the artisan would have had
`
`3
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`
`
`
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`a reasonable expectation of success from doing so”) (internal citation and quotation
`
`omitted), cert. denied, 2018 WL 2766092 (U.S. Oct. 1, 2018).2
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`For these reasons, and the additional reasons explained in detail below, Patent
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`Owner respectfully requests that the Board deny institution as to all grounds asserted
`
`in the petition.
`
`II.
`
`STATUTORY DISCLAIMER
`On October 15, 2018, Ethicon filed with the U.S. Patent and Trademark Office
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`a statutory disclaimer of claim 23 of the 969 Patent under 35 U.S.C. § 253(a) and 37
`
`C.F.R. § 1.321(a). A copy of the statutory disclaimer is submitted as Exhibit 2002
`
`in this proceeding. Based on this disclaimer, the 969 Patent is to be treated as though
`
`claim 23 never existed. Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383
`
`(Fed. Cir. 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
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`disclaimed claims never existed.”). As a result of the statutory disclaimer of claim
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`23, and pursuant to 37 C.F.R. § 42.107(e), it is respectfully submitted that the
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`institution decision in this proceeding should be based only on the remaining
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`challenged claims—24-26—of the 969 Patent.
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`2 All emphasis added unless otherwise noted.
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`4
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`
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`III. THE 969 PATENT
`A. Overview
`The challenged claims of the 969 Patent are directed to novel implementations
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`of a “surgical tool for use with a robotic system.” The surgical tool of independent
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`claim 24 includes, inter alia, transmission assembly in meshing engagement with a
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`gear-driven portion to apply control motions to a selectively moveable component
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`of the end effector as well as an elongated shaft comprising proximal and distal spine
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`portions coupled at an articulation joint to facilitate articulation of the end effector.
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`Ex. 1001, claim 24. The claimed surgical tools each include “a tool mounting
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`portion operably coupled to” the instrument shaft that is “configured to operably
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`interface with the tool drive assembly” of the robotic system in order to apply control
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`motions to various components of the instrument, such as the cutting blade or the
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`selectively movable end effector. Id. An endocutter embodiment of the 969 Patent
`
`is depicted in Figure 132:
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`5
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`
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`Ex. 1001, Fig. 132
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`
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`The instrument includes an endocutter end effector (6012) that has a movable
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`upper jaw/anvil (6024) that moves between first and second positions relative to the
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`lower jaw (6022). Ex. 1001, 77:7-13. The endocutter end effector also includes a
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`cutting instrument that moves between first and second positions relative to the
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`lower jaw (6022). Id., 84:27-37. The end effector 6012 is located on one end of the
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`elongated shaft (6008), which has an articulation joint (6100). Id., 76:62-67. The
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`articulation joint 6100 allows the shaft to selectively articulate on two axes, one that
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`is transverse to the longitudinal tool axis (designated “LT”), and one that is
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`transverse to both the first articulation axis and LT. Id., 77:38-46. These axes are
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`6
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`
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`designated “TA1” and “TA2” in Figure 133, which provides a more detailed view
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`of the articulation joint 6100:
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`Ex. 1001, Fig. 133
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`
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`The instrument couples to the surgical system via the tool mounting portion
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`(6200). Id., 77:1-2. Figure 136 below shows the tool mounting portion 6200 in
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`detail. The tool mounting portion includes an articulation transmission system
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`(6142) that controls articulation about the articulation joint 6100. Id., 78:23-34. The
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`robotic system controls the articulation transmission system by applying a first
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`rotary output motion to the articulation drive gear (6322). Id., 81:28-82:19.
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`7
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`
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`Ex. 1001, Fig. 136
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`
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` The tool mounting portion includes closure transmission (6512) including a
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`closure gear assembly (6520) to close the anvil (6420) of the endocutter in response
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`to a third rotary output motion from the robotic system to the closure spur gear
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`(6522). Id., 83:44-84:26.
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`The tool mounting portion additionally includes a knife drive transmission
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`portion (6550) including a knife gear assembly (6560) to fire the cutting instrument
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`to cut tissue in response to a fourth rotary output motion from the robotic system to
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`the knife spur gear (6562). Id., 84:38-85:16.
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`8
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`
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`The tool mounting portion also includes a rotational transmission assembly
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`(6400) that imparts rotary control motion for rotating the instrument shaft about the
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`longitudinal axis LT-LT. Id., 82:42-51. The robotic system controls the rotational
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`transmission assembly by applying a second rotary output motion to the rotation
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`drive gear (6412). Id., 83:9-15.
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`Thus, as discussed above and described in detail by the 969 Patent, the
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`“unique and novel transmission arrangement” of the 969 Patent allows a robotic
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`system with four output motions to control (i) articulation about two different
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`articulation axes that are substantially transverse to each other and the longitudinal
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`tool axis: (ii) end effector rotation about the longitudinal tool axis; (iii)
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`opening/closing of the end effector anvil to clamp tissue; and (iv) firing the cutting
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`instrument to cut tissue. Id., 85:17-32. As noted in the 969 Patent, “[t]he unique and
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`novel shifter arrangements . . . enable two different articulation actions to be
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`powered from a single rotatable body portion of the robotic system.” Id., 85:32-36.
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`Unlike prior art robotic tool mounts, which were “unable to generate the magnitude
`
`of forces required to effectively cut and fasten tissue,” the gears of the 969 Patent’s
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`embodiments were further sized to generate the necessary force to close the anvil
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`and cut and staple tissue. Id., 23:6-29, 84:20-26, 85:4-10.
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`Petitioner devotes several pages of the Petition to alleging that the 969 Patent
`
`copied Petitioner’s Tierney patent. Petition at 3-6. Petitioner’s insinuations,
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`9
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`
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`however, misrepresent the contributions of the 969 Patent. As an initial matter, the
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`969 Patent does not purport to have invented robotic surgical systems; indeed, the
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`969 Patent specification expressly discloses examples of known prior art robotic
`
`systems and robotic tools, including Tierney.3 Ex. 1001, 23:6-29. Thus, the
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`inclusion of figures 23 and 25 depicting known robotic systems is of no moment,
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`and provides the appropriate context for the invention.
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`Importantly, the 969 Patent further discloses that these systems were known
`
`to be “unable to generate the magnitude of forces required to effectively cut and
`
`fasten tissue.” Id. As discussed above, the 969 Patent’s innovative tool base
`
`overcame these limitations of the prior art systems. Moreover, as discussed in
`
`greater detail below, Tierney is directed primarily to the robotic surgical system
`
`itself, and discloses few details about particular surgical instruments or how the
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`instrument functions are controlled through the instrument base. The 969 Patent, by
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`contrast, discloses a novel instrument base that allows a robotic system, using only
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`four rotary outputs, to control an endocutter that grasps tissue in the end effector,
`
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`3 The disclosure of robotic systems at col. 23, lines 6-29 in the 969 Patent (Ex. 1001)
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`includes U.S. 7,524,320, which has the same specification and figures as Tierney.
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`Specifically, U.S. 7,524,320 is a continuation of U.S. 7,048,745, which is a division
`
`of Tierney.
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`10
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`
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`cuts and staples tissue, articulates about an articulation joint, and rotates about a
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`longitudinal axis. Id., 85:17-36. The Petition’s allegations of copying wholly ignore
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`the significant advancements described and claimed in the 969 Patent as compared
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`to the robotic system disclosed in Tierney.
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`Priority Date
`B.
`Petitioner contends that the challenged claims of the 969 Patent are not
`
`entitled to a priority date earlier than May 27, 2011. Petition at 28. The 969 Patent
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`claims priority to application No. 11/651,807, which was filed on Jan. 10, 2007. Ex.
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`1001, (63). Because the Petition should be denied, for the reasons set forth herein,
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`regardless of the effective filing date of the challenged claims, Patent Owner does
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`not address Petitioner’s priority date arguments in this paper, but reserves all rights
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`to subsequently contend in any instituted IPR or in any other proceeding that the
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`challenged claims are entitled to their earliest claimed effective filing date.
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`IV. CLAIM CONSTRUCTION
`For purposes of IPR only, the claims of the 969 Patent should be construed
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`using the broadest reasonable construction in light of the specification of the patent.
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`11
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`
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`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012);
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`37 C.F.R. § 42.100(b)4.
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`V. THE PRIOR ART
`Prisco
`A.
`Prisco is directed to an endoscopic surgery instrument that extends through a
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`rigid, curved cannula. Ex. 1006, Abstract. Prisco describes that in a typical prior art
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`robotic surgery procedure, multiple incisions (or “ports”) are made into the patient’s
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`body in order to introduce an endoscope and the necessary surgical instruments. Id.,
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`8:56-64. According to Prisco, such “multi-port” procedures allow for very little
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`movement of the instrument end effectors, and the instrument shafts can obscure the
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`surgeon’s field of view through the endoscope. Id., 9:33-49. Attempts to improve
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`field of view by crossing the instrument shafts within the body proved
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`disadvantageous because they required the surgeon to operate the instruments via a
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`non-intuitive, “backwards” control scheme. Id., 9:49-62.
`
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`4 Patent Owner recognizes that the USPTO has issued a final rule revising the claim
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`construction standard for IPR proceedings filed on or after November 13, 2018. See
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`83 Fed. Reg. 51,340 (Oct. 11, 2018). Because Petitioner filed its Petition on June
`
`14, 2018, the broadest reasonable interpretation standard should apply to this IPR
`
`pursuant to pre-October 11, 2018 37 C.F.R. § 42.100(b).
`
`12
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`
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`
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`Similarly, Prisco describes that “single port” surgery procedures, in which all
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`instruments are passed through a single incision, were also susceptible to similar
`
`issues because the single port constrained the surgeon’s ability to achieve
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`triangulation with multiple instruments, and the instrument shafts likewise could
`
`obscure the view through the endoscope. Id., 9:5-32. Additionally, the use of robotic
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`systems was more difficult with single port procedures because the bulk of the
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`robotic manipulator arms further limited the available range of movement. Id.
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`Prisco explains that surgeons attempted to use instruments with rigid, curved shafts
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`to improve triangulation in single port procedures, but the rigid shafts limited the
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`surgeons’ precision and ability to insert and withdraw the instruments from the
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`surgical site. Id., 9:63-10:15. Moreover, such instruments were not always
`
`compatible with robotic systems because they required increased degrees of freedom
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`(DOF). Id., 10:16-29.
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`To address these issues, the allegedly inventive concept of Prisco was to insert
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`flexible instruments into the surgical site through rigid curved cannulas, thus
`
`allowing for easier insertion and removal while maintaining effective triangulation
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`and surgical action at the surgical site. Id., 1:58-2:42. Prisco also discloses a robotic
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`control system that uses kinematic data to allow more intuitive control of the
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`instruments. Id., 2:51-60.
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`Examples of Prisco’s curved cannula systems are shown in Figures 4C and 5.
`
`13
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`
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`Ex. 1006, Figs. 4C and 5
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`As shown in Figure 4C, curved cannulas 416a and 416b allow instruments to
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`be introduced into the surgical site. As shown in Figure 5, each instrument has an
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`end effector 504 and a passively flexible shaft 506. Id., 12:8-17. The shaft sections
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`506a-506c are sufficiently rigid to transmit shaft roll motions. Id., 12:45-49.
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`For robotic surgery, the instruments couple to the robotic system through an
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`instrument base, which Prisco calls a “force transmission mechanism 502.” Figures
`14
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`
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`
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`7B and 7D illustrate the two embodiments of Prisco’s instrument base that
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`Petitioners have identified as relevant to the petition.
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`Figure 7B’s instrument base is shown below, along with the corresponding
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`end effector of Figure 9C that the instrument base controls.
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`Ex. 1006, Figs. 7B and 9C
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`
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`
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`As shown above, the embodiment of Figures 7B and 9C uses a cable-driven
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`mechanism for controlling the end effector’s gripping action. As indicated in red,
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`capstan 736 is coupled to two tension elements (i.e., cables) 734. Id., 15:36-43.
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`Rotating the capstan 736 pulls one of the two cables (depending on direction of
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`rotation), which in turn opens or closes the end effector jaws as shown in Figure 9C.
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`Id., 15:39-43, 19:23-27. As shown in green, a shaft roll gear 742 and helical drive
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`15
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`
`
`
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`gear 740 are cross-connected to provide shaft roll motions. Id., 15:43-45. Notably,
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`however, Prisco does not disclose that the helical drive gear 740 can rotate in two
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`directions to provide bi-directional shaft roll. By contrast, where Prisco does
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`disclose bi-directional rotation, it does so with a double-sided arrow, such as arrow
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`738, which indicates the bi-directional rotation of capstan 736.
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`Figures 7D and 9E illustrate a different embodiment of Prisco’s instrument.
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`Ex. 1006, Figs. 7D and 9E
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`
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`
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`In this embodiment, two pinion drive gears 782 (shown in red) engage a rack
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`gear 784, which is coupled to a “push/pull drive element rod” (i.e., drive rod). Id.,
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`16:19-29. As shown in Figure 9E, pushing the drive rod causes the end effector jaws
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`to open, while pulling it back causes the jaws to close. Id., 19:42-47. In this
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`16
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`
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`
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`embodiment, as in the Figure 7B embodiment, a shaft roll gear and helical drive
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`gear, shown in green, provide shaft roll motions.
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` None of Prisco’s embodiments disclose an articulation joint to articulate the
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`instrument shaft. Prisco cites and purports to incorporate by reference Cooper as an
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`example of a disclosure of a “wrist to provide one or more end effector DOF’s (e.g.,
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`pitch, yaw…),” but further notes that the wrist joint is “optional and is not shown.”
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`Id., 10:43-48.
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` Moreover, Prisco expressly states
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`that many
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`instrument
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`implementations do not include a wrist, and that omitting the wrist “simplifies the
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`number of actuation force interfaces” between the robotic surgery system and the
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`instrument, and also “reduces the number of force transmission elements (and hence,
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`instrument complexity and dimensions) that would be necessary” between the force
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`transmission mechanism and the portion of the instrument being actuated. Id.,
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`10:48-55. Consistent with this teaching away from the use of a wrist, Prisco
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`expressly discloses that its instrument base is a modified da Vinci Surgical System
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`base in which the “mechanisms used to control a wrist mechanism on the
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`instrument” have been “eliminated.” Id., 14:59-64.
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`B. Cooper
`Cooper is an issued patent that discloses a surgical instrument with a cable-
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`driven “wrist mechanism” that provides articulation in the form of “pitch and yaw
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`rotation in such a way that the tool has no singularity in roll, pitch, and yaw.” Ex.
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`17
`
`
`
`
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`1007, Abstract; Fig. 36. “Singularity,” according to Cooper, refers to a problem in
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`prior art articulating instruments in which, at “about 90° pitch, the yaw and roll
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`rotational movements overlap, resulting in the loss of one degree of rotational
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`movement.” Id., 2:58-60. The purported improvement disclosed by Cooper is a wrist
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`mechanism comprised of “a plurality of disks or vertebrae stacked or coupled in
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`series,” with each disk “configured to rotate in at least one degree of freedom or
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`DOF (e.g., in pitch or in yaw) with respect to each neighboring disk or end member.”
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`Id., 2:63-3:9. “Actuation cables or tendon elements are used to manipulate and
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`control movement of the disks, so as to effect movement of the wrist mechanism.”
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`Id., 3:21-23. According to Cooper, this mechanism allows for articulation without
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`singularity in roll, pitch, and yaw. Id., Abstract; 2:63-66.
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`Cooper’s wrist mechanism is depicted in Figures 39 and 40:
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`18
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`
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`Ex. 1007, Figs. 39 and 40
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`
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`As shown in Figure 39, actuator cables 446 and 448 run through the interior
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`of the disks that make up the wrist mechanism. The opening and closing of the end
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`effector jaws (not shown in these figures) is controlled by pulling on the opening
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`actuator cable 446 and closing actuator cable 448, respectively. Id., 17:65-18:33.
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`As shown in Figure 40, wrist control cables 452 and 454 also run through the interior
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`of the disks, and are used to manipulate the movement of the wrist joint. Id., 18:42-
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`51.
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`Cooper’s instrument couples to a robotic surgery system through an
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`instrument base, which Cooper refers to as the “back end” 801 and which is depicted
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`in Figures 64 and 65:
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`19
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`
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` Ex. 1007, Figs. 64 and 65
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`
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`A close-up of the operative portions of the back end 801 is further provided in
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`Figure 67, which has been annotated to show the key components:
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`Ex. 1007, Fig. 67
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`
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`
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`20
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`
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`
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`As shown in the figures above, the back end includes follower gear quadrants
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`814 and 816, which drive actuator links 804 and 806 to produce pitch and yaw
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`rotations. Id., 24:8-21. The follower gear quadrants 814 and 816 are rotated by the
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`first and second drive gears 824 and 826, which receive rotary motion from the
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`robotic system via drive spools 834 and 836. Id., 24:12-14. The drive gears 824 and
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`826 and drive spools 834 and 836 are annotated in blue, above. The grip actuation
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`cables 446 and 448 that control the opening and closing of the end effector terminate
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`at a pair of hub clamps 866 and 868, and are tensioned by applying torque (i.e., rotary
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`motion from the robotic system) to the hub clamps. Id., 24:34-39. The hub clamps
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`866 and 868 are indicated above in red. Finally, a helical drive gear 840 drives a
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`follower gear 842 to provide shaft roll. Id., 24:21-23. The helical drive gear 840 and
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`follower gear 842 are indicated above in green.
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`Thus, Cooper discloses a cable-driven device that requires four rotary inputs
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`from the robotic system in order to control (1) shaft roll, (2) end effector grip, (3)
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`pitch articulation, and (4) yaw articulation.
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`C. Wallace
`Wallace is directed to a robotic surgical instrument with a “wrist mechanism”
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`that allows the end effector to articulate under the control of a series of rods. Ex.
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`1008, Abstract. Examples of the wrist mechanism are shown in Figures 2A and 3.
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`21
`
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`
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` Ex. 1008, Figs. 2A and 3
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`
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` Wallace’s instrument couples to a robotic system through a tool base 62,
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`shown in Figure 30. Id., 7:37-40.
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`22
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`
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` Ex. 1008, Fig. 30
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`
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`The articulation rods shown in Figures 2A and 3 emerge into the tool base as
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`rods 300. Id., 13:44-45. Gears 400 rotate the sector gears 312 (shown in blue above),
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`which advance or retract individual ones of the rods 300 to actuate the wrist
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`mechanism. Id., 13:47-54. Gear 420 (shown in green above) rotates the roll pulley
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`310, which causes the rods and the instrument shaft to rotate around the central axis
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`of the shaft. Id., 13:66-14:10. Thus, Wallace’s tool base utilizes three rotary output
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`motions (those of the two gears 400 and the one gear 420) to control two instrument
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`motions (wrist articulation and shaft rotation).
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`23
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`
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`D. Tierney
`Tierney is a patent directed to a robotic surgical system. Prisco purports to
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`incorporate Tierney by reference, at least insofar as Tierney discloses a data
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`architecture for storing operational parameters in the memory of the robotic system.
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`Ex. 1006, 15:12-20. Petitioner appears to rely on Tierney solely for its disclosure of
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`the robotic system; Petitioner does not cite Tierney for any specifics of the surgical
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`instrument that couples to the robotic system.
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`VI. REASONS WHY THE PETITION SHOULD BE DENIED
`A. Grounds 1 And 4 Fail Because They Do Not Disclose All
`Limitations Of The Respective Challenged Claims
`1. Ground 1 Fails Because Prisco Does Not Disclose All Of The
`Elements Of Claim 24, Arranged As In The Claim
`Petitioner asserts in Ground 1 that Prisco anticipates claims 23-26. As noted
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`above, Patent Owner has disclaimed claim 23, and therefore any institution of
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`Ground 1 must be based on the remaining challenged claims, claims 24-26.
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`Pe
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