Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 43
`Date: January 13, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`IPR2018-01254
`Patent 8,479,969 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 43
`Date: January 13, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`IPR2018-01254
`Patent 8,479,969 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`IPR2018-01254
`Patent 8,479,969 B2
`
`I. INTRODUCTION
`Intuitive Surgical, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 1–11 and 24 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. In our Decision on Institution (Paper 7, “Dec. on Inst.”), we
`determined that the information presented in the Petition and Preliminary
`Response established a reasonable likelihood that Petitioner would prevail in
`its challenge of claims 1–11 and 24 of the ’969 patent as unpatentable under
`35 U.S.C. § 103 and, accordingly, we instituted inter partes review as to
`those claims. See 35 U.S.C. § 314(a) (2012).
`During the course of trial, Patent Owner filed a Patent Owner
`Response (Paper 14, “PO Resp.”), Petitioner filed a Reply to Patent Owner
`Response (Paper 17, “Pet. Reply”), Patent Owner filed redacted and
`unredacted versions of its Sur-reply (Papers 26 and 27) to Petitioner’s Reply
`(Paper 26, “PO Sur-reply”), and Petitioner filed a Sur-sur-reply to Patent
`Owner’s Sur-reply (Paper 31, “Pet. Sur-sur-reply”).1 A combined hearing
`for this case and related cases IPR2018-01247 and IPR2018-01248 was held
`on October 17, 2019, and a transcript of the hearing is included in the record.
`Paper 40. Patent Owner also filed an unopposed Motion to Seal. Paper 25.
`We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden
`of proving unpatentability of the challenged claims, and the burden of
`persuasion never shifts to Patent Owner. To prevail, Petitioner must prove
`
`
`1 Our decision does not rely on any information deemed confidential by the
`parties.
`
`2
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`IPR2018-01254
`Patent 8,479,969 B2
`unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e);
`37 C.F.R. § 42.1(d) (2017). This decision is a Final Written Decision under
`35 U.S.C. § 318(a) as to the patentability of claims 1–11 and 24 of the ’969
`patent. For the reasons discussed below, we hold that Petitioner has
`demonstrated by a preponderance of the evidence that claims 1–10 of the
`’969 patent are unpatentable under § 103(a). We also hold that Petitioner
`has not demonstrated by a preponderance of the evidence that claims 11 and
`24 of the ’969 patent are unpatentable under § 103(a).
`
`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, which claims priority, as a continuation-in-part, to an application
`filed January 10, 2007. Ex. 1001, codes (45), (22), (63).2 The ’969 patent is
`titled “Drive Interface for Operably Coupling a Manipulatable Surgical Tool
`to a Robot,” and generally relates to endoscopic surgical instruments. Id. at
`code (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.” Id. at code (57). Figure 26 of the ’969 patent is
`reproduced below:
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. § 100 et seq. effective on March 16, 2013. Because the ’969 patent
`issued from an application filed before March 16, 2013, we apply the pre-
`AIA versions of the statutory bases for unpatentability.
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`Figure 26 depicts “a perspective view of a surgical tool embodiment
`of the present invention.” Id. at 5:19–20. Figure 26 illustrates surgical tool
`1200 with end effector 2012, elongated shaft assembly 2008, and
`articulation joint 2011. Id. at 24:66–25:5. The ’969 patent describes that
`surgical tool 1200 is coupled to a robotic manipulator (not shown) by tool
`mounting portion 1300. Id. at 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.” Id. at 5:27–28. Figure 31 illustrates “tool
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`Patent 8,479,969 B2
`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.” Id. at 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.” Id. at
`25:19–22. The ‘969 patent describes that “adapter portion 1240 generally
`includes a tool side 1244 and a holder side 1246.” Id. at 25:30–31.
`Figure 27 of the ’969 patent is reproduced below:
`
`
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`Patent 8,479,969 B2
`Figure 27 depicts “an exploded assembly view of an adapter and tool
`holder arrangement for attaching various surgical tool embodiments to a
`robotic system.” Id. at 5:21–23. More particularly, Figure 27 illustrates that
`tool drive assembly 1010 “is operatively coupled to a master controller
`1001.” Id. at 24:62–66.
`
`
`B. The Challenged Claims
`Petitioner challenges claims 1–11 and 24 of the ’969 patent.
`
`Challenged claims 1 and 24 are independent. Claims 2–11 ultimately
`depend from claim 1. Claims 1 and 24 are illustrative and are reproduced
`below.
`A surgical tool for use with a robotic system that has a tool
`1.
`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:
`an elongated channel configured to operably support a
`surgical staple cartridge therein;
`an anvil that is selectively movable between a first open
`position and second closed positions relative to the
`elongated channel and wherein the surgical tool further
`comprises:
`an elongated shaft assembly operably coupled to said
`surgical end effector, said elongated shaft assembly
`comprising:
`a spine assembly including a distal end portion that is
`coupled to said elongated channel;
`a closure tube assembly movably supported on said
`spine assembly, said closure
`tube assembly
`comprising a distal end configured for operable
`interaction with said anvil; and
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`Patent 8,479,969 B2
`at least one gear-driven portion, wherein one said gear
`driven portion is in operable communication with said
`closure tube assembly and wherein said surgical tool
`further comprises:
`a tool mounting portion operably coupled to said
`elongated shaft assembly, said tool mounting portion
`being configured to operably interface with the tool
`drive assembly when coupled thereto and operably
`supporting a proximal end of the spine assembly
`thereon, 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
`closure tube assembly.
`Ex. 1001, 88:13–56.
`
`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:
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`IPR2018-01254
`Patent 8,479,969 B2
` 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[3] end of said proximal spine portion, said
`tool mounting portion being configured to operably
`interface with the tool drive assembly when coupled
`thereto, said tool mounting portion comprising:
` a driven element rotatably supported on said tool
`mounting portion and configured
`for driving
`engagement with a corresponding one of the at least
`one rotatable body portions of the tool drive assembly
`to receive corresponding rotary output motions
`therefrom; and
`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 95:35–96:14.
`
`
`3 A Certificate of Correction, mailed January 23, 2018, deleted the term
`“distal” here in claim 24 of the ’969 patent, and inserted in its place the term
`“proximal.” Ex. 1002, 686.
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`C. Related Proceedings
`The parties indicate that the ’969 patent is involved in: Ethicon LLC
`v. Intuitive Surgical, Inc., No. 1:17-cv-00871 in the United States District
`Court for the District of Delaware (“the Delaware litigation”).4 Pet. 6; Paper
`4, 2.
`
`Petitioner is also challenging the ’969 patent as well as other related
`patents in the following proceedings before the Board: (1) Case No.
`IPR2018-00933 (the ’601 patent); (2) Case No. IPR2018-00934 (the ’058
`patent); (3) Case No. IPR2018-00938 (the ’874 patent); (4) Case Nos.
`IPR2018-01248 and IPR2018-01247 (the ’969 patent); (5) Case No.
`IPR2018-00936 (the ’658 patent); (6) Case No. IPR2018-01703 (the ’431
`patent); and (7) Case No. IPR2019-00880 (U.S. Patent No. 7,490,749).
`Paper 4, 2.
`
`D. Real Parties in Interest
`Petitioner identifies itself as the only real party-in-interest. Pet. 1.
`Patent Owner identifies itself as a real party in interest. Patent Owner
`indicates that it is “an indirect subsidiary of Johnson & Johnson.” Paper 4,
`2.
`
`E. Evidence Relied Upon
`Petitioner relies on the following references in asserting that claims 1–
`11 and 24 of the ’969 patent are unpatentable:
`
`
`4 Patent Owner contends that U.S. Patent Nos. 9,585,658 B2 (“the ’658
`patent”), 8,616,431 B2 (“the ’431 patent”), 9,113,874 B2 (“the ’874
`patent”), 9,113,874 B2 (“the ’874 patent”), 9,084,601 B2 (“the ’601
`patent”), and 8,998,058 B2 (“the ’058 patent”) are also asserted in the
`Delaware litigation. Paper 4, 2–3
`
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`
`Reference
`
`Exhibit No.
`
`U.S. Patent No. 6,699,235 B2 issued Mar. 2, 2004
`(“Wallace”)
`
`U.S. Patent No. 6,331,181 B1 issued Dec. 18, 2001
`(“Tierney”)
`
`U.S. Patent App. Pub. No. US 2008/0167672 A1 published
`July 10, 2008 (“Giordano”)
`
`U.S. Patent No. 6,978,921 B2 issued Dec. 27, 2005
`(“Shelton”)
`
`U.S. Patent App. Pub. No. US 2007 /0158385 A1 published
`July 12, 2007 (“Hueil”)
`
`1008
`
`1009
`
`1014
`
`1015
`
`1016
`
`
`
`F. Instituted Grounds of Unpatentability
`We instituted review of claims 1–11 and 24 of the ’969 patent based
`on the following asserted grounds of unpatentability. Pet. 1–6, 20–96.
`35.
`U.S.C. §
`103
`103
`103
`103
`
`Claims Challenged
`1–11, 24
`1–11, 24
`1–6, 9–10
`7, 8, 11, 24
`
`References
`Giordano, Wallace
`Giordano, Wallace, Tierney
`Shelton, Wallace, Tierney
`Shelton, Giordano, Wallace,
`Tierney
`Shelton, Wallace, Tierney, Hueil
`
`103
`
`5, 6
`
`In support of its asserted grounds of unpatentability, Petitioner relies
`on the testimony of its expert witness, Dr. Bryan Knodel. Ex. 1005
`(“Knodel Decl.”); Ex. 1017 (“Knodel Supp. Decl.”). In support of its
`response, Patent Owner relies on the testimony of its expert witness, Dr.
`
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`Patent 8,479,969 B2
`Shorya Awtar. Ex. 2005 (“Awtar Decl.”). Both experts were cross-
`examined. See Ex. 1019 (deposition transcript of Dr. Shorya Awtar, “Awtar
`Dep. I”); Ex. 2011 (deposition transcript of Dr. Bryan Knodel, “Knodel
`Dep.”).
`
`III. ANALYSIS
`A. Claim Construction
`In an inter partes review filed before November 13, 2018, such as this
`one, 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.5
`37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2144–46 (2016) (upholding the use of the broadest reasonable interpretation
`standard). Consistent with the broadest reasonable construction, claim terms
`are presumed to have their ordinary and customary meaning as understood
`by a person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). The presumption may be overcome by providing a definition of the
`term in the specification with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
`absence of such a definition, limitations are not to be read from the
`specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184
`
`
`5 This Petition was filed before the effective date of the amendment to 37
`C.F.R. § 42.100 that changed the claim construction standard applied in inter
`partes reviews. Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
`Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
`November 13, 2018). Thus, we use the broadest reasonable interpretation
`claim construction standard for this proceeding.
`
`11
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`Patent 8,479,969 B2
`(Fed. Cir. 1993). Only those terms that are in controversy need be
`construed, and only to the extent necessary to resolve the controversy. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999);
`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter
`partes review).
`Here, neither Petitioner nor Patent Owner identifies terms for
`construction or provides any proposed constructions. Pet. 12; PO Resp. 10;
`see generally Pet. Reply; Prelim. Resp. 11. Instead, the parties agree that
`claims of the ’969 patent should be construed according to their broadest
`reasonable interpretation. Pet. 12; PO Resp. 10. We determine that no claim
`term needs express interpretation. See Vivid Techs., 200 F.3d at 803
`(“[O]nly those terms need be construed that are in controversy, and only to
`the extent necessary to resolve the controversy.”).
`
`
`B. Level of Ordinary Skill in the Art
`Petitioner’s expert, Dr. Knodel, testifies the following in connection
`with the level of ordinary skill in the art:
`A person of ordinary skill in the art [(POSITA)] 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.
`Ex. 1005 ¶ 26.
`Patent Owner does not appear to dispute Petitioner’s definition of one
`of ordinary skill in the art. See generally PO Resp. Neither party argues that
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`Patent 8,479,969 B2
`the outcome of this case would differ based on our adoption of any particular
`definition of one of ordinary skill in the art. In light of the record now
`before us, we adopt Petitioner’s definition of one of ordinary skill in the art.
`The level of ordinary skill in the art is also reflected by the references
`themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001) (“[T]he absence of specific findings on the level of skill in the art does
`not give rise to reversible error ‘where the prior art itself reflects an
`appropriate level and a need for testimony is not shown.’”); In re GPAC
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent
`Appeals and Interferences did not err in concluding that the level of ordinary
`skill in the art was best determined by the references of record).
`
`
`C. Post-Institution Summary
`In our Decision on Institution, we concluded that the arguments and
`evidence advanced by Petitioner demonstrated a reasonable likelihood that
`(1) claims 1‒11 and 24 of the ’969 patent are unpatentable under 35 U.S.C.
`§ 103(a) over Giordano and Wallace, (2) claims 1‒11 and 24 of the ’969
`patent are unpatentable under 35 U.S.C. § 103(a) over Giordano, Wallace,
`and Tierney, (3) claims 1‒6 and 9–10 of the ’969 patent are unpatentable
`under 35 U.S.C. § 103(a) over Shelton, Wallace, and Tierney, (4) claims 7,
`8, 11, and 24 of the ’969 patent are unpatentable under 35 U.S.C. § 103(a)
`over Shelton, Giordano, Wallace, and Tierney, and (5) claims 5 and 6 of the
`’969 patent are unpatentable under 35 U.S.C. § 103(a) over Shelton,
`Wallace, Tierney, and Hueil. Dec. on Inst. 11–27.
`We must now determine whether Petitioner has established by a
`preponderance of the evidence that the specified claims are unpatentable
`
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`over the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent
`Owner that “any arguments for patentability not raised in the [Patent Owner
`Response] will be deemed waived.” Paper 8, 5; see also 37 C.F.R.
`§ 42.23(a) (“Any material fact not specifically denied may be considered
`admitted.”); In re NuVasive, Inc., 842 F.3d 1376, 1379–1382 (Fed. Cir.
`2016) (holding patent owner waived argument addressed in preliminary
`response by not raising argument in the patent owner response).
`Additionally, the Board’s Trial Practice Guide states that the patent owner
`response “should identify all the involved claims that are believed to be
`patentable and state the basis for that belief.” Patent Trial and Appeal Board
`Consolidated Trial Practice Guide 66 (Nov. 2019) (“The Board will not
`institute on fewer than all claims or all challenges in a petition.”), available
`at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
`
`D. Ground 1: Claims 1–11 and 24 – Obvious over Giordano and Wallace
`Petitioner contends that claims 1–11 and 24 would have been obvious
`over Giordano and Wallace. Pet. 20–90.
`
`1. Principles of Law
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, objective indicia of non-obviousness (i.e.,
`
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`secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). We analyze this asserted ground based on obviousness with the
`principles identified above in mind.6
`
`2. Overview of Giordano (Ex. 1014)7
`Giordano is directed to an endoscopic or laparoscopic surgical
`instrument that includes “a shaft having a distal end connected to [an]
`effector and a handle connected to a proximate end of the shaft.” Ex. 1014
`¶ 15. Figure 2 of Giordano is reproduced below.
`
`
`Figure 2 depicts a perspective view of Giordano’s surgical instrument.
`Id. ¶ 21. More particularly, Figure 2 illustrates
`a handle 6, a shaft 8, and an articulating end effector 12 pivotally
`connected to the shaft 8 at an articulation pivot 14. Correct
`
`6 We note that the record does not contain any evidence or argument directed
`to objective indicia of non-obviousness.
`7 Giordano is the published grandparent application to which the ’969 patent
`claims priority. Patent Owner does not contend that Giordano is not
`available as prior art. See, e.g., PO Resp. 2–3, 12–15, 18–19.
`
`15
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`placement and orientation of the end effector 12 may be
`facilitated by controls on the hand [sic] 6, including (1) a rotation
`knob 28 for rotating the closure tube . . . to thereby rotate the end
`effector 12 and (2) an articulation control 16 to effect rotational
`articulation of the end effector 12 about the articulation pivot 14.
`Id. ¶ 34. Figure 2 also illustrates that handle 6 includes “a closure trigger 18
`and a firing trigger 20 for actuating the end effector 12.” Id. ¶ 35. With
`respect to closure trigger 18, Giordano discloses that its “anvil 24 may be
`pivotably opened and closed at a pivot point 25,” shown in Figure 3, when
`closure trigger 18 is actuated. Id. ¶ 39. With respect to firing trigger 20,
`Giordano discloses that when
`main drive shaft 48 is caused to rotate by actuation of the firing
`trigger 20 (as explained in more detail below), the bevel gear
`assembly 52a-c causes the secondary drive shaft 50 to rotate,
`which in turn, because of the engagement of the drive gears 54,
`56, causes the helical screw shaft 36 to rotate, which causes the
`knife 32 to travel longitudinally along the channel 22 to cut any
`tissue clamped within the end effector.
`Id. ¶ 42; see id. at Fig. 5.
`Giordano incorporates Shelton by reference to provide “more details
`about such two-stroke cutting and fastening instruments.” Id. ¶ 39.
`Accordingly, we discuss Shelton next.
`
`3. Overview of Shelton (Ex. 1015)
`Shelton is titled “Surgical Stapling Instrument Incorporating an E-
`Beam Firing Mechanism.” Ex. 1015, code (54). Shelton is directed to a
`surgical severing and stapling instrument that is suitable for laparoscopic
`and endoscopic clinical procedures. Id. at code (57). Figure 6 of Shelton is
`reproduced below:
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`Figure 6 illustrates handle portion 20 including separate closure
`trigger 26 and firing trigger 28. Id. at 7:6–8:38. Shelton discloses “closure
`yoke 86 is housed within the handle portion 20 for reciprocating movement
`therein and serves to transfer motion from the closure trigger 26 to the
`closure sleeve 32.” Id. at 7:51–53. To position end effector 12, Shelton
`discloses
`proximal end 90 of the closure sleeve 32 is provided with a flange
`92 that is snap-fitted into a receiving recess 94 formed in a distal
`end 96 of the yoke 86. A proximal end 98 of the yoke 86 has a
`gear rack 100 that is engaged by the gear segment section 76 of
`the closure trigger 26. When the closure trigger 26 is moved
`toward the pistol grip 24 of the handle portion 20, the yoke 86
`and, hence, the closure sleeve 32 move distally, compressing a
`spring 102 that biases the yoke 86 proximally.
`Id. at 7:58–67. Shelton discloses “handle portion 20 is illustrative and that
`other actuation mechanisms may be employed. For instance, the closing and
`firing motions may be generated by automated means.” Id. at 9:47–50.
`
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`Overview of Wallace (Ex. 1008)
`4.
`Wallace is titled “Platform Link Wrist Mechanism.” Ex. 1008, code
`(54). Wallace’s Abstract reads as follows:
`The present invention provides a robotic surgical tool for
`use in a robotic surgical system to perform a surgical operation.
`The robotic surgical tool includes a wrist mechanism disposed
`near the distal end of a shaft which connects with an end effector.
`The wrist mechanism includes a distal member configured to
`support the end effector, and a plurality of rods extending
`generally along an axial direction within the shaft and movable
`generally along this axial direction to adjust the orientation of the
`distal member with respect to the shaft. The distal member has
`a base to which the rods are rotatably connected by orthogonal
`linkage assemblies.
`Id. at code (57). Figure 1 of Wallace is reproduced below:
`
`
`
`Figure 1 “is a perspective overall view of an embodiment of the
`surgical tool of the present invention.” Id. at 6:26–27. Figure 1 illustrates
`surgical tool 50 including
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`rigid shaft 52 having a proximal end 54, a distal end 56 and a
`longitudinal axis there between. The proximal end 54 is coupled
`to a tool base 62. The tool base 62 includes an interface 64 which
`mechanically and electrically couples the tool 50 to a
`manipulator on the robotic arm cart. A distal member, in this
`embodiment a distal clevis 58, is coupled to shaft 52 by a wrist
`joint or wrist mechanism 10, the wrist mechanism 10 providing
`the distal clevis 58 with at least 1 degree of freedom and ideally
`providing at least 3 degrees of freedom. The distal clevis 58
`supports a surgical end effector 66, the actual working part that
`is manipulable for effecting a predetermined treatment of a target
`tissue.
`Id. at 7:33–47. Wallace discloses that “end effector 66 is manipulated by the
`wrist mechanism 10 to provide the ability of continuous movement in a wide
`range of angles (in roll, pitch and yaw) relative to an axial direction or the
`longitudinal axis 51 of the shaft 52.” Id. at 7:57–60. Wallace further
`discloses that its “wrist mechanism includes a distal member, configured to
`support the end effector, and a plurality of rods extending generally along an
`axial direction within the shaft and movable generally along this axial
`direction to adjust the orientation of the distal member with respect to the
`axial direction or shaft.” Id. at 3:54–59. Wallace additionally discloses that
`“[t]he plurality of rods may comprise two, three, four or more rods.” Id. at
`4:28–29.
`Wallace incorporates Tierney by reference to provide details
`regarding “Surgical Robotic Tools, Data Architecture, and Use.” Id. at
`1:16–18. Accordingly, we discuss Tierney next.
`
`Overview of Tierney (Ex. 1009)
`5.
`Tierney is titled “Surgical Robotic Tools, Data Architecture, and
`Use.” Ex. 1009, code (54). More particularly, Tierney is directed to
`“surgical tools having improved mechanical and/or data interface
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`capabilities to enhance the safety, accuracy, and speed of minimally invasive
`and other robotically enhanced surgical procedures.” Id. at 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, 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).” Id. at 6:20–28.
`
`Discussion
`6.
`Petitioner contends that claims 1–11 and 24 of the ’969 patent would
`have been obvious in view of the combined teachings of Giordano (which
`incorporates by reference the prior art surgical stapler of Shelton)
`(“Giordano/Shelton”) and Wallace (which incorporates by reference the
`details of the surgical tool disclosed in Tierney) (“Wallace/Tierney”). Pet.
`20–90. We have reviewed the Petition, Patent Owner Response, Petitioner
`Reply, Patent Owner Sur-reply, Petitioner Sur-sur-reply, as well as the
`relevant evidence discussed in those papers and other record papers, and are
`persuaded that the record establishes by a preponderance of the evidence
`Petitioner’s contentions for claims 1–10, and we adopt Petitioner’s
`contentions discussed below as our own findings and conclusions.
`However, as discussed in greater detail below, we determine that Petitioner
`has failed to make the requisite showing regarding claims 11 and 24.
`
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`a)
`
`Independent claim 1 and dependent claims 2–10
`(1) Petitioner’s Contentions
`The preamble8 of independent claim 1 sets forth, among other things,
`“[a] surgical tool for use with a robotic system.” Petitioner asserts that
`“Giordano’s incorporation of Shelton discloses ‘surgical stapling and
`severing instrument 10’ (‘the Shelton stapler’), which is a manually operated
`surgical tool.” Pet. 21 (citing Ex. 1005 ¶¶ 49–55; Ex. 1015, 5:22–45, Figs.
`1, 2). Although the surgical tool disclosed by Giordano/Shelton is manually
`operated, Petitioner asserts that it would have been obvious to modify the
`Shelton stapler for use with a robotic system based on the disclosure of
`Wallace/Tierney. Pet. 21 (citing Ex. 1005 ¶ 50).
`Petitioner explains that “the closing motion of Shelton is driven by
`rotation of ‘gear segment section 76’ and the firing motion is driven by
`rotation of the “gear segment section 156.” Pet. 23. Petitioner asserts that
`Wallace discloses a surgical tool that has “tool base 62 which includes an
`interface 64 which mechanically and electrically couples the tool 50 to a
`manipulator on the robotic arm cart.” Pet. 24 (citing Ex. 1008, 7:37–40).
`Petitioner explains that the tool in Wallace includes “gears 400,” which are
`powered by a robotic system to provide “rotational actuation motions for
`Wallace’s instrument.” Pet. 24 (citing Ex. 1008, 13:48–54). Petitioner
`provides the following side-by-side reproduction of Figure 30 of Wallace
`and Figure 6 of Tierney, annotated to identify, among several items, gears
`400 and driven elements 118. Pet. 24.
`
`
`8 We need not decide whether the preamble of claim 1 is limiting for
`purposes of this Decision, because Petitioner has shown that the cited art
`teaches the preamble.
`
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`
`Figure 30, annotated to identify “Gears 400,” depicts Wallace’s gears
`400. Figure 6, annotated to identify “Driven Elements”, depicts Tierney’s
`driven elements 118. Petitioner explains that “Tierney, incorporated by
`reference, teaches that the gears would be driven by ‘driven elements 118’
`on the interface side of the tool base (which are turned by rotatable bodies
`on the adapter on the robot arm).” Pet. 24 (citing Ex. 1009, 16:41–52).
`Based on the above, Petitioner takes the position that
`[a] POSITA would have readily understood that the Shelton
`device could be modified for robotic use by removing the handle
`and triggers and connecting the “second gear r
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