Trials@uspto.gov
`571-272-7822
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`
`
`
`Paper 7
`January 15, 2019
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01254
`Patent 8,479,969 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 7
`January 15, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01254
`Patent 8,479,969 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`IPR2018-01254
`Patent 8,479,969 B2
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`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. We have authority under 35 U.S.C. § 314(a), which provides that
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`an inter partes review may not be instituted “unless . . . the information
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`presented in the petition . . . and any response . . . shows that there is a
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`reasonable likelihood that the petitioner would prevail with respect to at least
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`1 of the claims challenged in the petition.” Moreover, a decision to institute
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`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
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`in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
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`Upon consideration of the Petition and the Preliminary Response, we
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`conclude that the information presented shows there is a reasonable
`
`likelihood that Petitioner would prevail in showing the unpatentability of at
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`least one challenged claim. As explained in our discussion below, we do not
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`find a sufficient basis to use our discretion to deny institution under 35
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`U.S.C. § 325(d), and as such, we authorize an inter partes review to be
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`instituted as to claims 1–11 and 24 of the ’969 patent on the ground raised in
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`the Petition. Our factual findings and conclusions at this stage of the
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`proceeding are based on the evidentiary record developed thus far (prior to
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`Patent Owner’s Response). This is not a final decision as to patentability of
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`claims for which inter partes review is instituted. Any final decision will be
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`based on the record, as fully developed during trial.
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`IPR2018-01254
`Patent 8,479,969 B2
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`II. BACKGROUND
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`A. The ’969 Patent
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`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, [45], [22], [63]. The ’969 patent is titled
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`“Drive Interface for Operably Coupling a Manipulatable Surgical Tool to a
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`Robot,” and generally relates to endoscopic surgical instruments. Ex. 1001,
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`[54]; 1:54–57. The ’969 patent summarizes its disclosure as encompassing a
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`surgical instrument “for use with a robotic system that has a control unit and
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`a shaft portion,” which together with an electrically conductive elongated
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`member, “transmit[s] control motions from the robotic system to an end
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`effector.” Ex. 1001, [57]. Figure 26 of the ’969 patent is reproduced below:
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`Figure 26 depicts “a perspective view of a surgical tool embodiment
`
`of the present invention.” Ex. 1001, 5:19–20. Figure 26 illustrates surgical
`
`tool 1200 with an end effector 2012, elongated shaft assembly 2008, and
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`articulation joint 2011. Ex. 1001, 24:66–25:5. The ’969 patent describes
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`Patent 8,479,969 B2
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`that surgical tool 1200 is coupled to a robotic manipulator (not shown) by a
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`tool mounting portion 1300. Ex. 1001, 25:5–7.
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`Figure 31 of the ’969 patent is reproduced below:
`
`
`
`Figure 31 depicts “a partial bottom perspective view of the surgical
`
`tool embodiment of FIG. 26.” Ex. 1001, 5:27–28. Figure 31 illustrates “tool
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`mounting portion 1300 includes a tool mounting plate 1302 that operably
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`supports a plurality of (four are shown in FIG. 31) rotatable body portions,
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`driven discs or elements 1304, that each include a pair of pins 1306 that
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`extend from a surface of the driven element 1304.” Ex. 1001, 25:11–16.
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`Figure 31 further depicts that “[i]nterface 1230 includes an adaptor portion
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`1240 that is configured to mountingly engage the mounting plate 1302.” Ex.
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`25:19–22. The ‘969 patent describes that “adapter portion 1240 generally
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`includes a tool side 1244 and a holder side 1246.” Ex. 1001, 25:30–31.
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`Figure 27 of the ’969 patent is reproduced below:
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`IPR2018-01254
`Patent 8,479,969 B2
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`Figure 27 depicts “an exploded assembly view of an adapter and tool
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`holder arrangement for attaching various surgical tool embodiments to a
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`robotic system.” Ex. 1001, 5:21–23. More particularly, Figure 27 illustrates
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`that tool drive assembly 1010 “is operatively coupled to a master controller
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`
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`1001.” Ex. 1001, 24:62–66.
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`IPR2018-01254
`Patent 8,479,969 B2
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`B. Illustrative Claims
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`
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`Challenged claims 1 and 24 are independent. Claims 2–10 ultimately
`
`depend from claim 1. Claim 1 is illustrative and is reproduced below.
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`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
`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
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`IPR2018-01254
`Patent 8,479,969 B2
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`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.
`
`
`
`C. Related Proceedings
`
`The parties indicate that the ’969 patent is involved in: Ethicon LLC
`
`et al. v. Intuitive Surgical, Inc. et al., No. 1:17-cv-00871 in the United States
`
`District Court for the District of Delaware (“the Delaware litigation”).1 Pet.
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`6; Paper 4, 2.
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`Petitioner is also challenging the ’969 patent as well as other related
`
`patents in the following proceedings before the Board: (1) Case No.
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`IPR2018-00933 (the ’601 patent); (2) Case No. IPR2018-00934 (the ’058
`
`patent); (3) Case No. IPR2018-00938 (the ’874 patent); (4) Case Nos.
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`IPR2018-01248 and IPR2018-01247 (the ’969 patent); (5) Case No.
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`IPR2018-00936 (the ’658 patent); and (6) Case No. IPR2018-01703 (the
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`’431 patent).
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`D. Earliest Effective Filing Date
`
`Petitioner asserts that May 27, 2011, the day the ’969 patent
`
`
`1 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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`Patent 8,479,969 B2
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`application was filed, as a continuation-in-part is the earliest effective filing
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`date. Pet. 11.
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`Patent Owner asserts that the ’969 patent “claims priority to
`
`application No. 11/651,807, which was filed on Jan. 10, 2007.” Prelim.
`
`Resp. 11 (citing Ex. 1001, (63). Patent Owner further asserts
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`[b]ecause the Petition should be denied, for the reasons set forth
`herein, regardless of the effective filing date of the challenged
`claims, Patent Owner does not address Petitioner’s priority date
`arguments in this paper, but reserves all rights to subsequently
`contend in any instituted IPR or in any other proceeding that the
`challenged claims are entitled to their earliest claimed effective
`filing date.
`
`Prelim. Resp. 11. In view of the above, and at this stage, we do not resolve
`
`this issue at this time.
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`E. Real Parties in Interest
`
`Petitioner identifies itself as the only real party-in-interest. Pet. 1.
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`F. Evidence Relied Upon
`
`Petitioner relies on the following references in asserting that claims 1–
`
`11 and 24 of the ’969 patent are unpatentable:
`
`Reference
`
`Exhibit No.
`
`U.S. Patent No. 6,699,235 issued Mar. 2, 2004 (“Wallace”)
`
`U.S. Patent No. 6,331,181 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 issued Dec. 27, 2005 (“Shelton”)
`
`1008
`
`1009
`
`1014
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`1015
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`8
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`Patent 8,479,969 B2
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`U.S. Patent App. Pub. No. US 2007 /0158385 A1 published
`July 12, 2007 (“Hueil”)
`
`1016
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`Petitioner also relies upon a Declaration of Dr. Bryan Knodel.
`
`Ex. 1005.
`
`G. The Asserted Grounds of Unpatentability
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`Petitioner contends that claims 1–11 and 24 are unpatentable based on
`
`the following grounds:
`
`References
`Giordano and Wallace
`
`Basis
`§ 103
`
`Claim(s) Challenged
`1–11 and 24
`
`Giordano, Wallace, and Tierney
`
`§ 103
`
`Shelton, Wallace, and Tierney
`
`Shelton, Giordano, Wallace, and
`Tierney
`Shelton, Wallace, Tierney, and
`Hueil
`
`§ 103
`
`§ 103
`
`§ 103
`
`
`
`1–11 and 24
`
`1–6 and 9–10
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`7, 8, 11, and 24
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`5 and 6
`
`III. ANALYSIS
`
`A. Claim Construction
`
`The claim construction standard to be employed in an inter partes
`
`review recently has changed. See Changes to the Claim Construction
`
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`
`and Appeal Board, 83 Fed. Reg. 51,340 (Nov. 13, 2018) (to be codified at 37
`
`C.F.R. pt. 42). That new standard, however, applies only to proceedings in
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`which the petition is filed on or after November 13, 2018. This Petition was
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`filed on June 14, 2018. Under the standard in effect at that time, “[a] claim
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`in an unexpired patent . . . shall be given its broadest reasonable construction
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`in light of the specification of the patent in which it appears.” 37 C.F.R.
`
`§ 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
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`9
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`2142 (2016) (upholding the use of the broadest reasonable interpretation
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`standard). Accordingly, we determine whether to institute trial in this
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`proceeding using the broadest reasonable construction standard. In
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`determining the broadest reasonable construction, we presume that claim
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`terms carry their ordinary and customary meaning. See In re Translogic
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`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A patentee may define a
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`claim term in a manner that differs from its ordinary meaning; however, any
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`special definitions must be set forth in the specification with reasonable
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`clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480
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`(Fed. Cir. 1994).
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`Here, neither Petitioner nor Patent Owner identifies terms for
`
`construction or provides any proposed constructions. See Pet. 12; Prelim.
`
`Resp. 11. Instead, the parties agree that claims of ’969 patent should be
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`construed according to their broadest reasonable interpretation. Pet. 12;
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`Prelim. Resp. 11. For the purposes of this Decision, we determine that no
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`claim term needs express interpretation. See Vivid Techs., Inc. v. Am. Sci. &
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`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
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`construed that are in controversy, and only to the extent necessary to resolve
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`the controversy.”).
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`B. Level of Ordinary Skill in the Art
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`Petitioner’s Declarant, Dr. Knodel, testifies the following in
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`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
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`10
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`Patent 8,479,969 B2
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`industry experience may compensate for a deficit in one of the
`other aspects of the requirements stated above.
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`Ex. 1005 ¶ 26.
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`Patent Owner does not challenge the above-noted testimony or offer
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`any assessment of its own as to the level of ordinary skill in the art. For
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`purposes of this Decision, we adopt Dr. Knodel’s assessment of the level of
`
`ordinary skill in the art. We further find that the cited prior art references
`
`reflect the appropriate level of skill at the time of the claimed invention and
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`that the level of appropriate skill reflected in these references is consistent
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`with the definition of a person of ordinary skill in the art proposed by
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`Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`C. Ground 1: Claims 1–11 and 24 – Obvious over Giordano and Wallace
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`Petitioner contends that claims 1–11 and 24 would have been obvious
`
`over Giordano and Wallace. Pet. 20–90. Patent Owner opposes. Prelim.
`
`Resp. 18–25.
`
`1. Overview of Giordano (Ex. 1014)2
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`Giordano is directed to an endoscopic or laparoscopic surgical
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`instrument which 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.
`
`
`2 Giordano is the published grandparent application to which the ’969 patent
`claims priority.
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`11
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`Patent 8,479,969 B2
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`
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`Figure 2 depicts a perspective view of a surgical instrument of the
`
`present invention. 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
`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 (described in more detail
`below in connection with FIGS. 4–5) at a free rotating joint 29
`of the shaft 8 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.
`
`Ex. 1014 ¶ 34. Figure 2 also illustrates that handle 6 includes “a closure
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`trigger 18 and a firing trigger 20 for actuating the end effector 12.” Ex. 1014
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`¶ 35. With respect to closure trigger 18, Giordano discloses that its “anvil
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`24 may be pivotably opened and closed at a pivot point 25,” shown in Figure
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`3, when closure trigger 18 is actuated. Ex. 1014 ¶ 39. With respect to firing
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`trigger 20, Giordano discloses when
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`main drive shaft 48 is caused to rotate by actuation of the firing
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`12
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`Patent 8,479,969 B2
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`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.
`
`Ex. 1014 ¶ 42.
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`Giordano incorporates Shelton by reference to provide “more details
`
`about such two-stroke cutting and fastening instruments.” Ex. 1014 ¶ 39.
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`Accordingly, we discuss Shelton next.
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`2. Overview of Shelton (Ex. 1015)
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`Shelton is titled “Surgical Stapling Instrument Incorporating an E-
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`Beam Firing Mechanism.” Ex. 1015, [54]. Shelton is directed to a surgical
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`severing and stapling instrument that is suitable for laparoscopic and
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`endoscopic clinical procedures. Ex. 1015, [57]. Figure 6 of Shelton is
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`reproduced below:
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`Figure 6 illustrates handle portion 20 including separate closure
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`trigger 26 and firing trigger 28. Ex. 1015, 7:6–8:38. Shelton discloses
`
`“closure yoke 86 is housed within the handle portion 20 for reciprocating
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`movement therein and serves to transfer motion from the closure trigger 26
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`to the closure sleeve 32.” Ex. 1015, 7:51–53. To position end effector 12,
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`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.
`
`Ex. 1015, 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.” Ex. 1015, 9:47–
`
`50.
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`3.
`
`Overview of Wallace (Ex. 1008)
`
`Wallace is titled “Platform Link Wrist Mechanism.” Ex. 1008, [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.
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`Ex. 1008, [57]. Figure 1 of Wallace is reproduced below:
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`
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`Figure 1 “is a perspective overall view of an embodiment of the
`
`surgical tool of the present invention.” Ex. 1008, 6:26–27. Figure 1
`
`illustrates surgical tool 50 including
`
`
`
`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.
`
`Ex. 1008, 7:33–47. Wallace discloses that “end effector 66 is manipulated
`
`by the wrist mechanism 10 to provide the ability of continuous movement in
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`a wide range of angles (in roll, pitch and yaw) relative to an axial direction
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`or the longitudinal axis 51 of the shaft 52.” Ex. 1008, 7:57–60. Wallace
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`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.” Ex. 1008, 3:54–59. Wallace
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`additionally discloses that “[t]he plurality of rods may comprise two, three,
`
`four or more rods.” Ex. 1008, 4:28–29.
`
`Wallace incorporates Tierney by reference to provide details
`
`regarding “Surgical Robotic Tools, Data Architecture, and Use.” Ex. 1008,
`
`1:16–18. Accordingly, we discuss Tierney next.
`
`4.
`
`Overview of Tierney (Ex. 1009)
`
`Tierney is titled “Surgical Robotic Tools, Data Architecture, and
`
`Use.” Ex. 1009, [54]. More particularly, Tierney is directed to “surgical
`
`tools having improved mechanical and/or data interface capabilities to
`
`enhance the safety, accuracy, and speed of minimally invasive and other
`
`robotically enhanced surgical procedures.” Ex. 1009, 1:11–15. Tierney
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`describes that robotic surgery generally involves the use of robotic arms
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`which “often support a surgical tool which may be articulated (such as jaws,
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`scissors, graspers, needle holders, microdissectors, staple appliers, tackers,
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`suction/irrigation tools, clip appliers, or the like) or non-articulated (such as
`
`cutting blades, cautery probes, irrigators, catheters, suction orifices, or the
`
`like).” Ex. 1009, 6:20–28.
`
`5.
`
`Petitioner’s Contentions
`
`Petitioner contends that claims 1–11 and 24 of the ’969 patent would
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`have been obvious in view of the combined teachings of Giordano (which
`
`incorporates by reference the prior art surgical stapler of Shelton) and
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`Wallace (which incorporates by reference the details of the surgical tool
`
`disclosed in Tierney). Petitioner provides detailed assessment of the content
`
`of the prior art in advocating that all the features of claims 1–11 and 24 are
`
`shown therein. See Pet. 20–90. Petitioner also supports that assessment
`
`with citation to the Declaration testimony of Dr. Knodel (Ex. 1005).
`
`For example, the preamble of independent claim 1 sets forth “[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
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`surgical tool.” Pet. 21 (citing Ex. 1005 ¶¶ 49–55; Ex. 1015, 5:22–45, Figs.
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`1–2). Although the surgical tool disclosed by Giordano/Shelton is manually
`
`operated, Petitioner asserts that it would be obvious to modify the Shelton
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`stapler for use with a robotic system based on the disclosure of
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`Wallace/Tierney. Pet. 21 (citing Ex. 1005 ¶ 50).
`
`Petitioner explains that “the closing motion of Shelton is driven by
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`rotation of ‘gear segment section 76’ and the firing motion is driven by
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`rotation of the “gear segment section 156.” Pet. 23. Petitioner asserts that
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`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
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`provides the following side-by-side reproduction of Figure 30 of Wallace
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`17
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`IPR2018-01254
`Patent 8,479,969 B2
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`and Figure 6 of Tierney, annotated to identify, among several items, gears
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`400 and driven elements 118. Pet. 24.
`
`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
`
`[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 rack 142” of
`Shelton to one of the actuation gears 400 on the Wallace tool
`base and connecting the “gear rack 100” of Shelton to another
`one of the actuation gears 400. In the combination, the gear 400
`that replaced “gear segment section 76” of Shelton would drive
`“gear rack 100” to open and close the anvil of the modified
`stapler. The gear 400 that replaced “gear segment section 156”
`of Shelton would drive “second gear rack 142” to fire the
`modified stapler.
`
`Pet. 24–25 (citing Ex. 1005 ¶ 50). Petitioner contends that a POSITA would
`
`have been motivated to modify Shelton’s stapler with Wallace’s robotic
`
`system for several reasons. See Pet. 25–28.
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`18
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`The preamble of independent claim 1 also includes “[a] tool drive
`
`assembly that is operatively coupled to a control unit . . . and is configured
`
`to provide at least one rotary output motion to at least one rotatable body
`
`portion supported on the tool drive assembly.” Petitioner asserts that
`
`“Wallace’s incorporation of Tierney discloses a tool drive assembly (the
`
`combination of the tool holder 129 and drive elements 119) that is
`
`operatively coupled to a control unit (master control station 150 alone or in
`
`combination with robotic arm slave cart 50).” Pet. 28–30 (citing Ex. 1005
`
`¶¶ 56–57; Ex. 1009, 4:33–35, 7:65–8:7, 10:14–15, 11:5–6, 11:33–35, Figs.
`
`3A, 7J, 8A, 8B, 9; Ex. 1014, 3:12–15). Petitioner provides the following
`
`side-by-side reproduction of Figures 7C and 7F of Tierney, annotated to
`
`identify, among several items, rotatable bodies, 134, adapter 128, and tool
`
`holder 129. Pet. 24.
`
`Petitioner explains that Tierney’s tool drive assembly is “also configured to
`
`provide at least one rotary output motion to at least one rotatable body
`
`portion (‘rotatable bodies 134’ of adapter 128) supported on the tool drive
`
`assembly (‘tool holder portion 129’).” Pet. 30 (citing Ex. 1005 ¶ 57; Ex.
`
`
`
`19
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`1009, 10:46–51).
`
`The preamble of independent claim 1 also includes “[a] control unit of
`
`the robotic system that is operable by inputs from an operator.” Petitioner
`
`asserts that Wallace’s incorporation of Tierney discloses a control unit that is
`
`operable by inputs from an operator. Pet. 30 (citing Ex. 1005 ¶ 58; Ex.
`
`1014, 3:17–25).
`
`Petitioner also explains how Giordano/Shelton and Wallace/Tierney
`
`account for each of: (1) “end effector” (Pet. 31); (2) “an elongated channel
`
`configured to operably support a surgical staple cartridge” (id. at 31–32);
`
`(3) “an anvil that is selectively movable between a first open position and
`
`second closed positions” (id. at 32–33); (4) “a spine assembly” (id. at 33);
`
`(5) “a closure tube assembly movably supported on said spine assembly” (id.
`
`at 34–35); (6) “at least one gear-driven portion, wherein one said gear driven
`
`portion is in operable communication with said closure tube assembly” (id.
`
`at 35–36); (7) “a tool mounting portion” (id. at 36–41); (8) “a driven element
`
`rotatably supported on said tool mounting portion and configured for driving
`
`engagement with a corresponding one of the at least one rotatable body
`
`portions of the tool drive assembly to receive corresponding rotary output
`
`motions therefrom” (id. at 41–43); and, finally, (9) “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” (id. at 43–47);
`
`Petitioner provides similar detailed analysis, supported by the
`
`testimony of Dr. Knodel, for each of claims 2–11 and 24. See Pet. 47–90.
`
`20
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`6.
`
`Patent Owner’s Contentions
`
`Patent Owner contends that Petitioner’s grounds of unpatentability
`
`based on Giordano/Shelton and Wallace/Tierney are deficient. Patent
`
`Owner first contends that “Petitioner provides no explanation for how the
`
`handheld endocutter instruments of Giordano and Shelton would be
`
`combined with Wallace’s robotic instrument base for a non-endocutter tool
`
`in any of the proposed combinations.” Prelim. Resp. 18. More particularly,
`
`Patent Owner argues
`
`Petitioner does not explain how Wallace’s instrument base
`would be modified to provide the necessary control motions for
`the combined instrument. As discussed above, Wallace’s
`instrument base has four spools for receiving four rotary outputs.
`Three of these spools are already used in Wallace to provide shaft
`roll and articulate the end gripper. That leaves only a single spool
`on the instrument base to accommodate both closure and firing
`of the end effector, which Giordano and Shelton both expressly
`disclose as being separately controlled by two distinct triggers.
`
`Prelim. Resp. 21–22. Consequently, Patent Owner asserts that the surgical
`
`instrument disclosed by Giordano/Shelton is incompatible because “[n]either
`
`Giordano nor Shelton discloses any embodiments in which closure and
`
`firing are controlled by a single motion.” Prelim. Resp. 21. And, because
`
`the proposed combination of Giordano/Shelton and Wallace/Tierney is
`
`“incompatible and inoperable,” Patent Owner contends that “a POSITA
`
`would not have had a reasonable expectation of success from attempting the
`
`proposed combinations.” Prelim. Resp. 23–25.
`
`7.
`
`Discussion
`
`Having considered the conflicting positions of the parties, we
`
`conclude that, at this stage of the proceeding, Petitioner has shown a
`
`reasonable likelihood of success in challenging the patentability of claims 1–
`
`21
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`Patent 8,479,969 B2
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`11 and 24. In our view, Petitioner’s obviousness approach, on this record,
`
`adequately identifies where all the elements of claims 1–11 and 24 are found
`
`in the prior art, and Petitioner demonstrates adequate reasoning to combine
`
`the teachings of Giordano/Shelton and Wallace/Tierney.
`
`We are not persuaded, at this time, that Patent Owner’s arguments are
`
`availing and demonstrate that institution of a trial is unwarranted. At the
`
`outset, Patent Owner’s argument that Petitioner fails to explain how a
`
`POSITA would combine “the handheld endocutter instruments of Giordano
`
`and Shelton” with “Wallace’s robotic instrument base for a non-endocutter
`
`tool” is unpersuasive, at least because Wallace’s disclosure is not solely
`
`directed to “non-endocutter tools.” Instead, Wallace describes utilizing
`
`endoscopic surgical tools with an “end effector” that can include, e.g.,
`
`“clamps, graspers, scissors, staplers, and needle holders,” during robotic
`
`surgery procedures. Ex. 1008, 2:6–30. More particularly, Wallace discloses
`
`that its
`
`telesurgical system can provide mechanical actuation and control
`of a variety of surgical instruments or tools having end effectors
`such as, e.g., tissue graspers, needle drivers, or the like, that
`perform various functions for the surgeon, e.g., holding or
`driving a needle, grasping a blood vessel, or dissecting tissue, or
`the like, in response to manipulation of the master control
`devices.
`
`Ex. 1008, 2:51–59.
`
`Patent Owner’s contention that there is inadequate reason to combine
`
`and no reasonable expectation of success in combining the teachings of
`
`Giordano/Shelton and Wallace/Tierney is, at this stage, unpersuasive.
`
`Prelim. Resp. 19–25. Patent Owner’s position relies largely on its argument
`
`that Petitioner does not explain how Wallace’s instrument base would be
`
`22
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`IPR2018-01254
`Patent 8,479,969 B2
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`
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