PTAB

IPR2014-00233

OLYMPUS AMERICA INC. v. Perfect Surgical Techniques, Inc.

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1. Case Identification

  • Case #: IPR Unassigned
  • Patent #: 6,030,384
  • Filed: December 6, 2013
  • Petitioner(s): OLYMPUS AMERICA INC., OLYMPUS MEDICAL SYSTEMS CORP.
  • Patent Owner(s): PERFECT SURGICAL TECHNIQUES, INC.
  • Challenged Claims: 1, 4-6, 8-9, 11-12, 38, 41-44, 46-47, 49

2. Patent Overview

  • Title: Bipolar Electrosurgical Instrument
  • Brief Description: The ’384 patent is directed to bipolar surgical instruments, such as forceps, that use radiofrequency energy to treat tissue. The invention aims to solve problems of lateral current flux and limited power delivery in prior art devices by using laterally spaced electrodes, tissue penetrating elements, and/or perforated jaws to better control tissue effects like coagulation and cutting.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4-6, 8-9, 11-12, 38, 41-44, 46-47, and 49 are anticipated under 35 U.S.C. §102(a) or obvious under 35 U.S.C. §103(a) over JP ‘551.

  • Prior Art Relied Upon: JP ‘551 (Japanese Patent Application, Pub. No. 10-33551).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that JP ‘551, which discloses bipolar forceps with user-selectable electrode polarity, teaches every limitation of the challenged claims. For independent claim 1, JP ‘551 allegedly discloses laterally spaced electrodes (Figs. 8C, 9A), tissue penetrating elements in the form of "substantially serrated projecting portions" that "bite into the living tissue" (seventh embodiment), and a linear/pivot actuator. For independent claim 38, JP '551 allegedly discloses a "perforated" jaw via a passage (element 65) along the jaw's axial direction, which would inherently permit steam release.
    • Motivation to Combine (for §103 grounds): To the extent any limitation was not explicitly disclosed, Petitioner argued it would have been obvious to a person of ordinary skill in the art (POSA) to incorporate known features. For example, a POSA would combine their knowledge of common actuating mechanisms with JP '551's trigger disclosure to arrive at the claimed mechanism.
    • Expectation of Success (for §103 grounds): Combining known electrosurgical instrument features as taught by JP '551 would predictably result in an instrument with the claimed functionalities.

Ground 2: Claims 1, 4-6, 8-9, 11-12, 43-44, and 46-47 are obvious over JP ‘551 in view of FR ‘149.

  • Prior Art Relied Upon: JP ‘551 (Japanese Patent Application, Pub. No. 10-33551) and FR ‘149 (French Patent No. 598,149).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that if JP ‘551 was found insufficient to teach the "tissue penetrating elements," then FR ‘149 explicitly supplied this element. FR ‘149, which is cited in the ’384 patent, discloses bipolar forceps with electrodes "in the form of combs with sharp teeth fitting into each other." Petitioner contended this explicitly teaches a plurality of tissue penetrating elements projecting toward the opposing jaw, meeting the limitations of claims 1, 6, 8, and their corresponding dependent claims.
    • Motivation to Combine: A POSA would combine JP ‘551 and FR ‘149 because both references address the same problem of controlling and limiting the region of tissue coagulation. JP ‘551 teaches using laterally spaced electrodes for this purpose, while FR ‘149 teaches using comb-like teeth. Combining these known solutions to achieve better coagulation control was a simple and predictable design choice.
    • Expectation of Success: Combining the laterally spaced electrodes of JP ‘551 with the penetrating teeth of FR ‘149 would predictably result in an instrument that focuses current in a specific tissue region, achieving the desired effect.

Ground 4: Claims 1, 4-6, 8-9, 11-12, 38, 41-44, 46-47, and 49 are anticipated under 35 U.S.C. §102(b) or obvious over the '682 Patent to Wappler.

  • Prior Art Relied Upon: Wappler (Patent 2,031,682).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Wappler, an early disclosure of bipolar surgical instruments, anticipates or renders obvious all challenged claims. Wappler’s Figure 18 allegedly discloses laterally spaced electrodes by duplicating jaw pairs. These duplicate jaws, which could be embedded in a single insulating structure, would function as electrodes on the same jaw (for claims 4/41) or on opposing jaws (for claims 5/42). Wappler also allegedly discloses tissue penetrating elements as "several teeth which are relatively long and in the nature of pins" that "project into" tissue. For the perforation limitation, Wappler identifies the problem of "generation of fumes" and discloses passages between the duplicated jaws (Fig. 18) that would permit steam release.
    • Motivation to Combine (for §103 grounds): To the extent Wappler's features were not disclosed in a single embodiment, a POSA would have found it obvious to combine them. For instance, embedding the laterally spaced electrode arrangement of Wappler's Figure 18 into a known insulating jaw structure was presented as a simple and obvious modification.
    • Expectation of Success: The combination of elements disclosed in Wappler would predictably result in a functional bipolar instrument with all the features of the challenged claims.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of JP ‘551, FR ‘149, and US ‘460; Wappler and EP ‘639; and Wappler, EP ‘639, and FR ‘149, relying on similar arguments for combining features like perforated jaws and specific tissue penetrating elements from the respective references.

4. Key Claim Construction Positions

  • "bipolar surgical instrument": Proposed as "a surgical instrument with at least two electrodes of opposite polarity in close proximity to each other against or into tissue." This construction was argued to be consistent with the specification's description and plain meaning.
  • "wherein electrode members lie parallel to and laterally spaced-apart from each other when the jaws are closed": Proposed as "at least one positive electrode member and at least one negative electrode member are separated from each across the width of the jaws (i.e., laterally spaced-apart), by a constant distance along the length of the jaw (i.e., parallel)." This construction was based on the specification's distinction from prior art where current flows outward, not just between jaws.
  • "tissue penetrating elements": Proposed as "elements that extend from the surface of the jaw and pierce into tissue held between the jaws." This construction relied on the plain meaning of "penetrating" and specification examples describing elements that "enter into the tissue."
  • "at least one of the jaws is perforated to permit the release of steam during use": Argued to mean "at least one of the jaws has one or more openings, holes or passages in the jaw." Petitioner contended the phrase "to permit the release of steam" is a non-limiting statement of intended use.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 4-6, 8-9, 11-12, 38, 41-44, 46-47, and 49 of the ’384 patent as unpatentable under 35 U.S.C. §102 and/or §103.