PTAB

IPR2014-00233

Olympus America Inc v. Perfect Surgical Techniques Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Bipolar Surgical Instruments with Laterally Spaced Electrodes
  • Brief Description: The ’384 patent discloses bipolar surgical instruments, such as forceps, that use radiofrequency energy to coagulate or cut tissue. The invention aims to solve problems in prior art devices, namely the outward flow of current that heats adjacent tissue, by incorporating electrode members that are laterally spaced apart on the instrument's jaws, and may include features like "tissue penetrating elements" or "perforated" jaws.

3. Grounds for Unpatentability

Ground 1: Anticipation or Obviousness over JP ‘551 - Claims 1, 4-6, 8-9, 11-12, 38, 41-44, 46-47, and 49 are anticipated by or obvious 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, a single prior art reference, discloses every element of the challenged claims. JP ‘551 describes a bipolar forceps instrument with a shaft, opposed jaws, and multiple electrically isolated electrodes. Petitioner asserted that figures in JP ‘551 show electrodes configured to be parallel and laterally spaced apart on the same jaw or on different jaws. The limitation of "tissue penetrating elements" was allegedly met by JP ‘551’s disclosure of "substantially serrated projecting portions" that "bite into the living tissue." For claims requiring a "perforated" jaw, Petitioner identified a passage (element 65) running along the jaw between the electrodes in JP ‘551, arguing this structure met the claim term under its broadest reasonable construction.
    • 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 (POSITA) to incorporate known features into the device of JP ‘551 to achieve the claimed instrument.

Ground 2: Anticipation or Obviousness over Wappler - Claims 1, 4-6, 8-9, 11-12, 38, 41-44, 46-47, and 49 are anticipated by or obvious over Wappler.

  • Prior Art Relied Upon: Wappler (Patent 2,031,682).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Wappler discloses a bipolar surgical instrument with all claimed features. For the "laterally spaced-apart" electrode limitation, Petitioner pointed to Wappler’s Figure 18, which illustrates a modification with two pairs of jaws where the electrodes are spaced laterally. Petitioner contended that a POSITA would understand this arrangement as inherently disclosing laterally spaced electrodes on a single functional jaw structure. Wappler also explicitly teaches providing the jaws with "several teeth which are relatively long and in the nature of pins" that "project into" tissue, satisfying the "tissue penetrating elements" limitation. Finally, Wappler addresses the problem of fume generation impeding visibility and discloses jaw structures with passages between electrodes (Fig. 18) that would permit steam release, meeting the "perforated" jaw limitation.

Ground 3: Obviousness over Wappler in view of EP ‘639 - Claims 1, 4-6, 8-9, 11-12, 38, 41-44, 46-47, and 49 are obvious over Wappler in view of EP ‘639.

  • Prior Art Relied Upon: Wappler (Patent 2,031,682) and EP ‘639 (European Patent Application No. 0 765 639 A1).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground was presented as an alternative, arguing that if Wappler alone was found insufficient, combining it with EP ‘639 would render the claims obvious. Petitioner argued Wappler provides the basic bipolar forceps design with tissue penetrating elements. EP ‘639 was cited for its explicit teaching of embedding laterally spaced, oppositely poled electrodes within a single insulating jaw to confine electrical current and limit thermal spread—the very problem the ’384 patent purports to solve.
    • Motivation to Combine: Petitioner argued a POSITA would combine Wappler and EP ‘639 because both references are in the same field, address the identical problem of undesirable heat dissipation, and propose the same solution of using laterally spaced electrodes. Furthermore, EP ‘639 explicitly identifies Wappler as relevant "technological background," suggesting a direct motivation for a skilled artisan to combine their teachings.
    • Expectation of Success: The combination was argued to be a predictable assembly of known elements, where adding the laterally spaced electrode configuration from EP ‘639 to the Wappler instrument would predictably result in more focused tissue coagulation.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining JP ‘551 with FR ‘149 to more explicitly teach tissue penetrating elements, and further combining that with US ‘460 for an alternative perforated jaw design. A final ground combined Wappler and EP ‘639 with FR ‘149.

4. Key Claim Construction Positions

  • "wherein electrode members lie parallel to and laterally spaced-apart from each other when the jaws are closed": Petitioner proposed this term means "at least one positive electrode member and at least one negative electrode member are separated from each across the width of the jaws...by a constant distance along the length of the jaw." This construction was central to mapping the limitation onto prior art that showed side-by-side electrode configurations, as opposed to electrodes on opposing faces of the jaws.
  • "tissue penetrating elements": Petitioner proposed this term should be construed as "elements that extend from the surface of the jaw and pierce into tissue held between the jaws." This broad interpretation was crucial for arguing that structures described as "projecting portions," "teeth," or "pins" in the prior art met the claim limitation.

5. Relief Requested

  • Petitioner requests 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 103.