PTAB

IPR2015-00629

Mako Surgical Corp v. Blue Belt Technologies Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Methods and Systems to Control a Shaping Tool
  • Brief Description: The ’582 patent discloses systems and methods for controlling a shaping or cutting tool relative to a workpiece. The technology is primarily described in the context of high-precision surgeries, where a controller uses tracking data from markers on the tool and workpiece (e.g., a bone) to constrain the tool's movement, thereby avoiding the need for invasive physical clamps.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3, 5-14, 16-30, 34-42, and 47-58 are Anticipated by or Obvious over Taylor

  • Prior Art Relied Upon: Taylor (a 1994 IEEE article on image-directed robotic surgery), Glassman (’409 patent), DiGioia (’411 patent), and Delp (a 1990 article on graphics-based surgical models).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Taylor, published nearly a decade before the ’582 patent’s priority date, discloses all elements of the independent claims. Taylor described an "image-directed robotic system" for orthopedic surgery comprising a cutting tool, a workpiece (bone with a target implant shape), a tracker (the Optotrak™ system) with markers to provide position and orientation data for both the tool and workpiece, and a controller. The controller monitors the tool's position and sends a "freeze motion" signal if it strays from the predefined "safe" cutting volume, directly mapping to the control limitations of claims 1, 17, and 24.
    • Motivation to Combine (for §103 grounds): For claims not directly anticipated, Petitioner contended a POSITA would combine Taylor with other references for predictable results. For example, claim 3’s "rotatable blade" was obvious over Taylor’s "ball cutter" in view of the drill taught in Glassman, a patent awarded to Taylor’s authors for the same system. Similarly, for claim 7’s requirement of infrared markers on the workpiece, a POSITA would obviously substitute Taylor's titanium pin markers with the infrared markers Taylor already used on its cutting tool, a modification also taught by DiGioia.
    • Expectation of Success: A POSITA would have a high expectation of success as these combinations involved using known tracking technologies and cutting tools for their intended purposes in a well-understood surgical robotics context.

Ground 2: Claims 1, 3, 5-9, 12-14, 16-17, 24, 37-39, 47, 53-55, and 58 are Anticipated by or Obvious over Burghart

  • Prior Art Relied Upon: Burghart (a 1999 workshop article on robot-controlled osteotomy), Taylor (a 1994 IEEE article), and Delp (a 1990 article).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Burghart describes a system for precision bone surgery that anticipates the independent claims. Burghart’s system included a surgical saw (cutting tool), a patient’s skull (workpiece), and an integrated infrared navigation system that tracks markers (titanium miniscrews and infrared diodes) on both the patient and the tool. A robot controller evaluates the tool tip's position within a "defined safety zone" relative to the surgical trajectory, thus controlling the tool based on tracking data as required by the independent claims.
    • Motivation to Combine (for §103 grounds): For claims not anticipated by Burghart alone (e.g., claims requiring voxel-based modeling like claim 21), Petitioner argued a POSITA would combine Burghart with Taylor. Since Taylor was a well-known, earlier article addressing similar problems, a POSITA would have been motivated to implement Taylor’s established pre-surgical voxel imaging system into the Burghart system to improve its planning and execution capabilities. It would also have been obvious to use a CAD model for the cutting tool, as taught by Taylor.
    • Expectation of Success: Integrating Taylor’s voxel-based planning into Burghart’s real-time tracking and control system was a straightforward combination of known techniques to achieve the common goal of improved surgical precision.

Ground 3: Claims 1, 3, 5-10, 12-14, 16-20, 24, 34, 37-39, 47, and 54-58 are Anticipated by or Obvious over DiGioia

  • Prior Art Relied Upon: DiGioia (’411 patent), Taylor (a 1994 IEEE article), and Delp (a 1990 article).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that DiGioia, a patent with common inventors and the same original assignee as the ’582 patent, anticipates the independent claims. DiGioia discloses an apparatus for surgical joint implantation that uses a cutting tool attached to a robotic arm. The system tracks the tool and workpiece (bone) using an Optotrak system with LED markers and employs a control algorithm to limit the tool's movement to a "defined space" based on the relationship between the tool, a bone model, and the target implant shape. This system directly reads on the elements of independent claims 1, 17, and 24.
    • Motivation to Combine (for §103 grounds): For claims not directly anticipated, such as those requiring voxel-based modeling (e.g., claim 21), Petitioner argued a POSITA would logically combine DiGioia with Taylor. Given the significant overlap in subject matter, inventors, and assignee, it would have been obvious to incorporate the pre-surgical voxel imaging and planning system from Taylor into the DiGioia system to enhance its functionality.
    • Expectation of Success: Combining the complementary planning features of Taylor with the surgical execution system of DiGioia would have been a predictable implementation with a high expectation of success.

4. Key Claim Construction Positions

  • Means-Plus-Function Indefiniteness: Petitioner argued that claims 10, 11, 12, and 18, which recite "means to register," "means to provide at least one image," and "means to transform tracking data," are indefinite under 35 U.S.C. §112. The specification allegedly fails to disclose sufficient corresponding structure, such as a specific algorithm required to perform the "transform" function, instead stating only that "transformations can be mathematically effectuated."
  • Indefiniteness of "4-D image": Petitioner contended that claim 24 is indefinite because it introduces the term "4-D image" without antecedent basis or adequate support in the specification, which only describes 3-D images. Petitioner noted this term appeared to be an unannounced change during prosecution, leaving a POSITA unable to determine its scope with reasonable certainty.

5. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1, 3, 5-14, 16-30, 34-42, and 47-58 of the ’582 patent as unpatentable.