Synaptive Medical Inc. v. Karl Storz Endoscopy-America, Inc.

1. Case Identification

• Patent #: 9,468,360
• Filed: January 11, 2018
• Petitioner(s): Synaptive Medical Inc.
• Patent Owner(s): Karl Storz Endoscopy-America, Inc.
• Challenged Claims: 1-19

2. Patent Overview

• Title: Video System For Viewing An Object On A Body
• Brief Description: The ’360 patent discloses a surgical video system that uses a modified endoscopic camera assembly for exoscopic (external) viewing of a surgical site. The system is designed to be positioned at a significant working distance (e.g., 100-300 mm) from the patient to avoid interfering with a surgeon's movements, purporting to improve upon traditional surgical microscopes by using commonly available endoscopic components.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 6-14, 16, and 18-19 are obvious over Medot in view of Berci-488.

• Prior Art Relied Upon: Medot (a 1999 journal article on video-microsurgery) and Berci-488 (Patent 4,987,488).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Medot taught the core concept of using a conventional endoscope with an attached camera externally for microsurgery, disclosing a video system with an image receiving device (endoscope), an attachable camera, a camera control unit, and a stand (arm). However, Medot identified its own shortcomings: an insufficient working distance and a small depth of field. Petitioner contended that Berci-488, which discloses a video system for surgery, expressly taught the need for a sufficient working distance (disclosing ranges like 150-400 mm that overlap the claimed 100-300 mm range) and a sufficient depth of field (disclosing ranges like 10-20 mm that overlap the claimed 8-20 mm range) to prevent constant refocusing and interference with surgical instruments.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA), starting with Medot’s system, would have recognized the well-documented problem of its short working distance. To solve this known problem, a POSA would have looked to analogous art like Berci-488, which taught specific, desirable working distance and depth of field parameters for surgical video systems. The motivation was to improve Medot's system to make it more practical for surgery, a predictable improvement.
  • Expectation of Success: A POSA would have had a reasonable expectation of success in modifying the optics of Medot’s standard endoscope to achieve the parameters taught by Berci-488. Petitioner asserted this would involve routine optimization and lens selection, a skill within the grasp of a POSA, and noted that the ’360 patent itself does not teach a specific lens arrangement, leaving it as an exercise for the artisan.

Ground 2: Claims 3 and 15 are obvious over Medot in view of Berci-488 and Suzuki.

• Prior Art Relied Upon: Medot, Berci-488, and Suzuki (Patent 6,124,883).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on Ground 1 to address dependent claims 3 and 15, which further require that the illumination "window" at the distal end of the endoscope comprises a lens. Petitioner asserted that the primary combination of Medot and Berci-488 taught all other limitations of these claims. The additional reference, Suzuki, was introduced because it explicitly taught using an illumination lens at the distal end of an endoscope to focus the emitted light and "uniformly illuminate the observation field of the endoscope."
  • Motivation to Combine: A POSA modifying the Medot/Berci-488 system for a longer working distance would necessarily narrow the angular field of view of the imaging optics. To ensure the surgical site remained properly illuminated, the POSA would be motivated to similarly narrow and focus the illumination beam to match the narrower imaging field. Suzuki provided a known, conventional solution for this exact purpose.

Ground 3: Claims 4, 5, and 17 are obvious over Medot in view of Berci-488 and Gorman.

• Prior Art Relied Upon: Medot, Berci-488, and Gorman (a 2001 journal article).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claims 4, 5, and 17, which require the arm holding the endoscope to be "robotic" and "programmable." Petitioner argued that Gorman taught these specific elements. Gorman evaluated a video microsurgery system that was nearly identical to Medot's (using a standard endoscope and camera for external viewing) but explicitly used a programmable robotic arm (the AESOP 3000) for positioning.
  • Motivation to Combine: Gorman cited the work of Medot and addressed the same problems. It taught that using a programmable robotic arm provided key advantages like hands-free manipulation, accurate positioning, and fine control of focus. A POSA seeking to improve the ergonomics and functionality of the system proposed in Ground 1 would have found it obvious to replace Medot's simple custom stand with the programmable robotic arm taught by Gorman for its known benefits.

4. Key Claim Construction Positions

• "depth of field": Petitioner argued this term should be construed according to its express definition in the ’360 patent specification: "The depth of field 74 refers to the distance in front of the focal point 76 and behind the focal point 76, which appears in focus without adjusting the lenses or the working distance 70." This construction was central to the argument that Berci-488 taught the claimed depth of field ranges.
• "window": Petitioner argued that, under the broadest reasonable interpretation, "window" should be construed as an opening at the distal end of the endoscope for light to pass through, which may or may not include a lens. This construction was based on the claim language (claim 3 adds a lens as a further limitation) and the prosecution history of the parent ’203 patent, where the Examiner found no patentable distinction between similar claim terms.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. While Berci-488 was considered during the prosecution of the parent ’203 patent, it was evaluated as a primary reference. In this petition, Berci-488 was used as a secondary reference to modify the teachings of Medot. Petitioner contended that Medot, the new primary reference teaching the external use of a conventional endoscope for microsurgery, was never cited or analyzed by the Examiner. Therefore, the combination and arguments presented in the petition were substantially new.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-19 of the ’360 patent as unpatentable.