SynAptive Medical Inc v. Karl Storz Endoscopy America Inc

1. Case Identification

• Case #: IPR2018-00462
• 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 describes a surgical video system that uses a standard endoscope with an attached camera externally (outside the patient's body). The system is designed to operate at a sufficient working distance (e.g., 100-300 mm) to avoid interfering with a surgeon's hands and tools, purportedly improving upon bulky surgical microscopes.

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 titled “Video-microsurgery: a new tool in microsurgery”) and Berci-488 (Patent 4,987,488).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Medot discloses a video microsurgery system using a standard endoscope with an attached camera, a camera control unit (CCU), and a stand (arm), all used externally to the body. Medot’s system taught most limitations of the independent claims but acknowledged disadvantages of its short working distance. Berci-488, describing a video surgical system, explicitly taught the need for a longer working distance (e.g., 150-500 mm) and a sufficient depth of field (e.g., >15 mm or 10-20 mm) to prevent interference with the surgeon's movements and avoid constant refocusing.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would be motivated to modify the endoscope system in Medot to achieve the longer working distance and improved depth of field taught by Berci-488. This combination addresses a known deficiency in Medot (short working distance) using a known solution from a similar video surgery system (Berci-488) to create a more functional and ergonomic surgical tool.
  • Expectation of Success: A POSA would have a reasonable expectation of success because modifying the optics of an endoscope to achieve specific, known-desirable parameters for working distance and depth of field was a matter of routine optimization. Berci-488 provided concrete, workable ranges, guiding the POSA’s design choices.

Ground 2: Claims 4, 5, and 17 are obvious over Medot, Berci-488, and Gorman.

• Prior Art Relied Upon: Medot, Berci-488, and Gorman (a 2001 journal article titled “Video Microsurgery: Evaluation of Standard Laparoscopic Equipment for the Practice of Microsurgery”).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination of Medot and Berci-488 and adds limitations for a "robotic" and "programmable" arm. Medot used a custom-made static stand. Gorman taught using a video microsurgery setup nearly identical to Medot's (a Storz endoscope and camera) but mounted it on an AESOP 3000, a programmable robotic arm, for positioning.
  • Motivation to Combine: A POSA seeking to improve the Medot system would be motivated to replace its static stand with the programmable robotic arm disclosed in Gorman. Gorman explicitly taught that such an arm was essential for a useful system, as it enabled hands-free manipulation, accurate scope positioning, and fine control of focus, which were known advantages in surgical settings.
  • Expectation of Success: Success was expected because Gorman demonstrated the successful integration of a programmable robotic arm with an endoscopic video system analogous to Medot's, showing the components were compatible and the benefits were achievable.

Ground 3: Claims 3 and 15 are obvious over Medot, 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 the Medot and Berci-488 combination and adds the limitation from claims 3 and 15 that the illumination "window" at the distal end of the endoscope comprises a lens. The base combination from Medot/Berci-488 provides the video system with appropriate working distance and depth of field. Suzuki taught using an illumination lens at the distal end of an endoscope to uniformly illuminate the observation field.
  • Motivation to Combine: When modifying Medot's optics for a longer working distance as suggested by Berci-488, the angular field of view becomes narrower. A POSA would be motivated to add a lens to the illumination system, as taught by Suzuki, to more narrowly focus the emitted light to efficiently match this narrower field of view, thereby improving illumination of the surgical site.
  • Expectation of Success: Incorporating a lens into an illumination path was a well-understood optical design principle. A POSA would have readily known how to select and place a lens to focus light, as taught by Suzuki, within the existing structure of the Medot endoscope.

4. Key Claim Construction Positions

• "depth of field": Petitioner argued this term should be construed according to its express definition in the ’360 patent’s specification: "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."
• "window": Petitioner proposed that this term should be construed as "an opening at the distal end... of the endoscope through which light may pass and illuminate the area to be viewed." This construction was based on the surrounding claim language and the file history, which showed the Examiner found no patentable distinction between this term and language in the parent patent describing the distal end of light guide fibers.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. It contended that it was presenting substantially new art and arguments not previously considered by the USPTO. Specifically, Petitioner asserted that the primary reference, Medot, which teaches the foundational use of an endoscope externally for microsurgery, was never cited or analyzed by the Examiner. Further, while Berci-488 was considered during prosecution of the parent patent, it was used as a primary reference, whereas the petition uses it as a secondary reference to modify the new teachings of Medot.

6. Relief Requested

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