PTAB

IPR2018-00934

Intuitive Surgical Inc v. Ethicon LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Detachable Motor Powered Surgical Instrument
  • Brief Description: The ’058 patent discloses a detachable, motor-powered surgical stapling system. The system features a self-contained motor within a disposable loading unit (DLU) that is removably attachable to a separate surgical instrument system, such as a hand-held actuator or a surgical robot, which provides the power source. A key aspect is that the motor can only receive power when the DLU is operably attached to the surgical instrument system.

3. Grounds for Unpatentability

Ground 1: Claims 1-18 are obvious over Hooven in view of Heinrich.

  • Prior Art Relied Upon: Hooven (Patent 5,383,880) and Heinrich (Application # 2005/0131390).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hooven discloses the core inventive concept: an endoscopic stapling instrument (the "stapling system") with an integrated DC motor that is removably connected to a separate controller that contains the power supply. In Hooven, the motor can receive power only when the instrument is physically connected to the controller, thus teaching the key limitation of claims 6, 11, and 15 regarding selective power delivery upon attachment. Hooven was argued to disclose nearly all other mechanical elements, including a staple cartridge carrier, a removable staple cartridge, a movable anvil, a housing, a rotary shaft, and an axial drive member with a sled and knife.
    • Petitioner asserted that Heinrich teaches how to adapt hand-held surgical tools, like that in Hooven, for use with a robotic surgical system. Specifically, Heinrich discloses a disposable loading unit removably attached to a robotic arm, where power is supplied from the robotic system to the loading unit only upon connection. Petitioner contended that if Hooven’s controller is not considered a "surgical instrument system," a person of ordinary skill in the art (POSITA) would look to a reference like Heinrich to implement Hooven’s tool in a robotic context. This combination would supply the specific "housing connector removably attachable to the surgical instrument system" limitation. The combination of Hooven's functional stapler with Heinrich's robotic interface was argued to render all challenged claims obvious.
    • Motivation to Combine: A POSITA would combine Hooven's surgical stapler with Heinrich's robotic system to gain the well-known advantages of robotic surgery, such as increased dexterity and the ability to operate remotely. Petitioner argued this was merely the application of a known technique (robotic control) to a known device (a powered stapler) to achieve a predictable result, which is a classic motivation for combination. The ’058 patent itself acknowledges the known benefits and variety of robotic systems available in the prior art.
    • Expectation of Success: Petitioner asserted that a POSITA would have had a high expectation of success in this combination. Modifying Hooven’s instrument to interface with Heinrich’s robotic system would involve routine engineering and would predictably yield a robotically controlled version of Hooven's stapler without altering the fundamental function of either device's components.

4. Key Claim Construction Positions

  • "Means for removably attaching said housing to the surgical instrument" (claim 1):
    • Petitioner argued this term in independent claim 1 invokes 35 U.S.C. §112, ¶ 6 (pre-AIA) as a means-plus-function limitation.
    • The claimed function was identified as "removably attaching said housing to the surgical instrument."
    • The corresponding structure disclosed in the ’058 patent was identified as "engagement nubs 254" which form a bayonet-type coupling.
    • This construction was critical because Petitioner argued that Heinrich’s attachment mechanism (e.g., attachment platform 642 and protrusions 638), which also forms a bayonet-type connection, is structurally identical or, at a minimum, structurally equivalent to the ’058 patent’s engagement nubs. Therefore, combining Hooven with Heinrich would supply the claimed "means."

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of the ’058 patent as unpatentable.