PTAB

IPR2018-00935

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 ’677 patent discloses a detachable, motor-powered surgical stapling sub-system. The sub-system's electric motor is operably disconnected from a power source when its housing is detached from a main surgical instrument system (e.g., a robotic system or hand-held actuator) and becomes operably connected to the power source only upon attachment.

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 disclosed the core elements of the claimed invention, including a hand-held endoscopic stapling instrument with a self-contained motor that is removably connected to an external controller. The power source resides in the controller, and the motor only receives power when the instrument is attached. Petitioner asserted that Heinrich taught adapting such hand-held surgical staplers for use with robotic surgical systems to improve dexterity and enable remote operation. The combination of Hooven’s stapler with Heinrich’s robotic interface allegedly disclosed a stapling sub-system configured for operable engagement with a surgical instrument system, where the motor is powered only upon connection, as claimed.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings to apply the known benefits of robotic surgery, as taught by Heinrich, to a known motor-in-handle stapler, as taught by Hooven. Petitioner contended this was a predictable solution, as using robotic arms to manipulate surgical instruments was a known technique to improve surgical outcomes.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success, as the combination involved applying a known technique (robotic control) to a known device (motorized stapler) to achieve the predictable result of enhanced surgical control and dexterity.

Ground 2: Claims 1-5 and 16 are obvious over Hooven in view of Heinrich and further in view of Milliman.

  • Prior Art Relied Upon: Hooven (Patent 5,383,880), Heinrich (Application # 2005/0131390), and Milliman (Patent 5,865,361).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative, arguing that if Heinrich’s incorporation by reference of Milliman was deemed insufficient, it would have been obvious to explicitly combine the references. Milliman was cited for its detailed disclosure of the internal structure and operation of a disposable loading unit for a surgical stapler, which Petitioner argued was necessary to fully implement the system described in Heinrich.
    • Motivation to Combine: The primary motivation asserted was that Heinrich explicitly and conveniently directed a POSITA to Milliman for a "detailed explanation of the operation of surgical stapler 300." Therefore, a POSITA seeking to build the device taught in Heinrich would have been directly motivated to consult and incorporate the specific structural details taught by Milliman.

Ground 3: Claims 1-5 and 16 are obvious over Hooven in view of Heinrich and further in view of Alesi.

  • Prior Art Relied Upon: Hooven (Patent 5,383,880), Heinrich (Application # 2005/0131390), and Alesi (Patent 5,779,130).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was asserted in the event the combination of Hooven and Heinrich (with or without Milliman) was found not to teach the claimed "linear member coupled with said rotary drive." Petitioner argued Alesi disclosed a suitable linear member in the form of an actuation beam coupled to a drive nut and drive screw in a motor-powered surgical stapler.
    • Motivation to Combine: A POSITA would have been motivated to incorporate a linear drive mechanism like the one in Alesi into the Hooven/Heinrich combination as an obvious design choice. Petitioner argued that the prior art contained a finite number of predictable solutions for linear actuation in such devices, and Alesi’s design represented an effective and well-understood option. This modification would keep the drive screw away from surgical debris and facilitate easier replacement of staple cartridges.

4. Key Claim Construction Positions

  • "Means for removably attaching said housing to the surgical instrument" (claims 1, 16): Petitioner argued this is a means-plus-function term governed by 35 U.S.C. §112, ¶ 6. The claimed function is "removably attaching said housing to the surgical instrument." Petitioner identified the corresponding structure in the ’677 patent’s specification as "engagement nubs 254."
  • "Drive means for converting the rotational motion produced by said electric motor to translational motion to eject said staples..." (claims 11, 18): Petitioner also argued this is a means-plus-function term. The functions are driving and converting rotational motion to translational motion to eject staples. Petitioner identified the corresponding structures as combinations of components disclosed in the specification, including: (1) drive nut 610, axial drive assembly 212, and actuation sled 234; (2) cutting instrument 2332 and sled portion 2333; and (3) screw nut arrangement 3038, firing bar 3003, and cutting instrument 3002.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of the ’677 patent as unpatentable.