PTAB

IPR2018-00936

Intuitive Surgical Inc v. Ethicon Endo Surgery LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Stapling Systems
  • Brief Description: The ’658 patent relates to surgical stapling systems featuring an end effector with two jaws (an anvil and a staple cartridge jaw). The system uses a closure cam to push against a cam surface on the anvil to close it, and a separate opening member that applies a pulling force to the anvil at a different location to open it.

3. Grounds for Unpatentability

Ground 1: Claims 1-14 are Anticipated under 35 U.S.C. § 102 by Wales

  • Prior Art Relied Upon: Wales (Patent 6,981,628).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wales discloses every element of the challenged claims in a single reference. It asserted that Wales teaches a surgical stapler with a mechanism functionally identical to that claimed in the ’658 patent. Specifically, Petitioner mapped Wales’s “closure ring 250” directly to the claimed closure and opening elements. It argued the ring's “distally presented closing face 314” functions as the claimed “closure cam,” which pushes against the anvil’s “ramped cylindrical closing face 316” (the claimed “cam surface”) to close the jaw. The same ring includes an integral “distally presented tab 310” that engages “anvil feature 312.” Petitioner contended this tab is the claimed “opening member” that pulls the anvil open at a location distinct from the closing cam surface. This structure, Petitioner asserted, reads directly on the key limitation identified by the Examiner as novel during prosecution.
    • Key Aspects: Petitioner emphasized the structural and functional identity between the closure mechanism in Wales and the ’658 patent, noting that both patents were assigned to the same entity.

Ground 2: Claims 3 and 8 are Obvious under 35 U.S.C. § 103 over Wales in view of Knodel

  • Prior Art Relied Upon: Wales (Patent 6,981,628), Knodel (Patent 5,465,895).
  • Core Argument for this Ground: This ground presented an alternative challenge to dependent claims 3 and 8, which add the limitation that the staple cartridge is "removably replaceable."
    • Prior Art Mapping: Petitioner first asserted that a Person of Ordinary Skill in the Art (POSITA) would have understood the cartridge in Wales to be inherently replaceable. Alternatively, if Wales were found not to disclose this feature, Knodel explicitly teaches a similar endoscopic stapler where a distal end “releasably receives a staple cartridge.”
    • Motivation to Combine: A POSITA would combine the teachings because both references address endoscopic surgical staplers from the same patent owner (Ethicon). It was common practice and economically desirable for such staplers to have replaceable cartridges to avoid the waste and cost of disposing of the entire instrument after a single use. Knodel explicitly teaches these benefits, providing a clear reason to ensure the Wales device possessed this well-known capability.
    • Expectation of Success: A POSITA would have a high expectation of success in incorporating a replaceable cartridge into the Wales device, as it was a known, simple, and conventional modification for staplers of this type.

Ground 3: Claims 1-14 are Obvious under 35 U.S.C. § 103 over Wales in view of Tierney

  • Prior Art Relied Upon: Wales (Patent 6,981,628), Tierney (Application # US 2003/0083673).

  • Core Argument for this Ground: This ground argued that if Wales alone was deemed not to disclose a "rotary drive member" or "rotary motion generator," the combination with Tierney would render the claims obvious.

    • Prior Art Mapping: Petitioner proposed modifying the Wales stapler by replacing its manual handle with the robotic interface disclosed in Tierney. Tierney teaches a robotic surgical system with an interface containing rotatable “driven elements” that receive rotary power from a manipulator arm. These elements provide mechanical power to actuate surgical tools, including the opening and closing of jaws. Petitioner argued this robotic interface would supply the claimed "rotary drive member" and "rotary motion generator" needed to actuate the end effector mechanism of Wales. The resulting combination would be a robotically controlled stapler with the end effector of Wales and the drive interface of Tierney.
    • Motivation to Combine: A POSITA would be motivated to combine these references because Wales expressly contemplates that its instrument could be powered and remotely controlled for robotic applications. Tierney teaches that its robotic system is designed for use with various surgical tools, specifically including "staple appliers." Combining the two would leverage the known end effector of Wales with the enhanced precision, safety, and control of the Tierney robotic system.
    • Expectation of Success: A POSITA would have a high expectation of success, as Tierney's interface was designed to be adaptable to various tool drive systems and could be readily coupled to the tool assembly of Wales.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claims 3 and 8 over Wales in view of Tierney and further in view of Knodel, arguing it would have been obvious to ensure the staple cartridge in the combined robotic stapler was replaceable for the same reasons articulated in Ground 2.

4. Key Claim Construction Positions

  • Petitioner proposed a construction for the terms "rotary drive member," "rotary member," and "rotatable drive member" as "a gear, trigger, or other component that rotates to cause movement of another component." This construction was argued to be consistent with the specification and dictionary definitions and was important for establishing that the pivoting "closure trigger 26" in Wales met this claim limitation.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-14 of Patent 9,585,658 as unpatentable.