PTAB

IPR2018-01247

Intuitive Surgical Inc v. Ethicon LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Drive Interface for Operably Coupling a Manipulatable Surgical Tool to a Robot
  • Brief Description: The ’969 patent discloses a drive interface for robotic surgical systems. The system includes a tool drive assembly with multiple rotary drive members that operably couple to and control a manipulatable surgical tool, such as a stapler or grasper.

3. Grounds for Unpatentability

Ground 1: Obviousness over Anderson and Cooper - Claim 23 is obvious over Anderson in view of Cooper.

  • Prior Art Relied Upon: Anderson (Patent 6,783,524) and Cooper (Patent 6,817,974).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that claim 23, which recites a surgical tool with a "tube gear segment" for rotating an elongated shaft, was obvious. Anderson was asserted to disclose the foundational robotic surgical tool, including a base, an elongate shaft, and an end effector. While Anderson disclosed using a cable-driven mechanism for shaft rotation, it explicitly suggested that a "gear train," specifically a "right-angled helical gear pair," could be used as an alternative. Cooper was presented as a reference that clearly teaches a right-angled helical gear pair that includes a "tube gear" (follower gear 842) for rotating the shaft of a similar surgical tool. Petitioner contended that combining Cooper’s explicit tube gear mechanism with Anderson’s system rendered the claim obvious.
    • Motivation to Combine: A POSITA would combine Anderson and Cooper because Anderson expressly taught the use of a gear-pair alternative for shaft rotation. A POSITA seeking to implement this known alternative would have looked to references like Cooper, which detailed such a mechanism. The combination was further motivated by the goals of achieving improved efficiency, greater torque, and cost-effectiveness compared to a cable-driven system. Both patents were assigned to the Petitioner and addressed similar robotic surgery problems, making the combination logical.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because it involved substituting one known rotational mechanism (cable-drive) with another known and suggested mechanism (gear-drive) in a system designed to accommodate such alternatives, leading to predictable results.

Ground 2: Obviousness over Anderson and Timm - Claim 24 is obvious over Anderson in view of Timm.

  • Prior Art Relied Upon: Anderson (Patent 6,783,524) and Timm (Patent 7,510,107).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that claim 24, which adds limitations for an articulating end effector comprising "a proximal spine portion pivotally coupled to [a] distal spine portion at an articulation joint," was obvious. Anderson was again used for the base robotic system, which contemplates use with various tools, including staplers. Timm was asserted to disclose the specific claimed articulating structure in the context of a surgical stapler, including a proximal spine segment pivotally coupled to a distal spine segment at a ball joint. The combination involved integrating Timm's articulating end effector into Anderson's robotic platform.
    • Motivation to Combine: A POSITA would combine the references to enhance the functionality of Anderson’s general-purpose robotic system. Anderson contemplated using third-party OEM instruments, and Timm’s articulating stapler was an example of such an instrument. Adding articulation provides the recognized benefit of improved surgical access and maneuverability. Timm further contemplated that its tool could be used with a robotic system, providing a direct suggestion for the combination.
    • Expectation of Success: Integrating a known end effector with specific features (Timm's articulation) into a compatible and adaptable robotic system (Anderson) was a predictable design choice with a high expectation of success.

Ground 3: Obviousness over Anderson, Timm, and Wallace - Claims 25-26 are obvious over Anderson in view of Timm and Wallace.

  • Prior Art Relied Upon: Anderson (Patent 6,783,524), Timm (Patent 7,510,107), and Wallace (Patent 6,699,235).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that claims 25-26, which further require the articulation system to be gear-driven, were obvious. The combination of Anderson and Timm provided an articulating tool, but Timm disclosed a cable-driven articulation system. To meet the "gear-driven" limitation, Petitioner introduced Wallace, which discloses a robotic surgical tool with a gear-driven articulation mechanism comprising sector gears that drive articulation rods to move a wrist joint. The proposed combination involved replacing Timm’s cable-driven articulation with Wallace’s gear-driven mechanism.
    • Motivation to Combine: Anderson’s general suggestion to use gear trains for actuation would apply not just to shaft rotation but to all actuation motions, including articulation. A POSITA, seeking a more robust and reliable alternative to Timm's cable system, would have been motivated to look to known gear-driven articulation systems like the one in Wallace. The use of gears offered predictable advantages such as ease of assembly, reduction of parts, and fewer points of failure.
    • Expectation of Success: Replacing a cable-based actuation system with a known gear-based alternative from a similar field was a simple substitution of known elements to achieve predictable results, ensuring a reasonable expectation of success.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on Anderson in view of Knodel (for claims 19-20 related to a knife bar in a stapler) and Anderson in view of Viola (for claims 21-22 related to a rotary end effector drive shaft for a knife).

4. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 19-26 of the ’969 patent as unpatentable under 35 U.S.C. §103.