Intuitive Surgical Inc v. Ethicon LLC

1. Case Identification

• Case #: IPR2018-01248
• Patent #: 8,479,969
• Filed: June 14, 2018
• Petitioner(s): Intuitive Surgical, Inc.
• Patent Owner(s): Johnson & Johnson
• Challenged Claims: 23-26

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 coupling a surgical tool with a movable end effector to a robotic surgical system. The system uses rotary outputs from the robot's tool drive assembly to control various functions of the surgical tool, such as shaft rotation and end effector articulation.

3. Grounds for Unpatentability

Ground 1: Claims 23-26 are anticipated under 35 U.S.C. §102(e) by Prisco.

• Prior Art Relied Upon: Prisco (Patent 8,545,515).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Prisco, which was not considered during prosecution, discloses every element of the challenged claims. Prisco teaches a robotic surgical system with interchangeable surgical instruments that interface with a patient-side manipulator. Petitioner asserted that Prisco’s system includes a tool drive assembly with actuators, a control unit (surgeon's console), and rotatable body portions (force transmission disks) that provide rotary output motion. Prisco’s surgical tool was alleged to have all the claimed features: a movable end effector, an elongated shaft assembly with a tube gear (termed a "shaft roll gear") for rotation, and a tool mounting portion ("force transmission mechanism") that operably interfaces with the robot. For claims 24-26, Petitioner argued Prisco’s incorporation of Cooper (Patent 6,817,974) discloses the required articulating wrist mechanism with proximal and distal spine portions.
  • Key Aspects: Petitioner emphasized that the ’969 patent is uncannily similar to its own prior art systems, arguing that the patent essentially claims a known surgical instrument combined with a known surgical robot, both of which were pioneered by Petitioner.

Ground 2: Claims 23-26 are obvious under 35 U.S.C. §103 over Prisco in view of Cooper.

• Prior Art Relied Upon: Prisco (Patent 8,545,515), Cooper (Patent 6,817,974).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented this ground as an alternative, arguing that if the Board were to find that Prisco alone does not disclose every limitation (particularly the specific wrist mechanism of claim 24 or the bi-directional shaft rotation of claim 23), the combination with Cooper renders the claims obvious. Cooper explicitly discloses a multi-disk wrist joint for articulation and teaches using tube gears to rotate a surgical tool's shaft in both directions.
  • Motivation to Combine: A POSITA would combine Prisco and Cooper for several reasons. First, Prisco explicitly incorporates Cooper by reference for its teachings on wrist mechanisms, directly guiding a POSITA to combine the references. Second, both references address the same problem of controlling robotic surgical tools and are assigned to the same entity (Petitioner), a leader in the field, making them part of a common corpus of knowledge. The combination would have been a predictable implementation of known components.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in combining Cooper’s wrist and bi-directional rotation features with Prisco’s tool. This modification would simply add a known type of articulation and increase the tool's degrees of freedom—a well-established goal in robotic surgery—using conventional and compatible mechanisms.

Ground 3: Claims 25-26 are obvious over Prisco in view of Cooper and Wallace.

• Prior Art Relied Upon: Prisco (Patent 8,545,515), Cooper (Patent 6,817,974), and Wallace (Patent 6,699,235).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addresses the specific limitations of dependent claims 25 and 26, which recite a gear-driven articulation system. Petitioner argued that if the combination of Prisco and Cooper was deemed insufficient to teach these specific gear-driven features, Wallace provides the missing disclosure. Wallace teaches a robotic surgical tool with a gear-driven articulation assembly, including sector gears and articulation rods that interface with the distal portion of the tool and a transmission assembly.
  • Motivation to Combine: A POSITA would be motivated to modify the Prisco/Cooper tool to include Wallace’s articulation assembly for several reasons. Prisco suggests that its tool may be adapted with a movable wrist mechanism but does not limit the design to Cooper's, encouraging a POSITA to look for other known mechanisms. A POSITA would find Wallace's design advantageous as it "allows ease of assembly, reduction of parts and an increased range of motion." This would be a predictable substitution of one known wrist articulation mechanism for another to achieve improved performance.
  • Expectation of Success: Combining Wallace's gear-driven wrist with the Prisco/Cooper surgical tool would be a straightforward application of a known technique to a known system to yield predictable results, without fundamentally altering the tool's operation.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 23-26 over Prisco in view of Cooper and Tierney (Patent 6,331,181), arguing that if Prisco’s incorporation of Tierney was deemed insufficient, an explicit combination would have been obvious.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 23-26 of Patent 8,479,969 as unpatentable.