PTAB

IPR2018-01254

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 describes a robotic surgical system that includes a tool drive assembly for controlling a surgical instrument. The invention focuses on the interface between the robotic system's actuators and the gear-driven mechanisms within the surgical tool, such as a surgical stapler.

3. Grounds for Unpatentability

Ground 1: Claims 1-11 and 24 are obvious over Giordano in view of Wallace.

  • Prior Art Relied Upon: Giordano (Application # 2008/0167672) and Wallace (Patent 6,699,235). Petitioner noted that Giordano incorporates by reference Shelton (Patent 6,978,921) and Wallace incorporates by reference Tierney (Patent 6,331,181).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Giordano, by incorporating Shelton, disclosed a handheld surgical stapler with all the core components of the claimed tool, including a surgical end effector, a shaft assembly, and gear-driven portions (e.g., a "gear rack" on a yoke) for actuating closure of an anvil. Wallace disclosed a robotic surgical system with a "tool base" containing rotary actuators ("gears 400") designed to interface with and drive surgical instruments. Petitioner asserted that modifying the Giordano/Shelton handheld stapler for robotic use by replacing its manual triggers with the Wallace tool base was obvious. In the proposed combination, Wallace’s rotary actuators would directly drive the existing gear-driven portions of the Shelton stapler to control its functions, such as closure and firing.
    • Motivation to Combine: A POSITA would combine these references because Wallace explicitly taught that its robotic system could be used with surgical staplers, and Shelton taught that its manual closing and firing motions could be generated by "automated means." Combining a known handheld instrument with a known robotic system was a predictable step to gain the well-understood benefits of robotic surgery, such as improved dexterity and remote operation. The components were readily adaptable due to their reliance on rotary-to-linear motion conversion.
    • Expectation of Success: A POSITA would have a high expectation of success because it involved automating a known manual function by connecting the rotary outputs of the Wallace robot to the compatible gear-driven inputs of the Shelton stapler.

Ground 2: Claims 5 and 6 are obvious over Giordano in view of Wallace and Tierney, and further in view of Hueil.

  • Prior Art Relied Upon: Giordano (Application # 2008/0167672), Wallace (Patent 6,699,235), Tierney (Patent 6,331,181), and Hueil (Application # 2007/0158385).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the primary combination of Giordano/Wallace to address the specific limitation in claim 5 of a "knife bar interfacing with said cutting instrument." Petitioner argued that while the Shelton stapler (incorporated in Giordano) disclosed a knife bar with an integrated cutting edge, a POSITA would have found it obvious to use separate components as taught by Hueil. Hueil disclosed an articulating stapler where the knife bar and the cutting component (an "E-beam") are separate pieces, explaining that this allows the firing bar to be made from a more flexible material (like a laminate) to facilitate easier articulation.
    • Motivation to Combine: A POSITA seeking to improve the articulation of the combined Giordano/Wallace device would be motivated to look to references like Hueil, which Giordano itself incorporated by reference for its teachings on articulation. Hueil provided the explicit rationale and solution for using a separate knife bar and cutting instrument to lower the force required for articulation, representing a known design choice to solve a known problem.
    • Expectation of Success: There was a strong expectation of success in substituting the integrated knife bar of Shelton with the separate-component design of Hueil, as it was a straightforward modification to achieve the predictable benefit of improved performance in an articulating instrument.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds that treated the incorporated references (Shelton and Tierney) as primary art and grounds that explicitly added Tierney to the Giordano/Wallace combination. These grounds relied on the same core theory of adapting known handheld surgical tools (from Giordano or Shelton) for use with a known robotic system (from Wallace and/or Tierney) to render the remaining challenged claims unpatentable.

4. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-11 and 24 of the ’969 patent as unpatentable under 35 U.S.C. §103.