PTAB

IPR2018-01703

Intuitive Surgical Inc v. Ethicon LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Shiftable Drive Interface for Robotically-Controlled Surgical Tool
  • Brief Description: The ’431 patent describes a drive interface for a robotically-controlled surgical tool. The core alleged invention is a shiftable transmission that allows a single rotatable drive element from the robotic system to selectively control at least two different functions of a surgical end effector, such as jaw actuation and articulation.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tierney and Whitman - Claims 1-6 and 10-13 are obvious over Tierney in view of Whitman.

  • Prior Art Relied Upon: Tierney (Patent 7,524,320) and Whitman (Application # 2009/0101692).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Tierney disclosed a robotic surgical system with a tool mounting device and a multi-function end effector, meeting most limitations of the independent claims. However, Tierney’s system required a dedicated drive element for each function. Petitioner asserted that Whitman disclosed a hand-held surgical tool with a shiftable transmission, where a "function selector block" allows a single input drive shaft to be selectively coupled to one of multiple drivers, controlling functions like rotation, articulation, clamping, and firing.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Whitman’s shiftable transmission with Tierney’s robotic system to increase the number of functions that could be performed by the end effector without increasing the number of drive elements in the robotic controller. This modification would allow two of Tierney's drive elements to control at least four different functions, a significant and predictable improvement. Tierney itself suggested its system could be used with various surgical instruments, including staple appliers like that disclosed in Whitman.
    • Expectation of Success: Petitioner contended that a POSITA would have a reasonable expectation of success in this combination. It involved adapting a known multi-function tool (Whitman) for use with a known robotic system (Tierney), a common practice in the field. The result—a robotically controlled tool with more functions per drive element—would have been predictable.

Ground 2: Obviousness over Tierney, Whitman, and Zemlok - Claims 7, 14, 16-20, and 23-26 are obvious over Tierney in view of Whitman and further in view of Zemlok.

  • Prior Art Relied Upon: Tierney (Patent 7,524,320), Whitman (Application # 2009/0101692), and Zemlok (Application # 2008/0251568).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Ground 1 to address limitations in claims requiring an "axially movable" shifter driven gear. Petitioner argued that Whitman’s transmission used a constant mesh design where gears rotate to select functions rather than sliding axially. Zemlok, however, explicitly disclosed a transmission for a surgical instrument with a "drive gear 200" that is selectively moved axially along a shifter shaft by a motor to engage different output gears, thereby selecting different functions (e.g., rotation, articulation).
    • Motivation to Combine: A POSITA would be motivated to modify the Tierney/Whitman combination by replacing Whitman’s constant mesh transmission with Zemlok’s sliding mesh transmission. Zemlok's design was presented as a more compact, less complex, and potentially less expensive solution, which are strong motivators in surgical tool design. Since both constant mesh (Whitman) and sliding mesh (Zemlok) were well-known, standard transmission types, substituting one for the other would have been an obvious design choice to achieve a more robust or efficient mechanism.
    • Expectation of Success: The substitution of one known mechanical transmission type for another to perform the same function of shifting would have been a straightforward engineering task for a POSITA with a high expectation of success.

Ground 3: Anticipation by Whitman - Claims 1, 2, 6, and 10-13 are anticipated by Whitman.

  • Prior Art Relied Upon: Whitman (Application # 2009/0101692).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Whitman, by itself, disclosed every element of the challenged claims. This argument centered on characterizing Whitman’s system—comprising the surgical device (11) and its electromechanical driver component (1610) with a remote power console and controller (1122)—as the claimed "robotic system." Under this interpretation, Whitman’s handle (1103) was the "tool mounting portion," the driver component (1610) was the "tool drive assembly," and the internal function selector module (1110) was the claimed "transmission arrangement." Petitioner then mapped each remaining claim limitation to specific corresponding components within Whitman's figures and description.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 11 (Ground 4) based on Tierney, Whitman, and the Timm Application (Application # 2008/0308601). This ground was presented as an alternative argument, asserting that if the Board found Whitman did not sufficiently disclose a "second tool articulation axis," the Timm Application explicitly taught a two-axis articulation joint that a POSITA would have been motivated to incorporate.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-7, 10-14, 16-20, and 23-26 of the ’431 patent as unpatentable.