Intuitive Surgical Inc v. Ethicon LLC

1. Case Identification

• Case #: IPR2019-00991
• Patent #: 8,602,287
• Filed: May 17, 2019
• Petitioner(s): Intuitive Surgical, Inc.
• Patent Owner(s): Ethicon LLC
• Challenged Claims: 13-15, 17-18

2. Patent Overview

• Title: Motor Driven Surgical Cutting Instrument
• Brief Description: The ’287 patent discloses a motor-driven surgical cutting and fastening instrument. The core claimed technology is a motor control circuit that adjustably controls the movement of a firing element by switching between a first low-current operational mode and a second high-current operational mode during the motor's forward rotation, based on the firing element's position along its path.

3. Grounds for Unpatentability

Ground 1: Obviousness over Swayze in view of Smith - Claims 13-15 and 17-18 are obvious over Swayze in view of Smith.

• Prior Art Relied Upon: Swayze (Application # 2007/0175956) and Smith (Application # 2007/0270790).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Swayze discloses a motor-driven surgical instrument that is structurally and functionally almost identical to that of the ’287 patent, including an end effector, a firing element (knife), and an electric motor with a control circuit. However, Swayze's circuit lacks the claimed dual-mode, current-varying functionality. Smith was argued to supply this missing element by teaching a control circuit for a linear surgical stapler that switches from a low-force mode to a high-force mode based on the position of its cutting blade. This dual-mode operation in Smith is specifically designed to prevent the motor from overpowering a spent cartridge lockout mechanism.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Smith's dual-force control circuit with Swayze's instrument to improve its safety and reliability. Swayze discloses a mechanical lockout feature, and Smith explicitly addresses the problem of high-powered motors overpowering such features. Implementing Smith’s solution would have been a predictable way to mitigate this known risk in the functionally similar Swayze device.
  • Expectation of Success: Petitioner asserted a high expectation of success, as the combination involved applying a known technique (Smith's dual-mode circuit) to a known system (Swayze's instrument) in the same field to solve a well-understood problem.

Ground 2: Obviousness over Swayze in view of McInnis - Claims 13-15 and 17-18 are obvious over Swayze in view of McInnis.

• Prior Art Relied Upon: Swayze (Application # 2007/0175956) and McInnis (Patent 4,346,335).
• Core Argument for this Ground:
  • Prior Art Mapping: As in Ground 1, Swayze provided the base surgical instrument. McInnis was presented as teaching a conventional "soft start" circuit for DC electric motors, which it describes as "conventional in the art." The McInnis circuit uses a starting resistor to limit current upon startup (a first, low-current mode) and then uses a time-delay relay to short the resistor, allowing full current to flow (a second, high-current mode). This directly corresponds to the claimed dual-mode operation.
  • Motivation to Combine: A POSITA would incorporate McInnis's soft start circuit into Swayze's instrument for the exact reason disclosed in McInnis: to "prevent a high in rush of current when the motor is started." This known technique would predictably reduce mechanical shock on the drive components, prevent electrical damage, and improve user control of the Swayze device.
  • Expectation of Success: Success would have been expected because McInnis teaches its circuit is a conventional solution for DC motors and is broadly applicable. The combination was argued to be a straightforward application of a known electrical engineering principle to a known device.

Ground 3: Obviousness over Zemlok in view of Whitman - Claims 13-15 and 17-18 are obvious over Zemlok in view of Whitman.

• Prior Art Relied Upon: Zemlok (Application # 2009/0090763) and Whitman (Patent 6,793,652).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was argued under the Patent Owner's apparent litigation-based claim construction, where "clamping" could be the "first operational mode" and "firing" the "second operational mode." Petitioner argued that Zemlok discloses a motor-powered surgical stapler with distinct clamping and firing modes but does not explicitly teach different current or torque limits for each. Whitman was argued to teach a control system for a motor-powered surgical stapler that specifically sets a reduced torque/current limit during its clamping mode to prevent tissue damage, followed by a higher torque/current for the firing and cutting operations.
  • Motivation to Combine: A POSITA would be motivated to modify Zemlok's control logic to incorporate the torque-limiting strategy from Whitman. This would improve the safety of the Zemlok device by protecting tissue from excessive force during clamping, while ensuring sufficient power is available for the subsequent firing and cutting, achieving a safer and more effective instrument.
  • Expectation of Success: Petitioner argued for a high expectation of success because both references are in the field of motor-powered surgical staplers and address similar operational sequences. Implementing Whitman's control algorithm in Zemlok's firmware-based system was presented as a predictable and straightforward modification.
• Additional Grounds: Petitioner asserted an additional obviousness challenge over Zemlok in view of Milliman and further in view of Whitman, arguing that Milliman provides further details of the end effector structure that Zemlok incorporates by reference.

4. Key Claim Construction Positions

• "Firing element": Petitioner argued this term, which appears only in the claims, is a means-plus-function term under pre-AIA 35 U.S.C. §112, ¶6. The recited functions were identified as "firing" and "moving along a firing path," with the corresponding structure in the specification being the "cutting instrument/knife 32" and its equivalents.
• "Initial position" and "Operational mode": Petitioner argued that the claims and specification require these terms to be interpreted in the context of the firing operation. This position was asserted to counter the Patent Owner's alleged litigation position that the "first operational mode" could be a separate clamping operation and the "initial position" could be the start of clamping, rather than firing.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate for Ground 3. It contended that although the primary reference (Zemlok) was considered during prosecution, the secondary reference (Whitman) was cited but never substantively discussed by the examiner. Furthermore, the examiner did not have the benefit of the Patent Owner's allegedly broad claim constructions from the co-pending litigation, which form the basis for the ground.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 13-15 and 17-18 of the ’287 patent as unpatentable.