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 and 17-18

2. Patent Overview

• Title: Motor Driven Surgical Cutting Instrument
• Brief Description: The ’287 patent describes a motor-driven surgical cutting and fastening instrument. The invention focuses on a motor control circuit that adjustably controls the movement of an end effector by switching between a first, lower-current operational mode and a second, higher-current operational mode during the forward rotation of the motor.

3. Grounds for Unpatentability

Ground 1: Obviousness over Swayze and Smith - Claims 13-15 and 17-18 are obvious over Swayze in view of Smith under 35 U.S.C. §103.

• 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 disclosed all elements of the challenged claims except for a control circuit that switches between two operational modes with different current levels based on the firing element's position. Swayze taught a motor-driven surgical stapler with an end effector, a motor, a control circuit, and a firing element moving along a path. Smith was alleged to supply the missing element by teaching a control circuit for a linear stapler that switches between a low-force mode and a high-force mode. This switch is based on the position of a knife blade to ensure a "lock-out feature" is not overpowered by the motor, which directly corresponds to the claimed first (low current) and second (high current) operational modes. The combination of Swayze's instrument with Smith's control logic was asserted to render the claims obvious.
  • Motivation to Combine: A POSITA would combine Smith's two-part force generation limiter circuit with Swayze's surgical instrument to solve a known problem. High forces from an electric motor can overpower mechanical lockout mechanisms, which are designed to prevent firing with a spent cartridge. A POSITA would have been motivated to incorporate Smith's circuit to mitigate this risk, thereby improving the safety and reliability of Swayze's device. Additional motivation included optimizing the power supply size and cost.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because both references are directed to motor-powered surgical staplers. The proposed modification was merely the application of a known control technique (Smith's circuit) to a known system (Swayze's instrument) to achieve a predictable improvement in safety and performance.

Ground 2: Obviousness over Swayze and 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: This ground again used Swayze as the base reference for the surgical instrument. McInnis was introduced to teach the claimed dual-mode, dual-current control circuit. McInnis disclosed a conventional "soft start" circuit for an electric motor that used a starting resistor connected in series with the motor's armature. This resistor limits the initial current (first operational mode). After a short, timed delay, a switch shorts the resistor, allowing full current to flow to the motor (second operational mode). Petitioner contended this directly taught the claimed functionality of switching from a low-current to a high-current mode.
  • Motivation to Combine: A POSITA would combine McInnis's soft-start circuit with Swayze's motor-driven instrument for well-understood reasons. Soft-start functionality is conventional for preventing high in-rush currents that can cause mechanical shock, premature wear on components like brushes and gears, and difficulty in controlling the device. Implementing this known solution from McInnis would be a straightforward modification to improve the durability and control of the Swayze instrument.
  • Expectation of Success: Success was expected because the combination involved applying a conventional, predictable electrical engineering solution (a soft-start circuit) to a known system (a motor-driven device). The function of McInnis's circuit is independent and performs the same predictable task of current limiting when integrated into Swayze's instrument.

Ground 3: Obviousness over Zemlok and 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 claim construction from related litigation, where "operational modes" allegedly correspond to distinct "clamping" and "firing" operations. Zemlok disclosed a motor-powered surgical stapler with clamping and firing modes but did not explicitly teach a lower current/torque limit during the clamping mode. Whitman was asserted to teach this missing feature, disclosing a control system for a surgical stapler that sets a lower torque/current limit during the clamping phase and a higher limit during the subsequent firing phase.
  • Motivation to Combine: A POSITA would be motivated to modify Zemlok's control logic with Whitman's teachings to improve device safety. Whitman's approach provides the dual benefit of protecting tissue from excessive force during clamping (lower torque limit) while ensuring sufficient force is available for cutting and stapling during firing (higher torque limit). This addresses a known trade-off in powered surgical instruments, making the combination a desirable and logical improvement.
  • Expectation of Success: A POSITA would have expected success because both references relate to motor-controlled surgical staplers. The proposed modification would involve a straightforward firmware update to Zemlok's microcontroller to include Whitman's known control algorithm for torque limiting. This was presented as a simple application of a known technique to a known system.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) over Zemlok in view of Milliman and Whitman, arguing that if Zemlok's incorporation of Milliman was insufficient, a POSITA would have explicitly combined the references to supply details of the end effector structure.

4. Key Claim Construction Positions

• "Firing element": Petitioner argued this term, used in claims 13 and 17, is a means-plus-function term under pre-AIA §112, ¶6. Petitioner contended that the specification fails to disclose adequate corresponding structure, rendering the term indefinite.
• "Initial position": Petitioner asserted that the plain language requires this term to mean the starting point of the firing operation. This was positioned to counter the Patent Owner's alleged litigation stance that it could also refer to the start of a separate clamping operation.
• "Operational mode": Petitioner argued this term refers to a phase of the firing operation itself (e.g., a soft-start phase followed by a full-power phase). This construction contrasts with the Patent Owner's apparent position that separate clamping and firing actions constitute the different "operational modes."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate for Ground 3. While the primary reference, Zemlok, was before the examiner during prosecution, the combination with Whitman was not. Furthermore, Petitioner asserted that the examiner never considered the claims in light of the Patent Owner's apparent litigation-based claim construction, which forms the basis of the ground, making the challenge substantially new.

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.