Intuitive Surgical Inc v. Ethicon LLC

1. Case Identification

• Case #: IPR2019-01110
• Patent #: 8,602,288
• Filed: May 23, 2019
• Petitioner(s): Intuitive Surgical, Inc.
• Patent Owner(s): Ethicon LLC
• Challenged Claims: 10-11

2. Patent Overview

• Title: Robotically-Controlled Motorized Surgical End Effector System with Rotary Actuated Closure Systems Having Variable Actuation Speeds
• Brief Description: The ’288 patent describes a robotically-controlled surgical tool with an end effector closure system. The system is designed so that an initial rotation of an actuation component causes the end effector to close at a first, fast rate, and a subsequent rotation in the same direction causes it to close at a second, slower rate for precise clamping.

3. Grounds for Unpatentability

Ground 1: Anticipation by Heinrich - Claims 10-11 are anticipated by Heinrich under 35 U.S.C. §102.

• Prior Art Relied Upon: Heinrich (Application # 2005/0131390) and Viola (Patent 5,915,616), which is incorporated by reference into Heinrich.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Heinrich discloses a robotic surgical system capable of using a surgical stapler tool. Heinrich expressly incorporates the entire contents of Viola for a detailed explanation of such a stapler. Viola, in turn, discloses an adjustable closure mechanism featuring a non-rotating cam member with a dual-pitch helical groove. This groove has a coarse first pitch and a fine second pitch. A rotation pin, operably secured to a rotatable sleeve, rides in this groove. An initial rotation causes the pin to traverse the coarse pitch, rapidly drawing an inner rod and closing the anvil at a first rate. Subsequent rotation causes the pin to traverse the fine pitch, providing for slower, fine adjustment of the anvil at a second rate. Petitioner contended this mechanism discloses every limitation of claims 10 and 11, including the variable-rate closure driven by a single-direction rotation.

Ground 2: Anticipation by Timm - Claims 10-11 are anticipated by Timm under 35 U.S.C. §102.

• Prior Art Relied Upon: Timm (Patent 7,510,107).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Timm discloses a surgical tool with all elements of the challenged claims. In Timm, an anvil assembly pivots relative to an elongate channel. The anvil includes trunnions that are received in corresponding slots in the channel. These slots have a steeper proximal camming surface and a shallower distal camming surface. A rotatable distal closure tube segment drives a non-rotating closure ring axially. As the closure ring moves distally, it contacts the anvil, causing the trunnions to ride along the dual-angle camming slots. This interaction causes the anvil to first close rapidly (along the steeper surface) and then more slowly (along the shallower surface), thereby teaching the claimed variable-rate closure.

Ground 3: Obviousness over Timm and Viola - Claims 10-11 are obvious over Timm in view of Viola under 35 U.S.C. §103.

• Prior Art Relied Upon: Timm (Patent 7,510,107) and Viola (Patent 5,915,616).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that if the Board finds Timm's dual-angle camming slots do not inherently teach the claimed two-rate closure, it would have been obvious to modify Timm's single-pitch threaded engagement with the dual-pitch groove-and-pin mechanism taught by Viola. The modification would involve replacing Timm’s threaded closure tube with one having a dual-pitched groove and replacing the threaded engagement in the closure ring with a corresponding pin.
  • Motivation to Combine: A POSITA would combine these references to gain the known advantages taught by Viola: expediting surgery by allowing rapid initial approximation of the anvil, followed by a slower, higher-force clamping for accurate positioning and sealing. Timm discloses predictable solutions for actuation (slots with pins, single-pitch threads), and Viola discloses a known, superior alternative (dual-pitch groove) for achieving variable speed, making the combination a matter of applying a known technique to a known system to achieve a predictable result.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involves implementing a known mechanical principle (Viola's dual-pitch drive) into a similar, known device (Timm's surgical stapler) within the same field of endeavor.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Timm with Schulze (Patent 5,632,432); Timm with Anderson (Patent 6,783,524), Viola, and Schulze; Heinrich with Anderson; and Heinrich with Viola and Anderson. These grounds relied on similar rationales of combining known robotic systems with known variable-speed closure mechanisms.

4. Key Claim Construction Positions

• Petitioner argued that the terms "component portion," "axially movable portion," and "rotatably movable portion" in claims 10 and 11 are means-plus-function terms under pre-AIA 35 U.S.C. §112, ¶6, because they are nonce words that fail to recite sufficient structure for performing their claimed functions.
• Petitioner identified the corresponding structures from the ’288 patent's specification for each term. For example, the "component portion" that moves is an anvil, the "axially movable portion" is a structure like a closure tube or threaded rod assembly, and the "rotatably movable portion" is a structure like a closure drive nut or a tube segment with a variable-pitch groove. This construction was central to Petitioner's ability to map prior art structures that perform the same function to the claim limitations.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the petition raises new arguments and relies on prior art in a manner not previously considered by the USPTO.
• It was argued that although references like Timm and Viola were cited during prosecution, they were part of a large information disclosure statement and were never substantively discussed by the examiner. Furthermore, Petitioner's reliance on the Anderson reference for its disclosure of a robotic system was substantially different from the examiner's previous reliance on a different reference (Manzo) for a similar purpose.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 10 and 11 of the ’288 patent as unpatentable.