PTAB

IPR2019-01532

Auris Health Inc v. Intuitive Surgical Operations Inc

Log In

1. Case Identification

2. Patent Overview

  • Title: Robotic Surgical Tool with Improved Engagement Structures
  • Brief Description: The ’701 patent describes a robotic surgical system with improved techniques for coupling and switching surgical tools. The invention is directed to a surgical instrument comprising a shaft with an end effector at its distal end and a proximal support base containing at least three spools, which are connected by elongate elements (e.g., cables) to articulate the end effector.

3. Grounds for Unpatentability

Ground 1: Claims 1, 7, 8, 11, 16, and 25 are anticipated under 35 U.S.C. §102 by Smith.

  • Prior Art Relied Upon: Smith (Patent 5,624,398).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Smith, a reference not considered during prosecution, teaches every element of the challenged claims. The petition argued that the key limitations identified by the Examiner as patentable are expressly disclosed in Smith.
      • For independent claim 1, Petitioner argued Smith discloses a minimally invasive surgical instrument with all required components. Smith’s “multi-lumen tube” was mapped to the claimed “shaft,” and its interchangeable “robot arms” with grippers were mapped to the “end effector mounting formation.” Smith’s “pulley tray” at the proximal end of the instrument was presented as the claimed “support base.” Crucially, Petitioner contended that the Examiner’s reason for allowance—the absence of “at least three spools angularly displaceably mounted on the support base and having axes which are parallel and spaced apart”—is directly contradicted by Smith. Smith was shown to disclose a pulley tray containing fourteen pulleys (the claimed “spools”) that engage with corresponding servo motors having parallel rotational axes. These pulleys are driven by “tendon loops” (the claimed “elongate elements”) to articulate the robot arms.
      • For independent claim 25, which recites an instrument removably coupleable to a drive assembly, Petitioner argued that Smith discloses this functionality. Smith's system includes a drive assembly (servo motors) and an instrument (pulley tray, tube, and robot arms) that is explicitly described as being detachable from the servo motor arrays. This allows for interchanging end effectors or disposing of contaminated components while reusing the servo system. Smith’s pulleys were mapped to the claimed “movable engaging interface bodies,” and its servo motors were mapped to the “actuator bodies.”
      • Dependent claims were addressed by mapping to further details in Smith. For claim 7, Smith’s robot arms feature multiple joints (shoulder, elbow, wrist) adjacent to the working end, with tendons housed within the multi-lumen tube. For claim 8, Smith’s “tendons” or “cables” were described as flexible. For claims 11 and 16, Smith’s pulleys were shown to engage with rotatable servo motors (actuators) that move in response to operator inputs, with all fourteen pulleys engaging in the same manner.

4. Key Claim Construction Positions

  • “end effector” (All Challenged Claims): Petitioner proposed this term be interpreted as “a device at the end of a surgical instrument for manipulating (cutting, grasping, or otherwise acting on) body tissue.” This construction, based on the ’701 patent’s specification, was used to map the term to Smith’s disclosure of specific tools like grippers, cutters, and dissectors, which manipulate tissue.
  • “angularly displaceable about at least two axes” (Claims 1, 7, 8, 11, and 16): Petitioner proposed a construction of “rotatable about at least two fixed axes.” This interpretation was argued to be consistent with the ’701 patent’s description of movement and was critical for mapping to Smith’s robotic arms, which are described as having multiple rotational and flexional joints that rotate about fixed, perpendicular axes.
  • “at least three spools…to which opposed ends of the elongate elements are connected” (Claims 1, 7, 8, 11, and 16): Petitioner argued this phrase requires each of the spools to have two opposed ends of a single elongate element connected to it, forming a closed loop. This construction was supported by figures in the ’701 patent and was used to directly map to Smith’s system, which explicitly discloses “tendon loops” where both ends of a tendon are secured to a single pulley to drive articulation.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 7, 8, 11, 16, and 25 of the ’701 patent as unpatentable.