Auris Health Inc v. Intuitive Surgical Operations Inc

1. Case Identification

• Case #: IPR2019-01533
• Patent #: 8,142,447
• Filed: August 29, 2019
• Petitioner(s): Auris Health, Inc.
• Patent Owner(s): Intuitive Surgical Operations, Inc.
• Challenged Claims: 1-5

2. Patent Overview

• Title: Surgical tool having a servomechanism
• Brief Description: The ’447 patent discloses a robotically controlled surgical system designed to improve the efficiency of switching surgical tools during a procedure. The technology centers on a surgical instrument with improved engagement structures for coupling to a robotic manipulator arm, comprising a proximal housing with driven elements, a rigid shaft, and a distal surgical end effector.

3. Grounds for Unpatentability

Ground 1: Obviousness over Smith in view of Faraz - Claims 1-5 are obvious over Smith in view of Faraz.

• Prior Art Relied Upon: Smith (Patent 5,624,398) and Faraz (Patent 5,824,007).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Smith taught most limitations of the challenged claims. Smith described a complete robotic surgical system, including a surgical instrument with a proximal portion (a disposable pulley tray) and a distal portion (instrument arms with end effectors). The pulleys in Smith’s tray were presented as the claimed "movable engaging interface bodies," which couple to a drive assembly of servo motors. The instrument’s joints and end effectors were actuated by tendons (drive members) connected to these pulleys. Petitioner contended that the only key element not explicitly detailed in Smith was the "robotic manipulator arm." Smith mentioned its servo motor tray could be supported by an "adjustable clamping means connected to the operating table or other support." Faraz was introduced to provide a detailed description of such a support. Faraz disclosed an adjustable surgical stand with a multi-jointed, motorized arm specifically described as being "well adapted for use as a basis for a robotic surgery device."
  • Motivation to Combine: Petitioner asserted that a Person of Ordinary Skill in the Art (POSA), seeking to implement Smith’s system, would combine it with a support structure like that in Faraz. Smith’s suggestion of an undefined "other support" would have prompted a POSA to look for known and suitable supports for surgical instruments. Faraz provided an ideal solution with its actuated, multi-jointed arm designed for robotic surgery. Combining the two would have been a predictable solution to provide stable, adjustable positioning for Smith's surgical instrument, thereby reducing the workload on human assistants and improving the system's functionality.
  • Expectation of Success: The petition argued that a POSA would have had a high expectation of success in this combination. Given that robotics is a field where practitioners routinely adapt and modify systems using known components, adapting Faraz's motorized support arm for use with Smith's instrument system was presented as a routine engineering task.

4. Key Claim Construction Positions

• "end effector" (Claims 1, 2, 5): Petitioner proposed this term be construed as "a device at the end of a surgical instrument for manipulating (cutting, grasping, or otherwise acting on) body tissue." This construction was based on the specification’s examples (e.g., forceps, scissors, scalpels) and was important for demonstrating that Smith's grippers and cutters met this claim limitation.
• "angularly displaceable about at least two axes" (Claim 2): Petitioner proposed this term be interpreted as "rotatable about at least two fixed axes." This construction was based on the ’447 patent’s descriptions of the end effector’s movement as rotational. This was critical to Petitioner's argument that the multiple rotational and flexional joints in Smith’s instrument arms, which rotate about perpendicular axes, satisfied this limitation.
• "joint(s)" (Claims 1, 5): Petitioner proposed construing this term as "parts connecting two structures that allows movement." This construction aligned with the ’447 specification and was used to map the claim limitation to Smith’s disclosure of multiple rotational and flexional joints (e.g., shoulder, elbow, wrist) in its instrument arms.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-5 of the ’447 patent as unpatentable under 35 U.S.C. §103.