PTAB

IPR2019-01547

Auris Health Inc v. Intuitive Surgical Operations Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Surgical Robotic Tools, Data Architecture, and Use
  • Brief Description: The ’906 patent describes systems and methods for robotically-assisted surgery. The technology centers on a master control manipulated by a surgeon to operate a slave surgical instrument, where the same master control can be used in a first mode to move the instrument and in a second, disassociated mode to access and change auxiliary information on a display.

3. Grounds for Unpatentability

Ground 1: Obviousness over Borst and Salvati - Claims 51 and 53 are obvious over Borst in view of Salvati.

  • Prior Art Relied Upon: Borst (WO 95/01757) and Salvati (Patent 5,373,317). Petitioner also cited Wang ’850 (Patent 6,102,850) as evidence of well-known techniques for implementing master-slave control.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Borst teaches a robotic surgical system with all key components of claims 51 and 53, including a master-slave controller for moving an end effector and an image display showing the surgical site. However, Borst uses separate controls (e.g., a mouse or joystick) to interact with the display. Salvati, a remote endoscopic system, was cited for its disclosure of a single controller (a joystick) with two distinct operating modes: a first "inspection mode" for controlling the endoscope's articulation and a second "freeze-frame mode" for controlling a cursor to interact with a static image on the display. The combination of Borst’s surgical system with Salvati’s dual-mode control concept allegedly renders the claimed invention obvious.
    • Motivation to Combine: A POSITA would combine Borst and Salvati to achieve the exact benefit described in Salvati: simplifying the user interface by eliminating the need for a separate input device like a mouse or keypad. This would reduce surgeon distraction and consolidate control functions into the primary surgical manipulator, a known goal in the art for improving efficiency and ergonomics.
    • Expectation of Success: Petitioner asserted a high expectation of success, as the combination involved integrating a known dual-mode control philosophy from Salvati into the known robotic surgical framework of Borst. The modification was predictable and used established techniques.

Ground 2: Obviousness over Borst and Wang '099 - Claims 16, 22-23, and 25-26 are obvious over Borst in view of Wang ’099.

  • Prior Art Relied Upon: Borst (WO 95/01757) and Wang ’099 (Patent 6,496,099).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground focused on the limitations of claim 16, which requires "selectively accessing a source of auxiliary information" and "disassociating the master control from the end effector" to do so. Petitioner argued Borst discloses a base system but lacks the specific functionality of using the master control to access external patient data. Wang ’099 was introduced for teaching a medical system with a "master controller" that can retrieve remotely located patient data (auxiliary information) via a network gateway and display it on a monitor. Crucially, Wang ’099 discloses that a user can issue "selection commands" to switch the master controller's function, for instance, from operating a laser to interfacing with the network, thereby disassociating the control from one function to perform another.
    • Motivation to Combine: A POSITA would combine Borst with Wang ’099 to enhance the surgeon's capabilities by providing access to comprehensive patient data (e.g., preoperative images) directly within the surgical console. Wang ’099 taught that using a single master interface for multiple functions was "highly advantageous" because it simplifies the procedure and reduces movement in the operating room. This provided a strong motivation to integrate Wang ’099’s data access and control-switching features into Borst's surgical system.
    • Expectation of Success: Petitioner contended that a POSITA would have had a reasonable expectation that the modified system would work as desired. The integration involved applying a known data retrieval and display method to an existing surgical platform, and nothing in Borst’s system would prevent such a modification.

4. Key Claim Construction Positions

  • "changing the displayed information" (claims 51, 53): Petitioner argued this term should be construed as "adding, under operator control, information relevant to the surgical procedure to an existing live image of the surgical site." This construction was asserted to be critical, based on the applicant's arguments during prosecution distinguishing prior art for lacking operator control over the displayed information. This construction requires active, operator-driven manipulation, not just an automatic system update.
  • "master control"/"master" (claims 16, 51, 53): Petitioner proposed this term be construed as "a user control device having links connecting joints that processes received three-dimensional input to command a slave device to perform corresponding three-dimensional movement." This construction emphasizes the mechanical linkage and 3D manipulation capabilities, which the Examiner relied upon for allowance. Petitioner argued this construction was, in fact, met by the prior art.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner’s central technical contention was that the Examiner's basis for allowing the claims was factually erroneous. The Examiner concluded that the prior art did not teach or suggest "manipulating a linkage of a master control in three dimensions." Petitioner argued that this was a well-known feature of robotic surgical systems at the time and was explicitly taught or rendered obvious by the combination of references, particularly Borst and Wang ’850, which described detailed master-slave systems with multi-degree-of-freedom input controllers.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 16, 22-23, 25-26, 51, and 53 as unpatentable.