PTAB

IPR2020-00050

Intuitive Surgical Inc v. Ethicon LLC

Key Events

Petition

petition

Title: Surgical Stapling Instrument Having a Clearanced Opening
Brief Description: The ’379 patent describes an endoscopic surgical instrument for stapling and severing tissue. The invention is directed to a stapling assembly that includes a lockout mechanism configured to block the advancement of a staple firing member when a detachable staple cartridge is not attached to the assembly.

Prior Art Relied Upon: Shelton ’562 (Application # 2005/0263562).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner’s argument centered on the assertion that the ’379 patent is not entitled to its claimed priority date, which, if correct, would establish Shelton ’562 as qualifying prior art under §102. Petitioner contended that with the proper priority date established, the anticipation analysis is straightforward because the substantive written description of Shelton ’562 is "word-for-word identical" to that of the ’379 patent. Petitioner provided a detailed, element-by-element mapping for each limitation of independent claims 1 and 2 and dependent claim 3. Key disclosed elements included a stapling assembly with first and second jaws, a staple firing member with first and second cams to engage the jaws, a "clearanced opening" (anvil pocket) in one jaw to permit the firing member to be unengaged when retracted, and a lockout mechanism to block advancement of the firing member when the staple cartridge is not attached. For claim 3, Petitioner mapped the limitations of a detachable cartridge and a rotatable first jaw relative to the second jaw to corresponding disclosures in Shelton ’562.

Defective Priority Claim: The central technical-legal contention of the petition was that the ’379 patent has a defective priority claim that invalidates its entitlement to an early filing date. Petitioner argued the ’379 patent claims the benefit of an intermediate application (the ’148 application) that itself improperly claims to be a "continuation" of two separate and distinct earlier applications (the ’601 application and the ’753 application). Petitioner asserted that because the ’148 application combined the disclosures of these two distinct applications, it necessarily contained new matter relative to each individual parent. Therefore, the ’148 application should have been designated a "continuation-in-part" of each parent, not a "continuation." Petitioner argued this incorrect statement of the familial relationship fails to meet the "specific reference" requirement of 35 U.S.C. § 120, thereby breaking the priority chain. Consequently, Petitioner contended the earliest effective priority date for the ’379 patent is the filing date of the ’148 application itself: February 7, 2014. This later date makes Shelton ’562, published on December 1, 2005, valid prior art.

Petitioner argued that discretionary denial under 35 U.S.C. § 314(a) would be inappropriate. The petition asserted that, unlike the circumstances in precedential cases warranting denial, the co-pending district court action involving the ’379 patent was stayed, eliminating the risk of conflicting proceedings or an earlier trial date. While a parallel International Trade Commission (ITC) investigation existed, Petitioner argued its target completion date was roughly 14 months away and that subsequent appeals would likely delay a final resolution for years, meaning the IPR proceeding would conclude much sooner. Crucially, Petitioner contended that the merits of the petition weighed heavily in favor of institution, as the anticipation ground was based on a prior art reference with a disclosure that is substantively identical to the challenged patent, presenting a uniquely strong case for unpatentability.

Petitioner requests institution of an inter partes review and cancellation of claims 1-3 of the ’379 patent as unpatentable.