Intuitive Surgical Inc v. P Tech LLC

1. Case Identification

• Case #: IPR2020-00650
• Patent #: 9,149,281
• Filed: February 26, 2020
• Petitioner(s): Intuitive Surgical, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Robotic System for Engaging a Fastener with Body Tissue
• Brief Description: The ’281 patent discloses a robotic surgical system for securing body tissue with a fastener, such as a staple. The system comprises a computer-controlled robotic mechanism that applies and limits the magnitude of both an axial force and a transverse force relative to the fastener.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tierney and McGarry - Claims 1-3, 8-12, and 16-20 are obvious over Tierney in view of McGarry.

• Prior Art Relied Upon: Tierney (Patent 6,331,181) and McGarry (Patent 5,289,963).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tierney disclosed a complete robotic surgical system, including a computer, adaptive arms, an interface, and the ability to use various end effectors like staplers. Tierney also taught storing data for "the maximum force to be applied" by the system, thereby limiting force. Petitioner asserted that McGarry, which is explicitly cited in the ’281 patent specification, taught the claimed stapling mechanism, including the "first and second force transmitting portions" (lands 104R and 104L) configured to apply axial and transverse forces to close a staple.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine McGarry’s stapling mechanism with Tierney’s robotic system because Tierney expressly contemplated using various end effectors, including staplers. Implementing a known stapler like McGarry’s was a predictable way to add this functionality. A POSITA would be further motivated by the desire to enhance surgical precision and safety, leveraging Tierney's force-limiting capabilities with a well-understood stapling tool.
  • Expectation of Success: Petitioner contended a POSITA would have had a high expectation of success, as adapting known handheld surgical tools for use with robotic platforms was a well-established practice to improve minimally invasive procedures.

Ground 2: Obviousness over Tierney, McGarry, and Hooven - Claims 4-8 and 13-15 are obvious over Tierney in view of McGarry and further in view of Hooven.

• Prior Art Relied Upon: Tierney (Patent 6,331,181), McGarry (Patent 5,289,963), and Hooven (Patent 5,518,163).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Tierney/McGarry combination to address dependent claims requiring features like a display for force magnitude and a force sensor. Petitioner argued Hooven disclosed a surgical instrument with "sensing means," including force sensors, connected to a controller that presents feedback on a display screen. These sensors could determine if a staple was properly closed, which inherently relates to the transverse force applied.
  • Motivation to Combine: A POSITA would be motivated to add Hooven's sensor and display technology to the Tierney/McGarry system to provide the surgeon with real-time feedback. This would improve safety and control, key objectives in robotic surgery. Hooven explicitly taught its sensing means could be used with other endoscopic instruments, making its application to the combined Tierney/McGarry stapler a logical and foreseeable improvement.
  • Expectation of Success: Success would be reasonably expected, as integrating sensors and displays into surgical tools was a known technique to enhance operator feedback and procedural safety.

Ground 3: Obviousness over Tierney and Hooven - Claims 1-20 are obvious over Tierney in view of Hooven.

• Prior Art Relied Upon: Tierney (Patent 6,331,181) and Hooven (Patent 5,518,163).

• Core Argument for this Ground:

  • Prior Art Mapping: As an alternative combination, Petitioner argued that Hooven could supply the necessary end effector teachings. Tierney provided the base robotic system. Hooven disclosed a complete linear surgical stapler, including a driving wedge and staple drivers that apply an axial force, and an anvil that applies a transverse force to form the staples. Petitioner asserted this combination met the limitations of the independent claims, especially under the Patent Owner's apparent claim construction from co-pending litigation.
  • Motivation to Combine: The motivation was similar to other grounds: a POSITA would seek to combine a known, effective surgical stapler (Hooven) with an advanced robotic platform (Tierney) to achieve the benefits of computer-assisted surgery, such as improved dexterity, control, and safety.
  • Expectation of Success: A POSITA would have reasonably expected success in adapting Hooven's stapler for use with Tierney's system, as this represented a common-sense application of known technologies to achieve a predictable result.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Gardiner (Patent 6,149,658). Ground 4 argued claims 1-20 are obvious over Tierney, McGarry, and Gardiner. Ground 5 argued claims 1-20 are obvious over Tierney, Hooven, and Gardiner. Gardiner was primarily added to explicitly teach a computer in a robotic system using electrical feedback signals to limit the forces applied to a staple.

4. Key Claim Construction Positions

• "at least one of an axial force and a transverse force": Petitioner argued this phrase required a conjunctive meaning—that the system must be configured to apply both at least one axial force and at least one transverse force. This position was based on Federal Circuit precedent (SuperGuide) and the prosecution history, where the Examiner allowed claims understood to require limitation of both forces.
• "first and second force transmitting portions...": Petitioner contended this was a means-plus-function limitation under pre-AIA 35 U.S.C. §112, ¶ 6, because "portion" is a nonce word and "force transmitting" describes function, not structure. The corresponding structure disclosed in the ’281 patent was identified as "force transmitting members or lands 356 and 358."

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’281 patent as unpatentable.