Final month, the Federal Circuit issued a non-precedential
resolution affirming the PTAB’s holdings in two ultimate written
choices. P Tech, LLC (herein “P Tech”) appealed the
PTAB choices holding that claims 1 and 4 of U.S. Patent 9,192,395
(herein “‘395 patent”) and claims 1-20 of U.S. Patent
9,149,281 (herein “‘281 patent”) are unpatentable
as a result of they might have been apparent over the cited prior artwork, U.S.
Patent 6,331,181 (herein “Tierney”) in view of U.S.
Patent 5,518,163 (herein “Hooven”). P Tech, LLC, v.
Intuitive Surgical, Inc., No. 22-1102, No. 22-1115 (December
15, 2022)
Within the IPR petitions, Intuitive Surgical, Inc. (herein
“Intuitive”) had challenged claims within the ‘395 patent
and ‘281 patent directed to “robotic surgical methods for
fastening physique tissue.”
Declare 1 of the ‘395 patent
recites
1. A robotic fastening system
comprising:
a robotic mechanism together with an
adaptive arm configured to place a staple relative to a physique
portion of a affected person;
a robotic arm interface configured
to function the adaptive arm of the robotic mechanism;
a staple having first and second
legs;
a fastening member coupled to the
adaptive arm, the fastening member having fist and second pressure
transmitting parts and configured to safe the physique portion
with the staple by making use of a pressure from the primary and second pressure
transmitting parts to maneuver the primary and second legs of the
staple towards one another;
not less than considered one of a place sensor
configured to point a distance moved by the staple and a pressure
measurement machine configured to point a resistance required to
transfer the staple relative to the physique portion; and
a tissue retractor meeting coupled
to the robotic mechanism, the tissue retractor meeting together with a
cannula configured to facilitate insertion of the fastening member
by way of the cannula right into a working house contained in the affected person.
Declare 1 of the ‘281 patent
recites
1. A robotic system for participating a
fastener with a physique tissue; the system comprising:
a robotic mechanism together with an
adaptive arm, the robotic mechanism configured to place a
fastener relative to the physique tissue, the robotic mechanism having
first and second pressure transmitting parts configured to use at
least considered one of an axial pressure and a transverse pressure relative to the
fastener;
a pc configured to regulate the
robotic mechanism; and
an adaptive arm interface coupled to
the adaptive arm and the pc, the adaptive arm interface
configured to function the pc,
whereby a magnitude of the not less than
one axial pressure and transverse pressure utilized to the fastener is
restricted by the pc.
Tierney teaches robotic surgical methods comprising robotic arms
to which surgical instruments, together with staplers, could also be hooked up.
Hooven teaches a handheld endoscopic stapling and chopping
instrument.
The events agreed that the claims of the ‘395 patent and
‘281 patent don’t require an articulating joint close to the pinnacle
of the claimed robotic surgical stapler. Each events additionally agreed
that Intuitive’s petitions didn’t show that such an
articulating joint would have been apparent.
Lack of motivation to mix
P Tech centered its arguments in each proceedings on an asserted
lack of motivation to mix Tierney with Hooven. Specifically, P
Tech asserted that though the challenged claims did
not require an articulable joint close to the
head of the stapling machine, the cited artwork described
advantages of such articulation. Nonetheless, because the proposed mixture
of Tierney with Hooven would lack the articulable joint with a view to
fulfill the claims of the ‘395 and ‘281 patents, a talented
artisan would have lacked motivation to mix the references,
as a result of the proposed mixture would end in some lack of
desired benefits described in Tierney. P Tech equally asserted
that the mixed machine would lack different useful options,
together with offering force-feed-back to the surgeon working the
machine.
The PTAB discovered that “even when Petitioner’s proposed
mixture did end in some lack of a desired ‘dexterity and
different benefits constructed into'” Tierney, “a given
plan of action typically has simultaneous benefits and
disadvantages, and this doesn’t essentially obviate a motivation
to mix.” In different phrases, the PTAB discovered that even when the
mixture of prior artwork references doesn’t present a desired
profit, such a outcome doesn’t essentially negate a motivation to
mix.
The PTAB additionally discovered that Intuitive had sufficiently confirmed a
motivation to mix by “adequately set up[ing] that
incorporating Hooven’s handheld instrument into Tierney’s robotic
system would have resulted in advantages together with elevated accuracy
in comparison with operated by hand devices, and would have allowed
the surgeon to make use of Tierney’s robotic system all through surgical procedure,
relatively than having to change to Hooven’s handheld
instrument.”
P Tech contended that the asserted prior artwork highlighted the
want for, or not less than the good thing about, such a joint, however
Intuitive’s proposed mixture lacked such a joint, and thus,
a talented artisan wouldn’t have been motivated to mix the
references as Intuitive asserted. P Tech’s arguments emphasised
that, by improperly ignoring or excluding the prior arts’
disclosures describing the good thing about the articulating joint, the
PTAB erred in conducting its motivation to mix analyses.
The CAFC resolution acknowledged that P Tech is right that
“a motivation to mix evaluation should account for
’causes to not mix,’ that are info related to the
general consideration of obviousness.” Thus, “there could
not be a motivation to mix the place the mixture can be
inoperable, current undesirable qualities.”
Nonetheless, the panel clarified that “the relevance of
foregone, unclaimed advantages to the motivation-to-combine evaluation
is, nonetheless, unsure.” The panel concluded that the PTAB
expressly thought-about all of the proof, and located it inadequate to
rebut Intuitive’s exhibiting of a motivation to mix primarily based on
different benefits ensuing from the mixture.
Right here, the difficulty was whether or not the alleged motivation to mix
references will be rebutted by a exhibiting of an absence of unclaimed
advantages, the place the references disclose such advantages. The PTAB had
concluded that the exhibiting of the shortage of unclaimed advantages can’t
rebut the motivation to mix evaluation, and the CAFC affirmed the
resolution. Nonetheless, because the CAFC resolution discusses, the PTAB additionally
discovered another advantages have been achieved by combining the references
to help its conclusion that there’s nonetheless a motivation to
mix the references. The takeaway right here is the emphasis that an
analysis of whether or not there’s a correct motivation to mix is
depending on what the factual proof suggests, and if arguing
that there isn’t a motivation to mix by exhibiting an absence of
advantages that aren’t immediately claimed, one must also take into account
whether or not different advantages are nonetheless achieved by combining the
references.
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