IP Law Daily, PATENT—Fed. Cir.: PTAB properly found robotic surgical system claims obvious, (Dec 15, 2022)

By Cheryl Beise, J.D.

The Board did not err in analyzing motivation to combine prior art references.

The Patent Trial and Appeal Board properly found that the challenged claims of two patents directed to robotic surgical systems for fastening body tissue are invalid because they would have been obvious over two prior art patents, the U.S. Court of Appeals for the Federal Circuit. The patent holder failed to show that the Board ignored or improperly evaluated evidence in its motivation to combine analysis (P-Tech, LLC v. Intuitive Surgical, Inc., December 15, 2022, Lourie, A.).

P-Tech LLC owns two patents directed to robotic surgical systems for fastening body tissue—U.S. Patent Nos. 9,192,395 (the ’395 patent) and 9,149,281 (the ’281 patent). At the behest of Intuitive Surgical, Inc. (“Intuitive”), the Patent Trial and Appeal Board instituted inter partes review of both patents and ultimately concluded that Intuitive proved that all of the challenged—claims 1 and 4 of the ’395 patent and claims 1-20 of the ’281 patent—would have been obvious over the cited prior art.

In particular, the Board found the challenged claims would have been obvious over U.S. Patent 6,331,181 (“Tierney”) in view of other prior art references, including U.S. Patent 5,518,163 (“Hooven”). Tierney teaches robotic surgical systems comprising robotic arms to which surgical tools, including staplers, may be attached. Hooven teaches a handheld endoscopic stapling and cutting instrument.

Before the Board, P Tech did not dispute that the prior art references separately teach the limitations of the challenged claims. Instead, P Tech argued there was a lack of motivation to combine Tierney with Hooven. P Tech’s appeal also challenged the Board’s motivation to combine analyses.

Motivation to combine. P Tech first argued that the Board erred as a matter of law in its motivation to combine analyses by improperly excluding, or otherwise ignoring, evidence in the record. The parties agreed that the claims of the ’395 patent and the ’281 patent do not require an articulating joint near the head of the claimed robotic surgical stapler. The cited art, however, described the benefits of such articulation.

According to P Tech, the Board erred by ignoring the articulating joint disclosures of the prior art. The Federal Circuit disagreed. The Bord expressly considered and rejected P Tech’s arguments. P Tech also argued that the Board erred by relying on figures from an unasserted reference, U.S. Patent 6,231,565 (“Tovey’), to support the conclusion that articulation of the stapler head was not required. However, the Board did not err in considering Tovey as part of the totality of evidence showing what a skilled artisan would have found desirable or necessary in a robotic surgical stapler.

P Tech also contended that the Board erred by not crediting its expert testimony. However, contrary to P Tech’s assertion, the Board discounted the testimony not because of the expert’s lack of surgical credentials, but because the testimony was not supported. The court also rejected P Tech’s argument that Board abused its discretion by rejecting as untimely arguments that P Tech made in its sur-reply to further rebut motivation to combine.

In sum, the evidence supported the Board's finding that Intuitive had sufficiently proven a motivation to combine by “adequately establish[ing] that incorporating Hooven’s handheld tool into Tierney’s robotic system would have resulted in benefits including increased accuracy compared to manually operated instruments, and would have allowed the surgeon to use Tierney’s robotic system throughout surgery, rather than having to switch to Hooven’s handheld tool.”

Both Board’s decisions were affirmed in full.

The Case is Nos. 22-1102; 22-1105.

Attorneys: Robert M. Evans (Lewis Rice LLC) for P Tech, LLC. Steven Katz (Fish & Richardson P.C.) for Intuitive Surgical, Inc.

Companies: P Tech, LLC; Intuitive Surgical, Inc.

Cases: Patent FedCirNews USPTO GCNNews