Ethicon LLC and Cilag GmbH Int. (“Ethicon”) v. Intuitive Surgical, Inc.
Docket No. 2021-1601 (IPR2019-00991) (https://cafc.uscourts.gov/opinions-orders/21-1601.OPINION.5-19-2022_1953841.pdf) (Non-precedential)
NEWMAN (D), CLEVENGER, STOLL
May 19, 2022
Brief Summary: Board IPR finding of invalidity for obviousness affirmed.
Summary: Ethicon appealed USPTO Board IPR final written decision (FWD) holding claims 13-15 and 17-18 of US 8,602,287 regarding a motor-driven surgical cutting instrument unpatentable as obvious, challenging “the Board’s fact findings regarding analogous art and motivation to combine prior art references.” The FC panel opinion explains that “[t]he purportedly inventive feature of claim 13 is that the motor for driving the endocutter uses two ‘operational modes,’ which apply two different amounts of current to the motor based on the positioning of the firing element in the firing path” (a “soft start”) that “limit[s] the sudden jerking start” and other benefits. Intuitive challenged the ‘287 claims with four obviousness challenges, the issue on appeal being the combination of a US patent application publication (Swayze) in view of a US patent (McInnis). The FC panel opinion explains that “Swayze discloses a similar endocutter…lacking only the soft start circuit” and McInnis discloses a motor including circuitry that is “particularly advantageous when the motor is used to drive an electric vehicle” that “may be suitably modified for other appropriate motor control applications” (“[n]otably…a ‘starting resistor’”). The Board found McInnis to be analogous prior art and “that a person of ordinary skill in the art would have been motivated to combine Swayze with McInnis” (both fact findings), which Ethicon challenged in this appeal. The FC panel explained that it reviews the Board’s factual findings for substantial evidence (Airbus, FC 2019; Arthrex, FC 2019; Cleo, FC 2007 (“evidence that a reasonable mind might accept as adequate to support a conclusion”)) and that “‘[p]rior art is analogous when the reference is: (1) ‘within the field of the inventor’s endeavor’ or (2) ‘reasonably pertinent to the particular problem with which the inventor was involved’” (In re Wood, CCPA 1979; In re Clay, FC 1992; In re Bigio, FC 2004; Donner, FC 2020 (“relate to a similar problem or purpose”); Sci. Plastic, FC 2014 (“a person of ordinary skill would reasonably have sought a solution to the problem in that outside field”); KSR, US 2007 (“‘analogous” when it is directed to solving the same problem, even when it is in a different field of endeavor”)). The Board concluded “that McInnis is analogous art because it ‘address[ed] at least one problem faced by the inventors of the ’287 patent’” and the FC panel found its conclusion supported by substantial evidence (e.g., “the Board considered the problems facing the inventors”, “‘reasonably pertinent’ to those problems addressed by the ’287 patent”, Intuitive expert testimony). The FC panel found Ethicon’s argument regarding “an additional problem faced by the ’287 patent inventors” not addressed by the Board to be “irrelevant.” The FC panel also considered the motivation to combine, for which the Board relied on US patent publication Kastner, and that Ethicon did not address Kastner with the Board (Novartis AG, FC 2017), only in the appeal (e.g., “limited to ‘drills’”, Board’s motivation finding is “conclusory”). The Board decision was therefore affirmed.