P Tech, LLC v. Intuitive Surgical, Inc.
Docket No. 2022-1102, -1115 (IPR-2020-00649-50) (https://cafc.uscourts.gov/opinions-orders/22-1102.OPINION.12-15-2022_2048477.pdf) (Non-Precedential)
LOURIE, DYK, CUNNINGHAM
December 15, 2022
Brief Summary: Board IPR decisions of obviousness of P Tech’s robotic surgical instrument claims affirmed. Summary: P Tech appealed two IPR final written decisions (FWDs) finding claims 1 and 4 of US 9,192,395 and claims 1-20 of US 9,149,281 directed to robotic tissue fastening systems unpatentable for obviousness. This opinion explained that “[t]he differences between these claims have not been argued as significant to this appeal” and “[t]herefore, they all stand or fall together.” The ‘281 patent requires a “position sensor configured to indicate a distance moved by the fastener or staple” that “[f]or the purposes of this appeal, only the position sensor recited in the ’281 patent is relevant.” Intuitive’s petitions alleged obviousness over US 6,331,181 (“Tierney”) “in view of other prior art references” including US 5,518,163 (“Hooven”). P Tech argued only that the prior art did not teach the position sensor but “did not dispute that the asserted prior art separately teaches the limitations of the challenged claims” and “[i]nstead” focused “on an asserted lack of motivation to combine Tierney with Hooven.” P Tech argued “that although the challenged claims did not require an articulable joint near the head of the stapling device, the cited art described benefits of such articulation” and that there was not motivation to combine because “the proposed combination seemingly lacked this articulable joint” and “would lack other beneficial features, including providing force-feedback to the surgeon operating the device.” The USPTO Board disagreed, including “P Tech’s challenges to Hooven’s alleged disclosure of a position sensor”, and held Intuitive “met its burden to show” obviousness “by a preponderance of the evidence”. The FC panel reviewed the Board’s legal determinations de novo (In re Elsner, FC 2004) and factual findings for substantial evidence (In re Gartside, FC 2000; Consol. Edison, US 1938). P Tech argued that “by improperly ignoring or excluding the prior arts’ disclosures describing the benefit of this articulating joint, the Board erred in conducting its motivation to combine analyses”. The FC panel agreed with PT “that a motivation to combine analysis must account for ‘reasons not to combine,’ which are facts relevant to the overall consideration of obviousness” (Arctic Cat, FC 2017 (“unlikely to be productive of the result sought by the applicant”); In re Urbanski, FC 2016 (“the combination would be inoperable, present undesirable qualities”)), but found “the Board did not exclude or ignore the evidence to which P Tech now points on appeal” (e.g., “found it insufficient to rebut Intuitive’s showing”; Medichem, FC 2006 (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate a motivation to combine.”)). The FC panel also found no error with the Board’s decision to cite little weight to P Tech’s expert testimony as no corroborating evidence to his opinion was presented (In re Am. Acad. Sci. Tech Ctr., FC 2004). P Tech also asserted the Board “inappropriately relied on figures from an unasserted reference” (“Tovey”) but the FC panel found no error as “the Board simply considered Tierney and Tovey as part of the totality of evidence.” P Tech also asserted the Board incorrectly construed the position sensor limitation but the FC panel agreed with Intuitive that since this was not argued in front of the Board, P Tech forfeited it. The Board decisions were therefore affirmed.