Intuitive Surgical Operations, Inc.

Patent Trials and Appeals Board

Mar 3, 2021

IPR2019-01533 (P.T.A.B. Mar. 3, 2021)

Trials@uspto.gov Paper No. 45
571.272.7822 Entered: March 3, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AURIS HEALTH, INC.,
Petitioner,

v.

INTUITIVE SURGICAL OPERATIONS, INC.,
Patent Owner.
____________

IPR2019-01533
Patent 8,142,447 B2
____________

Before ERICA A. FRANKLIN, ULRIKE W. JENKS, and
JAMES A. WORTH, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

JUDGEMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318

IPR2019-01533
Patent 8,142,447 B2
2
I. INTRODUCTION
This is a Final Written Decision in an inter partes review challenging
the patentability of claims 1–5 of U.S. Patent No. 8,142,447 B2 (Ex. 1001,
“the ’447 patent”). We have jurisdiction under 35 U.S.C. § 6.
Petitioner has the burden of proving unpatentability of a claim by a
preponderance of the evidence. 35 U.S.C. § 316(e) (2018). Having reviewed
the arguments of the parties and the supporting evidence, we find that
Petitioner has not demonstrated by a preponderance of the evidence that the
challenged claims are unpatentable.
A. Procedural Background
Auris Health, Inc. (“Petitioner” or “Auris”) filed a Petition requesting
an inter partes review of claims 1–5 of the ’447 patent. Paper 1 (“Pet.”).
Intuitive Surgical Operations, Inc. (“Patent Owner” or “Intuitive”) timely
filed a Preliminary Response to the Petition. Paper 8 (“Prelim. Resp.”). In
view of the then-available, preliminary record, we concluded that Petitioner
satisfied the burden, under 35 U.S.C. § 314(a), to show that there was a
reasonable likelihood that Petitioner would prevail with respect to at least
one of the challenged claims. We instituted an inter partes review of claims
1–5 of the ’447 patent on the asserted ground. Paper 9 (“Dec.”), 25. Patent
Owner timely filed a Response. Paper 14 (“PO Resp.”). Petitioner filed a
Reply (“Pet. Reply,” Paper 26) and Patent Owner filed a Sur-reply (“Sur-
reply,” Paper 35). A hearing was held on December 4, 2020, and a transcript
was entered into the record. Paper 43 (“Tr.”).
B. Related Proceedings
The parties state the ’447 patent has been asserted in the copending
district court proceeding, Intuitive Surgical, Inc. v. Auris Health, Inc., C. A.
No. 18-1359-MN (D. Del.). Pet. 2; Paper 4, 1.
IPR2019-01533
Patent 8,142,447 B2
3
The parties identify that the related U.S. Patent No. 7,048,745 B2
(“the ’745 patent”) has been asserted in the district court proceeding Intuitive
Surgical, Inc. v. Vital Care Reps, Inc., No. 06-cv-06971 (N.D. Cal.). Pet. 2:
Paper 4, 2.
Petitioner has also filed a petition for inter partes review of related
U.S. Patent No. 8,491,701 B2 (“the ’701 patent”) in IPR2019-01532. Pet. 1.
Petitioner also identifies related patents and patent applications in the
’447 patent family. Id.
C. The ’447 Patent
The ’447 patent relates to surgical tools for minimally invasive
robotically enhanced surgical procedures. Ex. 1001, 1:38–41. The ’447
patent explains that, in performing robotic surgery, different surgical tools
are required, which leads to differences between the tool structures and the
other components of the robotic system. Id. at 2:34–38. This requires time to
reconfigure the robotic system to take advantage of a different tool, and to
configure the master controller to control the degrees of motion of the tool.
Id. at 2:43–49. According to the ’447 patent, it would be desirable to reduce
the delay associated with each tool change while improving the safety and
reliability of the surgical system. Id. at 2:50–57.
The ’447 patent describes a robotic surgical system that provides
improved engagement structures for coupling robotic surgical tools with
manipulator structures. Ex.1001, 3:26–28. Figure 4 of the ’447 patent is
reproduced below:

IPR2019-01533
Patent 8,142,447 B2
4
Figure 4 of the ’447 patent depicts an exemplary tool of the invention. Id. at
5:62–63. The tool will often comprise a surgical instrument suitable for
manipulating tissue. Id. at 3:40–41. The specification describes, with
reference to Figure 4, that tool 54 includes a shaft 102 having proximal end
104 and distal end 106. Id. at 9:17–18. Tool 54 includes surgical end effector
112 coupled to the distal end of shaft 102 at joint 114 that provides at least
two degrees of freedom. Id. at 9:20–23. Housing 108 at the proximal end
includes interface 110, which mechanically and electrically couples tool 54
to a manipulator structure. Id. at 9:31–33. An exemplary manipulator
structure is depicted in Figure 2A, reproduced below:

Figure 2A depicts a robotic surgical manipulator. Id. at 5:53–54. Robotic
manipulator 58 includes a linkage 62 that constrains movement of tool 54 so
that tool 54 rotates around a point in space 64, so as to pivot about pitch axis
64a or to rotate about yaw axis 64b. Id. at 7:51–62.
IPR2019-01533
Patent 8,142,447 B2
5
Movement of the end effector is depicted in Figure 4A, reproduced
below:

Figure 4A is a schematic view of a drive system for the tool of Figure 4.
Ex.1001, 5:64–65. Drive system 116 mechanically couples first and second
end effector elements 112a, 112b to driven elements 118 of interface 110,
and translates mechanical inputs from driven elements 118 into articulation
of wrist 114 about first and second axes A1 and A2. Id. at 9:24–31. Interface
110 is depicted in Figure 6, reproduced below:

Figure 6 illustrates the mechanical and electrical interface of the tool of
Figure 4. Id. at 6:1–2. Interface 110 includes a plurality of driven elements
118 that provide mechanical coupling of the end effector to drive motors
mounted to manipulator 58. Id. at 10:17–20. In the embodiment of Figure 6,
driven elements 118 each include a pair of pins 122 extending from a surface
IPR2019-01533
Patent 8,142,447 B2
6
thereof that couple with openings 140 in rotatable bodies 134 so as to align
driven elements 118 of the tool with the drive elements of the holder. Id. at
10:20–22, 11:6–9. In an embodiment, rotatable bodies 134 are in adapter
128, as depicted in Figure 7B, reproduced below:

Figure 7B illustrates an adapter for coupling the interface of Figure 6 to the
surgical manipulator. Id. at 6:3–4. Coupling is depicted in Figure 14C,
reproduced below.

Figure 14C illustrates the adapter of Figure 7B mounted to a manipulator
arm, and depicts mounting the tool of Figure 4 onto the adapter. Ex.1001,
IPR2019-01533
Patent 8,142,447 B2
7
6:26–28. In particular, mounting of tool 54 to adapter 128 includes inserting
the surgical end effector distally through cannula 72 (see Figure 2B) and
sliding interface 110 of tool 54 into engagement with a mounted adapter. Id.
at 16:58–62. The tool can be removed and replaced by reversing the above
tool mounting procedure and mounting an alternative tool. Id. at 16:62–64.
In use, a controller grasped by the surgeon provides a manual input
device so that the robotic surgery system allows the surgeon to manipulate
the surgical tools as if the handle in the surgeon’s hand and the end effector
in the surgeon’s field of view define a single contiguous surgical instrument.
Id. at 7:9–13, 12:12–16.
D. Illustrative Claim
Petitioner challenges claims 1–5 of the ’447 patent, of which claims 1–4 are
the independent claims. Claim 1 is illustrative and is reproduced below:
1. A method for performing robotic surgery on a patient,
the method comprising coupling a surgical instrument to a
robotic surgical system, the surgical system having a drive
assembly operatively coupled to a control unit operable by
inputs from an operator, the drive assembly having a plurality
of actuator bodies which are movable in response to operator
inputs, the surgical instrument comprising:
a proximal portion and a distal portion, the proximal
portion comprising a first plurality of movable
engaging interface bodies;
at least one distal end effector member;
a plurality of joints, at least one of the joints being
coupled to the at least one distal end effector member,
the joints being coupled to the plurality of movable
engaging interface bodies by a plurality of drive
members; the method further comprising:
coupling the movable engaging interface bodies to the
plurality of actuator bodies;
IPR2019-01533
Patent 8,142,447 B2
8
moving a robotic manipulator arm supporting the
instrument in at least one degree of freedom; and
moving the actuator bodies in response to operator
inputs.
Ex. 1001, 17:46–67. Claims 2–4 are also independent claims and similarly
recite a robotic manipulator arm.
E. The Asserted Ground of Unpatentability
Petitioner asserts that claims 1–5 are unpatentable based on the
following ground:
Claims Challenged 35 U.S.C. §1 References/Basis
1–5 103(a) Smith2 and Faraz3
Petitioner also relies on the Declaration of Dr. William Cimino
(Ex. 1003) to support its challenge. Patent Owner relies on the Declaration
of Dr. Howie Choset (Ex. 2001) to support its positions.
II. ANALYSIS
A. Person of Ordinary Skill in the Art
Petitioner asserts that a person of ordinary skill in the art at the time of
the invention would include someone with a good working knowledge of
robotics and medical devices. Pet. 10. Petitioner also asserts that a person of
ordinary skill in the art at the time of the invention would include someone

1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
2013. Because the application from which the ’447 patent issued was filed
before that date, our citations to Title 35 are to its pre-AIA version.
See MPEP § 2159 (9th ed. rev. 11.2013, June 2020).
2 Smith et al., US 5,624,398, issued Apr. 29, 1997 (“Smith,” Ex. 1004).
3 Faraz et al., US 5,824,007, issued Oct. 20, 1998 (“Faraz,” Ex. 1005).
IPR2019-01533
Patent 8,142,447 B2
9
having an undergraduate education in electrical engineering, mechanical
engineering, robotics, biomedical engineering, or a related field of study,
along with about two years of experience in academia or industry studying
or developing robotics or medical devices such as robotic surgical systems.
Id. (citing Ex. 1003 ¶ 31). Patent Owner does not contest Petitioner’s
proffered definition and does not propose its own definition of the level of
ordinary skill in the art in the Response. See generally PO Resp.
Because Petitioner’s definition of one of ordinary skill in the art is
reasonable and consistent with the ’447 patent and the prior art of record, we
adopt Petitioner’s definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill
level are not required “where the prior art itself reflects an appropriate level
and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v.
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).
B. Claim Construction
Where, as here, a petition is filed on or after November 13, 2018, the
Board applies the same claim construction standard that would be used to
construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R.
§ 100(b) (2019). Under that standard, claim terms “are generally given their
ordinary and customary meaning” as understood by a person of ordinary
skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d
1303, 1312–13 (Fed. Cir. 2005) (en banc).
Petitioner proposes constructions for several terms, but contends that
“the Board likely will not need to adopt specific constructions to resolve any
dispute.” Pet. 11. Patent Owner does not propose any constructions for any
claim terms in its Response. See generally PO Resp.
IPR2019-01533
Patent 8,142,447 B2
10
On November 20, 2019, after Petitioner filed the Petition but before
the Patent Owner filed the Preliminary Response, the district court in the
copending district court case, Intuitive Surgical, Inc. v. Auris Health, Inc.,
No. 18-1359 (MN) (D. Del.), held a claim construction hearing. With our
authorization, Petitioner submitted the transcript as an exhibit in this
proceeding. Ex. 1011. At the end of the hearing, the district court determined
the term “end effector” in the ’447 patent means a “device at the end of an
instrument used in surgery designed to interact with the environment.” Id. at
117:21–118:21.
In the Institution Decision we acknowledged the district court’s claim
construction (Ex. 1011) and determined that it was unnecessary to expressly
construe any claim terms for the purpose of rendering the Decision. See Dec.
10–11. We determine here again that we do not need to construe any claim
terms for this Final Decision.
C. Obviousness over Smith and Faraz
Petitioner asserts that claims 1–5 are unpatentable as obvious over
Smith and Faraz. Pet. 15–75. Patent Owner opposes Petitioner’s assertions.
PO Resp. 15–94. Specifically, Patent Owner asserts that Petitioner has not
set out a prima facie case of unpatentability for claims 1–5 (id. at 79–94),
and that Faraz is not prior art at least to claim 2 (id. at 15–79).
i. Smith (Ex. 1004)
Smith relates to a robotic surgical system. Ex. 1004, 1:7–9. Figure 1B
of Smith is reproduced below:
IPR2019-01533
Patent 8,142,447 B2
11

Figure 1B is a schematic illustration of one embodiment of an endoscopic
robotic surgical tool. Id. at 5:52–53. Smith’s system includes an exoskeleton
encoder worn by a practitioner (see Figure 1A) and a pair of remote robot
arms 18 at the distal end of a multi-lumen tube 150. Id. at 6:46–49, 6:67–7:2.
An end effector (e.g., grippers, cutters, dissectors, bioptomes) is mounted to
the end of each robot arm. Id. at 4:40–41, 18:59–65. The end effectors may
be interchanged during the course of a procedure by detaching the
multilumen tube/robot arms assembly from the servo motor arrays. Id. at
19:2–5. The encoder, worn by the practitioner, has transducers that register
the practitioner’s rotational and flexional movements. Id. at 6:50–59. The
transducers are coupled to a control circuit that provides outputs to an array
of servo motors, which are coupled to pulleys that are arranged in a pulley
tray. Id. at 6:59–64, 7:26–31. In particular, splined shafts of the servo motors
engage receiving bores of the pulleys and are “self-aligning” with the
receiving bores, and the trays are arranged so that the pulley tray is
sandwiched between two servo motor arrays. Id. at 14:53–64.
Figure 22 of Smith, reproduced below, depicts a sandwiched
assembly:
IPR2019-01533
Patent 8,142,447 B2
12

Figure 22 is a side view of top and bottom servo motor arrays 404 and 406,
respectively, and pulley tray 402. Ex. 1004, 6:14–15.
The assembly is attached to other components as in Figure 23,
reproduced below:

Figure 23 depicts an assembled servo motor tray 16, multi-lumen tube 150,
and robot arms 18. Ex. 1004, 6:16–17. In Figure 23, the pulley tray and
servo motor trays are sandwiched together as servo system 16 and attached
to multi-lumen tube 150. Id. at 14:42–44, 57–67. Smith teaches that the
IPR2019-01533
Patent 8,142,447 B2
13
servo motor tray “may be supported by an adjustable clamping means
connected to the operating table or other support.” Id. at 8:46–48.
The pulleys in the pulley tray are each connected to a tendon loop,
which are fed through the multi-lumen tube to the remote robot arms at the
distal end of the tube. Ex. 1004, 6:67–7:2, 14:41–44. The tendons are
depicted in Figure 34, reproduced below.

Figure 34 depicts two robotic arms extending from the distal end of a multi-
lumen tube. Id. at 6:40–41. Each of the remote robot arms has three
rotational joints and three flexional joints and a gripper, such that the tendon
loops are each connected to one of the joints and the gripper on each robot
arm. Id. at 7:3–9. Based on how the tendons are connected to the joints,
Smith’s arrangement is rotatable about an axis of rotation and also is
rotatable about an axis which is perpendicular to the axis of rotation. Id. at
16:65–17:12.
ii. Faraz (Ex. 1005)
Faraz relates to an adjustable surgical stand. Ex. 1005, 1:1. Figure 1 of
Faraz is reproduced below:
IPR2019-01533
Patent 8,142,447 B2
14

Figure 1 depicts a surgical support stand. Id. at 2:39–40. Faraz’s stand 10
has base 12 that supports pillar 14 on which arm support 16 is slidably
attached. Id. at 2:57–59. Arm support 16 supports a plurality of arms 22 each
having an implement holding wrist 24 at end 36 for implement holder 26,
which receives surgical instrument 28. Id. at 3:5–15. Arms 22 each are
pivotally mounted to arm support 16 about joints 30, which allow free distal
ends 36 of arms 22 to be moved. Id. at 3:27–30. According to Faraz, “[s]tand
10 is well adapted for use as a basis for a robotic surgery device,” and
“motors or other actuators could be connected using known means to drive
and control the motion of any or all of the joints in stand 10.” Id. at 6:23–29.
iii. Analysis
“[O]bviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the combinations or
IPR2019-01533
Patent 8,142,447 B2
15
modifications of prior art to arrive at the claimed invention.” Belden Inc. v.
Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). The Federal Circuit
emphasizes that it is improper to base an obviousness determination on what
a hypothetical person of ordinary skill in the art could have done to combine
the references, rather than what would have motivated the skilled artisan to
do so. InTouch Techs., Inc. v. VGo Commc’ns, Inc., 751 F.3d 1327, 1352
(Fed. Cir. 2014) (“[The expert’s] testimony primarily consisted of
conclusory references to her belief that one of ordinary skill in the art could
combine these references, not that they would have been motivated to do
so.”).
a) Petitioner’s Contentions
Petitioner asserts that each limitation of claims 1–5 are taught by the
combination of Smith and Faraz. Pet. 15–75; Pet. Reply 21–29. Regarding
claim 1, Petitioner asserts that the Smith discloses each limitation of claim 1
except “moving a robotic manipulator arm supporting the instrument in at
least one degree of freedom.” Pet. 23–24. For example, Petitioner contends
that Smith teaches coupling a surgical instrument having an end effector to a
robotic surgical system having a drive assembly. Id. at 23–32. In support of
Petitioner’s assertion, Petitioner provides an annotated version of Figure 23
of Smith, reproduced below:
IPR2019-01533
Patent 8,142,447 B2
16

Petitioner’s annotated Figure 23 above depicts a surgical instrument
comprising a pulley tray located on the proximal end (in red), a multi-lumen
tube (in brown), and end effectors on the distal end (in purple). Id. at 23–24
(citing Ex. 1004, 6:17–18). Petitioner also reproduces an annotated version
of Figure 1B:
Petitioner’s annotated Figure 1B above depicts servo tray 16 having pulley
tray 118 (in red) on the proximal side of the multi-lumen tube 150 (in
brown) and the instrument arms 18 (in purple) on the distal end of the multi-
IPR2019-01533
Patent 8,142,447 B2
17
lumen tube 150. Pet. 28–29 (citing Ex. 1004, 6:62–7:2, Fig. 1B). Petitioner
contends that Smith thus discloses a surgical system having “a drive
assembly” (e.g., the servo motor array) coupled to a control circuit (e.g.,
control circuit 14), and a “surgical instrument” (e.g., pulley tray 118, multi-
lumen tube 150 and instrument arms 18) and that the instrument arms have
grippers or other end effectors at the distal end of the multi-lumen tube. Id.
at 27–32 (citing Ex. 1003 ¶¶ 96–110).
Petitioner admits that Smith does not expressly teach the limitation of
“moving a robotic manipulator arm supporting the instrument in at least one
degree of freedom.” Pet. 38. Petitioner, however, asserts that Smith renders
the limitation obvious in light of Faraz. Id. at 38–41. Petitioner asserts that
Smith’s servo motor tray may be connected to an operating table “or other
support.” Id. at 38 (citing Ex. 1004, 8:46–48) (emphasis omitted); see Pet.
Reply 21. Petitioner asserts that Faraz teaches its stand is “well adapted for
use as a basis for a robotic surgery device” and has actuators for driving and
controlling the joints of the stand. Pet. 38–39 (citing Ex. 1005, 6:23–24, 27–
29). Petitioner therefore asserts that Faraz teaches a stand having a robotic
manipulator arm supporting the instrument in at least one degree of freedom.
Id.
Petitioner argues that one of ordinary skill in the art would have had a
reason to combine Smith and Faraz because a skilled artisan would have
understood that an actuated robotic manipulator arm, as described by Faraz,
would reduce the number of assistants during a procedure and/or reduce the
workload of the assistants. Pet. 39 (citing Ex. 1003 ¶ 126; Ex. 1005, 6:34–
36). Smith teaches that the practitioner “may direct the assistant to relocate
the robot arms” when necessary. Ex. 1004, 8:48–50; see also id. at 9:6–8.
Given that teaching, Petitioner argues that an ordinary artisan would have
IPR2019-01533
Patent 8,142,447 B2
18
looked for “other support[s]” that would reduce the number and/or workload
of assistants in the operating room. Pet. 39 (citing Ex. 1003 ¶ 126).
Petitioner also argues that a person of ordinary skill in the art would
have understood that Smith’s servo motor tray could be adjustably clamped
to the adjustable surgical stand disclosed by Faraz. Pet. 39–40 (citing
Ex. 1003 ¶ 127; Ex. 1005, 1:60–2:1, 3:27–33, 6:15–21). According to
Petitioner, a person of ordinary skill in the art would have found it obvious
to incorporate Faraz’s motorized or actuated robot arm into Smith as a
matter of “routine engineering” to “improve the performance of the system
the [person of ordinary skill in the art] was trying to design.” Id. at 22, 41
(citing Ex. 1003 ¶¶ 84, 123–128).
b) Patent Owner’s Contentions
Patent Owner contends that Petitioner has failed to establish a
sufficient motivation to modify Smith in view of Faraz. PO Resp. 79.
According to Patent Owner, Smith at best provides motivation to use Faraz’s
non-robotic surgical stand, but the ordinary artisan would not have been
motivated to use a roboticized surgical stand. Id. at 81 (citing Ex. 2001 ¶ 98
(Choset declaration)). In a surgical working environment, at the time of the
invention when surgeons were skeptical about performing robotic surgery in
the first place, there would have been no reason to further complicate
Smith’s already complex robotic surgical system with a roboticized surgical
stand. Id. (citing Ex. 2001 ¶ 99; Ex. 2012, 2 (Himpens telesurgery article)).
Patent Owner contends that Faraz’s surgical instrument is positioned
in such a way that it does not move around the entry point of the body, and
“this feature of Faraz would have further dissuaded one of ordinary skill
from placing Smith’s servo-pulley system at the end of Faraz’s robotic
surgical stand.” PO Resp. 85–86 (citing Ex. 2001 ¶ 107). Patent Owner
IPR2019-01533
Patent 8,142,447 B2
19
explains that “Faraz’s goal of only allowing an instrument to move about a
single fixed point negates the benefits of Petitioner’s proposed modification”
which is to reduce the number of assistants. Id. at 86 (citing Ex. 2001 ¶ 108).
[G]iven that Faraz’s goal was to limit the movement of
instruments at the end of its arms, which in this case would be
Smith’s surgical instrument, one of ordinary skill would not have
been motivated to use Faraz’s robotic surgical stand where any
non-robotic stand serves the same purpose without the added
complexity.
Id. at 86–87 (citing Ex. 2001 ¶ 108).
c) Petitioner’s Reply
According to Petitioner, Patent Owner’s arguments contradict Faraz’s
teaching that the stand could reduce the number of assistants. Pet. Reply 22.
Petitioner argues that Patent Owner’s “argument also is legally incorrect, as
it is based on Choset’s conclusion that the invention of Smith ‘is imaginary’
and ‘would [not] ever reduce to practice.’” Id. (citing Ex. 1015, 70:19–
71:12, 71:22–72:7) (Choset deposition) (alteration in original).
Petitioner contends that both of Patent Owner’s experts acknowledged
that the ’447’s robotic arms were not inventive. Pet. Reply 23 (citing
Ex. 1015, 141:15–142:8; Ex. 1016, 55:14–56:8 (Cooper deposition)).
Petitioner argues that Patent Owner ignores what is already known in the art
such as Wang4 that “discloses a ‘medical system which has a robotic arm

4 In Petitioner’s Reply and during oral argument, Petitioner contends that
Patent Owner never addressed the combination of Smith with Wang (Ex.
1008). See Tr. 53–55; Pet. Reply 23. However, as we pointed out during oral
argument, Petitioner did not include a ground of unpatentability based on
this combination in the Petition. See Tr. 53–55; Acceleration Bay, LLC v.
Activision Blizzard Inc., 908 F.3d 765, 975 (Fed. Cir. 2018); Belden Inc. v.
Berk-Tek LLC, 805 F.3d 1064, 1078 (Fed. Cir. 2015).
IPR2019-01533
Patent 8,142,447 B2
20
that can move a surgical instrument.’” Id. at 23 (citing Ex. 1008, Abstract,
2:43–52).
Petitioner argues that it explained in the Petition that Smith could be
combined with Faraz “such that ‘[t]he servo motor tray may be supported by
an adjustable clamping means connected to’ an instrument arm.’” Pet. Reply
24 (citing Pet. 74) (alteration in original). Contrary to Patent Owner’s
contentions that there are no remaining degrees of freedom to control
Faraz’s stand, Petitioner argues that “Smith provides additional sources of
potential practitioner input including a foot switch and finger switch.” Id. at
25 (citing Ex. 1004, 5 20:2–5).
d) Patent Owner’s Sur-reply
In its Sur-reply, Patent Owner maintains the position that Petitioner’s
recited combination lacks motivation for making the combination. See Sur-
reply 30–33. Specifically, Patent Owner contends that they have provided
unrebutted testimony by Dr. Choset that establishes that the medical
community was skeptical about robotic surgery at the priority date, and
because of this skepticism one of skill in the art would not be motivated to
make a system more complicated. Id. at 30 (citing Ex. 2001 ¶ 99).
Patent Owner responds to Petitioner’s contention that Dr. Choset’s
opinion is based on Smith’s “imaginary” disclosure is as follows:
The two opinions . . . are unconnected. Dr. Choset’s deposition
testimony regarding Smith’s “imaginary” disclosure related to
the “user interface that goes around [the user’s] chest.” (Ex.
1015, 71:22-72:7.) That testimony was unrelated to his opinion
that one of ordinary skill would not have combined two robotic
systems given the unestablished nature of robotic surgery.
(Choset ¶¶ 97-101.) Smith’s undisputed disclosure of a

5 Petitioner’s Reply cites Ex. 1005 which appears to be an error.
IPR2019-01533
Patent 8,142,447 B2
21
complicated system supports Dr. Choset.
Sur-reply 31.
According to Patent Owner, it was never disputed that surgical robots
were known in 1997, but Dr. Choset opined that Petitioner failed to establish
a reason why “one of ordinary skill would further modify Smith’s already
large, complex robotic surgical system . . . to add yet another robotic system
in the form of Faraz’s ‘robotic’ surgical stand to perform robotic surgery on
a human patient.” Sur-reply 31 (citing Ex. 2001 ¶ 100) (alteration in
original).
Patent Owner contends that the complexity of the modifications
proposed by Petitioner would have dissuaded one of ordinary skill in the art
at the time of the invention to make the modifications given “the medical
community’s skepticism toward robotics at the time.” Sur-reply 32 (Ex.
2001 ¶¶ 99–111). Patent Owner contends that Dr. Choset’s testimony
remains unrebutted. Sur-reply 32 (Ex. 2001 ¶¶ 99–111).
According to Patent Owner, the foot switch disclosed in Smith does
not control an additional robotic element, but instead Smith teaches that the
foot switch or the pistol grip switch can be used to toggle between displays.
Sur-reply 32 (citing Ex. 1004, 20:2–5). In addition, Dr. Choset’s testifies
“that there are no remaining inputs [in Smith] to control Faraz given that
even the foot and finger switches have dedicated uses.” Id. (citing Ex. 2001
¶ 104). Additionally, Patent Owner contends that “Petitioner also fails to
explain how a single ‘switch’ would control a multi-joint robotic stand.” Id.
e) Discussion
The dispute between the parties is whether a person of ordinary skill
in the art at the time of the invention would have been motivated to modify
Smith with the robotic surgery stand of Faraz. Patent Owner provides an
IPR2019-01533
Patent 8,142,447 B2
22
additional defense that Faraz is not prior art at least to claim 2. We begin by
addressing motivation.
(1) Motivation
Based on our review of the arguments and evidence, we determine
that Petitioner has not provided a sufficient evidentiary bases to establish by
a preponderance of the evidence that the claims are unpatentable when
weighed against Patent Owner’s unrebutted and persuasive expert testimony.
Patent Owner contends that Smith’s teaching that the servo motor may
be clamped to an operating table or other support would not have understood
that statement to mean adding it to a robotic stand due to the increased
complexity of the total system. PO Resp. 80 (citing Ex. 2001 ¶ 98). Dr.
Choset attests that at the time of the invention there was great skepticism
with respect to robotic surgery. Ex. 2001 ¶ 99 (“‘When I first introduced to
the local ethical committee the demand to perform ‘robotic surgery’ in my
clinical practice . . . , the members of the committee initially assumed I had
gone insane (which, in hindsight, may very well have been the case).’ (Ex.
2012, 2).” (alteration in original)); Ex. 2012 (describing the experience of
Dr. Himpens preforming the first telesugical procedure in the world). Dr.
Choset further explains that there was skepticism in the medical journal
community delaying the publication of the first robotic telesurgery event.
Ex. 2001, ¶ 99 (“Following the surgery, the surgeon ‘submitted the report on
the world premiere to several journals including the New England Journal of
Medicine and the Lancet, but the paper was both times refused because it
was judged “inappropriate” or “very unlikely to have actually happened.”’
(Ex. 2012, 3 (emphasis added).)”). We credit Dr. Choset’s testimony that at
the priority date of the invention there was great skepticism for performing
telesurgery, and because of this skepticism one of ordinary skill in the art at
IPR2019-01533
Patent 8,142,447 B2
23
the time of the invention would not have been compelled to complicate
Smith’s system further by including a robotic surgical stand. Ex. 2001 ¶ 100;
PO Resp. 81; see Sur-reply 30–32.
We are not persuaded by Petitioner’s contention that Patent Owner’s
arguments ignores “that surgical robots—including the combination of
surgical instruments and robotic arms—were already known.” Pet. Reply 22.
Patent Owner never disputes that surgical robots were known in 1997. Sur-
reply 31; Ex. 1015, 141:18–19, 142:2–3 (Dr. Choset testified that “[r]obotics
arms were known prior to 1996 in the industrial manufacturing sector quite
well. . . . Robodoc was likely known among a small set of people in the
medical world prior to 1996.”). The issue, therefore, is not whether other
robotic arms were known or even used in the prior art; the issue is whether
there would have been motivation to modify Smith’s surgical system with
the robotic surgery stand of Faraz.
We agree with Patent Owner that Petitioner does not sufficiently
articulate how one would have combined Smith and Faraz to achieve the
stated goal of reducing the number of assistants. PO Resp. 82 (citing
ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327
(Fed. Cir. 2012); Ex, 2001 ¶¶ 102–112); Sur-reply 31 (citing Ex. 2001
¶ 100). Here, Dr. Choset explains that Smith’s exoskeleton has no remaining
input degrees of freedom to control Faraz’s stand, and that alone would not
have motivated the ordinarily skilled artisan to modify Smith’s system to
achieve the stated goal of reducing the number of assistants. See Ex. 2001 ¶
104; see Sur-reply 32–33.
Patent Owner explains, and we agree, that the proposed combination
would have limited a physician’s ability to manipulate Smith’s servo-pulley
tray and related components. PO Resp. 85 (citing Ex. 2001 ¶ 107).
IPR2019-01533
Patent 8,142,447 B2
24
Dr. Choset explains the limitation of Faraz’s stand when used during surgery
is that it “hold[s] a surgical instrument fixed about an incision point on a
patient, [and therefore,] one of ordinary skill would not [have been]
motivated to connect an entire new robotic surgery system to the surgical
implement holder in place of that surgical instrument.” Ex. 2001 ¶ 106.
Dr. Choset explains that “[t]he result of Petitioner’s combination would be
that Faraz’s surgical stand would have a limited ability to relocate Smith’s
servopulley system, other than to manipulate the servo-pulley system about a
single stationary point.” Id. at ¶ 107. Dr. Choset, therefore, concludes that
“Faraz’s robotic surgical stand would add nothing over a non-robotic
linkage except added complexity and limited motion.” Id.
Dr. Choset explains that adding additional joints in order to obtain an
additional degree of freedom also adds further complexity and increases the
torque on all joints in the system. According to Dr. Choset, “[t]his torque
makes it more difficult for the mechanical components in each joint to work
with the amount of precision that is required for surgery.” Ex. 2001 ¶ 110.
“This additional torque also creates an effect known as ‘slop,’ which makes
it increasingly difficult to track the position of each joint, as joint
components and linkages bend or gear components experience backlash.” Id.
at ¶ 111. Here, Dr. Choset explains the addition of joints to add an additional
degree of freedom to the system comes at the expense of precision needed to
perform surgery, further supporting the position that there is no motivation
for the combination.
Petitioner does not address Patent Owner’s contention that the
inclusion of additional joints would come at the expense of precision,
arguing instead that an additional degree of freedom can be achieved by
including other inputs. See e.g., Pet. Reply 25 (“Smith provides additional
IPR2019-01533
Patent 8,142,447 B2
25
sources of potential practitioner input including a foot switch and finger
switch.”).
Based on our review, and in the absence of rebuttal evidence, we
agree with Patent Owner that the evidence in the record supports the position
there is no motivation to complicate Smith’s system when there is
skepticism at the time of the invention for using robotic systems during
surgery in the first place. See PO Resp. 81 (citing Ex. 2001 ¶ 99; Ex. 2012,
2); Sur-reply 30–32. Having considered the arguments and evidence, we
determine, that Petitioner has not shown by preponderance of the evidence
that claims 1–5 of the ’447 patent are unpatentable as obvious over Smith
and Faraz.
(2) Faraz as prior art
Our determination above (II.C.iii.e.1), that the preponderance of the
evidence of record does not support Petitioner’s contention that claims 1–5
are unpatentable as obvious over Smith and Faraz disposes of all the
challenged claims. Thus, we need not reach Patent Owner’s alternate
defense that Faraz is not prior art at least to claim 2.
f) Summary
Upon consideration of the full record, we determine that Petitioner has
not established by a preponderance of the evidence that a skilled artisan
would have been motivated to combine the teachings of Smith and Faraz.
III. CONCLUSION
For the foregoing reasons, we conclude that Petitioner has not
established by a preponderance of the evidence that claims 1–5 of the ’447
patent are unpatentable.
IPR2019-01533
Patent 8,142,447 B2
26
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–5 of the ’447 patent are not determined to
be unpatentable;
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–5 103(a) Smith, Faraz 1–5
IPR2019-01533
Patent 8,142,447 B2
27
PETITIONER:

Ching-Lee Fukuda
Thomas Broughan
Sharon Lee
Ketan Patel
SIDLEY AUSTIN LLP
clfukuda@sidley.com
tbroughan@sidley.com
Sharon.lee@sidley.com
Ketan.patel@sidley.com

PATENT OWNER:

Erika Arner
Daniel Tucker
Arpita Bhattacharyya
Benjamin Saidman
Alexander Boyer
Gracie Mills
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
Erika.arner@finnegan.com
Daniel.tucker@finnegan.com
Arpita.bhattacharyya@fainnegan.com
Benjamin.saidman@finnegan.com
Alexander.boyer@finnegan.com
Gracie.mills@finnegan.com