Stryker Corporationv.Karl Storz Endoscopy-America, Inc.

Patent Trial and Appeal Board

Sep 2, 2015

10601406 (P.T.A.B. Sep. 2, 2015)

Trials@uspto.gov Paper 13
571-272-7822 Entered: September 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

STRYKER CORPORATION,
Petitioner,

v.

KARL STORZ ENDOSCOPY-AMERICA, INC.,
Patent Owner.
____________

Case IPR2015-00764
Patent 7,844,657 B2
____________

Before KEN B. BARRETT, BRYAN F. MOORE,
and BARRY L. GROSSMAN, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner Stryker Corporation filed a Petition (Paper 1, “Pet.”) for an
inter partes review of U.S. Patent No. 7,844,657 B2 (“the ’657 patent”).
The Petition challenges the patentability of claims 21, 22, 28–31, 35, 61, 62,
68–71, and 75 of the ’657 patent on the grounds of anticipation under 35
U.S.C. § 102(e) and of obviousness under 35 U.S.C. § 103(a). Karl Storz
Endoscopy-America, Inc., the owner of the ’657 patent, filed a Corrected
Preliminary Response to the Petition. Paper 10 (Prelim. Resp.). We have
jurisdiction under 35 U.S.C. § 314, which provides that an inter partes
review may not be instituted “unless . . . the information presented in the
petition . . . shows that there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.”
After considering the information presented in the Petition, we
determine that Petitioner has not established a reasonable likelihood that it
would prevail with respect to any of the claims challenged in the Petition.
Accordingly, we do not authorize an inter partes review to be instituted as to
any challenged claim of the ’657 patent.
II. BACKGROUND
A. The ’657 Patent
The ’657 patent pertains to a system of simultaneously controlling in
an operating room primary medical devices, which are connected to a
surgical network, and ancillary medical devices not connectable to that
network. See Ex. 1001, col. 1, ll. 11–17, col. 9, ll. 39–43, col. 12, ll. 21–23.
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B. The Challenged Claims
The Petition challenges the patentability of claims 21, 22, 28–31, 35,
61, 62, 68–71, and 75. Of the challenged claims, claims 21 and 61 are
independent. Illustrative claim 21 is reproduced below.
21. A system which controls ancillary medical devices,
comprising:
a surgical network;
an input device, connected to said surgical network,
which inputs a medical command;
a controller, connected to said surgical network, which
receives the medical command and generates corresponding
medical command data;
a translator, connected to said surgical network, which
receives the medical command data via said surgical network
and translates the medical command data;
at least one ancillary medical device not connectable to
said surgical network, in communication with said translator via
an ancillary network, which receives the translated medical
command data and carries out the corresponding medical
command; and
feedback data generated by said at least one ancillary
medical device and communicated to said translator via said
ancillary network.
Ex. 1001, col. 9, ll. 28–46.
C. Related Matters
The parties identify as a related proceeding regarding the ’657 patent
Karl Storz Endoscopy-America, Inc. v. Stryker Corporation et al., Civil
Action No. 3:14-cv-00876-RS (N.D. Cal. filed Feb. 26, 2014). Paper 7;
Pet. 1. Petitioner additionally identifies as related matters IPR2015-00672,
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IPR2015-00673, IPR2015-00674, IPR2015-00675, IPR2015-00677,
IPR2015-00678, and IPR2015-00679. Pet. 1.
D. The Asserted Grounds
Petitioner asserts the following grounds of unpatentability:
Reference[s] Basis Claims
Ghodoussi1 § 102(e) 21, 22, 28–31, 35, 61, 62,
68–71, and 75
Ghodoussi and Webb2 § 103(a) 28 and 68
Ghodoussi and Nazarian3 § 103(a) 35 and 75
Wang4 § 102(e) 21, 22, 28–31, 35, 61, 62,
68–71, and 75
Ghodoussi and Wang § 103(a) 21, 22, 28–31, 35, 61, 62,
68–71, and 75
Wang and Webb § 103(a) 28 and 68
Wang and Nazarian § 103(a) 35 and 75
Petitioner relies also on the Declaration of Harold J. Walbrink, dated
February 18, 2015, (Ex. 1008) in support of Petitioner’s arguments.
III. ANALYSIS
A. Claim Construction
In an inter partes review proceeding, we give claim terms in
unexpired patents their broadest reasonable interpretation in light of the

1 U.S. Patent No. 6,951,535 B2, iss. Oct. 4, 2005, filed Sept. 17, 2002
(Ex. 1003).
2 U.S. Patent Publication No. 2001/0037366 A1, pub. Nov. 1, 2001 (Ex.
1005).
3 U.S. Patent No. 5,813,972, iss. Sept. 29, 1998 (Ex. 1006).
4 U.S. Patent No. 6,911,916 B1, iss. June 28, 2005, filed July 13, 2000
(Ex. 1004).
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specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
Under that standard, we assign claim terms their ordinary and customary
meaning, as understood by a person of ordinary skill in the art, in the context
of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
On this record and for purposes of this Decision, we determine that
only the claim term addressed below requires express construction.
“ancillary medical device not connectable to said surgical network”
Independent claim 21 recites an “ancillary medical device not
connectable to said surgical network.” Independent claim 61 contains a
similar recitation. For purposes of this Decision, we, as do the parties, treat
the phrases as synonymous.
Petitioner maintains that this language means a “medical device that
cannot send data to or receive data from the surgical network absent a
translator.” Pet. 5. Patent Owner maintains that the language means a
“medical device that is not connectable to said surgical network and is either
(i) unable to communicate data to, or receive data from, a device or network
without the translation of that data or (ii) a device that generates
high-bandwidth data.” Prelim. Resp. 6. Thus, the parties agree that a
medical device is “not connectable” to the ancillary network, within the
meaning of the claims, at least when translation of the data is required. In
support of their positions, both parties point to the Specification’s definition
of the similar term “not compatible” as “unable to communicate data to, or
receive data from, a device or network without the translation of that data.”
Ex. 1001, col. 4, ll. 17–19; Pet. 5; Prelim. Resp. 6.
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Patent Owner argues that the term “not connectable” is broader in that
it also refers to a device that generates high bandwidth data. Prelim.
Resp. 6–7. We need not reach, for purposes of this Decision, Patent
Owner’s argument for a broader construction of “not connectable” because
Petitioner does not assert that the pertinent limitations are satisfied by the
disclosure of a high-bandwidth embodiment.
For purposes of this Decision and based on the record currently before
us, we construe “ancillary medical device not connectable to said surgical
network” as meaning, at least, “an ancillary device unable to communicate
data to, or receive data from a surgical network without the translation of
that data.”
B. Anticipation of Claims 21, 22, 28–31, 35, 61, 62, 68–71, and 75
by Ghodoussi
Petitioner argues that Ghodoussi anticipates independent claims 21
and 61 as well as certain dependent claims. Pet. 9–26. As mentioned above,
both challenged independent claims 21 and 61 require a device that is not
connectable to the surgical network. Patent Owner argues that this feature is
missing from Ghodoussi. Prelim. Resp. 13–16.
Ghodoussi discloses a tele-medicine system involving robotically
controlled medical devices, mentor control unit 50 (which may be in a
remote location) and pupil control unit 52 (which may be located in the
operating room). Ex. 1003, col. 2, ll. 54–57; col. 4, ll. 27–32. Petitioner
maintains that the surgical network in Ghodoussi is the surgeon side of the
system from networking computer 140 to the handle assemblies 56 of the
control units, that the recited ancillary network is network 148, that the
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ancillary medical devices are items such as articulate arms 16 and 24, and
that the ancillary medical devices are connected to the ancillary network
(Ghodoussi’s network 148). Pet. 9, 13, 18–19, 21. An annotated version of
Figure 7 of Ghodoussi is reproduced below:

The annotated version of Figure 7 is an illustration of a network system
(Ex. 1003, col. 2, l. 7) with a line drawn around that which Petitioner asserts
is the surgical network (Pet. 9).
Petitioner further maintains that Ghodoussi’s networking computer
140 and interconnect devices 142 and 144 collectively comprise the claimed
translator. Id. at 12, 13–14. Thus, in Petitioner’s articulated ground, the
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translator is within the surgical network5 and the signals pass without
translation from that surgical network to the ancillary network, to which the
ancillary medical devices are connected. See Ex. 1003, col. 6, ll. 26
(element 146 merely is a communication link). Petitioner argues that,
because “[t]he control units 50 and 52 may provide output signals and
commands that are incompatible with a computer,” the articulate arms (the
ancillary medical devices) are not connectable with control units 50 and 52
absent translation. Pet. 14–15 (quoting Ex. 1003, col. 6, ll. 29–30).
However, this argument is misplaced as the pertinent claim limitation is
concerned with the “connectable” relationship between the ancillary device
and the surgical network and Petitioner has included the purported translator
within the surgical network. We determine that Petitioner has not explained
adequately how the ancillary medical device is not connectable to the
surgical network as required by independent claims 21 and 61.
Petitioner has not demonstrated a reasonable likelihood that it would
prevail in showing that Ghodoussi anticipates independent claims 21 and 61
and the respective dependent claims 22, 28–31, 35, 62, 68–71, and 75.
C. Anticipation of Claims 21, 22, 28–31, 35, 61, 62, 68–71, and 75
by Wang
Petitioner argues that Wang anticipates independent claims 21 and 61
as well as certain dependent claims. Pet. 35–55. As with the Ghodoussi
anticipation ground, Patent Owner argues that Wang fails to disclose an

5 Petitioner presumably includes the purported translator in the surgical
network because, without networking computer 140 and interconnect
devices 142 and 144, all that remains is two non-connected control units 50
and 52.
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ancillary device not connectable to the surgical network, as recited in
independent claims 21 and 61. Prelim. Resp. 19–21.
Wang “relates generally to control systems, and specifically, to
information control systems for accessing and integrating medical data for
medical purposes.” Ex. 1004, col. 1, ll. 24–26. In Figure 6, Wang discloses
master controller 110 coupled to slave device 132 via communication lines
130. Id., col. 9, ll. 41–58. In Figure 7, Wang discloses the master controller
and slave device coupled via module 174. Id., col. 11, ll. 18–23. Petitioner
provides an annotated version of Figure 7, reproduced below, to illustrate its
arguments regarding the “not connectable” limitation.

The annotated version of Figure 7 depicts a logical connection between
master controller 110 and the operating room devices including slave
device 132, and depicts Petitioner’s annotations indicating the purported
surgical network, translator, and ancillary network. Pet. 40–41; see also
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Ex. 1004, col. 2, ll. 14–16. Petitioner maintains that the ancillary device
(slave device 132) is not connectable to the surgical network (which
includes, inter alia, master controller 110) and argues:
[this is] because the slave device can receive commands from
the master controller 110 only if those commands have been
translated by module 174 (i.e., the “translator”): “The master
controller 110 issues service requests or commands 210. If a
voice command received by the master controller 110 is a
recognized command for querying the slave device 132 for
information, the master controller 110 forwards a service
request 210 (e.g., ‘get angiography information’) to the module
174. The module 174 translates and/or processes the command
into a format recognized by the slave device and forwards a
trigger code command 214 to the slave device 132.”
Pet. 40 (quoting Ex. 1004, col. 11, ll. 42–65) (emphasis in Petition); see also
id. at 50–51 (claim charts quoting the same); Ex. 1008 at 58–60 (the portion
of the Walbrink Declaration, paragraph 95, directed to the “not connectable”
limitation).
As discussed above in the claim construction section, the parties agree
that a medical device is “not connectable” to the ancillary network, within
the meaning of the claims, at least when translation of the data is required.
See Pet. 5; Prelim. Resp. 6. Patent Owner persuasively argues that “Wang
does not disclose that all commands from the master controller 110 must be
translated in order to be received by the slave device 132.” Prelim.
Resp. 20.
The above-quoted material from Wang may arguably address the
“ancillary medical device . . . which receives the translated medical
command data” language of claims 21 and the “communicating the
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translated medical command data to an ancillary medical device” language
of claim 61. However, Petitioner does not adequately address the “not
connectable” language of those independent claims. Petitioner’s assertion
(and the Expert’s parroting of the same) that “the slave device can receive
commands from the master controller 110 only if those commands have been
translated” (Pet. 40 (emphasis added)) is conclusory and lacks necessary
elaboration and explanation. We note that the quoted portion of Wang states
the module “translates and/or processes” the command thus suggesting that
not all commands forwarded to the slave device require translation. If not
all commands need translation, then the “not connectable” limitation of
independent claims 21 and 61 is not satisfied. Further and as Patent Owner
points out (Prelim. Resp. 20), the same slave device 132 of the relied-upon
Figure 7 is directly connected to the purported surgical network in Figure 6.
We, therefore, are not persuaded that Petitioner has presented
sufficient evidence to support a finding that Wang discloses “at least one
ancillary medical device not connectable to said surgical network” as recited
in independent claim 21 and similarly recited in independent claim 61.
Accordingly, Petitioner has not demonstrated a reasonable likelihood that it
would prevail in showing that Wang anticipates independent claims 21 and
61 and the respective dependent claims 22, 28–31, 35, 62, 68–71, and 75.
D. Obviousness of Claims 28 and 68 over Ghodoussi and Webb
(Ground 2) and over Wang and Webb (Ground 6), and
Obviousness of Claims 35 and 75 over Ghodoussi and Nazarian
(Ground 3) and over Wang and Nazarian (Ground 7)
Dependent claims 28 and 68 call for the surgical network to comprise
an Ethernet. Dependent claims 35 and 75 call for the ancillary network to
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include a self-configuring bus. In articulating these obviousness grounds
(Grounds 2, 3, 6, and 7), Petitioner, as alternatives to the Ghodoussi and
Wang anticipation grounds, relies upon Webb for the teaching of the use of
an Ethernet (Pet. 26–30, 56–58) and upon Nazarian for the teaching of a
self-configuring bus (id. at 30–34, 58–59). Petitioner does not articulate
obviousness grounds that cure the above-discussed underlying defects of the
anticipation ground based on Ghodoussi and the anticipation ground based
on Wang.
For the reasons set forth in the discussion of the Ghodoussi and Wang
anticipation grounds, we determine Petitioner has not demonstrated that
there is a reasonable likelihood that it would prevail in showing that the
combination of references in these grounds renders obvious the subject
matter of the respective claims.
E. Obviousness of Claims 21, 22, 28–31, 35, 61, 62, 68–71, and 75
over Ghodoussi and Wang
Petitioner offers this obviousness ground in the alternative to the
anticipation rejection based on Ghodoussi alone. Pet. 55. Petitioner relies
on Wang for the disclosure of a translator. Id.
It is not entirely clear as to how Petitioner proposes to combine the
references. We note that, unlike for the other grounds, Petitioner does not
include in its Petition a claim chart for Ground 5. Petitioner asserts that “[a]
person of ordinary skill would have known how to use a translator, like that
disclosed in Wang, between the two networks of Ghodoussi if needed to
enable communications among devices therein that operated using different
network and/or command protocols.” Pet. 56. We assume Petitioner is
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referring to the “networks” identified by Petitioner in its Ghodoussi
anticipation ground. In that scenario, we fail to see, and Petitioner does not
adequately explain, why it would be obvious to add a translator to
redundantly perform the function that Petitioner maintains is performed by
the interconnect devices and network computer located within the surgical
network. See id. Although Petitioner asserts one would have known how to
use a translator “if needed,” Petitioner has not explained adequately why it
would have been needed or why it would have been obvious to do modify
Ghodoussi’s system to have a translator. Id.
We have considered but find unpersuasive Petitioner’s argument that
Ghodoussi provides a teaching, suggestion, or motivation through its
recognition that different devices may communicate using different
protocols. Pet. 55. Without more elaboration from Petitioner, we are left to
speculate as to whether Petitioner is proposing a combination where
different protocols are used.
We determine that Petitioner has not set forth adequately an
articulated rationale based on rational underpinning for combining the
references’ teachings so as to render obvious the subject matter of the
challenged claims.
IV. CONCLUSION
For the foregoing reasons, we determine Petitioner has not
demonstrated there is a reasonable likelihood of establishing the
unpatentability of claims 21, 22, 28–31, 35, 61, 62, 68–71, and 75 of the
’657 patent.
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V. ORDER
For the foregoing reasons, it is
ORDERED that the Petition is denied as to all challenged claims, and
no trial is instituted.

FOR PETITIONER:

Robert A. Surrette
Merle S. Elliott
Christopher M. Scharff
Caroline A. Teichner
MCANDREWS, HELD & MALLOY
bsurrette@mcandrews-ip.com
melliott@mcandrews-ip.com
cscharff@mcandrews-ip.com
cteichner@mcandrews-ip.com

FOR PATENT OWNER:

Wesley W. Whitmyer, Jr.
Michael J. Kosma
Michael A. Lavine
WHITMYER IP GROUP LLC
litigation@whipgroup.com
mkosma@whipgroup.com
mlavine@whipgroup.com