Federal Circuit Sides With Petitioner in Surgical Robot IPR Appeal

In an opinion published on Monday, the Court of Appeals for the Federal Circuit sided with Intuitive Surgical Inc. in an appeal of their Patent Trial and Appeal Board case against Ethicon LLC. In the PTAB inter partes review proceeding, Intuitive challenged the validity of Ethicon’s surgical robot patent. The Federal Circuit panel went further than PTAB, dismissing Ethicon’s appeals and granting Intuitive’s bid to toss out remaining Ethicon claims as obvious.

The case concerns a patent for “a tool mounting device for coupling a surgical tool to a robotic system.” The PTAB found that seven of the patent’s claims were anticipated by prior art, meaning that they were substantially covered in earlier patented works. However, they declined to toss the remainder of Ethicon’s patent claims, rejecting Intuitive’s argument that they were obvious.

The Federal Circuit heard both parties’ appeals. Ethicon, the patent holder, argued that the PTAB incorrectly rejected its patent claims as anticipated because they incorrectly construed two terms, “tool mounting portion” and “robotic system.” The Federal Circuit rejected both of these claims, finding that the language of the patent does not support their proposed construction of those terms.

Turning to Intuitive’s appeal, the court found that the PTAB had indeed erred in finding that the remaining claims of the patent were obvious. The case turned on whether “a person of ordinary skill would not have been motivated” to combine several earlier patents to arrive at the invention at issue. The court concluded that “Because substantial evidence does not support the Board’s finding that there was no motivation to combine, and because there is no dispute that the combined prior art discloses all of the claim limitations , we reverse the Board’s finding.”

Intuitive is represented by Fish & Richardson, while Ethicon was represented by Weil, Gotshal & Manges.