Decisions on Inter Partes Review Petitions by Intuitive Surgical, Inc.

On December 4, 2018, the USPTO’s Patent Trial and Appeal Board (“Board”) instituted one inter partes review Petition filed by Intuitive Surgical, Inc. (“Petitioner”) and denied another.

In IPR2018-00933, the Petitioner challenged claims 1, 2, 4-6, 8-11, 13, and 15-20 of U.S. Patent No. 9,084,601 (“the ‘601 Patent”) as anticipated under 35 U.S.C. § 102, and claims 1-20 as obvious under 35 U.S.C. § 103. The Board instituted trial on all challenged claims and grounds.

In IPR2018-00938, the Petitioner challenged claims 1-7, 9-14, 19, and 20 of U.S. Patent No. 9,113,874 (“the ‘874 Patent”) as anticipated under 35 U.S.C. § 102, and claims 1-15, 18, and 19 as obvious under 35 U.S.C. § 103. The Board denied institution because the Petitioner failed to establish a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims.

The ‘601 and ‘874 Patents are owned by Ethicon LLC. The ‘601 Patent is drawn to detachable motor powered surgical instruments, particularly surgical cutting and stapling instruments, and the ‘874 Patent is drawn to a remote controlled surgical instrument system, such as a surgical stapler. The IPRs remain pending at the Board.

By:  April Breyer Menon

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