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15 February 2022MedtechAlex Baldwin

Fed Circ denies bid to reverse favourable J&J ruling

The US Court of Appeals for the Federal Circuit has affirmed two Patent Trial and Appeal Board (PTAB) rulings that a Johnson & Johnson (J&J) subsidiary’s patent is valid and infringed.

Federal Circuit judges handed two decisions on Friday roundly rejecting Intuitive Surgical’s attempt to revive three PTAB petitions attempting to invalidate J&J’s Ethicon’s robotics patent, US Number 8,479, 969 . The court also rejected its attempt to appeal a separate PTAB decision for which it was removed as a party mid-way through proceedings.

The patent covers a method for a minimally invasive surgery method using a robot-controlled surgical instrument.

The Federal Circuit first addressed Intuitive’s bid to overturn decisions in three PTAB petitions which held claim 24 of the patent as valid. But according to the Federal Circuit, only two were relevant to the proceedings

Firstly, the Federal Circuit was asked by Intuitive to consider whether the board erred in upholding the patentability of claim 24 of the ‘969 patent in light of a combination of prior art references called Giodano and Wallace, and whether it erred in upholding the patentability of claims 24-26 over prior art Timm and Anderson.

The court found that the board did not err in its upholding of the patent over the Giodano and Wallace references, arguing that Intuitive’s arguments “misinterpret the board's findings”.

The Circuit judges claimed that any combination of the prior arts did not include any modification to relocate Giordano’s “articulation control” into Wallace's tool mounting portion.

Intuitive argued that the articulation control would be coupled into the tool base of the Wallace robot, however as that argument was not set forth in the initial petition, Intuitive argued that the board erred in not considering that rule.

The circuit judges ruled that the board did not abuse its discretion in excluding Initiatives' argument, saying that petitioners may not use reply briefs to cure deficiencies in their petition.

For Timm and Anderson, Intuitive argued that the PTAB erred in finding no motivation for a person of ordinary skill in the art to combine the references, specifically saying that the board’s finding rested on the “erroneous assumption that tactile feedback would be required in every form of passive articulation”.

However, the Federal Circuit argued that the board’s finding was backed by substantial evidence and they “declined to disturb it”.

In the second judgment, the Federal Circuit considered whether Intuitive may be allowed to appeal another PTAB ruling after it was removed as a party from another inter partes review of the ‘969 patent.

The judges found no issue in the board’s decision to remove Intuitive as a party from the proceedings, referred to as Prisco/Cooper.

As Intuitive could not challenge the board’s final written decision as a non-party, the Federal Circuit said it had “no jurisdiction to review the merits of the board’s decision” and dismissed Intuitive’s appeal.

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