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24 August 2021MedtechAlex Baldwin

Fed Circ upholds challenge to J&J robot patent

The US Court of Appeals for the Federal Circuit has invalidated more claims of a Johnson & Johnson (J&J) subsidiary’s surgical robot patent following a cross-appeal of a Patent Trial and Appeal Board (PTAB) decision.

The judges partly affirmed the PTAB’s ruling on Monday, August 23, backing the board’s decision to invalidate six claims of the robotic system patent belonging to Ethicon, but found that the board erred by failing to invalidate 18 additional claims.

The patent in dispute, US patent 8,616,431, relates to a “tool mounting device for coupling a surgical tool to a robotic system”.

Writing for the three-judge panel, Judge Kara Stoll was persuaded by Intuitive Surgical’s arguments that prior art anticipated all the challenged claims of the ‘431 patent.

‘No dispute’

There was “no dispute” from either Ethicon or the PTAB that the combination of the prior art invalidated Ethicon’s patent, according to the Federal Circuit.

However, the PTAB had agreed with Ethicon that a person of ordinary skill “would not be motivated to combine the prior art references to arrive at the claimed invention”.

In its cross-appeal, Intuitive Surgical argued that claims 1-7, 10-14, 16-20 and 23-26 of Ethicon’s robotic system patent were anticipated over two combined patents, referred to as “Whitman” and “Tierney”.

The Federal Circuit agreed that the combination of both “Whitman” and “Tierney” anticipated all claims of the patent, and disagreed that a person of ordinary skill would not combine the prior art.

In Ethicon’s appeal, the company argued that the board had erred in defining the terms “tool mounting portion” and “robotic system”.

But the Federal Circuit agreed with the PTAB’s definition of both “tool mounting portion” and “robotic system”, upholding the board’s ruling that the claims were anticipated by the “Whitman” patent.

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