Intuitive Surgical Operations, Inc.

Patent Trials and Appeals Board

May 8, 2020

IPR2019-01496 (P.T.A.B. May. 8, 2020)

Trials@uspto.gov Paper No. 15
571.272.7822 Date: May 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AURIS HEALTH, INC.,
Petitioner,

v.

INTUITIVE SURGICAL OPERATIONS, INC.,
Patent Owner.
____________

IPR2019-01496
Patent 9,452,276 B2
____________

Before ULRIKE W. JENKS, TINA E. HULSE, and JAMES A. WORTH,
Administrative Patent Judges.

HULSE, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request on Rehearing of Decision Denying Institution
37 C.F.R. § 42.71(d)
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Patent 9,452,276 B2
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INTRODUCTION
Auris Health, Inc. (“Petitioner”) filed a Request for Rehearing
(Paper 14, “Reh’g Req.”) of our Decision Denying Institution of Inter Partes
Review, holding that Petitioner had failed to establish a reasonable
likelihood that it would prevail in showing that claims 1, 4, 10, 12, and 14 of
U.S. Patent No. 9,452,276 B2 (Ex. 1001, “the ’276 patent”) are
unpatentable. Paper 13 (“Dec.”).
Petitioner requests a rehearing of our decision, arguing that we
overlooked or misapprehended the embodiment of Gilboa1 that Petitioner
relied upon in its Petition. Reh’g Req. 2–7.
For the reasons stated below, Petitioner’s request is denied.
STANDARD OF REVIEW
The party requesting rehearing has the burden to show that the
decision should be modified. Under 37 C.F.R. § 42.71(d), the request for
rehearing must identify, specifically, all matters the party believes the Board
misapprehended or overlooked, and the place where each matter was
previously addressed in a motion, an opposition, or a reply. When rehearing
a decision on a petition, we review the decision for an abuse of discretion.
37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based
on an erroneous interpretation of law, if a factual finding is not supported by
substantial evidence, or if an unreasonable judgment is made in weighing
relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).

1 P. Gilboa, US 7,233,820 B2, issued June 19, 2007 (“Gilboa,” Ex. 1004).
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ANALYSIS
Petitioner argues that we “incorrectly relied solely on a preferred
embodiment and determined that Gilboa does not disclose the claimed
‘measurement signals generated by the sensor system when the imaging
device has been removed from the catheter.’” Reh’g Req. 2. In our
Decision, we found that Gilboa teaches an imaging system integrated into a
position sensor, which is integrated into the distal tip of the guide element.
Dec. 15. As such, we found that when Gilboa teaches removing the guide
element and the integrated imaging device, Gilboa also teaches removing the
position sensor, which can no longer generate measurement signals, as
required by the claims. Id.
Petitioner argues we overlooked the embodiment that Petitioner relied
on for its obviousness combination that “expressly discloses the claimed
sensor system (‘location sensor element 44’) is integrated in the sheath,
which is not removed and continues to provide measurement signals even
when the imaging device (‘imaging sensor 62’) is removed.” Reh’g Req. 3
(citing Pet. 54–56). Petitioner argues that it relied on the disclosure in
Gilboa that states “the steering mechanism . . . may optionally be included
within the sheath rather than the guide element,” and that “a multi-
directional steering mechanism such as that of FIGS. 3–5C is used.” Id. at 4
(citing Pet. 54; Ex. 1004, 24:17–36). According to Petitioner, Figure 3 of
Gilboa, which we allegedly overlooked, “shows a ‘steering mechanism’ that
includes the position sensor (44) as part of its structure.” Id.
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Figure 3 of Gilboa is reproduced below:

Figure 3 depicts “an enlarged view of distal tip 34 [of catheter 30] with
position sensor element 44 mounted on base 46 to which at least three, and
preferably four, elongated tensioning elements (‘steering wires’) 48 are
attached.” Ex. 1004, 11:62–65. According to Petitioner, because “the
‘steering mechanism’ of Figure 3 is incorporated into the sheath, the position
sensor, which is a structural component of Figure 3’s ‘steering mechanism,’
is incorporated into the sheath as well” and generates measurement signals
when the guide is removed. Reh’g Req. 5. Petitioner also asserts that we
improperly relied on the preferred embodiment that “imaging sensor 62 is
integrated into location sensor element 44,” because Gilboa
“does not require the position sensor to be integrated with the removable
imaging sensor.” Id. at 5–6.
We are not persuaded. Petitioner repeatedly argues that Gilboa
“expressly discloses” that the claimed sensor is integrated into the sheath.
Id. at 3, 5, 6. Petitioner’s argument, however, assumes that Gilboa includes
the position sensor element as part of the “steering mechanism” that can be
integrated into the sheath. As support, Petitioner relies on the statement that
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“the steering mechanism . . . may optionally be included within the sheath
rather than the guide element” and that “[m]ore preferably, a multi-
directional steering mechanism such as that of FIGS. 3–5C is used.” Id. at 4
(citing Ex. 1004, 24:22–27).
We disagree that that disclosure amounts to an “express disclosure” of
the claim limitation. Nowhere does Gilboa expressly refer to the position
sensor element as part of the steering mechanism of the catheter. Rather,
Gilboa consistently describes the steering mechanism as including elongated
tensioning elements for deflecting the tip of the catheter, an actuator, and a
selector mechanism for selectively connecting the tensioning elements to the
actuator:
There is also provided according to the teachings of
the present invention, a steering mechanism for selectively
deflecting a distal portion of a steerable catheter in any one
of at least two independent directions, the mechanism
comprising: (a) at least three elongated tensioning
elements extending along the catheter and configured such
that tension applied to any one of the tensioning elements
causes deflection of a tip of the catheter in a corresponding
predefined direction; (b) an actuator displaceable from a
first position to a second position; and (c) a selector
mechanism configured for selectively mechanically
interconnecting a selected at least one of the elongated
tensioning elements and the actuator such that
displacement of the actuator from the first position to the
second position applies tension to the selected at least one
of the elongated tensioning elements.
Ex. 1004, 7:64–8:11; see also id. at 29:10–27 (claim 43 reciting same),
12:48–52 (“[T]he structure described offers a highly controllable and easily
operated steering mechanism in which a plurality of steering wires provides
selective deflection of the catheter tip in any of at least two independent
directions.”).
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Petitioner argues that because the position sensor element is shown in
Figure 3, which Gilboa states depicts the steering mechanism, the position
sensor element must be part of the steering mechanism. When viewed as a
whole, however, Gilboa’s disclosure does not support Petitioner’s argument.
For example, in the Brief Description of the Drawings, Gilboa identifies
Figure 3 as “a schematic isometric view of a tip portion of the catheter of
FIG. 2,” not as the steering mechanism of the invention. Id. at 8:66–67; see
also id. at 11:62–63 (“Turning now to FIG. 3, this shows an enlarged view
of distal tip 34 . . . .”). In our view, when Gilboa refers to the “steering
mechanism such as that of Figures 3–5C,” it is referring to those elements in
the figures that depict the three parts of the steering mechanism—that is, the
elongated tensioning elements in Figure 3 (see id. at 11:64–65), the actuator
in Figures 4A and 4B (see id. at 9:1–4, 12:13–14), and the selector
mechanism shown in Figures 5A–5C (see id. at 9:5–7, 12:14–19).
Moreover, Gilboa consistently refers to the position sensor element as
a separate feature from the steering mechanism of its invention. For
example, the claims recite the “position sensor element being part of a
position measuring system” in claim 1, and then separately recite “a steering
mechanism” in claim 43, which depends from claim 1. Id. at 24:58–65
(claim 1), 29:10–27 (claim 43). Similarly, in the specification, Gilboa states
“[a] position sensor element 44, operating as part of the position measuring
system . . . is integrated with distal tip 34.” Id. at 11:40–44. Gilboa then
distinguishes the steering mechanism from the position sensor element by
starting a new paragraph with the transition phrase, “[t]urning now to the
steering mechanism of catheter 30.” Id. at 11:45–48 (emphasis added).
Thus, when read as a whole, Gilboa makes clear that the position sensor
element is distinct from the steering mechanism.
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In light of that reading, we are not persuaded by Petitioner’s argument
that Gilboa includes the position sensor element as part of the steering
mechanism when it refers to the “steering mechanism such as that of Figures
3–5C.” Accordingly, we are not persuaded that we misapprehended or
overlooked the embodiment of Figure 3, as Petitioner asserts. Nor are we
persuaded that our reading of Gilboa is an abuse of discretion that is not
supported by substantial evidence. In re Gartside, 203 F.3d at 1315–16.
CONCLUSION
For the foregoing reasons, Petitioner has not demonstrated that we
abused our discretion by misapprehending or overlooking any evidence or
argument in its Petition.
ORDER
Accordingly, it is hereby:
ORDERED that Petitioner’s Rehearing Request is denied.

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PETITIONER:

Ching-Lee Fukuda
Thomas A. Broughan III
Sharon Lee
SIDLEY AUSTIN LLP
clfukuda@sidley.com
tbroughan@sidley.com
Sharon.lee@sidley.com

PATENT OWNER:

Erika Harmon Arner
Daniel C. Tucker
Arpita Bhattacharyya
Benjamin A. Saidman
Alexander M. Boyer A.
Grace Klock Mills
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
erika.arner@finnegan.com
daniel.tucker@finnegan.com
arpita.bhattacharyya@finnegan.com
benjamin.saidman@finnegan.com
alexander.boyer@finnegan.com
gracie.mills@finnegan.com