Ethicon subsidiary of J&J holds onto most of robotic surgery patent in Intuitive Surgical challenge

Ethicon Inc., a medical device subsidiary of Johnson & Johnson, has retained most of its patent rights around a robot-assisted surgical tool in a ruling by the Patent Trial and Appeal Board. Rival Intuitive Surgical Inc. had challenged the patent.

The board’s decision, dated Feb. 18, involved an Ethicon patent for a “Shiftable Drive Interface for Robotically-Controlled Surgical Tool,” issued in 2013. Out of 28 claims in the patent, the board found only a third to be unpatentable.

Sunnyvale, Calif.-based Intuitive failed to prove that a mechanical engineer with experience designing robotic surgery systems would have found it obvious to take a surgical tool with a shiftable drive system and combine it with a robotic surgery system, according to the board.

In trying to make its prior art claim, Intuitive Surgical used a previous patent called Whitman that described a powered, rotating, and articulating surgical device for clamping, cutting and stapling tissue — as well as a patent called Tierney for a robotic surgery system.

An engineer combining Whitman and Tierney, however, would have viewed the shifter as unnecessary because Teirney’s four drive elements were already capable of operating Whitman’s four end-effector functions, the board said.

“Petitioner’s proposal in that regard appears rooted in the bias of hindsight rather than based on what a skilled artisan would have gleaned from the teachings of the prior art,” wrote the board.

However, it did agree with Intuitive Surgical that Whitman disclosed the tool-mounting portion described in Ethicon’s patent.

Ethicon dispute part of hot medtech space

Robot-assisted surgery is currently a hot area in medical technology, with Johnson & Johnson, Medtronic, and others seeking to take on Intuitive Surgical, the leading company in the space. J&J’s Ethicon last year inked a $3.4 billion deal to pick up Auris Health and its FDA-cleared Monarch platform. J&J also bought the remaining stake in Verb Surgical, following what J&J described as a successful strategic collaboration with the Alphabet life sciences unit Verily.

During a January earnings call, J&J CEO Alex Gorsky hinted at a robotic surgery preview in May.

Intellectual property legal disputes continue between J&J and Intuitive Surgical. Because of its acquisition of Auris, Johnson & Johnson inherited a patent-infringement suit that Intuitive filed against Auris in the U.S. District Court of Delaware in 2018. The district court trial is slated to begin in January 2012, J&J said in its annual report, filed Feb. 18.

Editor’s note: For more medical device coverage, visit MassDevice, a sibling site to The Robot Report and Robotics Business Review.