Johnson & Johnson (NYSE:JNJ) subsidiary Ethicon has kept most of a surgical robotics tool patent intact after a Patent Trial and Appeal Board decision on a challenge from rival Intuitive Surgical (NSDQ:ISRG).
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.
Intuitive, according to the board, 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.
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.
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.”
The board, however, did agree with Intuitive Surgical that Whitman disclosed the tool mounting portion described in Ethicon’s patent.
Robot-assisted surgery is presently a hot area in medtech — with Johnson & Johnson, Medtronic and others seeking to take on Intuitive Surgical, the dominant 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 (NSDQ:GOOGL) 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. J&J through the Auris buy 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.