UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
`
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`INTUITIVE SURGICAL, INC.
`Petitioner
`
`v.
`
`ETHICON LLC
`Patent Owner
`
`______________
`
`
`Case IPR2018-01247
`U.S. Patent No. 8,479,969
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`_______________
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S
`RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`INTUITIVE SURGICAL, INC.
`Petitioner
`
`v.
`
`ETHICON LLC
`Patent Owner
`
`______________
`
`
`Case IPR2018-01247
`U.S. Patent No. 8,479,969
`
`_______________
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S
`RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`Attorney Docket No. 11030-0049IP5
`Proceeding No. IPR2018-01247
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`TABLE OF CONTENTS
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`I.
`
`Introduction ...................................................................................................... 1
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`II. Ground 2: The Combination of Anderson and Timm Discloses Claim 24 .... 1
`
`A.
`
`Claim 24 Now Requires “A Tool Mounting Portion Operably Coupled
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`to a Proximal End of Said Proximal Spine Portion” ............................. 1
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`B. As a Backup Argument, Petitioner Established That the Tool
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`Mounting Portion in the Prior Art was Also Coupled to the Distal End
`
`of the Proximal Spine Portion ............................................................... 5
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`C. As Dr. Knodel Testified, a POSITA Would Have Been Motivated To
`
`Combine Anderson With Timm (Including Timm’s Lockable
`
`Articulation Joint) ................................................................................ 10
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`D.
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`Even if Tactile Feedback Were a Requirement, Anderson Discloses It
`
` ............................................................................................................. 11
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`E.
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`F.
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`
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`Tactile Feedback Is Not a Requirement for Use of Passive
`
`Articulation with a Robotic System .................................................... 12
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`As Established in the Petition, a POSITA Would Have Had a
`
`Reasonable Expectation of Success .................................................... 14
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`1. Anderson Has Sufficient Transmission Members to Drive Timm 14
`
`2. Anderson Can Generate Sufficient Forces to Drive Timm ............ 15
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`G. Anderson Provides a Generic Robotic Foundation For a Variety of
`
`Tools .................................................................................................... 18
`
`H.
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`The Unrelated Publications Cited by Patent Owner Fail to Address the
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`Anderson / Timm Combination and Are Thus Irrelevant ................... 20
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`Attorney Docket No. 11030-0049IP5
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`III. Ground 3: The Articulation Bars of Wallace Are Compatible with the
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`Anderson/Timm Combination ....................................................................... 22
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`A.
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`In the Proposed Combination for Ground 3, the Articulation
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`Mechanism of Timm Is Replaced with the Articulation Mechanism of
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`Wallace ................................................................................................ 22
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`B. Anderson Can Accommodate Additional Controls as Necessary to
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`Operate the Wallace Articulation Mechanism .................................... 22
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`IV. Ground 4: Claims 19 and 20 Would Have Been Obvious over Anderson and
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`Knodel ............................................................................................................ 24
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`A.
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`Petitioner Has Already Addressed Patent Owner’s “Tactile Feedback”
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`Argument ............................................................................................. 24
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`B. A POSITA Would Have Had a Reasonable Expectation of Success . 25
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`V. Ground 5: Claims 21 and 22 Are Obvious over Anderson in view of Viola 25
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`VI. Conclusion ..................................................................................................... 27
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`Proceeding No. IPR2018-01247
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`EXHIBITS
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`
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`IS1001
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`U.S. Pat. No. 8,479,969 to Shelton, IV (“the ’969 Patent”)
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`IS1002
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`Prosecution History of the ’969 Patent (Serial No. 13/369,609)
`
`IS1003
`
`Reserved
`
`IS1004
`
`Declaration of Dr. Bryan Knodel (Anderson as Primary
`
`Reference)
`
`IS1005
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`Reserved
`
`IS1006
`
`Reserved
`
`IS1007
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`U.S. Patent No. 6,817,974 to Cooper et al. (“Cooper”)
`
`IS1008
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`U.S. Patent No. 6,699,235 to Wallace et al. (“Wallace”)
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`IS1009
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`U.S. Patent No. 6,331,181 to Tierney et al. (“Tierney”)
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`IS1010
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`U.S. Patent No. 6,783,524 to Anderson et al. (“Anderson”)
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`IS1011
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`U.S. Patent No. 7,510,107 to Timm et al. (“Timm”)
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`IS1012
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`U.S. Patent No. 5,465,895 to Knodel et al. (“Knodel”)
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`IS1013
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`U.S. Patent No. 5,954,259 to Viola et al. (“Viola”)
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`IS1014
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`U.S. Patent App. No. 2008/0167672 to Giordano et al.
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`(“Giordano”)
`
`IS1015
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`Reserved
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`IS1016
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`Reserved
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`
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`iii
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`IS1017
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`Supplemental Declaration of Dr. Bryan Knodel
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`Attorney Docket No. 11030-0049IP5
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`(“Knodel Supp. Decl.”)
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`IS1018
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`Reserved
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`IS1019
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`June 17, 2019 Deposition of Shorya Awtar for IPR2018-01247
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`(“Awtar Dep. I”)
`
`IS1020
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`U.S. Pat. No. 9,820,768 to Gee et al. (“Gee”)
`
`IS1021
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`Reserved
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`IS1022
`
`Reserved
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`IS1023
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`June 6, 2019 Deposition of Frank Fronczak for IPR2018-00936
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`(“Fronczak Dep.”)
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`IS1024
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`Reserved
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`IS1025
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`Reserved
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`IS1026
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`District Court Complaint in Ethicon LLC et al. v. Intuitive Surgical,
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`Inc. et al., 1:17-cv-00871-LPS filed June 30, 2017
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`IS1027
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`U.S. Pat. No. 7,524,320 to Tierney et al. (“Tierney 320”)
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`I.
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`Introduction
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`The challenged claims in the ’969 Patent combine prior art surgical
`
`instruments with a prior art surgical robot in a predictable manner. As established
`
`in the Petition, a POSITA would readily adapt Timm (a surgical stapler) for use
`
`with Anderson (a surgical robot). Anderson provides rotary control motions
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`through the robot arm interface and Timm’s instrument is powered by rotary input
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`motions. A POSITA would have readily been able to put Anderson and Timm
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`together.
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`Patent Owner’s Response fails to point out anything unique or novel about
`
`the claimed “invention.” Instead, Patent Owner makes a number of
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`unsubstantiated arguments about what a POSITA would or would not have done,
`
`and a number of incorrect arguments about the prior art disclosures and the scope
`
`of the claims. However, as shown in this Reply, Patent Owner’s own experts
`
`contradict and undermine Patent Owner’s arguments at virtually every turn.
`
`II. Ground 2: The Combination of Anderson and Timm Discloses Claim
`24
`
`A. Claim 24 Now Requires “A Tool Mounting Portion Operably Coupled
`to a Proximal End of Said Proximal Spine Portion”
`
`Claim 24 of the ’969 Patent issued with a defect, and the Patent Owner
`
`requested a Certificate of Correction to address that defect. Specifically, as issued,
`
`claim 24 required “a tool mounting portion operably coupled to a distal end of said
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`proximal spine portion.” (Emphasis added throughout) On January 23, 2018, the
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`United States Patent and Trademark Office issued a Certificate of Correction
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`stating: “In the Claims – In Column 95, Line 59, in Claim 24, delete “distal”; and
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`insert --proximal--.” IS1002 at 686.
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`Accordingly, in view of the Certificate of Correction, claim 24 of the ’969
`
`Patent now reads: “a tool mounting portion operably coupled to a proximal end of
`
`said proximal spine portion.” See 37 CFR 1.323; 35 U.S.C. § 255 (“Such patent,
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`together with the certificate, shall have the same effect and operation in law on the
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`trial of actions for causes thereafter arising as if the same had been originally
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`issued in such corrected form.”) The petition for this proceeding was filed and
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`these proceedings were instituted after the Certificate of Correction issued. See
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`Paper 2 (Petition), filed on June 14, 2018 and Paper 7 (Institution Decision),
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`entered on January 15, 2019. Thus, the trial having arisen thereafter, the
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`Certificate of Correction applies to these proceedings.
`
`Because the Certificate of Correction applies, the Petition largely addresses
`
`claim 24 in view of the Certificate of Correction. However, the Petition also
`
`provides a backup argument under the original claim language (although the
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`backup argument should be moot in view of the Certificate of Correction).
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`Accordingly, the Petition’s primary argument establishes that claim 24 is invalid
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`because the prior art teaches “a tool mounting portion operably coupled to a
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`proximal end of said proximal spine portion.” Petition, 51.
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`In fact, nowhere in the Response, does Patent Owner dispute that the prior
`
`art discloses this limitation. Instead, Patent Owner’s lead argument in its Response
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`is that the Certificate of Correction should be ignored. In support, Patent Owner
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`points to Exhibit 2013, which is an interlocutory order from a District Court
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`holding the Certificate of Correction invalid. POR, 25-26.
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`However, Patent Owner does not—and cannot—establish that the
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`interlocutory order by the District Court applies to this proceeding. In fact, beyond
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`citing to the interlocutory order, Patent Owner makes no attempt to establish its
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`applicability here—and with good reason.
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`First, the Certificate of Correction issued and remains in the file history and
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`has not been superseded by any subsequent paper in the file. IS1002, 686.
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`Second, Patent Owner fails to present a legal argument for applying issue
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`preclusion. Issue preclusion does not apply here because there is no final judgment
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`from the District Court, which is a prerequisite for issue preclusion. Nor will there
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`be a final judgment during this proceeding because the District Court action has
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`been stayed until after resolution of this and other inter partes proceedings.
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`“When an issue of fact or law is actually litigated and determined by a valid and
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`final judgment, and the determination is essential to the judgment, the
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`determination is conclusive in a subsequent action between the parties, whether on
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`the same or a different claim.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1247
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`(Fed. Cir. 2018) (quoting Restatement (Second) of Judgments § 27 (1982)).
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`Accordingly, absent a final judgment, issue preclusion does not apply, and the
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`District Court’s interlocutory order is not relevant to these proceedings.
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`Third, the interlocutory order in question will be subject to appeal if and
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`when the District Court renders judgment, and Patent Owner has specifically
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`reserved the right to appeal the interlocutory order. Exhibit 2013 at fn1.
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`Fourth, as part of its Response, Patent Owner did not file a motion to cancel
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`the Certificate of Correction or seek any similar remedy (and nor did Petitioner).
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`Therefore, the question of the propriety of the Certificate of Correction is not
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`before the Board. See 37 C.F.R. § 1.323.
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`And finally, fifth, the petition was filed and these proceedings were
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`instituted before the Delaware District Court issued the interlocutory order—
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`institution was on January 15, 2019 and the interlocutory order issued on February
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`11, 2019. It is now too late to alter the claims, which would place these
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`proceedings on shifting sands. This proceeding should proceed on the basis of the
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`claims as they existed at the time of institution (if not at the time of the petition).
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`C.f. Emerson Electric Co. v. Sipco, No. CBM2016-00095, 2018 WL 446681, at *3
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`(P.T.A.B. Jan. 16, 2018) (covered business method patent review is conducted
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`based on claims as they exist at time of decision to institute, regardless of post-
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`institution disclaimer).
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`Accordingly, Section V.A.1 of Patent Owner’s Response is moot because
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`the Certificate of Correction applies to these proceedings.
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`B. As a Backup Argument, Petitioner Established That the Tool
`Mounting Portion in the Prior Art was Also Coupled to the Distal End
`of the Proximal Spine Portion
`
`As Dr. Knodel explained in his Declaration, “Specifically, in the
`
`combination, Anderson’s tool mounting portion would be operably coupled to the
`
`distal end of the proximal spine portion of Timm’s shaft via the proximal spine
`
`portion itself.” Knodel Dec., ¶104. Dr. Knodel explained that the “tool mounting
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`portion” of Anderson was “base 34.” Knodel Dec., ¶63. Dr. Knodel included the
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`following figure, which we annotate to show the relevant parts:
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`Proximal End of
`Proximal Spine
`Portion
`
`Tool Mounting
`Portion
`(“Base 34”)
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`
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`Distal End of Proximal
`Spine Portion
`(not shown in excerpt)
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`In the Anderson/Timm combination, the shaft and end effector of Anderson
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`is replaced with the shaft and end effector of Timm. Dr. Knodel refers to FIG. 1 of
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`Timm, which shows “a surgical stapler with an articulation joint.”
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`Proximal End of
`Proximal Spine
`Portion
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`
`
`Distal End of
`Proximal Spine
`Portion
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`
`
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`Referring to FIG. 52, Dr. Knodel explains that the proximal spine portion includes
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`a “proximal spine segment 2720” coupled to an “articulation ball joint 2760” at the
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`distal end. The “articulation ball joint 2760” is coupled to “a distal spine segment
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`2740.” Knodel Dec., at ¶36.
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`Lockable
`Articulation Joint
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`
`Distal End of
`Proximal Spine
`Portion
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`
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`Dr. Knodel further identified a “lockable articulation joint” at the distal end
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`of the proximal spine portion, citing to Timm, 31:62-32:31, which explains that
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`“[v]arious trigger and locking arrangements (not shown) in the handle may be
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`employed to selectively axially move the actuation member in the proximal PD
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`and distal DD directions and lock the actuation member 3050 in position to retain
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`the ball-shaped member 3016 in an expanded/locked condition.” Knodel Dec.,
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`¶89. Thus, as Dr. Knodel testified, the tool mounting portion is operably coupled
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`to the distal end of the proximal spine portion via the structure of the proximal
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`spine portion itself. See Knodel Dec., ¶¶36, 89, and 104; Awtar Dep., 45:4-47:7
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`(discussing meaning of operable coupling). Petitioner has met its burden.
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`Patent Owner further attempts to exclude passive articulation joints from the
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`claims, arguing that “it is clear ... that operable coupling between the tool mounting
`
`portion and the spine portion refers to an active articulation joint that is operated
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`via the tool mounting portion.” POR, 27-28. However, Patent Owner is mistaken.
`
`The cited passages do not even mention “operable coupling” or “operably
`
`coupled.” Moreover, claim 24 merely requires an “articulation joint” and does not
`
`require “active articulation.” An “articulation joint” may be either active or
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`passive. Knodel Dec., ¶89 (reading the articulation limitation of claim 24 on the
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`“lockable articulation joint” of Timm). Notably, Patent Owner did not seek a
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`construction of “articulation joint” in claim 24 as being limited to an “active
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`articulation joint.”
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`Moreover, the cable that locks the joint from the handle undeniably operably
`
`couples the handle to the articulation joint (Awtar Dep. 49:14-50:3), and in the
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`combination, the handle becomes the tool mounting portion. Even setting aside the
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`locking feature, the articulation joint is still operably coupled to the tool mounting
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`portion. As Patent Owner admits, the passive articulation joint of the
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`Anderson/Timm combination is operated from the handle/tool mounting portion
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`when the joint is articulated because a surgeon would articulate the instrument by
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`“pressing the end effector against another structure in order to articulate it.” POR,
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`2. As Patent Owner’s own expert admits: “Timm explains that passive articulation
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`requires the surgeon to press the end effector against another instrument or
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`structure in the body to articulate it. Once the end effector is in the desired
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`orientation, the surgeon locks the articulation joint in place.” Awtar Dec., ¶41.
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`This action requires the claimed operable coupling.
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`Patent Owner’s expert further admits that Timm discloses both passive
`
`articulation and active articulation, and thus there is no question that the ’969
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`Patent was not the first patent to disclose active articulation or operable coupling to
`
`an articulation joint. Awtar Dec., ¶¶42 and 43 (“In the active articulation joint
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`embodiments [of Timm], a joystick assembly is included at the back end of the
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`handle assembly and push/pull wires couple the joystick assembly to the
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`articulation joint.”); accord POR at 16 (“The description in Timm plainly divides
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`the articulation joints into two categories: passive joints and active joints.”); POR,
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`18 (“Timm also discloses ‘active articulation’ joints in the embodiments of Figures
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`73-89. Ex. 1011, 37:55-58)”); accord Knodel Dec., ¶118 (referring to Timm’s
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`active manually operated articulation system).
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`Accordingly, the Anderson/Timm combination discloses a tool mounting
`
`portion coupled to the distal end of a proximal spine portion because (i) the
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`Anderson/Timm articulation joint is disposed at the distal end of the proximal
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`spine portion, and (ii) the Anderson/Timm tool mounting portion is used to
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`articulate (by pressing distal end of the instrument against another instrument or
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`nearby anatomy) and is used to lock the joint.
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`C. As Dr. Knodel Testified, a POSITA Would Have Been Motivated To
`Combine Anderson With Timm (Including Timm’s Lockable
`Articulation Joint)
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`In paragraphs 83-114 of his Declaration, Dr. Knodel explains why claim 24
`
`would have been obvious to a POSITA in light of the Anderson/Timm
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`combination, and provides the motivation for the combination.
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`In its Response, Patent Owner raises a new issue related to “tactile
`
`feedback.” Patent Owner argues that “performing passive articulation safely and
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`[sic] requires real-time, tactile feedback to ensure that excessive forces are not
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`applied to the instrument or another structure, such as an internal body part” and
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`that “video feedback alone would have been unacceptable.” POR, 29. Patent
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`Owner further asserts that “tactile feedback” was “not available” in the robotic
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`prior art. Id. Patent Owner’s argument is wrong for two independent reasons:
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`First, there is no credible evidence that “tactile feedback” is required, and second,
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`the Anderson/Timm combination has tactile feedback. We will address the second
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`point first.
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`D.
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`Even if Tactile Feedback Were a Requirement, Anderson Discloses It
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`In a robotic system, there are various forms of possible feedback, including,
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`as Patent Owner states, “video feedback” and “tactile feedback.” POR, 29. As the
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`’969 Patent itself confirms, “tactile feedback” includes feedback to the “control
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`members.” ’969 Patent, 67:35-36; see also ’969 Patent, 86:30-32) (“master
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`controllers . . . grasped by the surgeon and manipulated in space while the surgeon
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`views the procedure via a stereo display.”) As described in the ’969 Patent itself,
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`video feedback is provided by the stereo display and tactile feedback is provided to
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`the controllers grasped by the surgeon.
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`With regard to the prior art, Patent Owner does not allege that Anderson
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`fails to disclose tactile feedback, but merely alleges that Petitioner’s actual
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`commercial robots allegedly lacked tactile feedback. POR, 29. Of course, in this
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`proceeding, where prior art must consist of patents and printed publications, and
`
`cannot include commercial embodiments, it is curious and telling that Patent
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`Owner discusses commercial embodiments not of record in these proceedings, and
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`ignores the teachings of the actual prior art references.
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`In fact, Anderson, the primary robotic reference for Ground 2 does in fact
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`disclose tactile feedback (which it must be remembered, is not a limitation of the
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`claims). Anderson teaches that “[t]he control system typically includes at least one
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`processor which relays [information] . . . from the arm and instrument assemblies
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`to the associated master control devices in the case of, e.g., force feedback, or the
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`like.” Anderson, 2:63-3:1. The force feedback is created by a “motor pack” that
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`“may include . . . feedback sensors, and the like, and may transmit feedback or
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`sensor signals to the robotic surgical system via the interface.” Anderson, 6:33-37.
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`The sensors in the motor pack can provide tactile feedback because as force is
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`applied to the instrument, the motors sense the resistance, and can provide that
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`force feedback to the master controllers. Knodel Supp. Dec., ¶15. Accordingly,
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`Anderson discloses tactile feedback that would transmit forces from the instrument
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`to the surgeon via the associated master control device. Knodel Supp. Dec., ¶¶13-
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`15. Accordingly, even if a POSITA would want to see a disclosure of tactile
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`feedback in the robotic references, Anderson discloses it.
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`E.
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`Tactile Feedback Is Not a Requirement for Use of Passive
`Articulation with a Robotic System
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`Setting aside the fact that Anderson does, in fact, disclose tactile feedback, a
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`POSITA would have been motivated to make the Anderson/Timm combination
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`regardless because a POSITA would not require “tactile feedback” with a passive
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`articulation joint. As Timm states, and as Patent Owner admits, passive
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`articulation of a joint can be performed in at least two ways: (1) by pressing the
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`end effector against an organ in the body and (2) by having the clinician apply “an
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`articulation force to the tool assembly with another surgical instrument.” POR,
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`17 (quoting Timm, 32:32-46). In the latter approach, the risk of damaging an
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`organ is not present. Accordingly, a POSITA would have been motivated to use
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`Timm’s passive articulation with a robot that lacked tactile feedback with the
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`understanding that the surgeon would use another surgical tool to apply the
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`articulation force rather than a sensitive body organ. Knodel Supp. Dec., ¶8. This
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`is confirmed by Ethicon’s expert, Dr. Fegelman, who focuses on the first (body)
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`option rather than the second (instrument) option: “this [risk of injury] is
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`particularly true when the exterior of the end effector is being pressed against a
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`structure in the body.” Fegelman Dec., ¶19.1 In addition, as Dr. Knodel states, a
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`skilled surgeon can articulate the instrument against a resilient part of the body
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`without tactile feedback. Knodel Supp. Dec., ¶11. Patent Owner’s own patents
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`belie Patent Owner’s position that nobody would be motivated to combine passive
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`articulation with a robot. Gee discloses an “embodiment of a passive articulation
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`mechanism for use with a robotic surgical system and/or manual surgical
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`instrument.” Gee, 5:11-13; see also Awtar Dep., 60:4-63:10 (“I am not making the
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`1 Patent Owner also argues that passive articulation relinquishes “complete
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`control” over the tool. POR, 30. On the contrary, the surgeon would control the
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`two robotic tools used to articulate, and thus has complete control over the process.
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`Knodel Supp. Dec., ¶9.
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`statement at all that there is no surgeon in 2011 who would have found passive
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`articulation acceptable.”)
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`Finally, Patent Owner’s argument, if assumed correct, leads to an
`
`inescapable conclusion: adding tactile feedback to a robot lacking it would have
`
`been obvious in view of general knowledge of the art. Patent Owner’s expert, Dr.
`
`Fegelman, asserts that “passive articulation requires nearly instantaneous, tactile
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`feedback.” Fegelman Dec., ¶19. If this were true, then a POSITA, recognizing this
`
`alleged requirement, would have been motivated to add such tactile feedback to the
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`Anderson/Timm system. This is confirmed by at least one of the prior art articles
`
`on which Patent Owner relies. Exhibit 2017 is a 2007 article entitled “Haptic
`
`Feedback in a Telepresence System for Endoscopic Heart Surgery.” In that article,
`
`the authors noted that the “lack of haptic feedback may cause damage to tissue”
`
`and their solution was simply to build a “telemanipulator for endoscopic surgery
`
`that provides . . . force-feedback (in order to improve the feeling of immersion).”
`
`Mayer (Exhibit 2017), 1. In sum, if tactile feedback was a requirement, a POSITA
`
`would simply add it to the robot—Patent Owner’s own evidence shows that this
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`was done before the priority date.
`
`F.
`
`As Established in the Petition, a POSITA Would Have Had a
`Reasonable Expectation of Success
`
`1.
`
`Anderson Has Sufficient Transmission Members to Drive
`Timm
`
`
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`14
`
`
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`For Ground 2, Petitioner combines Anderson and Timm. Anderson provides
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`Attorney Docket No. 11030-0049IP5
`Proceeding No. IPR2018-01247
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`the teachings for the surgical robot and the tool mounting portion (“instrument
`
`base 34”), which includes “transmission members 70, 72, 74, and 76” each of
`
`which includes a “spool.” Anderson, 11:66-12:22; Petition, 11, 15, 25-38, 52.
`
`Although four transmission members are shown, Anderson states that “[w]here
`
`more or fewer degrees of freedom are desired, the number of spools may be
`
`decreased or increased.” Anderson, 11:66-12:22. Both sides’ experts have
`
`confirmed that Anderson contemplates more or fewer rotary drives than four.
`
`Awtar Dep., 32:8-33:16; Ex. 2010 (Knodel Dep.), 85:22-86:19. Therefore, the
`
`number of transmission members is not a stumbling block in making the
`
`combination.
`
`2.
`
`Anderson Can Generate Sufficient Forces to Drive Timm
`
`
`
`The ’969 Patent itself admits that the robot disclosed in Anderson generates
`
`sufficient forces to drive a linear stapler/cutter, thus further confirming that a
`
`POSITA would have an expectation of success. For details about the robotic
`
`interface, Anderson repeatedly refers to and incorporates by reference Tierney.
`
`Anderson, 16:17-24, 22:61-68, and 23:31-45. And, there is no question that
`
`Tierney is capable of driving the linear stapler/cutter of the ’969 Patent because in
`
`the ’969 Patent, Patent Owner did not disclose a new surgical robot. Rather, the
`
`’969 Patent is admittedly built upon the prior art robotic patents of Petitioner.
`
`
`
`15
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`
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`Attorney Docket No. 11030-0049IP5
`Proceeding No. IPR2018-01247
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`Specifically, the ’969 Patent discloses “robotic system 1000” to which surgical
`
`instruments may be attached. The ’969 Patent then identifies Tierney 320,2 a prior
`
`art robotic patent of Petitioner, as an example of “robotic system 1000”.
`
`’969 Patent, 23:32-38, 31:56-59; Petition, 1-3, 6-7.
`
`Moreover, Patent Owner’s expert admitted that Tierney was an example of
`
`robotic system 1000, and that robotic system 1000 was capable of driving a linear
`
`stapler/cutter. Fronczak Dep., 123:15-125:11. Thus, any suggestion by Patent
`
`Owner that Tierney (or Anderson, which incorporates Tierney) is incapable of
`
`driving a linear stapler/cutter is contradicted by Patent Owner’s own expert.
`
`Thus, in both the ’969 Patent and in the Anderson/Timm combination, the
`
`motor generates sufficient forces because the motor is powering gears. As was
`
`well-known in the prior art, gears are used to reduce speed and increase torque (as
`
`in any power tool). The ’969 Patent discloses nothing new in this regard:
`
`In various embodiments, the various gears of the closure gear
`
`assembly 6520 are sized to generate the necessary closure forces
`
`needed to satisfactorily close the anvil 6024 onto the tissue to be cut
`
`and stapled by the surgical end effector 601. For example, the gears of
`
`
`2 The Tierney 320 reference is related to, and has the same disclosure as, the
`
`Tierney reference incorporated into Anderson.
`
`
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`16
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`
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`Attorney Docket No. 11030-0049IP5
`Proceeding No. IPR2018-01247
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`the closure transmission 6520 may be sized to generate approximately
`
`70-120 pounds of closure force.
`
`’969 Patent, 84:20-26; POR at 34; see also ’969 Patent, 85:4-8. Critically, the ’969
`
`Patent does not state what that “sizing” is. Rather, a POSITA would know how to
`
`choose the right gears to generate the required forces, a point confirmed by Patent
`
`Owner’s expert, Dr. Fronczak. See Knodel Dec., ¶60; Fronczak Dep., 27:8-31:14.
`
` Accordingly, as stated in the Petition, connecting a motor to an instrument
`
`via the gears in the Anderson/Timm combination is merely an application of a
`
`known technique to a known system that would certainly yield predictable results.
`
`Petition, 45-46, 55-56. In sum, Patent Owner’s argument that Anderson cannot
`
`drive Timm because it allegedly has “high speed, low torque” motors is baseless.
`
`It has the same motor disclosure as the ’969 Patent and Timm’s gears would adjust
`
`the torque as needed. Moreover, the conclusory statements to the contrary in
`
`Patent Owner’s expert declarations were debunked at deposition. Fronczak Dep.,
`
`27:8-31:14; Awtar Dep., 116:8-119:1; compare Timm, 19:22-27 (“Those of
`
`ordinary skill in the art will understand that changes in the gear ratios-either in the
`
`transmission or rack and pinion could be used to attain improved mechanical
`
`advantages for driving the knife assembly 170”).
`
`
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`17
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`Attorney Docket No. 11030-0049IP5
`Proceeding No. IPR2018-01247
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`G. Anderson Provides a Generic Robotic Foundation For a Variety of
`Tools
`
`Patent Owner next argues that Anderson cannot drive an “endocutter” such
`
`as Timm because Anderson’s tool base “is designed to control a harmonic end
`
`effector.” POR, 33. As shown above, this is incorrect. First, Anderson provides a
`
`generic robotic foundation to which a variety of tools may be attached, including
`
`“stapler probes, tissue grasping and cutting probes, and the like.” Anderson, 7:1-
`
`25; Petition at 70-71. Thus, Anderson provides rotary “transmission members”
`
`(four in the exemplary embodiment) that can provide rotary motion to any tool
`
`function that requires it. Accordingly, even though the focus of Anderson’s
`
`preferred embodiments may be harmonic tools, Anderson’s transmission members
`
`can drive any tool requiring rotary controls. Knodel Dec., ¶¶64-75, Petition, 1, 18-
`
`29, 69, 80 (discussing Anderson’s rotary controls and tools), 45-51 (discussing
`
`Anderson’s interface with Timm’s gears).
`
`Patent Owner also argues that “harmonic devices are incapable of
`
`articulation.” POR, 34. This is irrelevant as Anderson specifically discloses non-
`
`harmonic tools and also discloses articulating surgical instruments. Anderson,
`
`6:47-58 (disclosing “alternative embodiments” with a “wrist-like . . . pivotal
`
`joint.”); see also Petition, 1, 38.
`
`Patent Owner also argues that a POSITA would face “substantial
`
`challenges” in attempting to “adapt Timm’s endocutter for use with Anderson’s
`
`
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`18
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`Attorney Docket No. 11030-0049IP5
`Proceeding No. IPR2018-01247
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`robotic system.” POR, 35. As a threshold matter, the existence of “substantial
`
`challenges” does not negate an expectation of success. It is the job of design
`
`engineers to address challenges. Moreover, the alleged “challenges” are greatly
`
`exaggerated. First, Dr. Knodel has testified that a POSITA would easily make the
`
`necessary adjustments to couple the rotary output of Anderson to the rotary input
`
`of Timm. Knodel Dec., ¶¶92-103; Petition at 55-56. Patent Owner offers no
`
`rebuttal to this specific issue. Instead, Patent Owner makes a series of vague
`
`assertions divorced from Dr. Knodel’s actual testimony.
`
`Patent Owner makes its “low speed, high torque” argument again. POR, 36.
`
`As discussed above, using gears to convert motor power to a lower speed and
`
`higher torque is well within a POSITA’s skill—as admitted by both of Patent
`
`Owner’s experts. Fronczak Dep., 27:8-31:14; Awtar Dep., 116:8-119:1.
`
`Also, Patent Owner asserts a POSITA must determine “how to achieve the
`
`mechanical advantage needed to produce the relatively high forces required of an
`
`endocutt
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