UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`v.
`
`ETHICON LLC,
`Patent Owner
`
`IPR2018-01247
`U.S. Patent No. 8,479,969
`
`
`
`
`
`DECLARATION OF DR. SHORYA AWTAR
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`
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`
`
`Ethicon Exhibit 2006.001
`Intuitive v. Ethicon
`IPR2018-01247
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`v.
`
`ETHICON LLC,
`Patent Owner
`
`IPR2018-01247
`U.S. Patent No. 8,479,969
`
`
`
`
`
`DECLARATION OF DR. SHORYA AWTAR
`
`
`
`
`
`
`
`
`
`
`
`Ethicon Exhibit 2006.001
`Intuitive v. Ethicon
`IPR2018-01247
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`
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`
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`I.
`
`II.
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ....................................................................................... 1
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`PRIORITY DATE AND LEVEL OF ORDINARY SKILL IN THE
`ART .............................................................................................................. 2
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`III. QUALIFICATIONS ..................................................................................... 3
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`IV. RELEVANT LEGAL STANDARDS ........................................................... 4
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`V. OVERVIEW OF THE TECHNOLOGY DISCLOSED IN THE 969
`PATENT ....................................................................................................... 6
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`VI. PROSECUTION HISTORY OF THE 969 PATENT .................................. 16
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`VII. CLAIM CONSTRUCTION ........................................................................ 16
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`VIII. OVERVIEW OF THE PRIOR ART CITED BY PETITIONER ................. 17
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`A.
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`B.
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`C.
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`D.
`
`E.
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`Ex. 1010, Anderson (U.S. Patent No. 6,783,524) .............................. 17
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`Ex. 1011, Timm (U.S. Patent No. 7,510,107) .................................... 23
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`Ex. 1008, Wallace (U.S. Patent No. 6,699,235) ................................ 27
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`Ex. 1012, Knodel (U.S. Patent No. 5,465,895) .................................. 31
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`Ex. 1013, Viola (U.S. Patent No. 5,954,259)..................................... 33
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`IX. PETITIONER HAS NOT DEMONSTRATED THAT ANDERSON
`IN COMBINATION WITH ANY OF THE REMAINING PRIOR
`ART REFERENCES RENDERS OBVIOUS THE CHALLENGED
`CLAIMS OF THE 969 PATENT ................................................................ 36
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`
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`ii
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`Ethicon Exhibit 2006.002
`Intuitive v. Ethicon
`IPR2018-01247
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`A.
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`Petitioner Has Not Demonstrated Anderson in View of Timm
`Renders Obvious Claim 24 of the 969 Patent (Ground 2).................. 36
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`1.
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`2.
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`3.
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`Petitioner Has Not Demonstrated That The Combination
`Of Anderson And Timm Discloses “A Tool Mounting
`Portion Operably Coupled To A Distal End Of Said
`Proximal Spine Portion” (Ground 2, claim 24) ....................... 37
`
`A POSITA Would Not Have Utilized Timm’s Passive
`Articulation Joint In The Robotic System Of Anderson
`(Ground 2, Claim 24) .............................................................. 39
`
`A POSITA Would Not Have Had A Reasonable
`Expectation Of Success In Combining Anderson’s Tool
`Base With A Handheld Endocutter As Disclosed In Timm
`(Ground 2, Claim 24) .............................................................. 42
`
`a)
`
`b)
`
`c)
`
`A POSITA Would Have Recognized That the
`Combination of Anderson with Timm’s Endocutter
`Would Require a Re-Design to Provide Sufficient
`Forces to Drive the Endocutter ...................................... 45
`
`Handheld Endocutters That Are Manually Actuated
`Operate on Fundamentally Different Principles
`Than Robotic Tools ...................................................... 47
`
`The Publications of Both Patent Owner and
`Petitioner Confirm that a POSITA Would Not Have
`Had a Reasonable Expectation of Success .................... 49
`
`B.
`
`Petitioner Has Not Demonstrated That The Combination Of
`Anderson, Timm, And Wallace Renders Obvious Claims 25-26
`Of The 969 Patent (Ground 3)........................................................... 53
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`1.
`
`Petitioner Has Not Demonstrated That Claim 24 Is
`Obvious, And Therefore Cannot Demonstrate That Its
`Dependent Claims Are Obvious .............................................. 53
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`iii
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`Ethicon Exhibit 2006.003
`Intuitive v. Ethicon
`IPR2018-01247
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`2.
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`3.
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`Timm’s Passive Articulation Joint is Not Compatible With
`Wallace’s Active Articulation System .................................... 53
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`The Combination Of Timm’s Endocutter With Wallace’s
`Wrist Requires More Control Inputs Than Are Available
`In Wallace And Anderson ....................................................... 55
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`C.
`
`Petitioner Has Not Demonstrated That The Combination Of
`Anderson And Knodel Renders Obvious Claims 19-20 Of The
`969 Patent (Ground 4) ....................................................................... 58
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`1.
`
`2.
`
`A POSITA Would Have Been Dissuaded From the
`Combination of Anderson’s Robotic System with
`Knodel’s Handheld Endocutter ............................................... 59
`
`A POSITA Would Have Lacked A Reasonable
`Expectation Of Success In Combining Anderson With
`Knodel .................................................................................... 62
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`D.
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`Petitioner Has Not Demonstrated That The Combination Of
`Anderson And Viola Renders Obvious Claims 21-22 Of The 969
`Patent (Ground 5) ............................................................................. 62
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`XI.
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`JURAT ....................................................................................................... 68
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`
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`
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`iv
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`Ethicon Exhibit 2006.004
`Intuitive v. Ethicon
`IPR2018-01247
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`I.
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`INTRODUCTION
`1. My name is Dr. Shorya Awtar. I have been retained by counsel for
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`Patent Owner Ethicon LLC (“Ethicon”) in the above captioned inter partes review
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`to consult with counsel, review documents, form opinions, prepare expert
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`declarations, and be available to testify as to my opinions.
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`2.
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`I understand that Petitioner Intuitive Surgical, Inc. (“Intuitive”) has
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`asserted that claims 19-22 and 24-26 of U.S. Patent No. 8,479,969 (the “969
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`Patent”) are invalid as obvious. I have been asked to give expert opinions and
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`testimony related to the issue of the validity of claims 19-22 and 24-26 of the 969
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`Patent,1 including the background of the technology at issue, and the scope and
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`content of the prior art.
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`3. My opinions are based on reviewing the Petition, Dr. Knodel’s
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`declaration (Ex. 1004), the Patent Owner Response, the transcripts of Dr. Knodel’s
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`depositions, and the relevant portions of all exhibits cited in any of the foregoing
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`documents and this declaration.
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`4.
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`The opinions I have formed as explained herein are informed by and
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`based on my consideration of the documents listed above, as well as my own
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`
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`1 I understand that challenged claim 23, which relates to Petitioner’s Ground 1, has
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`been disclaimed. See Ex. 2002.
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`1
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`Ethicon Exhibit 2006.005
`Intuitive v. Ethicon
`IPR2018-01247
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`knowledge and experience based upon my work in the relevant field of technology,
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`as discussed below. All statements made herein of my own knowledge are true,
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`and all statements made herein based on information and belief are believed to be
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`true. Although I am being compensated for my time in preparing this declaration,
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`the opinions articulated herein are my own, and I have no stake in the outcome of
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`this proceeding or any related litigation or administrative proceedings. My study is
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`ongoing, and I may supplement or amend these opinions based on the production
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`of additional evidence, as a result of further analysis, or in rebuttal to positions
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`subsequently taken by Intuitive and/or Dr. Knodel.
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`II.
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`PRIORITY DATE AND LEVEL OF ORDINARY SKILL IN THE ART
`I have been asked to assume that the priority date of the claims of the
`5.
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`969 Patent is May 27, 2011. I understand that Intuitive’s expert, Dr. Knodel, has
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`also utilized a priority date of May 27, 2011 in his analysis. See Ex. 1004 at ¶¶ 28-
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`30. I reserve the right to address the priority date of the claims of the 969 Patent
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`should Intuitive subsequently contest this issue.
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`6.
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`I understand that Dr. Knodel has opined that a person of ordinary skill
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`in the art for the 969 Patent would include someone who had the equivalent of a
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`Bachelor’s degree or higher in mechanical engineering with at least 3 years
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`working experience in the design of comparable surgical devices. Ex. 1004 at ¶¶
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`24-26. While I generally agree with the level of education and type of work
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`2
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`Ethicon Exhibit 2006.006
`Intuitive v. Ethicon
`IPR2018-01247
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`experience proposed by Dr. Knodel, I note that a person of ordinary skill in the art
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`would additionally have had an understanding as to how the instrument design can
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`affect the clinical outcomes associated with instrument use (e.g., how effective a
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`particular design is at forming staples). The opinions I express in this declaration
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`are given from the perspective of a person of ordinary skill in the art as of the
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`effective filing date of the 969 Patent, based on the level of education and work
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`experienced proposed by Dr. Knodel in conjunction with the understanding of
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`instrument design discussed above. I meet the criteria set forth by Dr. Knodel as
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`well as the additional criteria set forth above, and consider myself a person with at
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`least ordinary skill in the art pertaining to the 969 Patent.
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`III. QUALIFICATIONS
`I am currently an Associate Professor of Mechanical Engineering at the
`7.
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`University of Michigan, a position I have held since 2013. Prior to being promoted
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`to Associate Professor, I was an Assistant Professor at the University of Michigan
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`from 2007-2013. I am also the Director of the Precision Systems Design Laboratory
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`at the University of Michigan (“PSDL”). My research in the PSDL covers machine
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`and mechanism design, flexure mechanisms, parallel kinematics, mechatronic
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`systems, flexible system dynamics and controls, and precision engineering. Specific
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`research projects that I have worked on include medical devices for minimally
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`3
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`Ethicon Exhibit 2006.007
`Intuitive v. Ethicon
`IPR2018-01247
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`invasive surgery, motion stages for metrology and manufacturing, electromagnetic
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`and electrostatic actuators, and micro-electromechanical systems.
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`8.
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`In addition to my employment at the University of Michigan, I am also
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`the cofounder and current Chief Technology Officer of FlexDex Surgical. FlexDex
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`is an early stage technology startup created based on research performed in the
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`PSDL. FlexDex develops surgical tools for use in minimally invasive (i.e.,
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`laparoscopic) surgical procedures.
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`9.
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`I received my Sc.D. in Mechanical Engineering from the Massachusetts
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`Institute of Technology (“MIT”) in 2004. Prior to receiving my Sc.D. at MIT, I
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`earned a Bachelor’s degree in Mechanical Engineering from the Indian Institute of
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`Technology, Kanpur in 1998, and a Master’s degree in Mechanical Engineering
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`from Rensselaer Polytechnic Institute in 2000.
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`10. Further details regarding my education and work experience are
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`contained in my CV as Appendix A. I am being compensated at an hourly rate of
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`$750, which is my standard rate for consulting engagements. My compensation is
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`not dependent on the substance of my statements in this Declaration or the
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`outcome of this case.
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`IV. RELEVANT LEGAL STANDARDS
`I am not a lawyer, and I offer no legal opinions in this declaration. I
`11.
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`have, however, been advised by counsel as to various legal standards that apply to
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`4
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`Ethicon Exhibit 2006.008
`Intuitive v. Ethicon
`IPR2018-01247
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`the technical issues I address in this declaration, and I have applied those standards
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`in arriving at my conclusions.
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`12.
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`I understand that the claims of a patent are presumed valid, and a
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`Petitioner in an inter partes review proceeding must prove invalidity of the
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`challenged claims by a preponderance of the evidence.
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`13.
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`I have been informed that, when analyzing whether the challenged
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`claims of the 969 Patent are invalid as obvious, one must determine whether the
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`invention in each claim of the 969 Patent would have been obvious to a person of
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`ordinary skill in the art, taking into account 1) the scope and content of the prior art;
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`2) the differences between the prior art and the claimed invention; 3) the level of
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`ordinary skill in the art; and 4) any secondary considerations of non-obviousness.
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`14.
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`I have been informed that a determination of obviousness requires that
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`a person of ordinary skill in the art would have had a reason to modify or combine
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`prior art references to achieve the claimed invention. I have also been informed that
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`a determination of obviousness requires that a person of ordinary skill have a
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`reasonable expectation of success in combining the prior art references to achieve
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`the claimed invention.
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`15.
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`I have been informed that secondary considerations may show that the
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`claimed subject matter is not obvious. These secondary considerations can include,
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`for example, commercial success (evidence of commercial success that can be
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`5
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`Ethicon Exhibit 2006.009
`Intuitive v. Ethicon
`IPR2018-01247
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`attributed to the merits of the invention), failure of others (evidence that others have
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`tried and failed to solve the problem or satisfy the need resolved by the claimed
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`invention), and skepticism (evidence that those of skill in the art were skeptical as
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`to the merits of the invention, or even taught away from the invention).
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`V. OVERVIEW OF THE TECHNOLOGY DISCLOSED IN THE 969
`PATENT
`16. The 969 Patent was filed on February 9, 2012 as Application No.
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`13/369,609 (which was based on a series of continuation and continuation-in-part
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`applications stemming from Application No. 11/651,807, filed on January 10, 2007,
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`now U.S. Patent No. 8,456,520) and issued on July 9, 2013. The named inventor is
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`Frederick E. Shelton, IV.
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`17. The 969 Patent generally relates to surgical instruments for use in
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`minimally invasive surgical procedures. See e.g., Ex. 1001 at 85:37-50 (“In addition,
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`the present invention may be in laparoscopic instruments, for example.”). An
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`exemplary surgical instrument described in the 969 Patent is a surgical stapler, which
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`can also be referred to as an endocutter or a linear cutter. See, e.g., id. at 1:66-2:24.
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`Surgical staplers include an end effector, which comprises a pair of jaws that are
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`configured to grasp and clamp on tissue within the body of a patient. Id. One of the
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`jaws can include a staple cartridge that holds a plurality of staples, while the other
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`jaw is generally referred to as an anvil. See id. Once the tissue is secured between
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`the jaws, a driver can traverse a channel in the staple cartridge, which drives the
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`6
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`Ethicon Exhibit 2006.010
`Intuitive v. Ethicon
`IPR2018-01247
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`staples and causes them to be deformed against the anvil to form several rows of
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`staples that secure the tissue. See id. The end effector can also include a cutting
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`instrument, such as a knife, which advances between the rows of staples to cut the
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`tissue after it has been secured with the staples. See id. The figure below provides
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`an exploded view of an exemplary end effector described in the 969 Patent, including
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`the jaw, staple cartridge, lower jaw, and driver for driving the staples:
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`
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`Ex. 1001 at Fig. 3
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`7
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`Ethicon Exhibit 2006.011
`Intuitive v. Ethicon
`IPR2018-01247
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`18. The 969 Patent discloses handheld instrument embodiments, as well as
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`those intended for use with robotic surgical systems. See e.g., Ex. 1001 at 3:6-4:36.
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`The figure on the left illustrates a handheld instrument embodiment, which can be
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`actuated via a trigger, while the figure on the right illustrates a robotic instrument
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`embodiment, which is configured to be attached to a robotic surgical system and
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`actuated via a remote console:
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`
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`Ex. 1001 at Figure 22
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`Ex. 1001 at Figure 132
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`19.
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`In either embodiment, the end effector is operably coupled to an
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`elongate shaft. This arrangement facilitates insertion of the end effector into the body
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`in a minimally invasive manner.
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`20. The 969 Patent is further directed to implementations of a “surgical
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`instrument for use with a robotic system.” Ex. 1001, Abstract. The surgical tool of
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`8
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`Ethicon Exhibit 2006.012
`Intuitive v. Ethicon
`IPR2018-01247
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`independent claim 24, for example, includes, a transmission assembly in meshing
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`engagement with a gear-driven portion to apply control motions to a selectively
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`moveable component of an end effector. See, e.g., Ex. 1001 at 34:36-43 (“[A] knife
`
`drive gear 2432 is attached to the drive shaft segment 2430 and is meshing
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`engagement with a drive knife gear 2434 that is attached to the end effector drive
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`shaft 2336. Thus, rotation of the drive shaft segment 2430 will result in the rotation
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`of the end effector drive shaft 2336 to drive the cutting instrument 2332 and sled
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`2333 distally through the surgical staple cartridge….”); id. at 85:4-8 (“In various
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`embodiments, the gears of the knife gear assembly 6560 are sized to generate the
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`forces needed to drive the cutting instrument through the tissue clamped in the
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`surgical end effector 6012 and actuate staples therein.”). As shown below in Figure
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`132, the claimed surgical instrument includes a tool mounting portion that is
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`operably coupled to the shaft, and is configured to operably interface with a tool
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`drive assembly of a robotic system. Also shown below is Figure 136, which
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`illustrates a transmission that includes a plurality of gears that are in meshing
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`engagement with a gear driven knife bar to apply control motions to the cutting
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`instrument and sled of an end effector. Ex. 1001 at 84:38-85:16.
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`9
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`Ethicon Exhibit 2006.013
`Intuitive v. Ethicon
`IPR2018-01247
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`Ex. 1001 at Fig. 132
`
`6512
`
`6520
`
`6144
`
`6040
`(6205
`
`
`
`
`
`
`
`
`
`Bees
`PY
`
`eSLe
`Pei
`
`Gear-Driven Knife Bar
`Pescrearaelir4
`
`
`
`instrument and sled
`
`6524~ fw6522
`6518. O
`(re
`\80495,
`Hf oiin
`
`
`
`
`
`6140
`
`Ex. 1001 at Fig. 136
`10
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`Ethicon Exhibit 2006.014
`Intuitive v. Ethicon
`IPR2018-01247
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`21. Claim 24 further requires an elongated shaft comprising proximal and
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`distal spine portions coupled at an articulation joint to facilitate articulation of the
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`end effector. See Ex. 1001at Claim 24. The 969 Patent also discloses exemplary
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`articulation joints that facilitate articulation about one or two axes. In each of these
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`exemplary embodiments, the articulation joint is operably coupled to the tool
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`mounting portion, such that the rotary members, which are controlled remotely from
`
`the surgeon’s console, control the articulation about the articulation joint. Figure 35,
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`for example, illustrates an articulation joint that facilitates articulation about a single
`
`axis transverse the longitudinal axis of the elongate shaft. See Ex. 1001at 27:19-47.
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`
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`Ex. 1001 at Fig. 35.
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`11
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`Ethicon Exhibit 2006.015
`Intuitive v. Ethicon
`IPR2018-01247
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`As shown in Figure 34, which depicts the same embodiment viewed from behind the
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`tool mounting portion, the articulation joint is controlled by articulation nut 2260 at
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`the proximal end of the shaft. Id. at 30:65-31:3. The articulation nut 2260 is, in turn,
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`driven by the rotary motion of articulation drive gear 2274, which receives rotary
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`motion from articulation gear 2272, which in turn receives rotary motion from the
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`robotic system through a driven element on the adapter side of the tool mounting
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`portion. Id. at 31:3-16.
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`Ex. 1001 at Fig. 34
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`
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`22. Figure 133 illustrates articulation about two axes, one that is transverse
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`to the longitudinal tool axis (designated “LT”), and one that is transverse to both the
`12
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`Ethicon Exhibit 2006.016
`Intuitive v. Ethicon
`IPR2018-01247
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`first articulation axis and LT. Ex. 1001at 77:38-46. These axes are designated “TA1”
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`and “TA2” in Figure 133, which provides a more detailed view of the articulation
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`joint 6100. As can be seen in Figure 133, this embodiment of the articulation joint is
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`controlled by two pairs of articulation cables, designated 6144, 6146, 6150, and
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`6152.
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`969 Patent at Fig. 133
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`
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`Like the articulation joint of the embodiments in Figures 34-35, the articulation joint
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`in Figure 133 is operably coupled to the tool mounting portion by the articulation
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`cables 6144, 6146, 6150, and 6152, allowing the articulation joint to be operated by
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`rotary motion received from the robotic system. As indicated by the red lines below
`13
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`Ethicon Exhibit 2006.017
`Intuitive v. Ethicon
`IPR2018-01247
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`in Figure 136, the articulation cables 6144 and 6150 enter the tool mounting portion
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`through passages in the instrument shaft (the cables 6146 and 6152, which run
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`parallel to 6144 and 6150, are not visible in this perspective). Id. at 78:51-67.
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`Ex. 1001 at Fig. 136
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`
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`23. As shown in Figure 137, below, the articulation cables couple to an
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`articulation control arrangement 6160 on the tool mounting portion. Id. at 79:28-53.
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`As shown in great detail in Figure 137, the articulation control arrangement is,
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`through a series of push cables and gears, coupled to the articulation drive gear 6322,
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`which receives rotary motion from the robotic system through a rotary element on
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`14
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`Ethicon Exhibit 2006.018
`Intuitive v. Ethicon
`IPR2018-01247
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`the adapter side of the tool mounting portion, thus allowing the robotic system to
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`operate the articulation joint. Id. at 79:54-80:39.
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`Ex. 1001 at Fig. 137
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`
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`24. The 969 Patent describes that the claimed invention provides several
`
`advantages. In particular, the disclosed transmission arrangement enables an
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`instrument that can (i) articulate about two different axes that are substantially
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`transverse to each other and the longitudinal tool axis: (ii) rotate the end effector
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`about the longitudinal tool axis; (iii) open and close the end effector anvil to clamp
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`tissue; and (iv) fire the device to cut and staple tissue. Ex. 1001 at 85:19-32. The 969
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`Patent describes that the disclosed gear-driven system improves upon the prior art
`15
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`Ethicon Exhibit 2006.019
`Intuitive v. Ethicon
`IPR2018-01247
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`by enabling a surgical instrument that can generate the magnitude of forces required
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`to effectively cut and fasten tissue, which is critical for surgical staplers. Id. at 23:6-
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`29, 84:20-26, 85:4-10.
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`VI. PROSECUTION HISTORY OF THE 969 PATENT
`25. Ethicon filed Application No. 13/369,609 on February 9, 2012, which
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`ultimately issued as the 969 Patent on July 9, 2013. The 969 Patent is a continuation
`
`of application No. 13/118,259, which was filed on May 27, 2011, and is a
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`continuation in part of application No. 11/651/807, which was filed on January 10,
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`2007.
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`26. The originally filed claims in the application that resulted in the 969
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`Patent were initially rejected by the examiner. See Ex. 1002 at p. 280-4, 8-30-2012
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`Non-Final Rejection. In response to the rejection, Ethicon added a new claim that
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`ultimately issued as Claim 24. See id. at p. 289-317, 11-13-2012 Amendment After
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`Non-Final Rejection. Claim 24 of the 969 Patent was never the subject of a rejection,
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`and was ultimately allowed by the examiner without amendment. See id. at p. 328,
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`12-11-2012 Notice of Allowance.
`
`VII. CLAIM CONSTRUCTION
`I have been informed that the claims of the 969 Patent should be
`27.
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`construed using the broadest reasonable construction in light of the specification of
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`the patent. I have been informed that the broadest reasonable construction is an
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`16
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`Ethicon Exhibit 2006.020
`Intuitive v. Ethicon
`IPR2018-01247
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`interpretation that corresponds with what and how an inventor describes his
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`invention in the specification, meaning that the interpretation must be consistent with
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`the specification.
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`28.
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`In rendering my opinions, to the extent that I do not provide a
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`construction for a term, I have applied that term’s ordinary meaning to a person of
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`ordinary skill in the art, in light of the specification.
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`VIII. OVERVIEW OF THE PRIOR ART CITED BY PETITIONER
`I understand that Petitioner has asserted that claims 19-22 and 24-26 of
`29.
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`the 969 Patent are invalid as obvious based on various prior art references. Below I
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`provide a brief description of each reference that Petitioner has relied on.
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`A. Ex. 1010, Anderson (U.S. Patent No. 6,783,524)
`30. U.S. Patent No. 6,784,524 (“Anderson”) was filed on April 18, 2002
`
`and issued on August 31, 2004. The named inventors are Stephen C. Anderson and
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`Christopher A. Julian, and the patent was originally assigned to Petitioner here,
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`Intuitive Surgical, Inc. Anderson is discussed and incorporated by reference in the
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`969 Patent. Ex. 1001, 23:6-29; 85:51-64.
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`31. Anderson discloses a robotic surgical tool that has an end effector that
`
`includes an ultrasound probe tip for cutting and cauterizing tissue at the surgical
`
`site. Ex. 1010, Abstract. Anderson’s robotic surgical system and surgical
`
`instrument are shown in Figures 1 and 2, respectively. Anderson’s surgical
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`17
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`Ethicon Exhibit 2006.021
`Intuitive v. Ethicon
`IPR2018-01247
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`
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`instrument attaches to the robotic surgical system through instrument base 34. Ex.
`
`1010, 11:66-12:11.
`
`
`
`
`
`Ex. 1010 at Fig. 2 (annotated)
`
`32. Figures 10-19 of the Anderson reference illustrate a “preferred
`
`embodiment of a robotic tool 80 having aspects of the present invention. The tool
`
`80 includes an ultrasound treatment instrument assembly …” Ex. 1010, 15:3-5.
`
`The robotic tool’s end effector 81 includes gripper 82 and ultrasound probe tip
`
`85b. Ex. 1010, 15:29-60. Figure 10 is annotated below.
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`18
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`Ethicon Exhibit 2006.022
`Intuitive v. Ethicon
`IPR2018-01247
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`
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`Ex. 1010 at Fig. 10 (annotated)
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`
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`33. Anderson’s instrument base is illustrated in greater detail in Figure 13.
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`Relevant components of the tool base are annotated in the illustration below:
`
`
`
`Ex. 1010 at Fig. 13 (annotated)
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`19
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`Ethicon Exhibit 2006.023
`Intuitive v. Ethicon
`IPR2018-01247
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`34. As illustrated in Figure 13, the instrument base includes roll spool 94,
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`actuator spool 95, idler spool 95b, roll drum 96, and an unused spool. Roll cable
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`101a/b runs between roll spool 94 and roll drum 96 to rotate the instrument shaft.
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`Ex. 1010, 16:45-61. Cable loop 102 connects the actuator spool 95 and idler spool
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`95b. These components control the gripper 82 of end effector 81 (the end effector
`
`is illustrated above in Figure 10). Ex. 1010, 16:62-17:9. To summarize, Anderson’s
`
`instrument base includes three rotary spools (roll spool 94, actuator spool 95, and
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`idler spool 95b) to control two instrument motions (shaft rotation and gripper
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`open/close). Anderson also discloses one additional spool that is unused. This
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`spool could be utilized for an additional control motion.
`
`35.
`
`In the 969 Patent, Anderson is cited as an example of a prior art
`
`robotic system. The 969 Patent discloses that systems such as those disclosed in
`
`Anderson were not capable of generating the forces required for a device that cuts
`
`and fastens tissue (i.e., an endocutter):
`
`Over the years a variety of minimally invasive robotic (or
`“telesurgical”) systems have been developed to increase
`surgical dexterity as well as to permit a surgeon to operate
`on a patient in an intuitive manner. Many of such systems
`are disclosed in the following U.S. patents which are each
`herein incorporated by reference in their respective
`entirety: … U.S. Pat. No. 6,783,524, entitled "Robotic
`Surgical Tool With Ultrasound Cauterizing and
`
`20
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`Ethicon Exhibit 2006.024
`Intuitive v. Ethicon
`IPR2018-01247
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`Cutting Instrument" … Many of such systems,
`however, have in the past been unable to generate the
`magnitude of forces required to effectively cut and
`fasten tissue.
`
`Ex. 1001, 23:6-29.2
`
`36. The Petitioner has noted that Anderson suggests that “stapler probes”
`
`may be used with its system. See Petition at 31. However, in my opinion, the
`
`passing reference to stapler probes in Anderson does not indicate that a surgical
`
`cutting and stapling device such as an endocutter may be utilized with the
`
`Anderson robotic system. A surgical “stapler probe” may refer to a device that
`
`simply applies staples and does not cut tissue at all. On this point, I note that Dr.
`
`Knodel has agreed that a device that simply staples is a “vastly different” device
`
`from an endocutter. See, e.g.:
`
`Q. Yeah. Stapler does not necessarily refer to an
`endocutter; is that right?
`A. It doesn't -- it doesn't have to, no, that's true.
`Q. All right. So there are staplers that just staple. They
`don't cut and staple tissue; right?
`A. The simple answer would be yes, but I want to clarify.
`Endoscopic -- endoscopic staplers, linear staplers, they're
`
`
`
`2 All emphasis is added in this declaration unless otherwise noted.
`
`21
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`Ethicon Exhibit 2006.025
`Intuitive v. Ethicon
`IPR2018-01247
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`
`-- there's a subset, I believe, that some companies have that
`they call a no knife. But generally, devices that only staple
`aren't endoscopic. They look like a C-clamp. They're used
`in open procedures.
`Q. Okay. So you're saying when somebody uses the word
`"stapler" in the context of an endoscopic device, it means
`a device that cuts and staples tissue?
`A. No, I'm not saying that either.
`Q. Okay.
`A. No. There's endoscopic staplers that just apply a staple
`on the end of an endoscopic tube, for example.
`Q. Okay. So then like I said, so then it's fair to say that the
`word stapler –
`A. Yes.
`Q. -- can mean a device that just applies a staple, and it can
`also sometimes mean a device that, you know, cuts and
`staples on both sides of the cut points?
`A. It can mean both of those things, yes.
`
`Ex. 2010 at 24:12-25:24.
`
`Q. So this is a Patent No. US 7,473,258, that we've marked
`as Exhibit 2004, and it is in your C.V. in the list of patents.
`And you are the Bryan Knodel –
`A. I am –
`Q. -- on this patent?
`A. -- in fact, that Bryan Knodel. I'm not sure if it's in my
`list. I may have forgot to put it in.
`
`22
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`Ethicon Exhibit 2006.026
`Intuitive v. Ethicon
`IPR2018-01247
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`
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`Q. It's on the second page, page 104.
`A. Okay. Yes. I see it. Mm-hmm.
`Q. Okay. And this is -- again, you were named an inventor
`on this patent; right?
`A. Yes, I am.
`Q. And this is an example of a stapler that is an endoscopic
`stapler; right?
`A. It is. Mm-hmm.
`Q. And this stapler just applied staples; correct?
`A. That is correct.
`Q. It does not cut tissue like an endocutter?
`A. That is correct.
`Q. Would you agree this is a vastly different device than
`an endocutter?
`A. It is a vastly different device.
`
`Ex. 2010 at 28:7-29:6.
`
`37.
`
`In my opinion, and as I discuss further below in Section IX in the
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`context of Petitioner’s combinations of Anderson, a POSITA reviewing the
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`Anderson reference would have understood that the reference does not disclose a
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`tool base that would be capable of driving an endocutter that articulates.
`
`
`
`B.
`
`Ex. 1011, Timm (U.S. Patent No. 7,510,107)
`
`38. U.S. Patent No. 7,510,107 (“Timm”) was filed on June 18, 2007 and
`
`issued on March 31, 2009. The named inventors are Richard W. Timm and
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`23
`
`Ethicon Exhibit 2006.027
`Intuitive v. Ethicon
`IPR2018-01247
`
`
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`
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`Frederick E. Shelton, IV. The patent was originally assigned to Ethicon Endo-
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`Surgery, Inc. and is now assigned to Patent Owner Ethicon LLC.
`
`39. Timm relates to a handheld endocutter. See, e.g., Ex. 1011, Abstract;
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`Fig. 1. Timm’s handheld endocutter also includes an articulation joint, and Timm
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`discloses two separate types of articulation joints: (1) “passive” articulation joints
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`(see Figures 52-72); and (2) “active” articulation joints (see Figures 73-89).
`
`40. Timm’s passive articulation joint is described as a “lockable
`
`articulation joint.” Ex. 1011, 28:41-60 (“FIGS. 52-54 illustrate another cable-
`
`actuated closure system…The ball-shaped member 2730 and socket 2750
`
`collectively form a ball joint”), 29:55-56 (“FIGS. 55-57 illustrate a cable controlled
`
`lockable articulation joint”), 30:59-60 (“FIGS. 58-61 illustrate another cable
`
`controlled lockable articulation joint”), 31:52-53 (“FIGS. 62-64 illustrate another
`
`lockable articulation joint”), 32:47-48 (“FIGS. 65-67 depict another lockable
`
`articulation joint”), 33:20-21 (“FIGS. 68-70 illustrate another lockable
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`articulation joint”), 34:9-10 (“FIG. 71 illustrates another passive articulation
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`joint”), 34:58-59 (“FIG. 72 illustrates another passive articulation joint.”).
`
`41. Timm explains that passive articulation requires the surgeon to press
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`the end effector against another instrument or structure in the body to articulate it.
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`Once the end effector is in the desired orientation, the surgeon locks the
`
`24
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`Ethicon Exhibit 2006.028
`In
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