`
`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
`______________________
`
`
`PATENT OWNER’S LIST OF IMPROPER REPLY ARGUMENTS
`
`
`
`
`
`1.
`
`Page 5, line 5 (the beginning of Section II.B) through page 8, line 2
`
`IPR2018-01247
`U.S. Patent No. 8,479,969
`
`
`
`(“Petitioner has met its burden.”):
`
`Petitioner makes new arguments concerning its prima facie burden to show
`
`how the limitation “tool mounting portion operably coupled to the distal end of the
`
`proximal spine portion” is disclosed by the prior art, whereas Petitioner’s only
`
`argument for this limitation in the Petition was: “Anderson’s tool mounting
`
`portion would be operably coupled to the distal end of the proximal spine portion
`
`of Timm’s shaft assembly via the structure of the distal spine portion itself.” See
`
`Petition at 52; Ex. 1004, ¶ 104 (same argument, except substituting “proximal
`
`spine portion itself” for “distal spine portion itself”).
`
`2.
`
`Page 8, line 14 (“Moreover, the cable …”) through page 9, line 6
`
`(“This action requires the claimed operable coupling.”):
`
`See item 1, above.
`
`3.
`
`Page 9, line 18 (“Accordingly, the Anderson/Timm combination
`
`…”) through page 10, line 3 (“…and is used to lock the joint.”):
`
`See item 1, above.
`
`
`
`
`
`1
`
`
`
`
`
`Dated: August 14, 2019
`
`Respectfully submitted,
`
`
`
`
`
`
`/Anish R. Desai/
`Anish R. Desai
`Reg. No. 73,760
`WEIL, GOTSHAL & MANGES LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8730
`E: anish.desai@weil.com
`
`Counsel for Patent Owner
`
`
`2
`
`
`
`
`
`IPR2018-01247
`U.S. Patent No. 8,479,969
`
`CERTIFICATE OF SERVICE
`I hereby certify that on August 14, 2019, a copy of PATENT OWNER’S
`
`LIST OF IMPROPER REPLY ARGUMENTS and any accompanying exhibits
`
`was served by filing this document through the PTAB’s E2E Filing System as well
`
`as delivering a copy via electronic mail upon the following:
`
`
`Steven R. Katz
`John C. Phillips
`Ryan P. O’Connor
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`katz@fr.com
`phillips@fr.com
`oconnor@fr.com
`
`IPR11030-0049IP5@fr.com
`PTABInbound@fr.com
`
`/Timothy J. Andersen/
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, DC 20036
`T: 202-682-7075
`E: timothy.andersen@weil.com
`
`3
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`
`
`
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