IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`
`
`ETHICON LLC, et al.,
`
`
`Plaintiffs,
`
`C.A. No. 17-871-LPS
`
`)))))))))
`
`
`
`
`
`
`v.
`
`
`INTUITIVE SURGICAL, INC., et al.,
`
`
`Defendants.
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`John W. Shaw (No. 3362)
`Karen E. Keller (No. 4489)
`David M. Fry (No. 5486)
`SHAW KELLER LLP
`I.M. Pei Building
`1105 North Market Street, 12th Floor
`Wilmington, DE 19801
`(302) 298-0700
`jshaw@shawkeller.com
`kkeller@shawkeller.com
`dfry@shawkeller.com
`Attorneys for Defendants
`
`
`
`
`
`
`
`OF COUNSEL:
`Robert A. Van Nest
`Brian Ferrall
`R. Adam Lauridsen
`William S. Hicks
`Eduardo E. Santacana
`KEKER VAN NEST & PETERS LLP
`633 Battery Street
`San Francisco, CA 94111
`(415) 391-5400
`
`Dated: March 20, 2018
`
`1
`
`
`Ethicon Exhibit 2028.001
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`I.
`
`PREFATORY STATEMENT
`
`
`
`Pursuant to Court’s Scheduling Order, Defendants Intuitive Surgical, Inc., Intuitive
`
`Surgical Operations, Inc., and Intuitive Surgical Holdings, LLC (collectively “Intuitive
`
`Surgical”) hereby provide the following invalidity contentions based upon the information
`
`readily available to Intuitive Surgical as of this date. By these disclosures, Intuitive Surgical
`
`does not represent that it is identifying every item of prior art or other invalidity evidence
`
`possibly relevant to this lawsuit. Rather, these disclosures represent a good faith effort by
`
`Intuitive Surgical to identify information currently available to it as of this date. The Court has
`
`not yet construed the asserted claims, and Plaintiffs Ethicon LLC, Ethicon Endo-Surgery, Inc.,
`
`and Ethicon US LLC (collectively “Ethicon”) have not yet provided final infringement
`
`contentions as to the patents-in-suit.1
`
`Intuitive Surgical reserves the right to amend, change, modify, supplement, or otherwise
`
`alter these contentions in a manner consistent with the Federal Rules of Civil Procedure, the
`
`Local Rules of Civil Practice and Procedure of the United States District Court for the District of
`
`Delaware, and the Court’s orders in this matter.
`
`Intuitive Surgical’s contentions address and respond to only the claims from the Asserted
`
`Patents that Ethicon asserts in this case (“the Asserted Claims”) and should not be deemed to
`
`suggest that any non-asserted claims of the patents-in-suit are valid, enforceable, or infringed.
`
`As of March 20, 2018, the Asserted Claims are the following:
`
` Claims 1-14 of the ’658 patent;
`
`
`1 “Patents-in-suit” refers collectively to United States Patent Nos. 9,585,658 (“the ’658 Patent”),
`8,479,969 (“the ’969 Patent”), 9,113,874 (“the ’874 Patent”), 8,998,058 (“the ’058 Patent”),
`8,991,677 (“the ’677 Patent”), 9,084,601 (“the ’601 Patent”) and 8,616,431 (“the ’431 Patent”).
`
`1
`
`
`Ethicon Exhibit 2028.002
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

` Claims 23 and 24 of the ’969 patent;
`
` Claims 9 and 20 of the ’874 patent;
`
` Claims 6-18 of the ’058 patent
`
` Claims 6-15, 17 and 18 of the ’677 patent;
`
` Claims 1, 2, 8-10 of the ’601 patent;
`
` Claims 1, 2, 6, 13 of the ’431patent.
`
`Intuitive Surgical’s investigation and analysis of the patents-in-suit, the accused
`
`technology, and the prior art remain ongoing. Ethicon’s February 18, 2018 infringement
`
`contentions are incomplete, inadequate, and unclear, because inter alia they fail to identify
`
`specifically where each limitation of each Asserted Claim is found within each accused
`
`instrumentality despite having Intuitive Surgical’s core technical production regarding the
`
`accused technology.
`
`Intuitive Surgical also has not yet obtained requisite discovery from Ethicon or third
`
`parties, e.g., named inventors, the prosecuting attorneys of the patents-in-suit, or sources and
`
`authors of prior art. Intuitive Surgical reserves all rights to supplement or otherwise modify
`
`these contentions based on developments in this case including continuing discovery, claim
`
`construction, evaluation of the scope and content of the prior art, changes in Ethicon’s Asserted
`
`Claims or Infringement Contentions, or for any other reason permitted by applicable law and the
`
`Court’s orders.
`
`In addition, until such time as the Court provides its claim-construction rulings, Intuitive
`
`Surgical cannot be certain that its contentions incorporate the Court’s claim interpretation. In the
`
`interim, Intuitive Surgical’s contentions are based on the claim constructions apparently
`
`underlying the infringement contentions set forth in Ethicon’s infringement contentions, to the
`
`extent that such constructions are discernable. These contentions are not intended to, and do not,
`
`2
`
`
`Ethicon Exhibit 2028.003
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`reflect Intuitive Surgical’s positions as to the proper construction of the Asserted Claims. To the
`
`extent that the contentions herein reflect an interpretation consistent with any construction
`
`adopted by Ethicon, no inference is intended nor should any be drawn that Intuitive Surgical
`
`agrees with Ethicon’s claim constructions, and Intuitive Surgical expressly reserves its right to
`
`contest such constructions.
`
`Further, no inference should be drawn that any Asserted Claim satisfies 35 U.S.C. § 112,
`
`and Intuitive Surgical reserves the right to contend that they do not (as detailed below). In
`
`particular, Intuitive Surgical reserves the right to contend that any of the Asserted Claims are
`
`indefinite, including under 35 U.S.C. § 112 to the extent claim limitations are construed as
`
`subject to means-plus-function interpretation under 35 U.S.C. § 112, paragraph 6 and the
`
`specification fails adequately to disclose corresponding structure for performing any such
`
`function recited in the claim.
`
`In addition, all of the patents-in-suit claim priority to one or more earlier filed patent
`
`applications. In every case, Ethicon has claimed a conception and reduction to practice date
`
`based upon an earlier-filed patent application. To the extent that Ethicon seeks to rely upon any
`
`of these earlier filed patent applications, it carries the burden of establishing support in the earlier
`
`filed applications, and Intuitive Surgical reserves the right to contest any priority claim based
`
`upon the earlier filed applications. Further, to the extent that Ethicon does not rely on any of
`
`these earlier filed patent applications, then Intuitive Surgical reserves the right to amend its
`
`invalidity contentions to reflect the later priority date.
`
`All of the contentions set forth below are made subject to the above qualifications.
`
`I.
`
`IDENTIFICATION OF PRIOR ART
`
`Intuitive Surgical lists below each item of prior art that anticipates and/or renders obvious
`
`one or more of the Asserted Claims. The list also includes items being relied upon to show
`
`3
`
`
`Ethicon Exhibit 2028.004
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`knowledge or use by others under § 102(a), public use or on-sale bar under § 102(b), derivation
`
`or prior inventorship under §§ 102(f)/(g), and the identity of persons or entities involved in and
`
`the circumstances surrounding the making of the claimed invention before Ethicon, including
`
`relevant dates to the extent presently known.
`
`Issued Patents and Patent Applications
`
`U.S. Patent No. 5,562,241 (“Knodel ’241”)
`U.S. Patent No. 6,981,628 (“Wales”)
`U.S. Patent App. Pub. No. 2005/0006431 (“Shelton 2005”)
`U.S. Patent No. 5,662,667 (“Knodel ’667”)
`U.S. Patent App. Pub. No. 2005/0178813 (“Swayze”)
`U.S. Patent No. 8,545,515 (“Prisco”)
`U.S. Patent No. 6,817,974 (“Cooper”)
`U.S. Patent App. Pub. No. 2009/0101692 (“Whitman 2009”)
`U.S. Patent App. Pub. No. 2011/0118709 (“Burbank”)
`U.S. Patent 6,783,524 (“Anderson”)
`U.S. Patent No. 5,383,880 (“Hooven”)
`U.S. Patent App. Pub. No. 2007/0023477 (“Whitman 2007”)
`U.S. Patent App. Pub. No. 2007/0175964 (“Shelton 2007”)
`U.S. Patent App. Pub. No. 2002/0165541 (“Whitman 2002”)
`U.S. Patent App. Pub. No. 2004/0094597 (“Whitman 2004”)
`U.S. Patent No. 8,241,322 (“Whitman ’322)
`U.S. Patent App. Pub. No. 2008/0167671 (“Giordano”)
`U.S. Patent App. Pub. No. 2003/0083673 (“Tierney 2003”)
`U.S. Patent No. 5,129,570 (“Schulze”)
`U.S. Patent No. 7,524,320 (“Tierney ’320”)
`U.S. Patent No. 7,510,107 (“Timm”)
`U.S. Patent No. 5,779,130 (“Alesi”)
`U.S. Patent No. 5,865,361 (“Milliman”)
`U.S. Patent No. 7,097,089 (“Marczyk”)
`U.S. Patent No. 7,845.537 (“Shelton”)
`
`4
`
`
`Ethicon Exhibit 2028.005
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`Issued Patents and Patent Applications
`U.S. Patent App. Pub. No. 2005/0131390 (“Heinrich”)
`U.S. Patent No. 6,436,107 to Wang et al. (“the ’107 patent”)
`U.S. Patent No. 6,699,177 to Wang et al. (“the ’177 patent”)
`U.S. Patent No. 6,063,095 to Wang et al. (“the ’095 patent”)
`U.S. Patent No. 5,855,583 to Wang et al. (“the ’583 patent”)
`U.S. Patent No. 5,762,458 to Wang et al. (“the ’458 patent”)
`U.S. Patent No. 7,963,433
`U.S. Patent No. 8,852,174
`U.S. Patent App. Pub. No. 2011/0118708
`U.S. Patent No. 6,866,671
`U.S. Patent No. 6,325,808
`U.S. Patent No. 6,413,264
`U.S. Patent No. 7,204,844
`U.S. Patent App. Pub. No. 2008/0004632
`U.S. Patent App. Pub. No. 2010/0286669
`U.S. Patent No. 6,699,235
`U.S. Patent No. 5,485,952
`U.S. Patent No. 5,662,258
`U.S. Patent No. 5,792,135
`U.S. Patent No. 5,954,259
`U.S. Patent No. 6,364,888
`U.S. Patent No. 7,000,818
`U.S. Patent No. 7,055,731
`U.S. Patent No. 7,806,891
`U.S. Patent No. 7,824,401
`U.S. Patent App. Pub. No. 2008/0167736
`U.S. Patent No. 6,443,973
`U.S. Patent No. 6,793,652
`U.S. Patent No. 7,083,075
`U.S. Patent No. 7,416,101
`U.S. Patent No. 8,016,855
`
`5
`
`
`Ethicon Exhibit 2028.006
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`Issued Patents and Patent Applications
`
`U.S. Patent No. 8,025,199
`U.S. Patent App. Pub. No. 2003/0105478
`U.S. Patent App. Pub. No. 2003/0132268
`U.S. Patent App. Pub. No. 2008/0223904
`U.S. Patent No. 5,817,084
`U.S. Patent No. 6,132,368
`
`Other Printed Publications
`
`Damiano et al., “An Overview of the Computer Motion System” (2001) (“Damiano”)
`
`Press releases regarding the PMI i60 system
`
`FDA 510(k) summary regarding the PMI i60 system, dated Sept. 27, 2007
`
`To the extent any of the above patents, patent applications or publications incorporate by
`
`reference any other patents, patent applications or publications, Intuitive Surgical reserves the
`
`right to rely on those patents, patent applications or publications. In addition, to the extent that
`
`any of the above patents, patent applications or publications were disclosed in earlier published
`
`patents, patent applications or publications, then Intuitive Surgical reserves the right to rely on
`
`those earlier published patents, patent applications or publications.
`
`In addition to prior art patents and publications, prior art systems/products embodied
`
`some or all of the Asserted Claims existed before the applicable priority dates. For example, at
`
`least as early as December 2006, Intuitive released its 5mm EndoWrist Needle Driver for the da
`
`Vinci S/da Vinci Si Surgical Systems (“Intuitive 5mm Needle Driver”), which anticipates and/or
`
`renders obvious one or more claims of the ’969 patent. Among other evidence, the following
`
`documents and things describe the prior art Intuitive 5mm Needle Driver system:
`
` EndoWrist Needle Driver Images (“Images”) (ISRGETH-00073963 through -
`
`73970)
`
`6
`
`
`Ethicon Exhibit 2028.007
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

` 5mm Needle Driver CAD Screenshots (“CAD”) (ISRGETH-00073976 through -
`
`74002)
`
`Also, at least as early as October 2007, Power Medical Interventions released its i60
`
`Surgical Stapler (“PMI i60”), which anticipates and/or renders obvious one or more claims of the
`
`’431 patent. Among other evidence, the following documents and things describe the prior art
`
`PMI i60 system:
`
` Screenshots of CAD files of the PMI i60 system (ISRGETH-00074012 through -
`74020)
`
` Press releases regarding the PMI i60 system (ISRGETH-00074003 through -
`74004; -74010 through -74011)
`
` FDA 510(k) summary regarding the PMI i60 system, dated Sept. 27, 2007
`(ISRGETH-00074005 through -74009)
`
`Also, at least as early as June 1998, Computer Motion, Inc. released its ZEUS Robotic
`
`Surgery System (“ZEUS”), which anticipates and/or renders obvious one or more claims of the
`
`’058 and ’677 patents. Among other evidence, the following documents describe the prior art
`
`ZEUS system:
`
` U.S. Patent No. 6,436,107 to Wang et al. (“the ‘107 patent”)
`
` U.S. Patent No. 6,699,177 to Wang et al. (“the ’177 patent”)
`
` U.S. Patent No. 6,063,095 to Wang et al. (“the ’095 patent”)
`
` U.S. Patent No. 5,855,583 to Wang et al. (“the ’583 patent”)
`
` U.S. Patent No. 5,762,458 to Wang et al. (“the ’458 patent”)
`
` Damiano et al., “An Overview of the Computer Motion System” (2001)
`
`(“Damiano”) (ISRGETH-00073895)
`
`7
`
`
`Ethicon Exhibit 2028.008
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`Discovery is ongoing, and Intuitive Surgical is in the process of obtaining additional
`
`relevant information about these devices, and any other prior art devices that were sold or used
`
`before the relevant priority dates. Intuitive Surgical is pursuing and will continue to pursue
`
`evidence of these and other system prior art, including systems potentially identified by Ethicon.
`
`Intuitive Surgical therefore reserves the right to supplement its Contentions based on ongoing
`
`third-party discovery and other investigation.
`
`II.
`
`INVALIDITY BASED ON 35 U.S.C. §§ 102 -103
`
`The prior art cited above anticipates and/or renders obvious, alone or in combination with
`
`other of the above-identified prior art, one or more of the Asserted Claims of the patents-in-suit.
`
`Intuitive Surgical identifies below (and in the corresponding claim charts) how the prior art
`
`anticipates and/or renders obvious each Asserted Claim.
`
`In addition to the disclosures herein, Intuitive Surgical has attached claim charts
`
`demonstrating where or how, specifically, each limitation of the Asserted Claims is found or
`
`met. These claim charts are based on Intuitive Surgical’s current understanding of the
`
`limitations (and corresponding terms) in Ethicon’s Asserted Claims. To the extent that any
`
`asserted claim limitation is deemed not to be met exactly by an item of prior art, expressly,
`
`implicitly or inherently, Intuitive Surgical contends that any differences between the claimed
`
`invention and the item of prior art would have been obvious to and within the knowledge of one
`
`of ordinary skill in the art at the time of the alleged invention. Accordingly, the claimed
`
`invention would have been obvious both in light of the item of prior art alone and/or when
`
`combined with other identified prior art that discloses or meets the given claim limitation, as
`
`explained in detail below and in the attached claim charts.
`
`As a general matter, Intuitive Surgical relies on all portions and aspects of each item of
`
`prior art in support of Intuitive Surgical’s contention that such prior art satisfies each limitation
`
`8
`
`
`Ethicon Exhibit 2028.009
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`of the Asserted Claims. Intuitive Surgical has provided, however, specific supporting citations to
`
`the prior art, but these citations do not necessarily represent every location, instance, or manner
`
`in which a particular claim limitation is satisfied by the prior art. Even where limitations are
`
`disclosed at multiple locations within a single item of prior art, Intuitive Surgical has not
`
`necessarily identified every iteration of every such disclosure. Intuitive Surgical therefore
`
`reserves the right to rely on additional, or different, portions/aspects of the prior art other than
`
`those specifically cited in the claims chart provided herewith.
`
`Intuitive Surgical reserves the right to rely on any prior public use, sale, or disclosure by
`
`Ethicon itself as invalidating the Asserted Claims of the Asserted Patents. To the extent that
`
`Ethicon may have publicly disclosed its purported inventions before their respective priority
`
`dates, its later patents may be invalid. Intuitive Surgical requires further discovery to determine
`
`whether and to what extent Ethicon indeed publicly used, sold, or otherwise disclosed the
`
`purported inventions that Ethicon later tried to patent; and Intuitive Surgical reserves the right to
`
`update its Contentions based on that discovery, which Ethicon has not yet provided.
`
`As noted above, to the extent that the prior art does not, standing alone, anticipate any
`
`Asserted Claims of the Asserted Patents, those claims would have been obvious based on the
`
`combinations detailed in the charts. As the U.S. Supreme Court held in KSR Int’l Co. v. Teleflex,
`
`Inc., “[t]he combination of familiar elements according to known methods is likely to be obvious
`
`when it does no more than yield predictable results.” 550 U.S. 398, 415-16 (2007). The
`
`Supreme Court further held:
`
`When a work is available in one field of endeavor, design incentives and other
`market forces can prompt variations of it, either in the same field or a different
`one. If a person of ordinary skill can implement a predictable variation, § 103
`likely bars its patentability. For the same reason, if a technique has been used to
`improve one device, and a person of ordinary skill in the art would recognize that
`it would improve similar devices in the same way, using the technique is obvious
`unless its actual application is beyond his or her skill.
`
`9
`
`
`Ethicon Exhibit 2028.010
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`Id. at 1740.
`
`Moreover, the Supreme Court held that “in many cases a person of ordinary skill will be
`
`able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 1742. Indeed,
`
`the Supreme Court held that it is sufficient that a combination of prior-art elements was “obvious
`
`to try”:
`
`When there is a design need or market pressure to solve a problem and there are a
`finite number of identified, predictable solutions, a person of ordinary skill has
`good reason to pursue the known options within his or her technical grasp. If this
`leads to the anticipated success, it is likely the product not of innovation but of
`ordinary skill and common sense.
`
`Id.
`
`“In that instance the fact that a combination was obvious to try might show that it was
`
`obvious under § 103.” Id. “Rigid preventative rules that deny factfinders recourse to common
`
`sense, however, are neither necessary under our case law nor consistent with it.” Id. The
`
`Supreme Court recognized that “[g]ranting patent protection to advances that would occur in the
`
`ordinary course without real innovation retards progress and may, in the case of patents
`
`combining previously known elements, deprive prior inventions of their value or utility.” Id. at
`
`1741.
`
`Each of the above-identified items of prior art is directed to the same or similar fields of
`
`endeavor. Accordingly, one of ordinary skill in the art would have recognized that the results of
`
`the combinations were predictable, and would have been clearly motivated to modify and
`
`combine the prior-art items above to arrive at the alleged inventions of claims of the asserted
`
`patents. Indeed, at least the following rationales support a finding of obviousness based on the
`
`combinations set forth in detail below:
`
`(A) Combining prior-art elements according to known methods to yield predictable
`results;
`
`10
`
`
`Ethicon Exhibit 2028.011
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`(B)
`
`Simple substitution of one known element for another to obtain predictable
`results;
`
`(C) Use of a known technique to improve similar devices (methods, or products) in
`the same way;
`
`(D) Applying a known technique to a known device (method, or product) ready for
`improvement to yield predictable results;
`
`(E)
`
`“Obvious to try”—choosing from a finite number of identified, predictable
`solutions, with a reasonable expectation of success;
`
`(F) Known work in one field of endeavor that may prompt variations of it for use in
`either the same field or a different one based on design incentives or other market
`forces if the variations would have been predictable to one of ordinary skill in the
`art; and
`
`(G) Some teaching, suggestion, or motivation in the prior art that would have led one
`of ordinary skill to modify the prior art or to combine prior-art teachings to arrive
`at the claimed invention.
`
`See generally KSR Int’l Co., 550 U.S. 398 (2007).
`
`The field of surgical staplers and endocutters was a crowded one, even at the time of the
`
`applications for the patents-in-suit. Indeed, the patents-in-suit all list many hundreds of
`
`purported relevant prior art patents and other publications. It is therefore self-apparent that the
`
`patents-in-suit reflect, at best, minor, incremental variations on known structures and apparatus
`
`in this field. This field of endeavor was concentrated and actively pursued by a relatively few
`
`number of organizations at the time. Given the close relationship between the various projects at
`
`the time, one of skill in the art would have been familiar with the prior-art references from others
`
`in the field and, thus, would have been motivated to combine those references to apply a known
`
`technique from any given source to improve a similar system in the same (or a similar) way.
`
`Moreover, knowledge that a particular element worked within one reference would have
`
`motivated one of skill in the art to combine prior-art references to substitute a known element to
`
`attain particular results. Further, at the time there was a finite number of solutions (e.g., there
`
`11
`
`
`Ethicon Exhibit 2028.012
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`were several known designs of endocutters and staplers), such that it would have been obvious to
`
`mix and match different solutions, and one of skill in the art would have expected them to yield
`
`predictable results.
`
`Therefore, to the extent that the prior-art references on surgical devices listed above and
`
`charted in the attached exhibits do not disclose every limitation of the Asserted Claims of the
`
`patents-in-suit, one of skill in the art would have been motivated to combine any one of these
`
`references with any of the other references. Intuitive Surgical reserves the right to contend
`
`anticipation or obviousness based on any prior art or combination of prior art identified herein,
`
`and based on any knowledge available to one of ordinary skill in the art.
`
`A.
`
`The ’658 patent
`
`As detailed further below and in the attached charts, the following prior art anticipates
`
`and/or renders obvious the Asserted Claims of the ’658 patent.
`
`Prior Art
`
`Claim Chart
`
`Knodel ’241
`
`Wales
`
`Shelton 2005
`
`Knodel ’667
`
`Swayze
`
`Tierney 2003
`
`Schulze
`
`Exhibit A-1
`
`Exhibit A-2
`
`Exhibit A-3
`
`Exhibits A2, A3, A-4
`
`Exhibits A-2, A-3, A-5
`
`Exhibits A-1, A2, A3,
`A4, A5
`
`Exhibits A-2, A-3
`
`B.
`
`The ’969 patent
`
`As detailed further below and in the attached charts, the following prior art anticipates
`
`and/or renders obvious the Asserted Claims of the 969 patent.
`
`12
`
`
`Ethicon Exhibit 2028.013
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`Prior Art
`
`Prisco
`
`Cooper
`
`Whitman 2009
`
`Dachs
`
`Burbank
`
`Anderson
`
`Intuitive 5mm Needle Driver system
`
`Timm
`
`C.
`
`The ’874 patent
`
`Claim Chart
`
`Exhibit B-1
`
`Exhibits B-1, B-4
`
`Exhibit B-2
`
`Exhibit B-3
`
`Exhibit B-3
`
`Exhibit B-4
`
`Exhibit B-5
`
`Exhibits B-1, B-2, B-3, B-
`4, B-5
`
`As detailed further below and in the attached charts, the following prior art anticipates
`
`and/or renders obvious the Asserted Claims of the ’874 patent.
`
`Prior Art
`
`Claim Chart
`
`Hooven
`
`Whitman 2007
`
`Shelton 2007
`
`Whitman 2002
`
`Whitman 2004
`
`Whitman ’322
`
`Giordano
`
`Whitman 2009
`
`Tierney 2003
`
`Exhibit C-1
`
`Exhibit C-2
`
`Exhibit C-3
`
`Exhibit C-4
`
`Exhibit C-5
`
`Exhibit C-6
`
`Exhibit C-7
`
`Exhibit C-8
`
`Exhibits C3, C-7
`
`13
`
`
`Ethicon Exhibit 2028.014
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`D.
`
`The ’058 patent
`
`As detailed further below and in the attached charts, the following prior art anticipates
`
`and/or renders obvious the Asserted Claims of the ’058 patent.
`
`Prior Art
`
`Hooven
`
`Alesi
`
`Milliman
`
`Anderson
`
`Marczyk
`
`Timm
`
`Tierney
`
`Shelton
`
`Whitman ’322
`
`Heinrich
`
`Computer Motion, Inc.’s Zeus Robotic Surgery System
`
`Claim Chart
`
`Exhibits D-1, D-2, D-3, D-
`4, D-5, D-6, D-7, D-8, D-9,
`D-10, D-11
`
`Exhibits D-1, D-2, D-4, D-
`7, D-10, D-11
`
`Exhibits D-1, D-3, D-4, D-
`6, D-7, D-10, D-11
`
`Exhibits D-1, D-2, D-3, D-
`4, D-5, D-6, D-8, D-9, D-
`10
`
`Exhibit D-5
`
`Exhibits D-1, D-6, D-10
`
`Exhibits D-2, D-3, D-5, D-
`6, D-7, D-8
`
`Exhibit D-8
`
`Exhibits D-1, D-2, D-3, D-
`4, D-5, D-6, D-7, D-9, D-
`10, D-11
`
`Exhibits D-1, D-2, D-3, D-
`4, D-5, D-6, D-7, D-8, D-9,
`D-10, D-11
`
`Exhibits D-2, D-3, D-5, D-
`6, D-8, D-11
`
`E.
`
`The ’677 patent
`
`As detailed further below and in the attached charts, the following prior art anticipates
`
`and/or renders obvious the Asserted Claims of the ’677 patent.
`
`14
`
`
`Ethicon Exhibit 2028.015
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`Prior Art
`
`Hooven
`
`Alesi
`
`Milliman
`
`Anderson
`
`Marczyk
`
`Timm
`
`Tierney
`
`Shelton
`
`Whitman ’322
`
`Heinrich
`
`Computer Motion, Inc.’s Zeus Robotic Surgery System
`
`Claim Chart
`
`Exhibits E-1, E-2, E-3, E-4,
`E-5, E-6, E-7, E-8, E-9, E-
`10, E-11
`
`Exhibits E-1, E-2, E-4, E-7,
`E-10, E-11
`
`Exhibits E-1, E-3, E-4, E-
`10, E-11
`
`Exhibits E-2, E-2, E-3, E-4,
`E-5, E-6, E-8, E-9, E-10
`
`Exhibit E-5
`
`Exhibits E-1, E-6, E-10
`
`Exhibits E-2, E-3, E-5, E-6,
`E-7, E-8
`
`Exhibits E-8, E-10
`
`Exhibits E-1, E-2, E-3, E-4,
`E-5, E-6, E-7, E-8, E-9, E-
`11, E-12
`
`Exhibits E-1, E-2, E-3, E-4,
`E-5, E-6, E-7, E-8, E-9, E-
`10, E-11
`
`Exhibits E-2, E-3, E-5, E-6,
`E-8, E-11
`
`F.
`
`The ’601 patent
`
`As detailed further below and in the attached charts, the following prior art anticipates
`
`and/or renders obvious the Asserted Claims of the ’601 patent.
`
`Prior Art
`
`Hooven
`
`Claim Chart
`
`Exhibits F-1, F-2, F-3, F-4,
`F-5, F-6, F-7, F-8
`
`15
`
`
`Ethicon Exhibit 2028.016
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`Alesi
`
`Milliman
`
`Marczyk
`
`Timm
`
`Shelton
`
`Whitman ’322
`
`Heinrich
`
`Anderson
`
`Tierney
`
`Computer Motion, Inc.’s Zeus Robotic Surgery System
`
`Exhibits F-1, F-2, F-3, F-4,
`F-5, F-8
`
`Exhibits F-1, F-3, F-8
`
`Exhibit F-4
`
`Exhibits F-1, F-5, F-8
`
`Exhibit F-6
`
`Exhibits F-1, F-2, F-3, F-4,
`F-5, F-6, F-7, F-8
`
`Exhibits F-2, F-3, F-4, F-5,
`F-6, F-7, F-8
`
`Exhibits F-1, F-2, F-3, F-4,
`F-5, F-6, F-7, F-8
`
`Exhibits F-1, F-2, F-3, F-4,
`F-5, F-6, F-7
`
`Exhibits F-1, F-2, F-3, F-4,
`F-5, F-6, F-7
`
`G.
`
`The ’431 patent
`
`As detailed further below and in the attached charts, the following prior art anticipates
`
`and/or renders obvious the Asserted Claims of the ’431 patent.
`
`Prior Art
`
`Whitman 2009
`
`PMI i60 system
`
`Tierney ’320
`
`Claim Chart
`
`Exhibit G-1
`
`Exhibit G-2
`
`Exhibits G-1, G-2
`
`
`III.
`
`INVALIDITY BASED ON 35 U.S.C. § 112 AND OTHER DEFENSES
`
`To the extent that a claim depends on a claim that is invalid under 35 U.S.C. §112,
`
`Intuitive Surgical contends that the dependent claim is also invalid.
`16
`
`
`Ethicon Exhibit 2028.017
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`A.
`
`The ’658 patent
`
`At least the following terms from the 658 patent is indefinite:
`
` “an anvil rotatable relative to said jaw between an open position and a fully
`
`closed position” (Claims 1, 6, 11, 14). The claims fail to inform with reasonable
`
`certainty what is meant by an anvil “rotat[ing]” relative to the jaw, and what is
`
`required in order to fall within the scope of the claim.
`
` “second operative motion” (Claims 5, 10, and 13): The claims fail to inform with
`
`reasonable certainty what is meant by a “second” motion, given that they do not
`
`identify a “first operative motion.”
`
` “opening member” (Claims 1 and 11), “opening system” (Claim 6), and “pulling
`
`member” (Claim 14): The claims fail to inform with reasonable certainty what
`
`comprises these limitations.
`
`In addition, at least the same terms render the claims invalid for lack of written
`
`description and/or lack of enablement under 35 U.S.C. §112. In particular, the specification fails
`
`to describe “an anvil rotatable relative to said jaw between an open position and a fully closed
`
`position.” The specification fails to enable or describe the full scope of the terms “opening
`
`member” (Claims 1 and 11), “opening system” (Claim 6), and “pulling member” (Claim 14),
`
`given the apparent breadth that Ethicon seeks as an interpretation of these terms.
`
`In addition, Claims 1-14 are invalid for lack of written description and/or lack of
`
`enablement in that the specification provides inadequate support for the terms “closure cam” (see
`
`Claims 1 and 6) and “clamping cam” (see Claims 11 and 14) given the apparent breadth that
`
`Ethicon seeks as an interpretation of these terms.
`
`B.
`
`The ’969 patent
`
`At least the following terms from the ’969 patent are indefinite:
`
`17
`
`
`Ethicon Exhibit 2028.018
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

` “assembly” (claims 23, 24): The claim fails to inform with reasonable certainty
`
`what is required of an “assembly” to fall within the scope of the claim.
`
` “substantially transverse to said longitudinal tool axis” (Claim 24): The claim
`
`fails to inform with reasonable certainty how “transverse” the element must be to
`
`the longitudinal axis to fall within the scope of the claim.
`
` “a driven element rotatably supported” (Claim 24): The claim fails to inform with
`
`reasonable certainty what is required for an element to be “driven” or to be
`
`“rotatably supported” in order to fall within the scope of the claim.
`
` “gear-driven portion” and “gear-driven portions” (Claim 24): The ’969 patent
`
`fails to inform with reasonable certainty what comprises the “gear-driven portion”
`
`and use of both the singular and plural in the claim makes the terms additionally
`
`uncertain.
`
` “operably coupled to a distal end of said proximal spine portion” (claim 24): The
`
`‘969 patent fails to inform with reasonable certainty what is meant by this phrase,
`
`and the fact that Ethicon purported to “correct” this phrase by replacing “distal”
`
`with its opposite, proximal, indicates that one skilled in the art could not have
`
`been informed of the scope of this claim.
`
`Additionally, at least the terms “substantially transverse to said longitudinal tool axis,”
`
`“gear-driven portion” and “gear-driven portions,” and “operably coupled to a distal end of said
`
`proximal spine portion” lack written description and/or lack enablement, and therefore render the
`
`claims invalid under 35 U.S.C. §112.
`
`Furthermore, the Certificate of Correction issued on January 23, 2018 is invalid, and
`
`ineffective for purposes of this litigation.
`
`18
`
`
`Ethicon Exhibit 2028.019
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`C.
`
`The ’874 patent
`
`At least the following term from the ’874 patent is indefinite:
`
` “first and second jaws are supported relative to each other” (claim 9): The claim
`
`fails to inform with reasonable certainty what is meant for the jaws to be
`
`supported relative to each other, and what is required in order to fall within the
`
`scope of the claim.
`
`Additionally, at least the terms “first and second jaws are supported relative to each
`
`other” (Claim 9), “remotely user-controlled counsel electrically coupled to said surgical
`
`instrument” (Claim 9) and “remotely user-controlled counsel electrically coupled to said motor”
`
`(Claim 20) lack written description and/or lack enablement, and therefore render the claims
`
`invalid under 35 U.S.C. §112.
`
`D.
`
`The ’058 patent2
`
`At least the following terms from the ’058 patent are indefinite:
`
` “said electrical motor” (claim 6): there is no antecedent basis.
`
` “can only selectively receive power from said power source” (Claim 6): The
`
`claim fails to inform with reasonable certainty how or to what extent the electric
`
`motor must “selectively receive power” in order to fall within the scope of the
`
`claim.
`
` “electric motor is configured to receive power from a power supply only when
`
`said housing is attached” (claim 11): The claim fails to inform with reasonable
`
`
`
`2 On February 8, 2018, Ethicon informed Intuitive Surgical of certificates of correction adding
`the word “system” to claims 6.7, 11.7, and 15.7 of the ’058 patent. Plaintiffs’ Initial Infringement
`Claim Charts, Ex.4 at 19, 35, 45. Intuitive Surgical assumes th