UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`INTUITIVE SURGICAL, INC.
`Petitioner
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`v.
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`ETHICON LLC
`Patent Owner
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`______________
`
`
`Case IPR2018-01248
`U.S. Patent No. 8,479,969
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`_______________
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`PETITIONER’S REPLY TO
`PATENT OWNER’S
`RESPONSE
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`
`
`
`
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`
`
`
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`
`
`______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`INTUITIVE SURGICAL, INC.
`Petitioner
`
`v.
`
`ETHICON LLC
`Patent Owner
`
`______________
`
`
`Case IPR2018-01248
`U.S. Patent No. 8,479,969
`
`_______________
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S
`RESPONSE
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`Attorney Docket No. 11030-0049IP9
`Proceeding No. IPR2018-01248
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`TABLE OF CONTENTS
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`I.
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`Introduction ...................................................................................................... 1
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`II. Ground 1: Prisco discloses claim 24 ............................................................... 1
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`A.
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`Prisco discloses a push-pull surgical instrument with a wrist ............... 1
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`1.
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`2.
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`3.
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`Prisco incorporates Cooper’s wrist as an optional embodiment . 1
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`Cooper’s wrist is versatile and may be used with various end
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`effectors with various actuation mechanisms ............................. 4
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`Prisco’s “push-pull” embodiment is compatible with Cooper’s
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`wrist ............................................................................................. 6
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`B.
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`Shaft roll gear 742 is a gear-driven portion in “operable
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`communication” with a selectively movable component and
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`associated transmission assembly ....................................................... 13
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`III. Grounds 2-4: A POSITA would have combined Prisco’s push-pull end
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`effector with Cooper’s wrist .......................................................................... 17
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`A.
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`Prisco does not teach away from using Cooper’s wrist ...................... 17
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`B. A POSITA would have been motivated to combine Prisco’s “push-
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`pull” instrument with Cooper’s wrist .................................................. 19
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`Attorney Docket No. 11030-0049IP9
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`IS1001
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`EXHIBITS
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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)
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`IS1003
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`Declaration of Dr. Bryan Knodel (Prisco as Primary Reference)
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`(“Knodel Decl.”)
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`IS1004
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`Reserved
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`IS1005
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`Reserved
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`IS1006
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`U.S. Pat. No. 8,545,515 to Prisco et al. (“Prisco”)
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`IS1007
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`U.S. Pat. No. 6,817,974 to Cooper et al. (“Cooper”)
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`IS1008
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`U.S. Pat. No. 6,699,235 to Wallace et al. (“Wallace”)
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`IS1009
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`U.S. Pat. No. 6,331,181 to Tierney et al. (“Tierney”)
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`IS1010
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`Reserved
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`IS1011
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`Reserved
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`IS1012
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`Reserved
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`IS1013
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`Reserved
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`IS1014
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`U.S. Pat. App. No. 2008/0167672 to Giordano et al. (“Giordano”)
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`ii
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`Attorney Docket No. 11030-0049IP9
`Proceeding No. IPR2018-01248
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`I.
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`Introduction
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`Patent Owner does not dispute that Prisco’s “push-pull” embodiment
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`combined with Cooper’s wrist discloses each limitation of the challenged claims.
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`Accordingly, Petitioner has established anticipation (or at least obviousness). To
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`avoid the inevitable finding of anticipation or obviousness, Patent Owner makes
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`three arguments—all of which are meritless. Patent Owner first argues that Prisco
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`does not incorporate Cooper’s wrist (even though it plainly does). Patent Owner
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`next argues that Prisco teaches away from using Prisco’s “push-pull” embodiment
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`in combination with Cooper’s wrist (when it plainly does not). And finally, Patent
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`Owner argues that Cooper’s wrist is incorporated only for use with Prisco’s “pull-
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`pull” instrument (when there is no such restriction in Prisco or Cooper), which
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`Patent Owner asserts fails to disclose the gear limitations (even though it discloses
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`a shaft roll gear). In sum, the challenged claims are either anticipated or rendered
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`obvious by Prisco and its incorporated references.
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`II. Ground 1: Prisco discloses claim 24
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`A.
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`Prisco discloses a push-pull surgical instrument with a wrist
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`1.
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`Prisco incorporates Cooper’s wrist as an optional embodiment
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`Patent Owner first argues that Prisco cites Cooper for the purpose of
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`specifically omitting Cooper’s wrist from Prisco. POR, 26-27. This novel theory
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`is plainly wrong because Prisco specifically incorporates Cooper by reference (a
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`1
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`fact Patent Owner does not dispute); thus Prisco includes all of Cooper’s teachings.
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`Incorporation is the opposite of omission.
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`A wrist to provide one or more end effector DOFs [degrees
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`of freedom] (e.g., pitch, yaw; see e.g., U.S. Pat. No.
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`6,817.974 [Cooper] (filed Jun. 28, 2002) (disclosing
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`“Surgical Tool Having Positively Positionable Tendon-
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`Actuated Multi-Disk Wrist Joint”), which is incorporated
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`herein by reference) is optional and is not shown.
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`Prisco, 10:43-48 (emphasis added throughout); see also Petition, 21 (same).
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`Far from saying Cooper’s wrist should not be used, Prisco actually states the
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`opposite—that Cooper’s wrist is “optional”—meaning that it can be used, should a
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`POSITA desire the benefits of the wrist. Id.; see Upsher-Smith Labs. v. Pamlab,
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`LLC, 412 F.3d 1319, 1323 (Fed. Cir. 2005) (confirming that a reference disclosing
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`optional inclusion of a particular component teaches compositions that both do and
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`do not contain that component).
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`Prisco also discloses that instrument 110 includes a wrist. Prisco, 8:38-44,
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`16:38-44; Petition, 15-16, 52. Specifically, Prisco discloses that “actuation forces
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`… move various parts of instrument 110 in order to position, orient, and operate
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`instrument end effector 234. Such actuation forces may typically … operate a
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`wrist 236 that provides yaw and pitch DOF’s.” Prisco, 8:34-44, Fig. 2B
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`(emphasis added throughout unless otherwise noted); Petition, 15-16.
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`2
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` Wrist
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`Similarly, Prisco confirms that the “principles described for moving an end
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`effector component may be adapted for use in instruments that include a
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`movable wrist mechanism … [because it] allows an end effector orientation to be
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`changed without changing shaft position.” Id., 16:38-43; see also 16:50-53
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`(same); Petition, 52, 82-83.
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`Thus, Patent Owner’s argument that Prisco omits Cooper’s wrist is baseless.
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`A wrist is one option; it’s just not required of all embodiments.
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`3
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`2.
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`Cooper’s wrist is versatile and may be used with various end
`effectors with various actuation mechanisms
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`Patent Owner next argues that, even if Prisco incorporates Cooper’s wrist,
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`Cooper’s wrist is designed to operate only with “pull-pull” instruments.1,2 POR,
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`27-28. As support for this argument, Patent Owner asserts that Cooper includes “a
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`1 Also, this argument is moot because it is based on the incorrect assumption that
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`Prisco’s “pull-pull” instrument with Cooper’s wrist does not disclose the gear
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`limitations of the challenged claims. However, as explained in the Petition (at 61-
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`62, 69), the combination of end effector clevis and attachment cap 928, shaft body
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`tube 922, and shaft roll gear 742, which is included in Prisco’s “pull-pull”
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`instrument with Cooper’s wrist, discloses the gear limitations of the challenged
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`claims. And, nowhere in its Response does Patent Owner dispute that this
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`embodiment has gears.
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`2 The terms “pull-pull” and “push-pull” refer to the motions used to actuate (e.g.,
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`open and close) an instrument end effector. Prisco, 13:49-62. In a “push-pull”
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`instrument, pushing and pulling a single compression/tension element (e.g., a
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`flexible drive rod) opens and closes the end effector. Id. In a “pull/pull”
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`instrument, pulling on a first tension element opens the end effector, and pulling on
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`a second tension element closes the end effector. Id.
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`4
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`detailed section devoted to explaining how a cable ‘pull-pull’ mechanism is
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`combined with the multi-disk wrist.” Id. (citing Cooper, 13:50-61). This “detailed
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`section,” however, contains only one sentence arguably relevant to Patent Owner’s
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`position, which merely notes that the “lumen formed by the annular disks [of
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`Cooper’s wrist] can be used … for passing pull cables for grip.” Id. There is
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`nothing in the cited paragraph, or anywhere else in Cooper, stating the lumen
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`formed by Cooper’s annular disks can only be used for passing “pull-pull” cables
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`and cannot be used for passing anything else, as Patent Owner suggests.
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`Moreover, Cooper’s wrist is explicitly not limited to the specific instrument
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`end effector with a “pull-pull” actuation mechanism identified by Patent Owner.
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`As explained in Cooper, “[o]f course, other end effectors may be used.” Cooper,
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`17:62-63. For example, “the most distal disk (e.g., disk 166 in FIGS. 17-21 [of
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`Cooper]) may serve as a mounting base for various kinds of single-element and
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`multi-element end effectors, such as scalpels, forceps, scissors, cautery tools,
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`retractors, and the like.” Id., 17:1-5; see also 11:52-60 (confirming that “wrist 60
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`is versatile, and can be used for irrigation, imaging with either fiber optics or the
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`wires to a CCD passing through the lumen, and the like”); In re Fulton, 391 F.3d
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`1195, 1201 (Fed. Cir. 2004) (concluding prior art shoe tread patent provided
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`motivation to combine with other prior art references disclosing different stud
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`5
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`shapes because prior art shoe tread patent suggested that other stud shapes could be
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`used).
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`Accordingly, Cooper does not specify or limit the type of end effector (or
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`the end effector’s method of actuation) that may be connected to the multi-disk
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`wrist. The end effector using “pull-pull” cable actuator elements is merely one
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`example Cooper provides. See, e.g., Prisco, 17:5-8 (“The central lumen internal to
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`the disks may serve as a conduit for end-effector actuator elements (e.g., end
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`effector actuator cables)”). It is not limiting. Thus, as stated in the Petition, a
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`POSITA would have understood that Cooper’s wrist is an option for use with the
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`drive rod of Prisco’s push-pull instrument. Petition, 21, 52-62.
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`In sum, Cooper’s wrist is designed to operate with instruments having either
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`“push-pull” actuation or “pull-pull” actuation.
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`3.
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`Prisco’s “push-pull” embodiment is compatible with Cooper’s
`wrist
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`Patent Owner next argues that Prisco’s “push-pull” embodiment uses a drive
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`rod that is allegedly incompatible with Cooper’s wrist. Specifically, Prisco
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`provides a specific example of a drive rod (“304V Stainless Steel, 0.032-inch OD
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`with PTFE spray coating”), and Patent Owner asserts (without support) that this
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`drive rod cannot bend over the 180 degree range provided in specific examples of
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`Cooper (90 degrees to either side). POR, 28-29. However, Patent Owner’s
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`6
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`argument does not establish that Prisco’s “push-pull” instrument is incompatible
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`with Cooper’s wrist for at least the following reasons.
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`First, Patent Owner’s incompatibility argument incorrectly assumes that
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`Cooper’s wrist would require Prisco’s exemplary drive rod to “‘bend sharply’ over
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`a 180 degree range” (that is, bend 90 degrees from the longitudinal axis of the shaft
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`in any direction). POR, 29. Indeed, Cooper includes no such requirement.
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`Instead, Cooper teaches a multi-disk wrist that can be implemented in a variety of
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`ways. Thus, the Prisco/Cooper combination could bend less than 90 degrees in any
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`direction, or such a combination could provide a 90 degree bend, but with more
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`disks and therefore a larger bend radius.
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`Indeed, Cooper discloses: (1) wrists that provide pitch and yaw rotation
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`using only three vertebrae; (2) a range of motion between each vertebrae that is
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`only 45 degrees; and (3) wrists that include more than five vertebrae. See, e.g.,
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`Cooper, 4:62-5:9, 22:24-37, 24:40-47. In a wrist that provides pitch and yaw
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`rotation using only three vertebrae and a range of motion between each vertebrae
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`that is only 45 degrees, for example, the interface between vertebrae one and two
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`can provide the pitch rotation, and the interface between vertebrae two and three
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`can provide the yaw rotation. In this embodiment, the wrist bends only 45 degrees
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`from the longitudinal axis of the shaft in any direction (i.e., in pitch or in yaw).
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`Accordingly, Patent Owner’s selective quotation of the words “bend
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`sharply” in Cooper is misleading. Cooper actually uses the term “bend sharply” to
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`describe a feature of a specific embodiment—and not a requirement of all
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`embodiments. Cooper states that “the grip mechanism needs to be able to bend
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`sharply” over a 180 degree range in the specific embodiment shown in Figure 5
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`“[b]ecause there are only five disks.” Cooper, 13:55-56. Even assuming that
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`Prisco’s exemplary drive rod would not bend as sharply as needed for Cooper’s
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`Figure 5 embodiment (and there is no proof of that), a POSITA implementing
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`Prisco’s “push-pull” instrument with a wrist, as taught by Cooper, is not an
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`automaton, and would know to avoid the Figure 5 embodiment (assuming, again,
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`that the Figure 5 embodiment would not work for some reason).
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`Second, even if the 180 degree range of motion were a requirement (it is
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`not), there is no evidence supporting Patent Owner’s argument that Prisco’s
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`exemplary drive rod cannot bend over a 180 degree range of motion (90 degrees to
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`either side), while also being sufficiently rigid in order to transmit force to open
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`and close the end effector when pushed and pulled. Patent Owner cites the
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`declaration of its expert, Dr. Awtar, but Dr. Awtar (at ¶99) merely states that
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`conclusion without any support. The Board should not accept Dr. Awtar’s ipse
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`dixit statement as truth without any support. See Silver Star Capital, LLC v. Power
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`Integrations, Inc., IPR2016-00736, Paper No. 11 at 14-15 (P.T.A.B. Aug. 26,
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`2016) (the “expert’s declaration … essentially repeats the assertions of the Petition
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`and provides no persuasive facts or data to support his opinion…. Therefore, we
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`give such conclusory, unsupported assertions by [the] expert little weight.”); cf.
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`Parallel Networks, LLC v. Abercrombie & Fitch Co., 704 F.3d 958, 970 (Fed. Cir.
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`2013) (“ipse dixit statements … are not sufficient to avoid summary judgment”);
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`Zelinski v. Brunswick Corp., 185 F.3d 1311, 1317 (Fed. Cir. 1999) (conclusory
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`expert declarations devoid of facts upon which the conclusions were reached do
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`not raise a genuine issue of material fact).
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`Furthermore, Prisco is an issued patent, and the embodiments disclosed
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`therein are presumed to be enabling. See, e.g., Amgen Inc. v. Hoechst Marion
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`Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (holding that a “presumption
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`arises that both the claimed and unclaimed disclosures in a prior art patent are
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`enabled”). And Prisco specifically teaches that its drive rod is bendable given that
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`it is one of the actuation mechanisms for a “flexible” instrument that can traverse a
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`“curved” cannula. Petition, 16-21, 38, 56-58 (citing Prisco, 10:31-41, 10:43-48,
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`12:8-13, 14:29-57, 19:42-45, 21:20-22, 33:59-67, Figs. 4A, 5, 6B, 9E, 10, 21-22).
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`Moreover, Patent Owner admits that Prisco’s pull-pull instrument is
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`compatible with Cooper’s wrist. E.g., POR, 29-30, 36. And Prisco teaches that the
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`structure of its exemplary push-pull drive rod (“304V Stainless Steel, 0.032-inch
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`OD”) is nearly identical to the structure of its exemplary pull-pull tension elements
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`9
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`804a, 804b (“0.032-inch stainless steel hypotubes”), which “extend proximally
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`through most of the shaft 506” and also “extend through support tubes 806a, 806b”
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`(stainless steel coil tubes) that “keep [tension elements 804a, 804b] from buckling
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`or kinking.” See, e.g., Prisco, 14:40-45, 16:54-17:12, Figs. 6B, 8A-B.
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`Fig. 9E
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`As shown in Figure 9B, the coil tubes 902 (and thus the hypotube tension
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`elements inside them) extend all the way to end cap 904 where seal 910 and end
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`effector clevis 912 attach to the shaft. Id., 18:65-19:22; see also Fig. 9A.
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`Accordingly, when implemented with Cooper’s wrist, the hypotube tension
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`elements of Prisco’s pull-pull instrument, which, as noted, are nearly identical to
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`the drive rod of Prisco’s push-pull instrument, extend through the wrist to actuate
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`the end effector.
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`Thus, there is no basis to conclude that Prisco’s drive rod cannot traverse a
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`wrist to actuate an end effector, as Patent Owner appears to assert. POR, 29. And
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`Patent Owner requires more than the ipse dixit of its expert to establish otherwise.
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`Third, Prisco does not require a drive rod made from “304V Stainless Steel,
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`0.032-inch OD with PTFE spray coating.” That was merely exemplary. See
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`Prisco, 14:42-43. Thus, even assuming that the disclosed drive rod would be less
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`than ideal, a POSITA would have understood how to choose an appropriate
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`thickness, material, and/or support tube to accommodate the desired bend, which,
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`as previously noted, need not be a “sharp” bend over a 180 degree range. See, e.g.,
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`Knodel Decl., ¶112. Nothing in Patent Owner’s Response suggests choosing
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`proper materials and thicknesses for a push-pull rod is beyond the level or ordinary
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`skill in the art.
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`Fourth, and finally, Patent Owner’s incompatibility argument misreads
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`Prisco. Patent Owner argues that Prisco’s discussion at 16:38-44 and 8:38-44 of a
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`wristed instrument is not directed to the “push-pull” instrument. POR, 29-30.
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`However, Patent Owner is incorrect. In fact, those two passages of Prisco disclose
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`the use of all embodiments with a wrist, including a “push-pull” instrument. See
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`Section II.A.1, supra.
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`Prisco at 16:38-44, for example, which immediately follows Prisco’s
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`description of a “push-pull” instrument at 16:17-37, states “that principles
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`described for moving an end effector component may be adapted for use in
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`instruments that include a movable wrist mechanism … at the distal end of the
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`instrument shaft.” Thus, a POSITA would have understood that this passage is
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`referring back—at the very least—to the preceding description of the “push-pull”
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`method of moving an end effector.
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`12
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`Similarly, Prisco at 8:38-44 states, “Such actuation forces may typically …
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`operate a wrist 236 that provides yaw and pitch DOFs, and operate a movable
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`piece or grasping jaws of various end effectors (e.g., scissors (cautery or non-
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`cautery capable), dissectors, graspers, needle drivers, electrocautery hooks,
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`retractors, clip appliers, etc.).” This broad disclosure further confirms that
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`Prisco’s instruments may include both Cooper’s wrist and, for example, Prisco’s
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`“push-pull” clip applier instrument shown in Figure 9E. Notably, there is no
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`indication in Prisco that the “push-pull” clip applier is specifically excluded from
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`this reference to “clip appliers” generally because of excessive rigidity of a push-
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`pull drive rod. Accordingly, as stated in the Petition, a POSITA would have
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`understood that Prisco discloses a “push-pull” instrument with Cooper’s wrist, as
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`nothing in either Prisco or Cooper would teach a POSITA to avoid such an
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`embodiment. Petition, 21, 52-58, 74.
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`B.
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`Shaft roll gear 742 is a gear-driven portion in “operable
`communication” with a selectively movable component and
`associated transmission assembly
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`Nowhere in its Response does Patent Owner dispute that the combination of
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`Prisco’s end effector clevis and attachment cap 928, shaft body tube 922, and shaft
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`roll gear 742 is a gear-driven portion that operably communicates with and applies
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`a control motion to the end effector jaws, as explained in the Petition (at 61-62,
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`69). Similarly, Patent Owner does not dispute that Prisco’s rack gear 784 (or the
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`13
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`combination of push/pull drive rod connector 926, drive element rod 764, and rack
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`gear 784) is a gear-driven portion that operably communicates with and applies a
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`control motion to the end effector jaws as explained in the Petition (at 58-60, 67-
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`68). Thus, Section VI.A.2 of the Response is effectively moot.
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`Although Patent Owner’s argument is less than clear, it appears that Patent
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`Owner is arguing that, because shaft roll gear 742 only causes a shaft roll and not
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`an open and close motion of the end effector jaws, it cannot be the claimed gear.
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`POR, 32 (“shaft roll gear 742 is in operable communication with and applies a
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`motion to the instrument shaft, not to a selectively movable component of the end
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`effector (one of the jaws).”)3 If this is Patent Owner’s argument, it is wrong.4
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`3 To the extent Patent Owner is seeking to rewrite the claim as requiring the
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`movement of a single jaw only, this is inconsistent with the claim language, which
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`does not restrict applying the control motion to both of the jaws or to the entirety
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`of the end effector.
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`4 At page 25 of its Response, Patent Owner asserts that the Board misunderstood
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`Petitioner’s arguments. It did not. Rather the Board recognized that Petitioner
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`made alternative arguments, one of which was ignored by the Patent Owner in its
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`POPR. Paper 7 (Institution Decision), 25-26.
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`14
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`The jaws of Prisco are undeniably selectively movable components, and the
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`jaws are in operable communication with the shaft roll gear (and/or the
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`combination of the shaft roll gear, shaft, end effector clevis and attachment cap
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`928). As explained in the Petition (at 60-61), the shaft (and end effector clevis and
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`attachment cap 928)5 provides rotation of the end effector jaws around the
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`longitudinal axis of the shaft by way of rotating the shaft and the components
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`mounted thereto. Thus, shaft roll gear 742 (or the combination, if a direct
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`connection is necessary) operably communicates and applies its rotary control
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`motion to the end effector jaws via the shaft (and end effector clevis and
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`attachment cap 928) to provide a roll degree of freedom to the end effector jaws.
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`Id.
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`Patent Owner also argues that Dr. Knodel “confirmed that the gear mesh
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`arrangement for drive gear 740 and shaft roll gear 742 does not control a motion of
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`a movable component of the end effector.” POR, 32. This is incorrect. What Dr.
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`Knodel “confirmed” (and which is undisputed) is that the shaft roll gear does not
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`open and close the jaws. However, the shaft roll gear certainly controls “a motion”
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`5 To the extent Patent Owner is reading a direct connection into the term “operable
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`communication,” the combination of elements provides a direct connection to the
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`jaws. Petition, 58-62.
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`15
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`of the jaws—namely, the roll motion. Petition, 69; Knodel Decl., ¶97. When the
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`Attorney Docket No. 11030-0049IP9
`Proceeding No. IPR2018-01248
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`shaft roll gear moves, the jaws of the end effector rotate around the longitudinal
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`axis of the shaft. That is clearly a gear-driven motion applied to the selectively
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`movable component of the end effector. Dr. Knodel certainly did not testify
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`otherwise. As is clear from the cited deposition testimony, Dr. Knodel was
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`referring to actuation of the jaws (opening and closing of the jaws), and not to any
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`and all movement of the jaws. POR, 32-33; Ex. 2022, 10:5-17.
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`In fact, even though Dr. Knodel’s opinions are clear from the Q&A quoted
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`by Patent Owner in its Response, Patent Owner’s selective quotation drops the
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`preceding question, which helps explain what follows:
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`Q. Okay. When the shaft of these instruments is rolled,
`
`using that mesh arrangement we just talked about in
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`Figure 7B, C, and D, you would agree that those jaws do
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`not move relative to one another; right?
`
`A. I believe that to be true, yes.
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`Q. In other words, the gear mesh for the shaft roll does
`
`not control a motion of a movable component of the end
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`effector; right?
`
`A. I think that – I don’t see – I don’t see immediately
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`how that would happen; so I would say that probably the
`
`jaws are not actuated when you roll the shaft.
`
`
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`16
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`
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`Ex. 2022, 10:5-17. Accordingly, even though the jaws do not move relative to one
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`Attorney Docket No. 11030-0049IP9
`Proceeding No. IPR2018-01248
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`another in response to a shaft roll, the evidence is clear and undisputed that the
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`jaws do, in fact, move in response to a shaft roll (the jaws roll about the
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`longitudinal axis of the shaft)—and that is all the claims require.
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`III. Grounds 2-4: A POSITA would have combined Prisco’s push-pull end
`effector with Cooper’s wrist
`
`As shown in Ground 1, Prisco incorporates Cooper’s wrist. In addition, as
`
`shown in Grounds 2-4, it would have been obvious to a POSITA to combine Prisco
`
`with Cooper even if Prisco were deemed not to explicitly incorporate Cooper by
`
`reference.
`
`A.
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`Prisco does not teach away from using Cooper’s wrist
`
`With regard to these grounds, Patent Owner first argues that Prisco teaches
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`away from using Cooper’s wrist. POR, 34. Patent Owner is incorrect because
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`Prisco identifies the benefits of both options—benefits of using a wrist (e.g.,
`
`providing additional degrees of freedom and allowing an effector orientation to be
`
`changed without changing shaft position) and benefits of not using a wrist. E.g.,
`
`Prisco, 8:38-44, 16:38-44. Teaching that various options each have their own
`
`benefits is not “teaching away.” See Medichem, S.A. v. Rolabo, S.L., 437 F.3d
`
`1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous
`
`advantages and disadvantages, and this does not necessarily obviate motivation to
`
`
`
`17
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`Attorney Docket No. 11030-0049IP9
`Proceeding No. IPR2018-01248
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`combine.”); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed.
`
`Cir. 2000) (“The fact that the motivating benefit comes at the expense of another
`
`benefit, however, should not nullify its use as a basis to modify the disclosure of
`
`one reference with the teachings of another. Instead, the benefits, both lost and
`
`gained, should be weighed against one another.”); In re Fulton, 391 F.3d at 1201
`
`(“[t]he prior art’s mere disclosure of more than one alternative does not constitute a
`
`teaching away from any of these alternatives because such disclosure does not
`
`criticize, discredit, or otherwise discourage” modifying the reference to arrive at
`
`the claimed invention). A POSITA would be motivated to make a particular
`
`combination to gain the recited benefits (and additional unrecited benefits, as
`
`benefits need not be recited in the prior art references themselves). That other
`
`approaches have their own benefits is not particularly probative.
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`Moreover, selecting between these two known options, each with their own
`
`recognized benefit, does not suggest an innovative process, but rather, one of
`
`ordinary skill and common sense. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`421 (2007) (“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.”).
`
`
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`18
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`Attorney Docket No. 11030-0049IP9
`Proceeding No. IPR2018-01248
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`
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`The two cases Patent Owner cites (Polaris and General Electric) do not
`
`support Patent Owner’s “teaching away” argument. In Polaris, the Federal Circuit
`
`remanded the case back to the Board because the Board treated a “teaching” in the
`
`reference as a mere “subjective preference.” That is not the issue here. Polaris,
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`882 F.3d at 1068-69.
`
`In General Electric, the prior art reference considered two options, weighed
`
`the tradeoffs, and specifically chose one option over the other. That is not what
`
`happened here. Rather, Prisco teaches two options and teaches that each has
`
`benefits for a POSITA to consider. And, as noted above, Prisco explicitly
`
`identifies a wrist in illustrative instrument 110 and discloses that a wrist is
`
`optional. Prisco, 8:34-44, 10:43-48, Fig. 2B; see Upsher-Smith, 412 F.3d at 1323
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`(reference disclosing optional inclusion of a particular component teaches
`
`compositions that both do and do not contain that component).
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`Thus, there is no “teaching away” here.
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`B. A POSITA would have been motivated to combine Prisco’s “push-
`pull” instrument with Cooper’s wrist
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`Finally, Patent Owner argues that, even if motivated to combine Prisco and
`
`Cooper, the combination would not have been Prisco’s “push-pull” instrument with
`
`Cooper’s wrist; rather, it would have been Prisco’s “pull-pull” instrument with
`
`Cooper’s wrist. POR, 36. Patent Owner’s argument appears premised on the
`
`
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`19
`
`
`
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`assumption that Prisco’s “push-pull” embodiment is incompatible with Cooper’s
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`Attorney Docket No. 11030-0049IP9
`Proceeding No. IPR2018-01248
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`wrist. Petitioner has already explained in Section II.A.3, above, why that argument
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`is factually wrong.
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`Beyond Patent Owner’s “incompatibility” argument, there is no basis to
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`conclude that a POSITA would choose one embodiment in Prisco to the exclusion
`
`of the other. On the contrary, Prisco teaches that either embodiment may be used.
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`In addition, Patent Owner’s incompatibility argument appears to be
`
`premised on the exact physical combination of specific embodiments of Prisco and
`
`Cooper (e.g., Prisco’s specific example of a drive rod and Cooper’s specific
`
`example of a five disk wrist shown in Figure 5). However, that is not a proper
`
`obviousness analysis. A proper obviousness analysis is based on what a reference
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`teaches a POSITA.
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`Indeed, “it is not necessary that the inventions of the references be
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`physically combinable to render obvious the invention under review.” In re Sneed,
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`710 F.2d 1544, 1550 (Fed. Cir. 1983)); In re Mouttet, 686 F.3d 1322, 1332 (Fed.
`
`Cir. 2012) (“It is well established that a determination of obviousness based on
`
`teachings from multiple references does not require an actual, physical substitution
`
`of the elements.”). Rather, the relevant inquiry is whether the claimed subject
`
`matter would have been obvious to those of ordinary skill in the art in light of the
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`20
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`
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`combined teachings of those references. See In re Keller, 642 F.2d 413, 425
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`Attorney Docket No. 11030-0049IP9
`Proceeding No. IPR2018-01248
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`(C.C.P.A. 1981).
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`Here, Prisco (at 16:17-37) specifically describes a push-pull instrument and
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`then (at 16:38-44) immediately confirms that the described instrument may be
`
`adapted for use with a wrist to change the end effector’s orientation without
`
`changing shaft position:
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`[i]t should be understood that principles described for
`
`moving an end effector component may be adapted for use
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`in instruments that include a movable wrist mechanism or
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`other mechanism at the distal end of the instrument shaft.
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`Such a wrist mechanism allows an end effector orientation
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`to be changed without changing shaft position.
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`Prisco, 16:38–44. Furthermore, Prisco teaches that a wrist, like Cooper’s, may be
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`added to Prisco’s instruments to provide additional degrees of freedom. Id.,
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`10:43–47. Accordingly, Prisco provides an explicit suggestion to add a wrist, like
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`Cooper’s, to Prisco’s “push-pull” instrument. Petition, 74; Knodel Decl., ¶103; see
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`also, e.g., In re Fulton, 391 F.3d at 1201 (concluding prior art shoe tread patent
`
`provided motivation to combine with other prior art references disclosing different
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`stud shapes because prior art shoe tread patent suggested that other stud shapes
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`could be used). And a POSITA would
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