UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`______________________
`
`IPR2018-01248
`U.S. Patent No. 8,479,969
`______________________
`
`PATENT OWNER ETHICON LLC’S SUR-REPLY
`
`
`
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`______________________
`
`IPR2018-01248
`U.S. Patent No. 8,479,969
`______________________
`
`PATENT OWNER ETHICON LLC’S SUR-REPLY
`
`
`
`
`
`
`
`
`I.
`
`II.
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`IPR2018-01248
`U.S. Patent No. 8,479,969
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .......................................................................................... 1
`
`RESPONSE TO PETITIONER’S REPLY ARGUMENTS ........................... 3
`
`A.
`
`B.
`
`C.
`
`Prisco’s Cable “Pull-Pull” Embodiment Combined With
`Cooper’s Multi-Disk Wrist Does Not Anticipate or Render
`Obvious Claim 24 .................................................................................. 3
`
`Prisco’s Drive Rod “Push-Pull” Embodiment Does Not
`Anticipate Claim 24............................................................................... 6
`
`Prisco’s Drive Rod “Push-Pull” Embodiment Does Not Render
`Obvious Claim 24 ................................................................................ 12
`
`III. CONCLUSION .............................................................................................. 15
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`i
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .......................................................................... 15
`KVK-Tech, Inc. v. Silvergate Pharm., Inc.,
`PGR2017-00039, Paper 8 (P.T.A.B. Feb. 6, 2018) .............................................. 8
`Microsoft Corp. v. Biscotti,
`878 F.3d 1052 (Fed. Cir. 2017) ............................................................................ 6
`Polaris Indus., Inc. v. Arctic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018) .......................................................................... 13
`Samsung Elecs. Co. v. Elm 3DS Innovations, LLC,
`925 F.3d 1373 (Fed. Cir. 2019) .......................................................................... 14
`Tec-Air, Inc. v. Denso Mfg. Mich. Inc.,
`192 F.3d 1353 (Fed. Cir. 1999) .......................................................................... 15
`
`
`
`
`ii
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`
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`IPR2018-01248
`U.S. Patent No. 8,479,969
`
`EXHIBIT LIST FOR IPR2018-01248
`
`Description
`
`Excerpts of a technology tutorial filed in Ethicon v. Intuitive
`Surgical, C.A. No. 1-17:cv-871 (LPS) (CJB) (D. Del. June 28,
`2018)
`Patent Statutory Disclaimer for U.S. Patent No. 8,479,969 filed
`on October 15, 2018
`[Reserved]
`
`
`
`
`
`Ethicon
` Exhibit #
`
`Ex. 2001
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`Ex. 2002
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`Ex. 2003
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`Ex. 2004
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`[Reserved]
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`Ex. 2005
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`[Reserved]
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`Ex. 2006
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`[Reserved]
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`Ex. 2007
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`[Reserved]
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`Ex. 2008
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`[Reserved]
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`Ex. 2009
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`[Reserved]
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`Ex. 2010
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`[Reserved]
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`Ex. 2011
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`[Reserved]
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`Ex. 2012
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`[Reserved]
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`Ex. 2013
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`[Reserved]
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`Ex. 2014
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`[Reserved]
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`Ex. 2015
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`[Reserved]
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`Ex. 2016
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`[Reserved]
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`Ex. 2017
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`[Reserved]
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`Ex. 2018
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`[Reserved]
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`iii
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`Ethicon
` Exhibit #
`Ex. 2019
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`[Reserved]
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`Description
`
`Ex. 2020
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`[Reserved]
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`Ex. 2021
`
`Declaration of Dr. Shorya Awtar
`
`Ex. 2022
`
`Deposition Transcript of Dr. Bryan Knodel, IPR2018-01248,
`April 4, 2019
`
`Ex. 2023
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`[Reserved]
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`Ex. 2024
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`[Reserved]
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`Ex. 2025
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`[Reserved]
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`Ex. 2026
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`[Reserved]
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`Ex. 2027
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`[Reserved]
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`iv
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`I.
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`INTRODUCTION
`Patent Owner’s Response explains why the combination of Prisco and
`
`Cooper does not anticipate or render obvious claims 24-26 of the 969 Patent.
`
`Petitioner’s Reply fails to remedy the deficiencies in the Petition.
`
`First, the combination of Prisco’s cable “pull-pull” embodiment combined
`
`with Cooper’s multi-disk wrist, whether characterized as anticipation or
`
`obviousness, does not fall within the scope of claim 24 (and likewise dependent
`
`claims 25-26). Claim 24 of the 969 Patent requires a gear-driven portion that is in
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`operable communication with a selectively movable component of the end effector
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`and applies a control motion to move that selectively movable component relative
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`to another end effector component. The Petition maps the jaws of the
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`Prisco/Cooper end effector to the selectively movable component limitation
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`(Petition, p.52, 39), but in Prisco’s cable pull-pull embodiment, the motion of the
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`jaws is not gear-driven. Instead, the only motion that is gear-driven is a shaft roll.
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`As detailed in the Patent Owner Response and in this Sur-Reply, the gear-driven
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`portion for shaft roll is in operable communication with the shaft, not with a jaw of
`
`the end effector. Furthermore, it is undisputed that the gear-driven portion for shaft
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`roll does not apply a control motion that moves a selectively movable component
`
`of the end effector relative to another component of the end effector. Ex. 2021, ¶50
`
`(Patent Owner’s expert testimony); Ex. 2022, 9:6-10:17 (cross-examination of
`
`1
`
`
`
`
`Petitioner’s expert).
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`Second, the combination of Prisco’s drive rod “push-pull” embodiment
`
`combined with Cooper’s multi-disk wrist does not anticipate or render obvious
`
`claim 24 (and likewise dependent claims 25-26). Here, the undisputed testimony of
`
`Patent Owner’s expert, Dr. Awtar, demonstrates that Prisco does not disclose the
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`combination of the drive rod push-pull embodiment with Cooper’s multi-disk
`
`wrist, nor does Cooper disclose its multi-disk wrist in combination with a push-pull
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`drive rod for grip. Instead, as explained by Dr. Awtar, Prisco specifically omits a
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`wrist from the drive rod push-pull embodiment, Cooper only discloses its multi-
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`disk wrist in combination with a cable pull-pull grip mechanism, and the solid steel
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`drive rod would be inoperable with Cooper’s multi-disk wrist, which requires that
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`the grip mechanism be able to bend sharply. Petitioner’s Reply offers nothing but
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`attorney argument in response. In fact, Petitioner’s expert, Dr. Knodel, did not
`
`address any of the operability issues in his opening declaration, and he did not
`
`provide any response to Dr. Awtar’s opinion. Thus, Petitioner’s Reply consists
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`entirely of attorney argument regarding what a POSITA would have understood,
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`which the Board should give no weight.
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`Finally, any argument by Petitioner that Patent Owner’s inoperability and
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`teaching away arguments are improperly premised on a physical combination of
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`the references should be disregarded. The proposed combination in the Petition
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`2
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`
`
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`relies on specific structures in Prisco (the gear-driven push-pull drive rod for
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`controlling gripping of the end effector jaws) combined with specific structures in
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`Cooper (the multi-disk wrist) in order to arrive at the specific limitations of claim
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`24. Petition, p.52-54, 59-60. Thus, it is Petitioner, not Patent Owner, that proposed
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`the specific combination of certain structures in order to arrive at the limitations of
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`the claimed invention. Because the expert testimony is undisputed that such a
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`combination of structures would be inoperable and further that Prisco itself teaches
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`away from the combination, Petitioner has failed to meet its burden.
`
`For the reasons set forth in Patent Owner’s Response and this Sur-Reply,
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`Patent Owner respectfully submits that Petitioner has failed to demonstrate that the
`
`challenged claims are anticipated or obvious.
`
`II. RESPONSE TO PETITIONER’S REPLY ARGUMENTS
`Prisco’s Cable “Pull-Pull” Embodiment Combined With Cooper’s
`A.
`Multi-Disk Wrist Does Not Anticipate or Render Obvious Claim
`24
`Prisco’s cable “pull-pull” embodiment does not include a gear-driven
`
`portion for applying the motions that open and close the end effector jaws. Ex.
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`2021, ¶¶45-47. Instead, the open and close motions are applied using two cables
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`attached to a capstan. Id. The only motion that is gear-driven in this embodiment is
`
`one that applies a shaft roll. Thus, Petitioner’s invalidity argument with respect to
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`this embodiment, regardless of whether characterized as anticipation or
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`3
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`
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`obviousness, is contingent on a determination that a gear-driven shaft roll falls
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`within the scope of claim 24. The plain language of the claim requires a gear-
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`driven portion that is in operable communication with a selectively movable
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`component of the end effector and applies a control motion to move that
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`selectively movable component relative to another end effector component. The
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`gear-driven shaft roll does not satisfy these limitations.
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`The plain language of the claim clearly recites that (i) “control motions” are
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`those motions that are applied to a selectively movable component of the end
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`effector to move it between first and second positions relative to another
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`component of the end effector; and (ii) a gear-driven portion is in operable
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`communication with the selectively movable component and is used to apply at
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`least one such control motion to the selectively movable component:
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`24. A surgical tool for use with a robotic system…said surgical tool
`comprising:
`a surgical end effector comprising at least one component portion
`that is selectively movable between first and second positions
`relative to at least one other component portion thereof in
`response to control motions applied to said selectively
`movable component portion….
`….
`at
`
`in operable
`is
`that
`least one gear-driven portion
`communication with said at least one selectively movable
`component portion of said surgical end effector….
`
`4
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`….
`a transmission assembly…to apply actuation motions thereto to
`cause said corresponding one of said at least one gear driven
`portions to apply at least one control motion to said
`selectively movable component.
`
`
`
`Ex. 1001, 95:35-96:15. Thus, for example, a gear-driven portion that applies a
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`control motion to open a jaw falls within the scope of the claim, as would a gear-
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`driven portion that applies a control motion to close a jaw. However, a gear-driven
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`portion that applies a shaft roll does not fall within the scope of the claim, because
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`rolling the shaft of the instrument is not a control motion that moves a selectively
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`movable component of the end effector relative to another component of the end
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`effector. Additionally, while the gear-driven portion for shaft roll operably
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`communicates with the shaft (to roll the shaft), it does not operably communicate
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`with a selectively movable component of the end effector (i.e., a jaw).
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`The expert testimony on this issue is undisputed. Dr. Awtar explained in his
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`declaration that “[w]hen the gear drives shaft roll, this does not involve a control
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`motion that is applied to a selectively movable component of the end effector (i.e.,
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`one of the jaws) to move the component relative to another component of the end
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`effector. Rather, the end effector components remain in the same position relative
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`to each other as the instrument shaft is rolled.” Ex. 2021, ¶50. Dr. Knodel
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`confirmed on cross-examination that the gear-driven shaft roll does not apply a
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`5
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`
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`control motion to move a component of the end effector relative to another end
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`effector component. Ex. 2022, 9:6-10:17. Accordingly, Petitioner’s argument that
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`the shaft roll gear falls within the scope of claim 24 must be rejected because the
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`plain language of the claim requires a gear-driven portion that applies a control
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`motion, where a control motion is one that moves a component of the end effector
`
`relative to another component of the end effector.
`
`B.
`
`Prisco’s Drive Rod “Push-Pull” Embodiment Does Not Anticipate
`Claim 24
`As explained in Patent Owner’s Response, “anticipation is not proven by
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`multiple, distinct teachings that the artisan might somehow combine to achieve the
`
`claimed invention.” Microsoft Corp. v. Biscotti, 878 F.3d 1052, 1069 (Fed. Cir.
`
`2017) (internal quotations and citations omitted). Here, the facts plainly show that
`
`Prisco does not disclose the combination of the drive rod push-pull embodiment
`
`with Cooper’s wrist mechanism, nor does Cooper disclose its multi-disk wrist in
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`combination with a push-pull drive rod for grip. Rather, Prisco specifically omits a
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`wrist from the drive rod embodiment, and Cooper only discloses its wrist in
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`combination with a cable pull-pull grip mechanism. Moreover, Petitioner’s expert
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`has not rebutted Patent Owner’s expert testimony that the drive rod push-pull
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`embodiment would be inoperable with Cooper’s wrist. Petitioner’s Reply
`
`arguments, which are entirely unsupported by any expert testimony, should be
`
`rejected.
`
`6
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`
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`First, Petitioner’s Reply points to a statement in Prisco that a wrist is
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`
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`“optional” and other generic statements in Prisco that a wrist might be employed.
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`Reply, p.2-3. The cited portions of Prisco (col. 8:34-44 and 16:38-43) generically
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`discuss the possibility of including a wrist, but do not suggest to a POSITA the
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`specific combination of a drive rod push-pull mechanism with Cooper’s multi-disk
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`wrist. Petitioner’s anticipation argument, however, depends on the specific
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`inclusion of the multi-disk wrist of Cooper with the drive rod push-pull mechanism
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`in order to satisfy the limitations of claim 24 (e.g., a proximal spine portion
`
`pivotally coupled to a distal spine portion at an articulation joint). See Petition,
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`p.52-54, 59-60; Ex. 1003, ¶¶82-85, 87-88. Thus, it is entirely insufficient and
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`improper for Petitioner in its Reply to rely on a generic disclosure in Prisco of an
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`unspecified wrist.
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`As explained in the Patent Owner Response, Petitioner’s reliance on Cooper
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`is misplaced for anticipation. While Cooper does disclose the details of a multi-
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`disk wrist, it does so only by disclosing a wrist in combination with a cable pull-
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`pull grip mechanism. Ex. 1007, 13:51-60, 17:25-21:25. Thus, Cooper provides no
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`suggestion or disclosure of a multi-disk wrist in combination with a push-pull drive
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`rod. This is confirmed by the unrebutted testimony of Dr. Awtar:
`
`Cooper does not disclose any embodiments of a push-pull grip
`mechanism like the mechanism disclosed in Prisco, and does not make
`any reference to combining its wrist mechanism with a “push-pull” grip
`
`7
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`mechanism. Thus, Cooper’s disclosure of a grip mechanism compatible
`with the multi-disk wrist is solely directed to a “pull-pull” cable design.
`Ex. 1007 at 17:25-21:25; id. at 13:51-60.
`
`
`Ex. 2021, ¶61. Thus, there is no basis on which to assert that a POSITA would
`
`have understood Prisco or Cooper to be disclosing an instrument that includes a
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`push-pull drive rod and a multi-disk wrist. As discussed below, the lack of any
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`such disclosure in Prisco and Cooper is further demonstrated by the unrebutted
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`testimony of Dr. Awtar that such an instrument would be inoperable.
`
`Second, Petitioner submits pure attorney argument that Cooper’s wrist is not
`
`limited to a cable pull-pull design, and that because Cooper does not explicitly
`
`exclude a drive rod push-pull mechanism a POSITA would have understood it is
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`an option. Reply, p.4-6. This attorney argument, however, is directly contradicted
`
`by Cooper, which as explained by Dr. Awtar, uniformly and exclusively discloses
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`a multi-disk wrist that works in conjunction with pulling cables for grip. Ex. 2021,
`
`¶¶56-62. Furthermore, it is a logical fallacy to conclude that because Cooper does
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`not ever mention a drive rod push-pull mechanism, a POSITA would have
`
`understood Cooper to disclose it as an option. Petitioner’s attempt through attorney
`
`argument to conjure a disclosure in Cooper that does not exist should be rejected.
`
`See KVK-Tech, Inc. v. Silvergate Pharm., Inc., PGR2017-00039, Paper 8 at 19
`
`(P.T.A.B. Feb. 6, 2018) (“Patent Owner raises other arguments that similarly are
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`8
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`
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`unpersuasive because they depend on bare attorney argument. Specifically, the
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`Preliminary Response advances arguments…pertaining to how an ordinary artisan
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`would have viewed and understood the prior art.”).
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`Third, Petitioner contends, again solely through attorney argument, that
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`Prisco’s push-pull drive rod is compatible with Cooper’s wrist because Cooper
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`does not require the drive rod to bend sharply. Reply, p.7. This attorney argument
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`is directly contradicted by the express disclosure in Cooper and the unrebutted
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`testimony of Dr. Awtar. Ex. 1007, 13:55-56 (“Because there are only five disks,
`
`the grip mechanism needs to be able to bend sharply”) (emphasis added); Ex.
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`2021, ¶¶60, 62. The need for that grip mechanism to be able to function while
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`bending sharply is abundantly clear from the various figures in Cooper illustrating
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`the functionality of the multi-disk wrist. See, e.g., Ex. 1007, Figs. 6, 15, 20, 21, 37,
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`38, 38A, 39, 41.
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`Fourth, Petitioner alternatively contends that if bending sharply is indeed a
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`requirement, then the solid steel drive rod from Prisco, if combined with Cooper’s
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`multi-disk wrist, would be able to bend sharply as the wrist is maneuvered over
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`180 degrees, while also being able to transmit force when both pushed and pulled.
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`Reply, p.8-10. Petitioner’s own expert, however, was unwilling to offer such an
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`opinion. Dr. Knodel offered no rebuttal testimony to Dr. Awtar’s opinion
`
`regarding inoperability. Furthermore, Dr. Knodel’s opening declaration (Ex. 1003)
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`9
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`
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`is completely silent on this issue—it contains no mention whatsoever of the nature
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`and operation of the grip mechanisms in Prisco, or any assessment of their
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`compatibility or incompatibility with a multi-disk wrist.
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`The Board should also reject Petitioner’s attorney argument that because the
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`push-pull drive rod and the pull-pull cables are both made of stainless steel
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`material, this means that they are both compatible with a multi-disk wrist. Reply,
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`p.9-11. This argument ignores that the cables only need to transmit force when
`
`being pulled (i.e., one cable is pulled to open, the other cable is pulled to close). In
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`contrast, the drive rod needs to be able transmit force when being both pushed and
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`pulled. There is no explanation from Petitioner or its expert for how the drive rod
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`could be flexible enough to bend 180 degrees as required by Cooper’s multi-disk
`
`wrist, and also be sufficiently rigid longitudinally to transmit force when being
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`both pushed and pulled. Thus, Dr. Awtar’s opinion that a solid steel rod would not
`
`have such properties is uncontested. Ex. 2021, ¶¶62, 99. In addition, Petitioner’s
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`attorney argument that the curvature of the cannula shows that the drive rod can
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`bend ignores that the slight flexibility required to accommodate the curvature of
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`the cannula is entirely different from the flexibility that would be required to bend
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`over a 180 degree range as required by Cooper’s wrist. Id.
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`Fifth, Petitioner argues that Prisco is an issued patent and its embodiments
`
`are presumed to be enabling. Reply, p.9. This argument fails because Prisco does
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`10
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`
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`not disclose an embodiment having a multi-disk wrist with a push-pull drive rod
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`for grip. Instead, Prisco explicitly omits a wrist from the disclosed embodiment.
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`Ex. 2021, ¶¶100-104. Accordingly, Prisco does not disclose, let alone enable, an
`
`instrument that combines a push-pull drive rod with a multi-disk wrist.
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`Finally, Petitioner argues that a POSITA would have been able to select (as
`
`an alternative to the solid steel rod disclosed in Prisco) a drive rod composed of an
`
`unidentified material with unidentified thickness that could flex sufficiently over
`
`the 180 degrees required by Cooper’s wrist while also being rigid enough
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`longitudinally to transmit force when being pushed and pulled. Reply, p.12. This is
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`yet additional attorney argument that wholly lacks evidentiary support. Petitioner
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`cites exclusively to ¶112 of Dr. Knodel’s declaration, which as shown below,
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`provides absolutely no support for this argument:
`
`112. Thus, claims 23-26 would have been obvious over Prisco
`in view of Cooper and further in view Tierney based on the
`analysis I have already provided for Grounds 1 and 2. In the
`combination, each aspect from each of the respective references
`provides complementary functionality that serves the same
`purpose in the combined structure and it does in the structure of
`each respective reference. Thus, one of ordinary skill in the art
`would have expected
`to be successful
`in making
`the
`combinations I describe here and adapting the physical structures
`
`11
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`as necessary to make the combinations would have been well
`within the level of ordinary skill in the art.
`
`Ex. 1003, ¶112.
`
`
`In sum, Prisco does not disclose the combination of a drive rod push-pull
`
`mechanism with a multi-disk wrist, and Cooper’s disclosure is clearly limited to a
`
`multi-disk wrist in conjunction with a cable pull-pull mechanism. Furthermore, the
`
`record is undisputed that Cooper’s multi-disk wrist requires a grip mechanism that
`
`can bend sharply over 180 degrees, and the drive rod push-pull mechanism of
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`Prisco, which must transmit force when being pushed and pulled, is not compatible
`
`with Cooper’s multi-disk wrist. Tellingly, Dr. Knodel was unable to contest Dr.
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`Awtar’s opinion regarding inoperability despite having the opportunity to do so in
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`Petitioner’s Reply. The bare attorney argument in Petitioner’s Reply simply cannot
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`substitute for evidence.
`
`C.
`
`Prisco’s Drive Rod “Push-Pull” Embodiment Does Not Render
`Obvious Claim 24
`Petitioner’s obviousness argument is premised on the combination of
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`Prisco’s drive rod “push-pull” embodiment with Cooper’s multi-disk wrist. In
`
`addition to the reasons discussed above in Section II.B that are equally applicable
`
`to Petitioner’s obviousness argument, Patent Owner’s Response explained that
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`Prisco teaches away from including a wrist by specifically omitting it from the
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`design in order to simplify the instrument. Patent Owner Response, p.34-36.
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`12
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`
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`Furthermore, to the extent a POSITA was seeking to include a wrist based on the
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`teachings of Cooper, a POSITA would have utilized the multi-disk wrist with a
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`cable grip mechanism that is described in Cooper (and which, as explained in
`
`Section II.A, would fall outside the scope of claim 24). Petitioner’s Reply does not
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`remedy the deficiencies in its obviousness argument.
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`First, Petitioner’s Reply argues that there is no teaching away because there
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`are advantages and disadvantages to including a wrist. This argument fails,
`
`however, because Prisco teaches a POSITA that, for the disclosed curved cannula
`
`instrument, the disadvantages warranted omission of a wrist to simplify an already
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`complicated instrument. Patent Owner Response, p.35. Thus, the teaching in Prisco
`
`would discourage a POSITA from including a wrist. Polaris Indus., Inc. v. Arctic
`
`Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018). At a minimum, Prisco’s clear
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`preference for excluding a wrist because of the complexities associated with a
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`curved cannula instrument negates any purported motivation for adding a wrist
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`presented by Petitioner. Id.
`
`Second, Petitioner fails to address Patent Owner’s argument that even if a
`
`POSITA were motivated to combine Prisco and Cooper, a POSITA would have
`
`chosen the conventional path of using a multi-disk wrist with a cable pull-pull
`
`mechanism as specifically disclosed in Cooper (which would fall outside the scope
`
`of claim 24 as explained in Section II.A). Patent Owner Response, p.36. In fact,
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`13
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`Petitioner could not argue otherwise because the Petition specifically argued that a
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`POSITA would “look to Cooper for further details on the articulation
`
`mechanism[.]” Petition, p.74. The details in Cooper provided a POSITA with a
`
`conventional path—using the multi-disk wrist with a cable pull-pull grip
`
`mechanism—and Petitioner provides no explanation for why a POSITA would
`
`deviate from that path.
`
`Finally, Petitioner argues that Patent Owner’s inoperability argument should
`
`be ignored because it is premised on the physical combination of Prisco and
`
`Cooper. This is a red herring. The proposed combination in the Petition relies on
`
`specific structures in Prisco (the gear-driven push-pull drive rod for controlling
`
`gripping of the end effector jaws) combined with specific structures in Cooper (the
`
`multi-disk wrist) in order to arrive at the specific structural limitations of claim 24.
`
`Petition, p.52-54, 59-60. Accordingly, it is entirely proper for Patent Owner and
`
`the Board to address the failings of the specific combination set forth in the
`
`Petition. See Samsung Elecs. Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373,
`
`1383 (Fed. Cir. 2019) (“Petitioners specifically argued in its Petition that ‘PECVD
`
`. . . could have been used in place of the dielectric growing techniques described in
`
`Bertin to obtain the predictable result of stacked [integrated circuits] having low
`
`tensile stress dielectrics.’ The Board ultimately determined that Petitioners’
`
`evidence in support of that combination was insufficient. We will not fault the
`
`14
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`
`
`Board for analyzing Petitioners’ obviousness grounds in the way presented in the
`
`IPR2018-01248
`U.S. Patent No. 8,479,969
`
`Petition.”). The undisputed expert testimony demonstrates that the combination
`
`proposed in the Petition would not be operable because a solid steel drive rod
`
`would not be sufficiently flexible to bend sharply for a multi-disk wrist, while also
`
`being sufficiently rigid to transmit force when being both pushed and pulled.
`
`Accordingly, a POSITA would not be motivated to make the combination. Tec-Air,
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`Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999) (observing
`
`that there is “no suggestion to modify a prior art device where the modification
`
`would render the device inoperable for its intended purpose”) (internal citations
`
`and quotation marks omitted); In re Fritch, 972 F.2d 1260, 1265 n.12 (Fed. Cir.
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`1992) (“This court has previously found a proposed modification inappropriate for
`
`an obviousness inquiry when the modification rendered the prior art reference
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`inoperable for its intended purpose.”).
`
`III. CONCLUSION
`For the reasons stated, Intuitive has failed to carry its burden to establish that
`
`any of the claims of the 969 Patent are invalid over the prior art. The claims should
`
`be upheld as patentable.
`
`
`
`15
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`Dated: August 22, 2019
`
`IPR2018-01248
`U.S. Patent No. 8,479,969
`
`
`
`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
`
`
`
`
`16
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`
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`IPR2018-01248
`U.S. Patent No. 8,479,969
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`CERTIFICATE OF COMPLIANCE
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
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`Patent Owner Sur-Reply, exclusive of the exempted portions as provided in 37
`
`C.F.R. § 42.24(a), contains no more than 3,459 words and therefore complies with
`
`the type-volume limitations of 37 C.F.R. § 42.24(b) and the August 2018 Trial
`
`Practice Guide Update. In preparing this certificate, counsel has relied on the word
`
`count of the word-processing system used to prepare the paper (Microsoft Word).
`
`
`
`Dated: August 22, 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
`
`17
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`
`
`
`
`IPR2018-01248
`U.S. Patent No. 8,479,969
`
`CERTIFICATE OF SERVICE
`I hereby certify that on August 22, 2019, a copy of PATENT OWNER
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`ETHICON LLC’S SUR-REPLY was served by filing the documents through the
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`PTAB’s E2E Filing System as well as delivering a copy via electronic mail upon
`
`the following:
`
`
`
`John C. Phillips
`Ryan P. O’Connor
`Steven R. Katz
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`katz@fr.com
`phillips@fr.com
`oconnor@fr.com
`
`IPR11030-0049IP9@fr.com
`PTABInbound@fr.com
`
`/Emily P. Davis/
`Emily P. Davis
`Paralegal
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, DC 20036
`T: 202-682-7000
`E: emily.davis@weil.com
`
`
`
`18
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