`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`_____________
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`____________
`
`Record of Oral Hearing
`Held: October 17, 2019
`_____________
`
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`STEVEN KATZ, ESQ.
`ROGER A. DENNING, ESQ.
`RYAN O'CONNOR, ESQ.
`Fish & Richardson P.C.
`601 Lexington Avenue, 52nd Floor
`New York, NY 10022-4611
`212-765-5070
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`ANISH DESAI, ESQ.
`CHRISTOPHER PEPE, ESQ.
`CHRISTOPHER MARANDO, ESQ.
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153-0119
`212-310-8000
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, October
`
`17, 2019, commencing at 9:04 a.m., on the 9th Floor of USPTO Madison
`Building East, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`
`
`
`2
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
`
`P R O C E E D I N G S
`- - - - -
` (Proceedings begin at 9:04 a.m.)
` JUDGE WOOD: Good morning.
` MR. DESAI: Good morning, Your Honor.
` MR. DENNING: Good morning.
` JUDGE WOOD: This is the oral argument for IPR2018-
`01247, IPR2018-01248, IPR2018-01254 and IPR2018-01703.
` Will counsel for Petitioner please introduce
`themselves?
` MR. DENNING: Good morning, Your Honors. My name is
`Roger Denning from Fish & Richardson on behalf of Petitioner,
`Intuitive Surgical. I have with me today my two partners,
`Steve Katz and Ryan O'Connor, who will also be arguing. And
`then I have Eming May (ph), the inhouse IP attorney from
`Intuitive Surgical.
` JUDGE WOOD: All right. Thank you, Mr. Denning.
` MR. DENNING: Thank you.
` JUDGE WOOD: Will counsel for Patent Owner please
`introduce themselves?
` MR. DESAI: Good morning, Your Honor. Anish Desai,
`from Weil Gotshal on behalf of Patent Owner. With me is Chris
`Pepe, who will be arguing as well, and Chris Marando.
` JUDGE WOOD: All right. Thank you, Mr. Desai.
` According to the hearing order, we will proceed
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`3
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
`first with IPR2018-01247, -01248, and -01254, which all involve the
`same patent.
` Both sides will have 60 minutes. Petitioner
`proceeds first to discuss its case and may reserve rebuttal
`time to reply to Patent Owner's arguments. Patent Owner then
`proceeds with its case and may reserve rebuttal time to
`sur-reply to Petitioner's reply.
` Following completion of the oral argument as to
`those cases, we will proceed with IPR2018-01703, following a
`short break, if the parties request it.
` Before we begin, I believe Patent Owner has marked
`some demonstratives as confidential. I'd like to remind the
`parties that this is a public hearing. To the extent that
`confidential information is discussed, we will need counsel to
`be aware that it's public, and that any information that will
`be made public. And to the extent that counsel wishes to keep
`that information confidential, we will need to close the
`hearing for that information. So in other words, counsel
`needs to let the Panel know in advance of discussion of any
`confidential information.
` MR. DESAI: Your Honor, I believe we've discussed
`this before the hearing, and there's not going to be any
`issue. We're okay. Both sides are okay with proceeding on
`the public record.
` JUDGE WOOD: Okay. Thank you very much.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`4
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
` With that said, Mr. Denning, you may proceed when
`you're ready.
` MR. DENNING: Thank you, Your Honors.
` I'd like to -- I think we're going to go about 40
`minutes and reserve 20 minutes for our rebuttal, if that's
`okay with Your Honors. We are connecting to our presentation
`right now.
` So, Your Honors, I plan to address the first issue,
`maybe the threshold issue in the case, is as to whether the
`Certificate of Correction language, or the original language,
`or both should be subject to the Board's determination in this
`IPR. And then I'm going to turn it over to my colleagues, Mr.
`Katz and Mr. O'Connor, to argue the merits of each of those
`three IPRs, I think starting with Prisco, and then going to
`Giordano, and then going to Timm Anderson.
` JUDGE WOOD: Mr. Denning, before you proceed
`further, pardon the interruption, but I would like to remind
`counsel that we have a judge -- Judge Meyers is remotely
`connected to the hearing. So for the benefit of Judge Meyers
`and the record, please identify all slides by slide number as
`you proceed.
` JUDGE MEYERS: Thank you.
` JUDGE WOOD: And you may proceed.
` MR. DENNING: Thank you. We'll do so.
` Good morning, Judge Meyers.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`5
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
` JUDGE MEYERS: Good morning.
` MR. DENNING: So Ethicon is trying the Board from
`considering the validity of Claim 24 of the '969 Patent in
`either its corrected or its original form. On the one hand,
`Ethicon argues that the Board can't consider the corrected
`claim language of Claim 24 because a District Court Judge in
`an Interlocutory Order found that the PTO never should have
`issued the Certificate of Correction in the first place.
` JUDGE WOOD: Counsel, what was the basis for the
`District Circuit finding that?
` MR. DENNING: So --
` JUDGE WOOD: Why did they determine that?
` MR. DENNING: So a little bit of history in that
`case. Judge Stark in the District of Delaware, in a Markman
`claim construction proceeding, looked at the original claim
`language, construed the original claim language. Ethicon had
`asked him to construe the claim language consistent with the
`Certificate of Correction for the same reasons that they
`argued to the Patent Owner, and Judge Stark declined to do
`that, and said, No, I'm going to construe it as distal, not
`proximal. And distal means distal; it doesn't mean proximal.
`And then he entered the claim construction order.
` JUDGE MEYERS: And that was your position in the
`District Court at that time, correct?
` MR. DENNING: That's correct. And --
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`6
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
` JUDGE MEYERS: And you, too, have flip-flopped also,
`correct?
` MR. DENNING: That's not true, Your Honor. We have
`always maintained that the Certificate of Correction never
`should have issued in the Patent Office, and we believe that
`to this day; the Certificate of Correction never should have
`issued.
` It did issue. It was in the claim language when we
`filed this IPR petition. So in our petitions, all three of
`them, we addressed both the corrected claim language and the
`original claim language because we knew that we didn't think
`the Certificate of Correction was appropriately entered. That
`said, it was in the record, and we felt we had to address it
`in the IPR petition, so we did. But we did it both ways.
` And our argument really is Claim 24 of the '969
`Patent is invalid either way. It doesn't matter whether you
`consider the corrected or the original.
` JUDGE MEYERS: Now, in your counterclaim, are you
`asserting that Claim 24 is indefinite?
` MR. DENNING: In the --
` JUDGE MEYERS: Without the Certificate of
`Correction?
` MR. DENNING: I would want to concur with my
`colleagues, but I don't believe so. I'm not counsel in the
`District Court case. That case has been stayed pending an ITC
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`7
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
`investigation. So I'd want to confer on that, but I don't
`believe we're claiming it's indefinite in light of that.
` JUDGE MEYERS: Okay.
` MR. DENNING: I think we're taking the position that
`the original claim language as construed by Judge Stark to
`mean distal will apply in the District Court case.
` But for exactly the reason I said, the Certificate
`of Correction had issued about five months before Intuitive
`filed this IPR petition or these three IPR petitions, so,
`naturally, Intuitive felt we had to address the Certificate of
`Correction. In fact, it's still in the file history today.
` The District Court order, as I said, related only to
`claim construction. It's not a final judgment; it's an
`Interlocutory Order. And, in fact, Judge Stark's order on the
`Certificate of Correction was not necessary for his
`determination of the claim construction. He gave his claim
`construction order in December, I believe, of 2018, and then
`only in February of 2019 issued the order on the Certificate
`of Correction. It was not necessary -- his order on the
`Certificate of Correction was not necessary even to his claim
`construction order, which certainly is an Interlocutory Order,
`certainly not a final judgment.
` So on the one hand, Ethicon is trying to tell the
`Board, well, you shouldn't consider the corrected language.
`At the same time, Ethicon is telling the Board that you can't
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`8
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
`consider the original claim language either because they say
`our petition focused too much on the corrected language and
`not enough on the original claim language, but, in fact, the
`petition argued both.
` This is a one-word change in the claim, distal to
`proximal, and in each of the petitions, you can see, we've
`spent one paragraph discussing how the prior art meets the
`distal limitation, and we spent one paragraph arguing how the
`prior art meets the proximal limitation, amongst the
`discussion of all the other limitations of Claim 24 of the
`'969 Patent. They were both treated side by side, one
`paragraph right after the other in the original petition. We
`focused on it in a fulsome manner in our reply brief, but
`building only on the arguments that were in the original
`petition. No new prior art, no new arguments; simply
`expanding on the arguments that we had made previously.
` Okay. So if we could go to Slide 3, Mr. O'Connor.
` So this is just a recap of what I said on the
`history relating to the Certificate of Correction. It took
`effect six months -- five months and some weeks after the IPR
`-- before the IPR petitions were filed, that's why we
`addressed the corrected language in the IPR petition, even
`though we believed at that time and put in a footnote in the
`petition here, and we're arguing in the District Court that we
`didn't think the certificate was properly granted. But we
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`9
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
`still argued the language because that was in the file wrapper
`at the time, and it still is, by the way.
` Ethicon has filed nothing with the Patent Office to
`correct the Certificate of Correction and say it's not right.
`They've filed nothing with the PTAB, with the Board, asking
`you to invalidate the Certificate of Correction. It's still
`there. From a public notice perspective, anybody pulling up
`the '969 Patent, pulling up the file wrapper is going to see
`the Certificate of Correction in effect in the '969
`prosecution history. So that's why we think it's proper for
`the Board to consider the corrected language of the '969
`Patent.
` There's no collateral estoppel here in their
`sur-reply brief. Ethicon argued that collateral estoppel
`should prevent us from considering the corrected language of
`the claim. That's not true for two reasons.
` And Mr. O'Connor, if you can go to the next slide.
`One more after that, please.
` Collateral estoppel requires a valid and final
`judgment, Step 2 in this case, cited by Ethicon. It also
`requires that the determination be essential to the judgment.
`Here, there certainly was no final judgment in the District
`Court. At best, it's a claim construction order, an
`interlocutory claim construction order, not a final judgment.
`That case is stayed. It never really got beyond the claim
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`10
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
`construction stage.
` And as I mentioned a moment ago, the Certificate of
`Correction Order is not essential to the judgment. It's not
`even essential to the claim construction order. Judge Stark
`entered that months before he entered his Order on the
`Certificate of Correction.
` Ethicon may argue that they waived their right to
`appeal Judge Stark's Order on the Certificate of Correction.
`That's of no moment here whatsoever. First of all, they wait
`until after Petitioner filed the reply brief to file a Notice
`of Waiver of Appeal in the District Court. But second of all,
`that's meaningless. It doesn't change the fact that Judge
`Stark's order is not a final judgment or that the order is --
`was not necessary for his claim construction order.
` Secondly, moving to the original claim language, the
`uncorrected claim language, Ethicon has filed a motion to
`strike and said that the reply brief went beyond the arguments
`made in the original petitions, and, therefore, the Board
`shouldn't consider the original claim language of the -- Claim
`24 of the '969 Patent either. In essence, they're trying to
`stop the Board from ever considering the validity of the
`original claim language of Claim 24. But, in fact, the IPR
`petition addressed both, as I said, side by side in the
`petitions, addressed both arguments under the distal and the
`proximal.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`11
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
` The reply brief simply expanded on those arguments,
`and I think the operative case here is the Ericsson v
`Intellectual Ventures case, Federal Circuit case. I can give
`you the cite. It's 901 F.3d 1374, and in that case, the
`Federal Circuit reversed a Board's decision not to consider
`arguments in the reply brief when the Federal Circuit found
`the Petitioner had raised the arguments in the petition and
`that there were significant intervening events that made those
`issues more relevant in the reply, and, therefore, justified
`the more attention that they got in the reply.
` I'd submit that certainly is the case here.
`Petitioner's response focused almost entirely on the original
`claim language because that came after Judge Stark's order.
`And so they focused entirely on -- almost entirely on the
`original claim language, so that naturally was the issue that
`we responded to in our reply brief.
` As the Federal Circuit found in the Ericsson case,
`Ericsson cites, No new evidence that merely expands on a
`previously argued rationale. And that's exactly what
`Intuitive Surgical did in our reply brief. So that should not
`be stricken and the Court -- the Board should be considering
`both the reply brief and the original petition.
` Unless Your Honors have any additional questions for
`me, I'm going to turn it over to Mr. Katz to address the
`Prisco petition. Thank you.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`12
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
` JUDGE WOOD: Thank you.
` MR. DENNING: Thank you.
` JUDGE MEYERS: Thank you.
` MR. KATZ: All right. So I'm just going to take a
`few minutes to address the Prisco petition.
` In this threshold matter, everything you just heard
`actually doesn't apply to Prisco. Patent Owner has not
`disputed that Prisco discloses the element to which the
`Certificate of Correction applies. So that only applies
`actually to Anderson, Timm, and Giordano.
` So Prisco, you know, we submit, is an anticipating
`reference, and Patent Owner focuses in on the wrist and says,
`first of all, that Prisco doesn't disclose the wrist, that
`Prisco says don't use the wrist, and that the combination of
`Prisco and the incorporated Cooper reference somehow only
`applies to one of Prisco's embodiments.
` Now, none of those arguments hold any water.
` So first of all, Prisco does disclose the wrist.
`There's no question about it. Figure 2B, for example, we show
`here on Slide 7, it shows the wrist. This is a straight
`cannula embodiment. But there's no statement in Prisco saying
`this is limited to that. And we point to Column 16 where it
`says you can include a moveable wrist mechanism. And it gives
`the reason why; because it allows an end effector orientation
`to be changed without changing shaft position. That statement
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`13
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
`is a generic statement, and it applies to both Prisco
`embodiments, what we call the push-pull and the pull-pull
`embodiments.
` One way we know that actually is that the quote we
`have on the screen here about wrist mechanism is paragraph --
`Column 16, Line 38, starting Line 38. The previous paragraph
`is discussing Figure 7D and relates to the push-pull
`embodiment. And so this statement, far from being limited to
`the pull-pull embodiment, is following a description of the
`push-pull embodiment. So it is a generic statement. It
`applies to both.
` We also point out that, you know, the Patent
`disclosed both; you can have straight and flexible shafts.
`And the key here is that the wrist can be used with a flexible
`shaft. In fact, most of Prisco is about a flexible shaft.
` We turn to the next slide, Slide 8. You know,
`Patent Owner focuses on the non-wrist embodiment. Says, Oh,
`here's a non-wrist embodiment. It says, Don't use a wrist in
`the non-wrist embodiment. Well, sure, there are disclosures
`of embodiments that don't use a wrist. None of that is
`relevant here because Prisco, as shown in Slide 8 and as we
`point to in our briefs, clearly shows that a wrist is
`optional.
` And then Patent Owner focuses on the end is not
`shown language. Well, why is it not shown? Because it's
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`14
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
`incorporated by Cooper. Prisco is saying, We're incorporating
`the wrist from Cooper; we don't need to repeat it all here,
`that's why we're not showing it. We've already incorporated
`it. It would be redundant to show all the information.
` So it's clearly optional and if it's optional, it's
`part of the Prisco disclosure.
` Go to Slide 9. So on Slide 9, this is now
`information from Cooper. And so, here, Patent Owner says,
`Well, wait a minute, Cooper needs to bend sharply because you
`need to have these five vertebrae. And the simple answer to
`that is they're focusing on one embodiment, and Cooper has
`many different embodiments. And so all of their arguments
`about this bend sharply are, again, irrelevant because they
`relate to one particular embodiment and not all of them.
` So let's see what Cooper says. As we say -- fill on
`the top here in Column 4, Line 62, it says, you know, The
`wrist member comprises at least three vertebrae. So at least
`three. You don't need more. You don't need five. Three is
`fine. We then cite Column 22, which shows that when you have
`a coupling between two disc segments, the rotation is
`typically 45 degrees. So, again, they focus on 180, but,
`here, it's 45 in one direction, then if you bend in the other,
`you add another 45, so maybe that's a total of 90 at most.
` And, finally, in Column 24, Line 40 to 47 here on
`Slide 9, you know, we cite that Cooper also says you can have
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`15
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
`more than five segments. So the idea that Cooper is limited
`to a five-segment product that must rotate 180 degrees just
`isn't true.
` Now, in the Figure 19, what we show here, because
`this figure does show five segments, but we've highlighted in
`yellow three segments, and that will be consistent with the at
`least three vertebrae embodiment. And, here, you see, you can
`build a device that only can pivot 45 degrees; you know, not a
`sharp bend to 180. It's only 45 in pitch, and then the other
`two vertebrae would have been 45 in the yaw direction. So
`even though there's three vertebrae, it only bends 45 in any
`one direction.
` Okay. So Cooper, you know, clearly does not require
`this bend sharply, which they focus on, and, frankly, even if
`it did, there's really no evidence that the embodiments can't
`handle the sharp bend.
` So if you go to the next figure -- excuse me -- next
`slide, which is Slide 10, here, we show the pull-pull
`embodiment and a push-pull embodiment. And the reason why
`Figure 8A is demonstrating a shaft with a pull-pull embodiment
`is -- you'll see there's 802A and 802B. Those are tension
`rods that do connect to the gripper, and it says that those
`are used in a pull-pull embodiment, although the Figure 8A
`also has just generic information that would be applicable to
`both embodiments, right, which is the concept, that you have a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`16
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
`number of tubes, and you can put different things down the
`tubes. But in 8A, specifically, because they show the two
`cables, that's a pull-pull embodiment.
` Now, what's interesting is the push-pull embodiment.
`They focus on the stainless steel .032 inch OD, which stands
`for outer diameter. And they say, Oh, well, you know, that
`stainless steel rod can't bend. And, of course, we will
`demonstrate in a moment that it certainly can bend. They
`disclose it bending.
` But more importantly here is Patent Owner doesn't
`dispute that the pull-pull embodiment can go through the
`wrist. And what's interesting here is the pull-pull
`embodiment uses not one but two of these tube components that
`are each .032 inches and that bends in two directions. And so
`you've got the two tubes there that bend pitch to the side,
`but they also have to bend up and down. And so the idea that
`Prisco disclosing that these two tubes can bend up and down,
`even though they're one on top of each other, but yet a single
`rod that's .032 inches can't bend, just has no support.
` Prisco itself clearly is teaching that you have
`these bendable components. Now, are they stiff? Yes. And
`we'll get to that in a minute. They're stiff and bendable.
` Prisco at length talks about how it's very important
`to add stiffening members to make sure that the various
`control components don't kink, but that stiffening member
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`17
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
`doesn't preclude using the wrist embodiments, which Prisco
`says are optional.
` Go to the next slide, Slide 11. There's a lot of
`text here, but I think what's important about here, which is
`Column 14, Lines 50 to 57 and also at Column 60, Lines 44 to
`53, is that Prisco here discloses the importance of
`stiffening, and this is in the context of the push-pull
`embodiment. So what we're showing here on Column 14, Line
`about 50, it says the instrument shaft remains flexible, this
`is in the push-pull embodiment, so it remains flexible, and
`that it does have a design stiffness. And it says
`specifically down below, what you see at Line 55, that they
`are talking about that you do want to have stiffening along
`the -- to isolate the push-pull drive lift. So there's no
`question, this is discussing the push-pull embodiment.
` If we go to Slide 11 -- excuse me -- Slide 12, which
`we now bring the text from 16 -- Column 16 forward, and here
`it says, you know, it should be understood that the principles
`describe EG ways of stiffening. So what's it talking about?
`Let's just be sure we knew what the principles are.
` These are the stiffening principles. How do we
`stiffen this device? And the stiffening principles apply both
`to the push-pull embodiment and the pull-pull. Right? It's
`not just one. These are both embodiments.
` And then it says specifically that it should also be
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`18
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
`understood that these principles, again the stiffening
`principles, may be adapted to instrument aspects that include
`a movable wrist mechanism. And so even though you do need a
`quite a bit of stiffness according to Prisco, Prisco teaches
`stiffness doesn't mean you don't have a wrist. This line is
`confirming that even though you're adding stiffness purposely,
`you can still add the wrist. So the idea that the wrist can
`only work with one and not the other embodiment has no basis,
`and Prisco is clearly teaching otherwise.
` In fact, our expert says that you can make this
`combination of the wrist with both embodiments. Their expert
`says, No, it won't work. But here's the key. Our expert is
`relying on the teaching of Prisco. Right? Prisco is presumed
`enabling. Their claims call out, you know, the fact that you
`can have these embodiments. And so it's presumed enabling.
`And so their expert didn't come forth with any evidence. It's
`just this conclusory statement, Oh, it wouldn't work. Well,
`Prisco says it works, so they cannot rely on just a mere
`conclusory statement.
` So that's the push-pull embodiment. Right? I think
`we've clearly shown that it applies to both. And I think Your
`Honors, also, in the Institution decision also cited other
`passages where Prisco keeps saying wrist is optional, wrist is
`optional. I mean, there's a number of statements to that
`effect. So the idea that Prisco suggests that you only use a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`19
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
`wrist with one embodiment, there is no basis for that.
`Nowhere does Prisco say the wrist would only be used in one of
`these two type of embodiments.
` So there's also -- we have the pull-pull
`embodiments. So we go to Slide 13. This is an alternate read
`because they don't dispute that Cooper works with a pull-pull
`embodiment, and, here, the disputed language is operable
`communication. And the key here is that the pull-pull
`embodiment has a shaft gear, which rotates the shaft, and the
`shaft is connected to the jaws. And the claims say you need
`to have a gear that controls a selectively movable component.
` Well, the jaws are selectively movable components.
`Why are they selectively movable? Because they move, open and
`close relative to each other. That's what makes them
`selectively movable.
` And we say the roll gear does control the jaws
`because they control the roll movement of the jaws. Patent
`Owner's response is, But they don't open and close the jaws.
`And our answer to that is, the claim doesn't require that you
`control opening and closing the selectively movable component.
`It just says you have to control the selectively movable
`component, and one of the controls is absolutely to roll the
`jaws.
` And so, alternatively, we do say that in addition to
`the push-pull embodiment, which undeniably has a gear, the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`20
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`
`pull-pull embodiment also has the required gear because of the
`roll feature that is applied to the jaws for jaws selectively
`movable.
` If Your Honors have no questions, we're going to
`turn to Giordano.
` JUDGE COCKS: Counsel, having just heard everything
`you said, what specifically is the limitation in the claim
`that you were directing us to?
` MR. KATZ: The limitation for the gear segment?
` JUDGE COCKS: Yes.
` MR. KATZ: It's Claim 24, and it says at least one
`gear driven portion that is an operable communication with
`said at least one selectively movable component portion of
`said end effector.
` So that's part of it. So it has to be an operable
`communication. And then later on, as -- there's a control
`element. So at the very end of the claim, it says that the
`one -- at least one gear driven portion to apply at least one
`controlled motion to said selectively movable component.
` And so what we're saying is the control motion being
`applied to the jaws is the roll motion of the jaws. It
`doesn't have to be an open and close control motion. Roll is
`a control motion of the jaws.
` JUDGE COCKS: Thank you.
` MR. KATZ: So with that, we're going to turn it over
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`21
`
`
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Cas
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
