UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`INTUITIVE SURGICAL, INC.
`Petitioner
`
`v.
`
`ETHICON LLC
`Patent Owner
`
`______________
`
`
`Case IPR2018-01254
`U.S. Patent No. 8,479,969
`
`_______________
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S
`RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`INTUITIVE SURGICAL, INC.
`Petitioner
`
`v.
`
`ETHICON LLC
`Patent Owner
`
`______________
`
`
`Case IPR2018-01254
`U.S. Patent No. 8,479,969
`
`_______________
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S
`RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`
`Claim 24: The primary combination (Shelton’s stapler with Giordano’s
`
`articulation mechanism) discloses element [24.3] .......................................... 2
`
`A.
`
`B.
`
`In view of the Certificate of Correction the disclosure is undisputed ... 2
`
`The Certificate of Correction applies to these proceedings .................. 3
`
`C. As a backup argument, Petitioner established that the primary
`
`combination discloses an operable coupling between the tool
`
`mounting portion and the distal end of the proximal spine portion ...... 5
`
`III. Claims 11 and 24: A POSITA would not have been deterred from making
`
`any of the proposed combinations of Giordano and Wallace ......................... 7
`
`A.
`
`Even if “tactile feedback” were a requirement (it is not), Wallace
`
`discloses it ............................................................................................. 7
`
`B. Articulation in two axes is not a requirement of the claims and
`
`Wallace does not require it for the combination ................................... 9
`
`C.
`
`In the primary combination, Wallace’s remotely controlled inputs
`
`replace Giordano’s manual articulation knob ..................................... 11
`
`IV. Claims 11 and 24: A POSITA would not have been deterred from making
`
`the alternative combination of Shelton’s stapler and Wallace’s articulation
`
`mechanism ..................................................................................................... 12
`
`A.
`
`Single axis articulation is all that claims 11 and 24 require, which can
`
`be accomplished using Shelton’s firing bar ........................................ 12
`
`B. Wallace provides sufficient control inputs .......................................... 14
`
`
`
`i
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`
`
`C. Dr. Knodel’s testimony demonstrates a motivation to make the
`
`alternative combination ....................................................................... 16
`
`V.
`
`Claims 11 and 24: A POSITA would have reasonably expected to succeed
`
`when making the mechanical modifications necessary to make the primary
`
`and alternative combinations ......................................................................... 18
`
`A.
`
`The robotic system disclosed in Wallace generates sufficient force to
`
`drive the staplers disclosed in Giordano ............................................. 18
`
`1.
`
`2.
`
`The Wallace robot drives the ’969 Patent’s staplers ................ 18
`
`The “high torque” allegedly needed by a linear stapler/cutter is
`
`provided by gears as is standard in the prior art ....................... 20
`
`B. Unrelated publications cited by Patent Owner fail to address the
`
`primary and alternative combinations, and are thus irrelevant ........... 22
`
`C. Wallace provides an explicit suggestion to find a stapler, like the
`
`staplers disclosed in Giordano, to connect to the robotic system
`
`disclosed in Wallace ............................................................................ 24
`
`D. Dr. Knodel’s Testimony Has Evidentiary Weight .............................. 24
`
`VI. Claims 1-10: A POSITA would not have been deterred from combining
`
`Shelton’s stapler with Wallace’s robotic system ........................................... 25
`
`VII. Claims 1-10: A POSITA would have reasonably expected to succeed when
`
`making the mechanical modifications necessary to combine Shelton’s stapler
`
`with Wallace’s robotic system ....................................................................... 25
`
`
`
`
`
`ii
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`EXHIBITS
`
`U.S. Pat. No. 8,479,969 to Shelton, IV (“the ’969 Patent”)
`
`
`
`
`IS1001
`
`IS1002
`
`Prosecution History of the ’969 Patent (Serial No. 13/369,609)
`
`IS1003
`
`Reserved
`
`IS1004
`
`Reserved
`
`IS1005
`
`Declaration of Dr. Bryan Knodel (Giordano as Primary Reference)
`
`(“Knodel Decl.”)
`
`IS1006
`
`Reserved
`
`IS1007
`
`Reserved
`
`IS1008
`
`U.S. Pat. No. 6,699,235 to Wallace et al. (“Wallace”)
`
`IS1009
`
`U.S. Pat. No. 6,331,181 to Tierney et al. (“Tierney”)
`
`IS1010
`
`Reserved
`
`IS1011
`
`Reserved
`
`IS1012
`
`Reserved
`
`IS1013
`
`Reserved
`
`IS1014
`
`U.S. Pat. App. No. 2008/0167672 to Giordano et al. (“Giordano”)
`
`IS1015
`
`U.S. Pat. No. 6,978,921 to Shelton et al. (“Shelton”)
`
`IS1016
`
`U.S. Pat. App. No. 2007/0158385 to Hueil et al. (“Hueil”)
`
`IS1017
`
`Supplemental Declaration of Dr. Bryan Knodel
`
`(“Knodel Supp. Decl.”)
`
`iii
`
`
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`
`IS1018
`
`U.S. Pat. No. 6,132,368 to Cooper (“Cooper”)
`
`IS1019
`
`June 17, 2019 Deposition of Shorya Awtar for IPR2018-01247
`
`(“Awtar Dep. I”)
`
`IS1020
`
`Reserved
`
`IS1021
`
`Reserved
`
`IS1022
`
`June 18, 2019 Deposition of Shorya Awtar for IPR2018-01254
`
`(“Awtar Dep. II”)
`
`IS1023
`
`June 6, 2019 Deposition of Frank Fronczak for IPR2018-00936
`
`(“Fronczak Dep.”)
`
`IS1024
`
`April 3, 2019 Deposition of Bryan Knodel for IPR2018-01247
`
`(“Knodel Dep.”)
`
`IS1025
`
`PCT App. Pub. No. WO 98/25666 (“the ’666 application”)
`
`IS1026
`
`District Court Complaint in Ethicon LLC et al. v. Intuitive Surgical,
`
`Inc. et al., 1:17-cv-00871-LPS filed June 30, 2017
`
`IS1027
`
`U.S. Pat. No. 7,524,320 to Tierney et al. (“Tierney 320”)
`
`
`
`
`
`
`
`iv
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`I.
`
`Introduction
`
`Challenged claims 1-11 and 24 of the ’969 Patent combine prior art surgical
`
`instruments with a prior art surgical robot in a predictable manner. Patent Owner’s
`
`Response focuses primarily on claims 11 and 24. The Petition identifies two
`
`combinations that render claims 11 and 24 obvious. The first combination
`
`(“primary combination”) modifies Shelton’s stapler to include Giordano’s
`
`articulation mechanism for use with the robotic system disclosed in Wallace. The
`
`second combination (“alternative combination”) modifies Shelton’s stapler to
`
`include Wallace’s articulation mechanism for use with the surgical robotic system
`
`disclosed in Wallace. In both combinations, Wallace’s robotic system controls the
`
`surgical instrument.
`
`Patent Owner’s Response fails to point out anything unique or novel about
`
`the challenged claims. In fact, aside from Patent Owner’s incorrect argument that
`
`the Certification of Correction it requested and the PTO granted before these
`
`proceedings somehow does not apply, Patent Owner does not identify a single
`
`limitation of the challenged claims that is allegedly missing from the primary
`
`combination. Instead, Patent Owner makes a number of unsubstantiated arguments
`
`about what a POSITA would or would not have done. However, as shown in this
`
`Reply, the prior art and Patent Owner’s experts contradict and undermine Patent
`
`Owner’s arguments at virtually every turn.
`
`
`
`1
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`
`II. Claim 24: The primary combination (Shelton’s stapler with Giordano’s
`articulation mechanism) discloses element [24.3]
`
`A.
`
`In view of the Certificate of Correction the disclosure is undisputed
`
`Claim 24 of the ’969 Patent issued with a defect, and the Patent Owner
`
`requested a Certificate of Correction to address that defect. Specifically, as issued,
`
`claim 24 required “a tool mounting portion operably coupled to a distal end of said
`
`proximal spine portion.” ’969 Patent, original claim 24 (emphasis added
`
`throughout unless otherwise specified). On January 23, 2018, pursuant to a March
`
`8, 2017 Patent Owner request, the United States Patent and Trademark Office
`
`issued a Certificate of Correction stating: “In the Claims – In Column 95, Line 59,
`
`in Claim 24, delete “distal”; and insert --proximal--.” IS1002, 686. Accordingly,
`
`in view of the Certificate of Correction, claim element [24.3] of the ’969 Patent
`
`now reads: “a tool mounting portion operably coupled to a proximal end of said
`
`proximal spine portion.” See 37 CFR 1.323; 35 U.S.C. § 255 (“Such patent,
`
`together with the certificate, shall have the same effect and operation in law on the
`
`trial of actions for causes thereafter arising as if the same had been originally
`
`issued in such corrected form.”)
`
`Nowhere in its Response does Patent Owner dispute that the prior art
`
`discloses a “tool mounting portion operably coupled to a proximal end of said
`
`proximal spine portion.” Instead, Patent Owner incorrectly argues that the
`
`
`
`2
`
`
`
`
`Certificate of Correction should be ignored because of an interlocutory ruling in
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`parallel District Court litigation.
`
`B.
`
`The Certificate of Correction applies to these proceedings
`
`The Petition was filed and these proceedings were instituted after the
`
`Certificate of Correction issued. See Paper 2 (Petition) filed on June 14, 2018 and
`
`Paper 7 (Institution Decision) entered on January 15, 2019. Thus, the trial having
`
`arisen thereafter, the Certificate of Correction applies to these proceedings.
`
`Nonetheless, Patent Owner’s lead argument is that the Certificate of
`
`Correction should be ignored because a District Court has held the certificate of
`
`correction invalid. POR, 17-18. However, Patent Owner does not—and cannot—
`
`establish that the interlocutory order applies to this proceeding. In fact, beyond
`
`noting the interlocutory order, Patent Owner makes no attempt to establish its
`
`applicability here—and with good reason.
`
`First, the Certificate of Correction issued and remains in the file history and
`
`has not been superseded by any subsequent paper in the file. IS1002, 686.
`
`Second, Patent Owner assumes that the interlocutory order voided the
`
`Certificate for these proceedings, but fails to present a legal argument for applying
`
`issue preclusion. Issue preclusion does not apply here because there is no final
`
`judgment from the District Court, which is a prerequisite for issue preclusion. Nor
`
`will there be a final judgment during this proceeding because the District Court
`
`
`
`3
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`
`action has been stayed until after resolution of this and other inter partes
`
`proceedings. “When an issue of fact or law is actually litigated and determined by
`
`a valid and final judgment, and the determination is essential to the judgment, the
`
`determination is conclusive in a subsequent action between the parties, whether on
`
`the same or a different claim.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1247
`
`(Fed. Cir. 2018) (quoting Restatement (Second) of Judgments § 27 (1982)).
`
`Accordingly, absent a final judgment, issue preclusion does not apply, and the
`
`interlocutory order is not relevant to these proceedings.
`
`Third, the interlocutory order will be subject to appeal if and when the
`
`District Court renders judgment, and Patent Owner has specifically reserved the
`
`right to appeal the interlocutory order. Exhibit 2013, 1, n. 1.
`
`Fourth, as part of its Response, Patent Owner did not petition the Board to
`
`cancel the Certificate of Correction or seek any similar remedy (and nor did
`
`Petitioner). Therefore, the question of the propriety of the Certificate of Correction
`
`is not before the Board. See 37 C.F.R. § 1.323.
`
`And finally, fifth, the petition was filed and these proceedings were
`
`instituted before the Delaware District Court issued the interlocutory order—
`
`institution was on January 15, 2019 and the interlocutory order issued on February
`
`11, 2019. It is now too late to alter the claims, which would place these
`
`proceedings on shifting sands. This proceeding should proceed on the basis of the
`
`
`
`4
`
`
`
`
`claims as they existed at the time of institution (if not at the time of the petition).
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`C.f. Emerson Electric Co. v. Sipco, CBM2016-00095, 2018 WL 446681, at *3
`
`(Jan. 16, 2018) (covered business method patent review is conducted based on
`
`claims as they exist at time of decision to institute, regardless of post-institution
`
`disclaimer).
`
`Accordingly, Section V.A of Patent Owner’s Response is moot because the
`
`Certificate of Correction applies to these proceedings.
`
`C. As a backup argument, Petitioner established that the primary
`combination discloses an operable coupling between the tool
`mounting portion and the distal end of the proximal spine portion
`
`Because the Certificate of Correction applies to these proceedings, the
`
`Petition largely addresses claim 24 in view of the Certificate of Correction.
`
`However, the Petition also provides a backup argument under the original claim
`
`language (although the back-up argument should be moot in view of the Certificate
`
`of Correction). Under the original language, “Wallace’s tool mounting portion
`
`would be operably coupled via the elongated shaft assembly to the distal end of
`
`[Giordano’s] proximate spine tube 46.” Petition, 90.
`
`In fact, Patent Owner admits that Giordano’s “articulation control 16” is
`
`“operably coupled” to the articulation joint at the distal end of the proximate spine
`
`tube 46. POR, 20. This admission should be the end of the matter because in the
`
`Wallace/Giordano combination, the articulation control is moved into Wallace’s
`
`
`
`5
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`
`robot, and thus the articulation mechanism would be necessarily operably coupled
`
`from the tool mounting portion to the articulation joint. Petition, 24-28, 48-49, 84-
`
`85; Knodel, Decl., ¶¶50-55, 80, 121.
`
` However, Patent Owner misstates the combination and asserts (incorrectly)
`
`that, in the primary combination, the manual articulation knob from Giordano
`
`would remain. POR, 19-20. A POSITA would not combine Giordano and
`
`Wallace in such a manner. As explained in the Petition, a POSITA adapting a
`
`hand-held instrument for use with a robotic system would replace the manually-
`
`operated actuators (e.g., triggers and knobs) with Wallace’s control inputs, which
`
`are located in Wallace’s tool mounting portion. Petition, 24-26, 47-49, 84; Knodel
`
`Decl., ¶¶50-55, 80, 121. In fact, Dr. Knodel specifically explained that “[i]n the
`
`Wallace robotic system, the instruments no longer have hand-held handles or
`
`trigger controls. Instead, those traditional controls are removed and replaced by
`
`the driven elements on the tool mounting portion (‘interface’ of the tool ‘base’).”
`
`Knodel Decl., ¶80.
`
`Accordingly, element [24.3] is disclosed by the primary combination, either
`
`because the Certificate of Correction applies, or alternatively, because the actual
`
`combination (with the articulation mechanism in the tool mounting portion
`
`controlled by Wallace’s robotic system) admittedly provides operable coupling
`
`between the tool mounting portion and the distal end of the proximate spine tube.
`
`
`
`6
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`
`III. Claims 11 and 24: A POSITA would not have been deterred from
`making any of the proposed combinations of Giordano and Wallace
`
`Patent Owner does not challenge the specific motivations to make the
`
`primary and alternative combinations of Giordano and Wallace discussed in the
`
`Petition. See, e.g., Petition, 55-56, 80-85. Instead, Patent Owner argues that a
`
`POSITA would have been deterred from making any of the proposed combinations
`
`because: (1) each combination would allegedly result in the loss of tactile
`
`feedback; and (2) the handheld staplers disclosed in Giordano and Shelton do not
`
`meet the alleged objectives of Wallace—i.e., (i) providing tools with three degrees
`
`of rotational movement, and (ii) allowing a surgeon to operate on a patient from a
`
`remote location. None of Patent Owner’s arguments have merit.
`
`A.
`
`Even if “tactile feedback” were a requirement (it is not), Wallace
`discloses it
`
`Notably, Patent Owner does not allege that Wallace or Tierney fails to
`
`disclose tactile feedback, but merely alleges that Petitioner’s actual commercial
`
`robotic systems lacked tactile feedback. POR, 27-30. Of course, in this
`
`proceeding, where prior art must consist of patents and printed publications, and
`
`cannot include commercial embodiments, it is curious and telling that Patent
`
`Owner discusses commercial embodiments not of record in these proceedings, and
`
`ignores the teachings of the actual prior art references.
`
`
`
`7
`
`
`
`
`
`Indeed, Wallace, the primary robotic reference, discloses tactile feedback.
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`Knodel Supp. Decl., ¶¶16-17. Specifically, Wallace incorporates by reference U.S.
`
`Patent Application No. 08/975,617, which issued as Cooper. Wallace, 3:25-29.
`
`And, Cooper states: “Position, force, and tactile feedback sensors (not shown) may
`
`also be employed to transmit position, force, and tactile sensations from the
`
`surgical tools back to the surgeon's hands as he/she operates the telerobotic
`
`system.” Cooper, 3:43-48; see also 5:9-18; 5:46-67; 9:56-66.
`
`In addition, Tierney’s incorporation by reference of the ’666 Application
`
`provides the same disclosure. Tierney, 1:60-66; ’666 Application, 5:32-35; 8:19-
`
`27. Notably, the ’666 Application further states: “Tool 42 will preferably include
`
`an end effector 65 having a tactile sensor array (not shown) for providing tactile
`
`feedback to the surgeon.” ’666 Application, 15:9-12.
`
`Accordingly, a POSITA would understand that Wallace (and the
`
`combination of Wallace and Tierney) discloses a robotic system with tactile
`
`feedback. Knodel Supp. Decl., ¶¶16-17. Thus, even if a POSITA would have
`
`wanted to see a disclosure of tactile feedback, Wallace and Tierney disclose it.
`
`Moreover, “tactile feedback” is not a requirement for a robotic stapler. As
`
`Patent Owner’s related lawsuit confirms, it is undisputed that Petitioner has—and
`
`sells—robotic staplers that staple and cut tissue even without the type of tactile
`
`feedback Patent Owner alleges as being “critical” to stapler operation. Patent
`
`
`
`8
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`
`Owner’s related lawsuit is compelling evidence that belies Patent Owner’s
`
`argument that “tactile feedback” of the sort missing from robotic systems is
`
`“critical.” IS1026.
`
`B. Articulation in two axes is not a requirement of the claims and
`Wallace does not require it for the combination
`
`Patent Owner argues that Wallace requires two-axis articulation because an
`
`“objective” of Wallace is to provide “three degrees of rotational movement of the
`
`end effector around three perpendicular axes.” POR, 30.1 Patent Owner then
`
`argues that because Giordano provides for articulation about only one axis, a
`
`POSITA would not make the proposed combination. POR, 30-31.
`
`Claims 11 and 24, however, include no such limitation. Furthermore,
`
`nothing in Wallace suggests that every instrument adapted for use with Wallace’s
`
`robotic system must provide shaft roll and two additional articulation axes.
`
`Wallace discloses a robotic system and a new articulation mechanism for that
`
`robotic system. In the primary combination, however, a POSITA would have used
`
`Wallace’s teachings of a robotic system and would not have selected Wallace’s
`
`articulation mechanism (that selection only occurs in the alternate combination).
`
`
`1 The three degrees of movement are shaft roll, horizontal articulation, and vertical
`
`articulation. Ex. 2011 (Knodel Dep.), 22:9-24.
`
`
`
`9
`
`
`
`
`
`In the primary combination, a POSITA would have started with Shelton’s
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`stapler adapted to include Giordano’s articulation mechanism and would have been
`
`satisfied with its single axis articulation. The POSITA would have then been
`
`motivated by Wallace’s disclosure of a surgical robot to adapt the articulating
`
`instrument for use with Wallace’s robotic system to obtain the myriad benefits of
`
`robotic-assisted surgery. E.g., Petition, 26-27, 84.
`
`Furthermore, contrary to Patent Owner’s suggestion, Wallace actually
`
`discloses single axis articulation. In Wallace, the preferred embodiments use three
`
`or four articulation rods to articulate in two axes, as illustrated in Figures 3-3b. See
`
`also Wallace, 4:29-30:
`
`
`
`
`
`10
`
`
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`
`But, Wallace specifically states that the “plurality of rods may comprise two …
`
`rods.” Wallace, 4:28-30. And, where only two rods are used in a common plane,
`
`there would be only one axis of articulation. Id., 3:51-4:27; Knodel Dep., 84:18-
`
`85:4. Thus, Wallace specifically states that the addition of a second articulation
`
`axis is optional: “In some embodiments, advancement or retraction of a second rod
`
`generally along the axial direction tips the base through a second angle so that the
`
`distal member faces a second articulated direction.” Wallace, 4:10-14.
`
`C.
`
`In the primary combination, Wallace’s remotely controlled inputs
`replace Giordano’s manual articulation knob
`
`Patent Owner argues, once again, that a POSITA would, against all logic,
`
`keep Giordano’s manual articulation knob on the instrument’s shaft when adapting
`
`it for use with Wallace. POR, 31. This argument is baseless and does not reflect
`
`Petitioner’s primary combination. See Section II.C, supra. Of course, in the
`
`primary combination, all control functions are handled by Wallace’s robotic
`
`system as taught by Wallace (as Patent Owner admits), and therefore controlled
`
`remotely. See POR, 30 (admitting that “Wallace teaches the purpose of robotic
`
`telesurgery is to allow a surgeon to operate on a patient from a location that is
`
`remote from the patient’s body”).
`
`
`
`11
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`
`IV. Claims 11 and 24: A POSITA would not have been deterred from
`making the alternative combination of Shelton’s stapler and Wallace’s
`articulation mechanism
`
`For the alternative combination, Patent Owner also argues that a POSITA
`
`would have been deterred from using Wallace’s articulation mechanism because:
`
`(1) Shelton’s firing mechanism is allegedly incompatible with Wallace’s wrist
`
`mechanism, and (2) Wallace’s robotic tools allegedly lack sufficient rotary inputs
`
`to control the necessary motions of an articulating stapler.2
`
`A.
`
`Single axis articulation is all that claims 11 and 24 require, which can
`be accomplished using Shelton’s firing bar
`
`The claims at issue do not require more than one articulation axis. A single
`
`articulation axis is sufficient. Nonetheless, Patent Owner argues that Wallace
`
`requires multiple articulation axes and single axis articulation is “incompatible”
`
`with Wallace. POR, 23-25. However, as discussed previously in Section III.B.,
`
`Patent Owner is incorrect because Wallace expressly teaches articulation in a
`
`single axis.
`
`
`2 Patent Owner also argues that the Petition fails to show “a proximal spine portion
`
`pivotally coupled to a distal spine portion at an articulation joint.” POR, 22.
`
`However, like the primary combination, it is clear the alternate combination has
`
`the proximal and distal portions on either side of the articulation joint. See, e.g.,
`
`Petition, 87-88; Knodel Decl., ¶127; Knodel Dep., 18:25-20:4; Wallace, Fig. 3.
`
`
`
`12
`
`
`
`
`
`As explained by Dr. Knodel, even when making the alternative combination
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`of Shelton’s stapler with Wallace’s articulation mechanism, a POSITA would have
`
`been motivated to use only one axis of articulation given that Shelton’s firing bar
`
`can articulate only in a single axis.
`
`Q. What’s another possibility?
`
`A. Well, you could use single degree articulation, which
`
`most articulating endocutters only -- that I’m familiar
`
`with [--] only articulate in one direction. They don’t
`
`articulate in two.
`
`Q. Okay. But so you would then -- what you’re saying
`
`is you would reduce Wallace’s articulating wrist only do
`
`it in one direction?
`
`A. Right. Wallace’s articulation wrist can do this
`
`direction, and it can do this direction (indicating), but
`
`there’s nothing about Wallace that requires it to do all.
`
`Knodel Dep., 84:18-85:4. Thus, there would have been no need for Shelton’s
`
`firing bar to articulate in multiple axes.
`
`Patent Owner also argues that Shelton’s thin firing bar cannot articulate
`
`because “[e]ven if it were true that Shelton’s firing bar is bendable around a single
`
`axis … Shelton discloses no information about the material from which the firing
`
`bar is formed, and therefore, a POSITA would not have assumed that once bent
`
`about an articulation axis, Shelton’s firing bar would even be capable of returning
`
`
`
`13
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`
`to its original shape in working condition.” POR, 24-25. Patent Owner is again
`
`wrong, and a POSITA would understand that Shelton’s firing bar can articulate.
`
`As explained in the Petition, Giordano (which incorporates Shelton by
`
`reference) also incorporates Hueil by reference. Petition, 95. Thus, Giordano
`
`specifically discloses a firing bar that is nearly identical to Shelton’s, which is
`
`made from either a solid material or a laminate and bends around an articulation
`
`joint. Petition, 93-95. Although Hueil states that a laminate bends more easily
`
`than a solid firing bar, it is clear that a solid firing bar will bend as well. Hueil, ¶68
`
`(confirming that the firing bar “may be constructed from one solid section”).
`
`Moreover, the Petition specifically explained that it would have been obvious to
`
`replace Shelton’s firing bar with Hueil’s if necessary. Petition, 93-95. Given
`
`Hueil’s clear disclosure that firing bars of the sort disclosed in Shelton can
`
`articulate, it is curious that Patent Owner’s expert, Dr. Awtar, did not consider
`
`Hueil when forming his contrary opinions. Awtar Dep. II, 55:11-56:12
`
`B. Wallace provides sufficient control inputs
`
`Patent Owner also argues that Wallace’s robotic system allegedly lacks
`
`sufficient rotary inputs to control the device resulting from the alternative
`
`combination of Shelton’s stapler with Wallace’s articulation mechanism. Patent
`
`Owner, however, once again incorrectly assumes that the device resulting from the
`
`alternative combination must articulate in multiple axes. As explained previously
`
`
`
`14
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`
`in Sections II.C and IV.A, this is an incorrect assumption. Only one control input
`
`is needed to articulate in one axis. Accordingly, for example, four control inputs
`
`could be applied as follows: (1) articulation, (2) rotation, (3) closing, and (4) firing.
`
`Furthermore, even if it the alternative combination required more than four
`
`control inputs (it does not) and the references could not be physically combined,
`
`Patent Owner fails to recognize that the references need not be physically
`
`combinable in obviousness analysis. See Allied Erecting and Dismantling Co., Inc.
`
`v. Genesis Attachments, LLC, 825 F.3d 1373 (Fed. Cir. 2016). Indeed, a POSITA
`
`would simply add control inputs to the instrument base, for example. There is no
`
`magic to the four control inputs depicted in Wallace—in fact, the number of inputs
`
`is not even mentioned in the text of Wallace. And there is nothing in Wallace’s
`
`figures suggesting that Wallace’s robotic system is limited to four inputs.
`
`Therefore, the number of control inputs is not a stumbling block in making the
`
`alternative combination.
`
`Finally, Ex. 2014 does not support Patent Owner’s argument that modifying
`
`Wallace’s robotic system to add new control inputs would have been cost
`
`prohibitive. POR, 26-27. As an initial matter, this argument is irrelevant. Lack of
`
`economic feasibility does not demonstrate non-obviousness. In re Farrenkopf, 713
`
`F.2d 714, 718 (Fed. Cir. 1983) (“That a given combination would not be made by
`
`businessmen for economic reasons does not mean that persons skilled in the art
`
`
`
`15
`
`
`
`
`would not make the combination because of some technological incompatibility.
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`Only the latter fact would be relevant.”).
`
`Moreover, Ex. 2014 notes that designing a new robot for each application
`
`(i.e., a single-purpose robot) may be “cost prohibitive.” IS2014, ¶0007. The
`
`Petition, however, does not suggest developing a single-purpose robot. Instead, for
`
`the alternative combination, the Petition proposes adapting Shelton’s stapler for
`
`use with the Wallace’ robotic system, which is designed to be used with a wide
`
`range of surgical tools (i.e., a multiple-purpose robot). Petition, 26-28.
`
`C. Dr. Knodel’s testimony demonstrates a motivation to make the
`alternative combination
`
`Finally, Patent Owner argues that Dr. Knodel’s testimony does not
`
`demonstrate a motivation to make the alternative combination of Shelton and
`
`Wallace because Dr. Knodel allegedly opined only about what a POSITA could
`
`have done, not what a POSITA would have done. POR, 21. Patent Owner,
`
`ignores the bulk of Dr. Knodel’s declaration, which provides the motivation to
`
`combine Shelton and Wallace (see, e.g., ¶¶51-55, 122). Instead of disputing Dr.
`
`Knodel’s direct testimony, Patent Owner relies on a single question and answer
`
`from one of Dr. Knodel’s depositions taken out of context.
`
`In the colloquy, Dr. Knodel was asked about paragraph 127 of his
`
`declaration, which confirms a POSITA would have known how to make the
`
`
`
`16
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`
`alternative combination. Ex. 2011 (Knodel Dep.), 17:11-18:11. In other words,
`
`the testimony concerned the reasonable expectation of success and not the
`
`motivation to combine. The motivation to combine discussion was elsewhere.
`
`See, e.g., Knodel Decl., ¶¶50-55, 121. In the colloquy, Dr. Knodel properly stated
`
`that a POSITA could have made the combination he was suggesting, and he was
`
`not stating that a POSITA would have necessarily made that combination.
`
`Dr. Knodel’s testimony is fully consistent with the motivation to combine
`
`analysis. The law requires a motivation to make a combination, but does not
`
`require that the combination be the only combination that a POSITA would make.
`
`It is certainly possible, and probable, that there are many combinations a POSITA
`
`would be motivated to make, and thus an expert could not credibly state that a
`
`POSITA would make any particular one of them.
`
`Patent Owner also cites Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073-
`
`74 (Fed. Cir. 2015), but it offers no support. In Belden, the claims were found to
`
`have been obvious because there, as here, the evidence demonstrated that a
`
`POSITA could have made the proposed combination and would have been
`
`motivated to make the proposed combination.
`
`
`
`17
`
`
`
`Attorney Docket No. 11030-0049IPA
`Proceeding No. IPR2018-01254
`
`
`V. Claims 11 and 24: A POSITA would have reasonably expected to
`succeed when making the mechanical modifications necessary to make
`the primary and alternative combinations
`
`As explained by Dr. Knodel, a POSITA would have known how to make the
`
`proposed combinations, and, because they would have known how to do it, they
`
`would likewise have reasonably expected to succeed. Specifically, Dr. Knodel
`
`explained that the robotic system’s rotary outputs can be readily coupled to
`
`surgical stapler’s rotary inputs—and because a POSITA would know how to
`
`couple a rotary output to a rotary input, of course, there would necessarily be a
`
`“reasonable expectation of success.” Knodel Decl., ¶¶50, 52; see also ¶¶80, 121.
`
`Patent Owner ignores this evidence, and argues instead that: (1) the
`
`proposed combin
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
