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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`INTUITIVE SURGICAL, INC.
`Petitioner
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`v.
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`ETHICON LLC
`Patent Owner
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`______________
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`Case IPR2018-01254
`U.S. Patent No. 8,479,969
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`_______________
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`PETITIONER’S SUR-SUR-REPLY TO
`PATENT OWNER’S
`SUR-REPLY
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`Proceeding No. IPR2018-01254
`Attorney Docket No. 11030-0049IPA
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`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
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`The Testimony of Petitioner’s Engineer is Completely Consistent with
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`Petitioner’s Argument in this Proceeding ........................................................ 2
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`I.
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`II.
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`i
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`Proceeding No. IPR2018-01254
`Attorney Docket No. 11030-0049IPA
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`I.
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`Introduction
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`The Board authorized this Sur-Sur Reply in Paper 23. This Sur-Sur Reply
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`responds to a new issue raised by Patent Owner:
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`Patent Owner argues that “tactile feedback” is so “critical” to a linear stapler
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`that a POSITA would not combine a linear stapler with a robot that lacks “tactile
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`feedback.” Petitioner responded in its Reply Brief that Patent Owner must be
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`wrong because Patent owner sued Petitioner in District Court over Petitioner’s
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`robotic linear stapler which lacks the sort of “tactile feedback” Patent Owner
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`alleges is a necessity. If “tactile feedback” of the sort Patent Owner alleges was a
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`necessity, then logically, the accused products would have it when in fact they do
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`not. Patent Owner has no answer.
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`Instead, Patent Owner asked the Board for leave to file an excerpt from the
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`deposition of an engineer employed by Petitioner that Patent Owner asserted was
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`“inconsistent” with Petitioner’s argument. However, far from being
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`“inconsistent,” the deposition supports Petitioner. The testimony confirms that the
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`robotic linear staplers of Petitioner use “SmartClamp” technology (a type of
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`“visual feedback”) instead of “tactile feedback” to feel clamp strength.
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`1
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`Proceeding No. IPR2018-01254
`Attorney Docket No. 11030-0049IPA
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`II. The Testimony of Petitioner’s Engineer is Completely Consistent with
`Petitioner’s Argument in this Proceeding
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`Petitioner asserts that a POSITA would be motivated to combine the surgical
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`robot of Wallace and Tierney with the linear stapler/cutter of Giordano/Shelton
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`because, among other reasons, a POSITA would be motivated to adapt surgical
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`staplers for robotic use. Petition, 26.
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`Patent Owner argues that a POSITA would only combine a linear
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`stapler/cutter like Giordano/Shelton with a surgical robot that provides “tactile
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`feedback.” Patent Owner is clearly wrong because there are actual robotic linear
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`cutter/staplers designed for use with robots that lack the sort of “tactile feedback”
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`Patent Owner asserts is necessary.1
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`After Petitioner pointed out this fundamental and dispositive flaw in Patent
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`Owner’s “tactile feedback” theory, Patent Owner informed the Board that it had
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`“inconsistent” testimony from one of Petitioner’s engineers. 2019-07-12 Email
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`1 Wallace/Tierney does, in fact, disclose “tactile feedback” through an incorporated
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`disclosure, and if the Board agrees, this issue is moot. Cooper is incorporated into
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`Wallace, and Cooper teaches “tactile feedback.” E.g., IS1018 (Cooper), 3:44-47,
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`5:9-13. The ’666 Application is incorporated into Tierney, and that application
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`likewise teaches “tactile feedback.” IS1025 (’666 Application), 5:32-35.
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`2
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`from Christopher Pepe to the Board; see also Paper 23 (providing authorization for
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`Proceeding No. IPR2018-01254
`Attorney Docket No. 11030-0049IPA
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`the deposition excerpt stating “we authorize Patent Owner to submit under seal
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`with its Sur-Reply deposition testimony from the co-pending litigation of one of
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`Petitioner’s employees, which Patent Owner contends is inconsistent with this
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`argument”).
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`Patent Owner has now filed the confidential excerpt, but Patent Owner no
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`longer asserts it is “inconsistent.” Instead, Patent Owner states that Petitioner’s
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`“robotic systems did not provide tactile feedback” and confirms that visual
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`feedback is an adequate substitute. Sur-Reply, 19-20 (acknowledging that
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`Petitioner’s product offers “SmartClamp” (a type of visual feedback) instead of
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`“tactile feedback” to feel the clamping force).2
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`Accordingly, the excerpt confirms what Petitioner argued—there are actual
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`robotic linear stapler/cutters on the market that do not have the type of tactile
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`feedback that allows a surgeon to feel the clamping force, and therefore Patent
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`Owner’s argument that a POSITA would not combine a linear stapler/cutter with a
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`such a robot is baseless and wrong. Not only would a hypothetical POSITA make
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`2 Patent Owner provides a URL, but the following is more informative:
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`https://us.davincisurgerycommunity.com/detail/videos/p6_stapler/video/52707516
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`86001/stapler-smart-clamp?autoStart=true#
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`3
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`the combination, but actual people in the field made such a combination and actual
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`Proceeding No. IPR2018-01254
`Attorney Docket No. 11030-0049IPA
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`surgeons bought such a combination.
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`Finally, Patent Owner asserts that “tactile feedback” was “not available” on
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`actual robots. Sur-Reply, 20. Even if true, that fact has no impact on the
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`Wallace/Tierney disclosure (via an incorporated reference) of tactile feedback and
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`the sensors to provide it. Moreover, a POSITA is not presumed to know the
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`features of commercial robots because commercial robots are not prior art in IPR
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`proceedings.
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`Dated: August 26, 2019
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`Respectfully submitted,
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` /Steven R. Katz/ .
`Steven Katz, Reg. No. 43,706
`John C. Phillips, Reg. No. 35,322
`Ryan O'Connor, Reg. No. 60,254
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 858-678-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`4
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`Proceeding No. IPR2018-01254
`Attorney Docket No. 11030-0049IPA
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on August 26, 2019, a complete and entire copy of this Petitioner’s
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`Sur-Sur-Reply to Patent Owner’s Sur-Reply was provided via email to the Patent
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`Owner by serving the email correspondence addresses of record as follows:
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`Anish R. Desai
`Elizabeth Stotland Weiswasser
`Adrian Percer
`Christopher T. Marando
`Christopher M. Pepe
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
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`Email:
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`Ethicon.IPR.Service@weil.com
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`/Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(858) 678-5667
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