UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`v.
`ETHICON LLC,
`Patent Owner
`
`
`
`
`
`IPR2018-01254
`U.S. Patent No. 8,479,969
`
`PATENT OWNER’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`

`

`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .......................................................................................... 1
`
`THE 969 PATENT .......................................................................................... 5
`
`A. Overview ............................................................................................... 5
`
`B.
`
`Priority Date ........................................................................................ 11
`
`III. CLAIM CONSTRUCTION .......................................................................... 11
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`IV. THE PRIOR ART .......................................................................................... 12
`
`A. Giordano .............................................................................................. 12
`
`B.
`
`Shelton ................................................................................................. 15
`
`C. Wallace ................................................................................................ 16
`
`D.
`
`Tierney ................................................................................................. 18
`
`V.
`
`REASONS WHY THE PETITION SHOULD BE DENIED ....................... 18
`
`A. All of Petitioner’s Grounds Fail Because Petitioner Does Not
`Establish a Motivation to Combine or Reasonable Expectation of
`Success ................................................................................................ 18
`
`1.
`
`2.
`
`Grounds 1-5: Petitioner provides no explanation for how
`to combine the incompatible systems of Giordano’s and
`Shelton’s handheld instruments and Wallace’s robotic
`instrument base ......................................................................... 19
`
`Petitioner fails to show a reasonable expectation of
`success ....................................................................................... 23
`
`B.
`
`The Board Should Exercise Its Discretion To Deny Institution
`Pursuant To § 325(d) ........................................................................... 25
`
`VI. CONCLUSION .............................................................................................. 29
`
`i
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`

`

`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Agrinomix, LLC v. Mitchell Ellis Prods., Inc.,
`IPR2017-00525, Paper No. 6 (P.T.A.B. June 14, 2017) .................................... 27
`Arctic Cat Inc. v. Bombardier Recreational Prod. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) ...................................................................... 4, 19
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (P.T.A.B. Dec. 5, 2017) ............................................. 25
`Compass Bank v. Intellectual Ventures II,
`IPR2014-00786, Paper 46 (P.T.A.B. Sept. 23, 2015)................................... 22, 23
`Corning Inc. v. DSM IP Assets,
`IPR2013-00050, Paper 77 (P.T.A.B. May 1, 2014) ..................................... 22, 24
`Cultec, Inc. v. Stormtech Inc.,
`IPR2017-00777, Paper No. 7 (P.T.A.B. Aug. 22, 2017) .................................... 26
`Institut Pasteur v. Focarino,
`738 F.3d 1337 (Fed. Cir. 2013) .......................................................................... 19
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 18
`Praxair Distrib., Inc. v. INO Therapeutic LLC,
`IPR2015-00893, Paper 14 (P.T.A.B. Sept. 22, 2015)......................................... 25
`Unified Patents Inc. v. Berman,
`IPR2016-01571, Paper No. 10 (P.T.A.B. Dec. 14, 2016) .................................. 28
`Other Authorities
`37 C.F.R. § 42.65(a) ........................................................................................... 22, 23
`37 C.F.R. § 42.100(b) .............................................................................................. 12
`37 CFR § 42.6(a)(2)(ii) ............................................................................................ 30
`ii
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`
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`

`

`37 CFR § 42.6(a)(2)(iii) ........................................................................................... 30
`37 CFR § 42.8 .......................................................................................................... 30
`37 CFR § 42.24(a)(1)(i) ........................................................................................... 30
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) ........................................................ 12
`83 Fed. Reg. 51,340 (Oct. 11, 2018) ........................................................................ 12
`
`
`
`
`
`
`
`iii
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`

`

`EXHIBIT LIST
`
`Exhibit #
`
`2001
`
`2002
`2003
`2004
`
`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)
`U.S. Patent No. 7,691,098
`U.S. Patent No. 7,524,320
`U.S. Patent No. 6,783,524
`
`
`
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`
`iv
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`

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`
`
`I.
`
`INTRODUCTION
`Ethicon is a market leader in developing endocutter1 technology and
`
`commercially released its first endocutter in 1996. Since then, Ethicon has
`
`developed numerous endocutters to address changing surgical needs. In 2011,
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`Ethicon introduced its first motor-powered endocutter – the ECHELON FLEX™
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`Powered ENDOPATH® Stapler. Ethicon’s motor-powered endocutters offer
`
`numerous benefits including dramatically reducing the force required to operate an
`
`endocutter and providing reliability across a broad range of tissue thicknesses.
`
`The challenged claims of U.S. Patent No. 8,479,969 (“the 969 Patent”) are
`
`directed to an articulating endocutter surgical tool that operatively couples to a
`
`robotic surgical system. More specifically, the 969 Patent improves upon prior
`
`robotic surgical tools, such as grasping jaws, scalpels and electrocautery probes, that
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`were known to be “unable to generate the magnitude of forces required to effectively
`
`cut and fasten tissue” as is required of an endocutter. Ex. 1001, 23:6-29. The 969
`
`
`1 An endocutter is a surgical instrument that both staples and cuts tissue. The term
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`“stapler” can also be used to refer to this type of device, but can also refer to a device
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`that only staples. Exhibit 2001 includes excerpts of a technology tutorial on
`
`endocutters that was filed in the District of Delaware on June 28, 2018.
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`1
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`

`

`
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`Patent’s innovative tool base for an endocutter overcame these limitations of the
`
`prior art systems.
`
`Petitioner’s obviousness challenges are primarily based on U.S. Publication
`
`No. 2008/0167672 (“Giordano”) (Ex. 1014), the publication of the 969 Patent’s
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`grandparent application that is assigned to Patent Owner. Giordano discloses a
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`handheld endocutter with an articulation joint in the shaft and a rotary firing
`
`mechanism. Ex. 1014, Figs. 2, 7. Additionally, Giordano purports to incorporate
`
`by reference U.S. Patent No. 6,978,921 (“Shelton”) (Ex. 1015), a patent also
`
`assigned to Patent Owner which also discloses a handheld endocutter design. Ex.
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`1015, Figs. 1, 7.
`
`While Giordano is the grandparent of the 969 Patent, Petitioner contends that
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`Giordano does not support the “robotic system” claim elements of the challenged
`
`claims and that Giordano “is directed toward handheld ‘endoscopic surgical
`
`instrument[s]’ with only a passing reference to ‘robotic-assisted surgery.’” Petition
`
`at 11. Thus, Petitioner has expressly taken the position that Giordano does not
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`disclose an endocutter for use with a robotic system. Similarly, Shelton includes no
`
`discussion of robotic systems. Thus, in order to arrive at the endocutter tool
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`specifically designed for a robotic application that is described and claimed by the
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`969 Patent, Petitioner proposes to combine Giordano and/or Shelton’s handheld
`
`endocutter with the robotic instrument base designed for non-endocutter tools
`
`2
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`

`

`
`
`disclosed in U.S. Patent Nos. 6,699,235 (“Wallace”) (Ex. 1008) and 6,331,181
`
`(“Tierney”) (Ex. 1009).
`
`Although Petitioner’s obviousness challenges in Grounds 3-5 are ostensibly
`
`based on U.S. Patent No. 6,978,921 (“Shelton”), the Petition makes clear that these
`
`grounds are largely duplicative of Grounds 1 and 2, and are asserted merely as
`
`fallback positions in the event the Board finds that certain purported incorporations
`
`by reference and other disclosures in the asserted prior art references are ineffective.
`
`See Petition at 91-96.
`
`Petitioner’s obviousness grounds fail to satisfy the basic standard for
`
`establishing obviousness. Petitioner does not explain how Giordano’s and Shelton’s
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`handheld endocutters could be adapted to function using Wallace’s instrument base
`
`and Tierney’s robotic system. Indeed, as shown in the figures below, it is apparent
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`that combining the handheld endocutter system of Giordano/Shelton and the non-
`
`endocutter robotic tool of Wallace/Tierney is not a simple matter of taking the
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`endocutter end effector from Giordano/Shelton and attaching it to the robotic tool
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`base in Wallace/Tierney. Petitioner’s combination is pure hindsight because it
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`wholly neglects the more complex drive system required for an endocutter as
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`compared to the non-endocutter tools in Wallace/Tierney, as well as the significant
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`difference in a drive system for a handheld tool versus a robotic tool.
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`3
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`

`

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`
`
`
`End
`effector
`
`Drive
`System
`
`Giordano/Shelton
`
`Wallace/Tierney
`
`
`
`
`
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`Additionally, Petitioner fails to offer any evidence of reasonable expectation of
`
`
`
`
`
`success in the combination of any of the references. This failure alone is grounds to
`
`deny institution. See Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 876
`
`F.3d 1350, 1360-61 (Fed. Cir. 2017) (“where a party argues a skilled artisan would
`
`have been motivated to combine references, it must show the artisan would have had
`
`a reasonable expectation of success from doing so”) (internal citation and quotation
`
`omitted).2
`
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`2 All emphasis added unless otherwise noted.
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`4
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`

`

`
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`For these reasons, and the additional reasons explained in detail below, Patent
`
`Owner respectfully requests that the Board deny institution as to all grounds asserted
`
`in the petition.
`
`II. THE 969 PATENT
`A. Overview
`The challenged claims of the 969 Patent are directed to novel implementations
`
`of a “surgical tool for use with a robotic system.” The surgical tools of independent
`
`claims 1 and 24 include, inter alia, a transmission assembly in meshing engagement
`
`with a gear-driven portion to apply control motions to a selectively moveable
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`component of the end effector as well as an elongated shaft comprising proximal and
`
`distal spine portions coupled at an articulation joint to facilitate articulation of the
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`end effector. Ex. 1001, claim 24. The claimed surgical tools each include “a tool
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`mounting portion operably coupled to” the instrument shaft that is “configured to
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`operably interface with the tool drive assembly” of the robotic system in order to
`
`apply control motions to various components of the instrument, such as the cutting
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`blade or the selectively movable end effector. Id. An endocutter embodiment of the
`
`969 Patent is depicted in Figure 132:
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`
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`5
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`

`

`
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`Ex. 1001, Fig. 132
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`
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`The instrument includes an endocutter end effector (6012) that has a movable
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`upper jaw/anvil (6024) that moves between first and second positions relative to the
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`lower jaw (6022). Ex. 1001, 77:7-13. The endocutter end effector also includes a
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`cutting instrument that moves between first and second positions relative to the
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`lower jaw (6022). Ex. 1001, 84:27-37. The end effector 6012 is located on one end
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`of the elongated shaft (6008), which has an articulation joint (6100). Ex. 1001,
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`76:62-67. The articulation joint (6100) allows the shaft to selectively articulate on
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`two axes, one that is transverse to the longitudinal tool axis (designated “LT”), and
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`one that is transverse to both the first articulation axis and LT. Id., 77:38-46. These
`6
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`

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`
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`axes are designated “TA1” and “TA2” in Figure 133, which provides a more detailed
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`view of the articulation joint (6100):
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`
`
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`The instrument couples to the surgical system via the tool mounting portion
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`Ex. 1001, Fig. 133
`
`(6200). Id., 77:1-2. Figure 136 below shows the tool mounting portion (6200) in
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`detail. The tool mounting portion includes an articulation transmission system
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`(6142) that controls articulation about the articulation joint (6100). Id., 78:23-34.
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`The robotic system controls the articulation transmission system by applying a first
`
`rotary output motion to the articulation drive gear (6322). Id., 81:28-82:19.
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`7
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`
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`Ex. 1001, Fig. 136
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`
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`The tool mounting portion includes closure transmission (6512) including a
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`closure gear assembly (6520) to close the anvil (6420) of the endocutter in response
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`to a third rotary output motion from the robotic system to the closure spur gear
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`(6522). Id., 83:44-84:26.
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`The tool mounting portion additionally includes a knife drive transmission
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`portion (6550) including a knife gear assembly (6560) to fire the cutting instrument
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`to cut tissue in response to a fourth rotary output motion from the robotic system to
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`the knife spur gear (6562). Id., 84:38-85:16.
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`8
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`

`
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`The tool mounting portion also includes a rotational transmission assembly
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`(6400) that imparts rotary control motion for rotating the instrument shaft about the
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`longitudinal axis LT-LT. Id., 82:42-51. The robotic system controls the rotational
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`transmission assembly by applying a second rotary output motion to the rotation
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`drive gear (6412). Id., 83:9-15.
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`Thus, as discussed above and described in detail by the 969 Patent, the
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`“unique and novel transmission arrangement” of the 969 Patent allows a robotic
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`system with four output motions to control (i) articulation about two different
`
`articulation axes that are substantially transverse to each other and the longitudinal
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`tool axis: (ii) end effector rotation about the longitudinal tool axis; (iii)
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`opening/closing of the end effector anvil to clamp tissue; and (iv) firing the cutting
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`instrument to cut tissue. Id., 85:17-32. As noted in the 969 Patent, “the unique and
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`novel shifter arrangements . . . enable two different articulation actions to be
`
`powered from a single rotatable body portion of the robotic system.” Id., 85:32-36.
`
`Unlike prior art robotic tool mounts, which were “unable to generate the magnitude
`
`of forces required to effectively cut and fasten tissue,” the gears of the 969 Patent’s
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`embodiments were further sized to generate the necessary force to close the anvil
`
`and cut and staple tissue. Id., 23:6-29, 84:20-26, 85:4-10.
`
`Petitioner devotes several pages of the Petition to alleging that the 969 Patent
`
`copied Petitioner’s Tierney patent. Petition at 2-6. Petitioner’s insinuations,
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`9
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`

`
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`however, misrepresent the contributions of the 969 Patent. As an initial matter, the
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`969 Patent does not purport to have invented robotic surgical systems; indeed, the
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`969 Patent specification expressly discloses examples of known prior art robotic
`
`systems and robotic tools, including Tierney.3 Ex. 1001, 23:6-29. Thus, the
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`inclusion of figures 23 and 25 depicting known robotic systems is of no moment,
`
`and provides the appropriate context for the invention.
`
`Importantly, the 969 Patent further discloses that these systems were known
`
`to be “unable to generate the magnitude of forces required to effectively cut and
`
`fasten tissue.” Id. As discussed above, the 969 Patent’s innovative tool base
`
`overcame these limitations of the prior art systems. Moreover, as discussed in
`
`greater detail below, Tierney is directed primarily to the robotic surgical system
`
`itself, and discloses few details about particular surgical instruments or how the
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`instrument functions are controlled through the instrument base. The 969 Patent, by
`
`contrast, discloses a novel instrument base that allows a robotic system, using only
`
`four rotary outputs, to control an endocutter that grasps tissue in the end effector,
`
`
`3 The disclosure of robotic systems at col. 23, lines 6-29 in the 969 Patent (Ex. 1001)
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`includes U.S. 7,524,320, which has the same specification and figures as Tierney.
`
`Specifically, U.S. 7,524,320 is a continuation of U.S. 7,048,745, which is a division
`
`of Tierney.
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`10
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`

`
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`cuts and staples tissue, articulates about an articulation joint, and rotates about a
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`longitudinal axis. Ex. 1001, 85:17-36. The Petition’s allegations of copying wholly
`
`ignore the significant advancements described and claimed in the 969 Patent as
`
`compared to the non-endocutter robotic tools disclosed in Wallace and Tierney.
`
`Priority Date
`B.
`Petitioner contends that the challenged claims of the 969 Patent are not
`
`entitled to a priority date earlier than May 27, 2011. Petition at 11 The 969 Patent
`
`claims priority to application No. 11/651,807, which was filed on Jan. 10, 2007. Ex.
`
`1001, (63). Because the Petition should be denied, for the reasons set forth herein,
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`regardless of the effective filing date of the challenged claims, Patent Owner does
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`not address Petitioner’s priority date arguments in this paper, but reserves all rights
`
`to subsequently contend in any instituted IPR or in any other proceeding that the
`
`challenged claims are entitled to their earliest claimed effective filing date.
`
`III. CLAIM CONSTRUCTION
`For purposes of IPR only, the claims of the 969 Patent should be construed
`
`using the broadest reasonable construction in light of the specification of the patent.
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`11
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`

`
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`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012);
`
`37 C.F.R. § 42.100(b)4.
`
`IV. THE PRIOR ART
`A. Giordano
`Giordano is directed to a powered, handheld endocutter that includes a sensor
`
`in the end effector and a control unit in the handle. Ex. 1014, Abstract. Giordano
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`describes that prior art “power-assist” endocutters had been developed to reduce the
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`firing force required from the surgeon. Id. at [0013]. A challenge associated with
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`these prior art power-assist devices was the need to deliver power or data signals to
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`and from sensors and control systems in the instrument, particularly in instruments
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`that had a “free rotating joint” (i.e., an articulation joint). Id. at [0014]. To address
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`these needs, Giordano discloses a handheld instrument with a passively powered
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`sensor in the end effector. Id. at [0015]. The instrument handle includes a
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`microcontroller that communicates with the sensor. Id. The instrument shaft, which
`
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`4 Patent Owner recognizes that the USPTO has issued a final rule revising the claim
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`construction standard for IPR proceedings filed on or after November 13, 2018. See
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`83 Fed. Reg. 51,340 (Oct. 11, 2018). Because Petitioner filed its Petition on June
`
`14, 2018, the broadest reasonable interpretation standard should apply to this IPR
`
`pursuant to pre-October 11, 2018 37 C.F.R. § 42.100(b).
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`12
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`

`
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`includes a rotational joint, may act as an antenna to relay signals between the control
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`unit and the sensor, thus overcoming the difficulties of providing a wired connection
`
`through the articulation joint. Id. at [0015]-[0017].
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`An embodiment of Giordano’s device is shown in Figure 2 (illustrating the
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`surgical instrument) and Figure 7 (exploded view of the handle system).
`
`Ex. 1014, Fig. 2
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`
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`13
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`
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`Ex. 1014, Fig. 7
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`As shown in Figure 2, the instrument includes an end effector 12 with a staple
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`channel 22 and an anvil 24. Ex. 1014 at [0036]. The end effector is attached to a
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`shaft 8, which has an articulation pivot 14. Id. at [0034]. The surgeon controls
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`rotational articulation about the pivot 14 using the articulation control 16. Id.
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`Additionally, a rotation knob (not labeled in the figure) is used to rotate the shaft.
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`Id. The device handle 6 includes a closure trigger 18 and a firing trigger 20, shown
`
`in both Figures 2 and 7, to control closure and firing of the end effector, respectively.
`
`Id. at [0035]. Thus, Giordano’s instrument utilizes four separate input motions to
`
`control four different functions: (1) squeezing the closure trigger 18 to close the end
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`effector, (2) squeezing the firing trigger 20 to control firing of the staples, (3)
`
`14
`
`

`

`
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`actuation of articulation control 16 to control articulation around the pivot 14, and
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`(4) movement of the rotation knob to rotate the instrument shaft.
`
`Shelton
`B.
`Like Giordano, Shelton discloses a handheld endocutter. Petitioner appears
`
`to rely on Shelton solely for its disclosure of a closure sleeve 32 that opens and closes
`
`the end effector under the control of a gear-driven closure trigger 26. Petition at 14-
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`16; Ex. 1015, Fig. 7; 5:63-6:3, 7:39-50.
`
`
`
`Ex. 1015, Fig. 7
`
`15
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`

`

`
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`Additionally, Shelton’s instrument provides shaft rotation through a rotation
`
`knob 60, and provides separate control of staple firing through a firing trigger 28.
`
`Id., 5:58-62, 7:16-27. Shelton does not disclose an articulation joint. Thus,
`
`Shelton’s instrument requires three control motions to perform three instrument
`
`operations: (1) pulling the closure trigger 26 to close the end effector, (2) pulling the
`
`firing trigger 28 to fire the stapler, and (3) turning the rotation knob to rotate the
`
`shaft.
`
`C. Wallace
`Wallace is directed to a robotic surgical instrument with a “wrist mechanism”
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`that allows the end effector to articulate under the control of a series of rods. Ex.
`
`1008, Abstract. Examples of the wrist mechanism are shown in Figures 2A and 3.
`
`
`
`
`
`Ex. 1008, Fig. 2A and Fig. 3
`16
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`

`

`
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`Wallace’s instrument couples to a robotic system through a tool base 62,
`
`shown in Figure 30. Id., 7:37-40.
`
`Ex. 1008, Fig. 30
`
`
`
` The articulation rods shown in Figures 2A and 3 emerge into the tool base as
`
`rods 300. Id., 13:44-45. Gears 400 rotate the sector gears 312, which advances or
`
`retracts individual ones of the rods 300 to actuate the wrist mechanism. Id., 13:47-
`
`54. Gear 420 rotates the roll pulley 310, which causes the rods and the instrument
`
`shaft to rotate around the central axis of the shaft. Id., 13:66-14:10. Thus, Wallace’s
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`tool base utilizes three rotary output motions (those of the two gears 400 and the one
`
`gear 420) to control two instrument motions (wrist articulation and shaft rotation).
`
`17
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`

`

`
`
`D. Tierney
`Tierney is a patent directed to a robotic surgical system. Wallace purports to
`
`incorporate Tierney by reference. Ex. 1008, 1:10-41. Petitioner appears to rely on
`
`Tierney solely for its disclosure of the robotic system; Petitioner does not cite
`
`Tierney for any specifics of the surgical instrument that couples to the robotic
`
`system.
`
`V. REASONS WHY THE PETITION SHOULD BE DENIED
`A. All of Petitioner’s Grounds Fail Because Petitioner Does Not
`Establish a Motivation to Combine or Reasonable Expectation of
`Success
`All of the asserted grounds are obviousness combinations. In an obviousness
`
`ground, it is the Petitioner’s burden to show “that a skilled artisan would have been
`
`motivated to combine the teachings of the prior art references to achieve the claimed
`
`invention, and that the skilled artisan would have had a reasonable expectation of
`
`success in doing so” (internal citation and quotations omitted). Kinetic Concepts,
`
`Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012). Petitioner falls
`
`far short of meeting this burden for each of the grounds.
`
`First, Petitioner provides no explanation for how the handheld endocutter
`
`instruments of Giordano and Shelton would be combined with Wallace’s robotic
`
`instrument base for a non-endocutter tool in any of the proposed combinations.
`
`18
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`

`
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`Second, Petitioner does not provide any evidence of a reasonable expectation
`
`of success. The Federal Circuit has “held that where a party argues a skilled artisan
`
`would have been motivated to combine references, it must show the artisan would
`
`have had a reasonable expectation of success from doing so.” Arctic Cat Inc., 876
`
`F.3d at 1360-61 (internal citation and quotations omitted). “[K]nowledge of the goal
`
`does not render its achievement obvious, and obviousness generally requires that a
`
`skilled artisan have reasonably expected success in achieving that goal.” Institut
`
`Pasteur v. Focarino, 738 F.3d 1337, 1346 (Fed. Cir. 2013) (internal citations and
`
`quotations omitted). Petitioner mentions a reasonable expectation of success only
`
`in passing quotations of obviousness rationales, providing no factual evidence or
`
`analysis to support a reasonable expectation of success in any of the grounds. For
`
`this reason, the Petition fails as a matter of law.
`
`1. Grounds 1-5: Petitioner provides no explanation for how to
`combine the incompatible systems of Giordano’s and
`Shelton’s handheld instruments and Wallace’s robotic
`instrument base
`Petitioner has provided no cognizable combination of the handheld
`
`instruments disclosed by Giordano and Shelton with the robotic instrument base
`
`disclosed by Wallace.
`
`As explained in Section IV.C, Wallace discloses a robotic surgical instrument
`
`with an articulating wrist that is controlled by articulation rods. Gears 400 on
`
`Wallace’s tool base 62 rotate the sector gears 312, which advance or retract
`19
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`

`
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`individual ones of the rods 300 to actuate the wrist mechanism. Ex. 1008, 13:44-54,
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`Fig. 30.
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`Ex. 1008, Fig. 30
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`Gear 420 on the tool base rotates the roll pulley 310, which causes the rods and the
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`instrument shaft to rotate around the central axis of the shaft. Id., 13:66-14:10. Thus,
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`Wallace’s tool base utilizes three rotary output motions (those of the two gears 400
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`and the one gear 420) to control two instrument motions (wrist articulation and shaft
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`rotation).
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`Both Giordano’s and Shelton’s handheld instruments are plainly incompatible
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`with this arrangement. As discussed in Section IV.A, Giordano’s endocutter
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`requires four separate control motions to close the end effector, fire the endocutter,
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`rotate the shaft, and articulate about the pivot joint in the shaft. Wallace’s tool base
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`already uses three of four available rotary inputs to control articulation and shaft
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`rotation, thus leaving a single rotary input to control end effector closure and firing.
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`Neither Giordano nor Shelton discloses any embodiments in which closure and
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`firing are controlled by a single motion. Indeed, Shelton specifically discloses that
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`a well-known “advantage of being able to close upon tissue before firing is that the
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`clinician is able to verify via an endoscope that a sufficient amount of tissue has been
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`captured between opposing jaws. Otherwise, opposing jaws may be drawn too close
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`together, especially pinching at their distal ends, and thus not effectively forming
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`closed staples in the severed tissue.” Ex. 1015, 2:47-53.
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`Petitioner offers no explanation for how a POSITA would have combined
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`these references, beyond the cursory allegation that Giordano’s transmission
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`assembly “would be coupled with (and have portions replaced by) the transmission
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`assembly of Wallace, which includes various shafts and gears, including gears 312,
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`400, and 420, that transmit rotary motion from the driven disks to gear-driven
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`elements.” Petition at 45. Critically, Petitioner does not explain how Wallace’s
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`instrument base would be modified to provide the necessary control motions for the
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`combined instrument. As discussed above, Wallace’s instrument base has four
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`spools for receiving four rotary outputs. Three of these spools are already used in
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`Wallace to provide shaft roll and articulate the end gripper. That leaves only a single
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`spool on the instrument base to accommodate both closure and firing of the end
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`effector, which Giordano and Shelton both expressly disclose as being separately
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`controlled by two distinct triggers. Petitioner provides no explanation whatsoever
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`of how a single rotary could be used to provide independent closure and firing
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`control in the proposed hybrid system.
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`Petitioner offers nothing to reconcile these incompatibilities between
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`Giordano and Shelton on one hand and Wallace on the other, beyond conclusory
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`assertions that the combination would have yielded “predictable results without
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`significantly altering or hindering the functions performed by the Shelton stapler and
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`the Wallace/Tierney robotic system.” See, e.g., Petition at 28; see also id. at 68-69,
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`84. Petitioner’s only purported evidence in support of this proposed combination is
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`the testimony of its expert, which merely parrots the argument in the Petition, and
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`offers additional, unsupported assertions of expected success. Ex. 1005, ¶¶ 55, 102,
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`120. This unsupported testimony should be given no weight. 37 C.F.R. § 42.65(a);
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`Compass Bank v. Intellectual Ventures II, IPR2014-00786, Paper 46 at 31 (P.T.A.B.
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`Sept. 23, 2015); see also Corning Inc. v. DSM IP Assets, IPR2013-00050, Paper 77
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`at 22-23, 25 (P.T.A.B. May 1, 2014) (giving expert opinion little weight where it
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`“repeats [Patent Owner’s] attorney argument word-for-word.”).
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`In short, there are clear incompatibilities between the handheld endocutter
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`instruments disclosed in Giordano and Shelton and the non-endocutter robotic
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`instruments disclosed in Wallace and Tierney, and Petitioner has not even attempted
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`to explain how these instruments would have been combined by a POSITA in order
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`to retain the necessary control motions.
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`Petitioner fails to show a reasonable expectation of success
`2.
`The Petition does not demonstrate a reasonable expectation of success in any
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`of the proposed combinations. As discussed above, all of the proposed obviousness
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`combinations are incompatible and inoperable. Thus, for the same reasons discussed
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`in Section V.A.1, a POSITA would not have had a reasonable expectation of success
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`from attempting the proposed combinations.
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`Moreover, with respect to all of the grounds, Petitioner’s only arguments on
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`reasonable expectation to success are conclusory assertions that the proposed
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`combinations would have yielded “predictable results without significantly altering
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`or hindering the functions performed by the Shelton stapler and the Wallace/Tierney
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`robotic system.” See, e.g., Petition at 28; see also id. at 68-69, 84. The only evidence
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`Petitioner offers to support these assertions is the testimony of its expert, which
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`merely parrots back the words of the Petition and offers additional, unsupported
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`assertions of expected success. See Ex. 1005, ¶¶ 55, 102, 120. This unsupported
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`testimony should be given no weight. 37 C.F.R. § 42.65(a); Compass Bank v.
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`Intellectual Ventures II, IPR2014-00786, Paper 46 at 31; see also Corning Inc. v.
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`DSM IP Assets, IPR2013-00050, Paper 77 at 22-23, 25 (giving expert opinion little
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`weight where it “repeats [Patent Owner’s] attorney argument word-for-word.”).
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`Petitioner’s
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`inability
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`to show reasonable expectation of success
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`is
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`unsurprising. As discussed extensively in the preceding sections, one of the core
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`innovations of the 969 Patent was the development of a novel and inventive
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`instrument base that allowed a surgical instrument that grasps tissue in the end
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`effector, cuts and staples tissue, articulates about an articulation joint, and rotates
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`about a longitudinal axis to be controlled by a robotic system using only four rotary
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`output motions. Ex. 1001, 85:17-36. Indeed, as the 969 Patent explains, “[t]he
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`unique and novel shifter arrangements of various embodiments of the present
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`invention described above enable two different articulation actions to be powered
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`from a single rotatable body portion of the robotic system.” Id., 85:32-36. Wallace’s
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`tool base accepts four rotary output motions, but because it lacks the 969 Patent’s
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`innovations, it cannot control articulation in two dimensions with a single rotary
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`element, and as a result, non