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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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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.
`______________________
`
`IPR2018-01254
`U.S. Patent No. 8,479,969
`______________________
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`PATENT OWNER’S LIST OF IMPROPER REPLY ARGUMENTS
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`1.
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`Page 5, line 18 through Page 6, line 3; Page 6, lines 8-12; Page 11,
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`IPR2018-01254
`U.S. Patent No. 8,479,969
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`lines 13-16: Petitioner makes new arguments that the articulation control would be
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`moved to Wallace’s tool mounting portion, while the Petition relied on the
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`Giordano articulation mechanism that is located on the instrument’s shaft. See
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`Petition at 81-83, 85-87.
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`2.
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`Page 10, lines 1-6: Petitioner makes new arguments that a POSITA
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`would have started with Shelton’s stapler adapted to include Giordano’s
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`articulation mechanism and would have been satisfied with its single axis
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`articulation, but the Petition argued that a POSITA would have found Wallace’s
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`teaching of multi-axis 360 degree movement to improve upon Giordano’s
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`disclosure of single axis articulation. Petition at 85.
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`3.
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`Page 11, lines 1-7: Petitioner makes new arguments that multi-axis
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`articulation is optional in Wallace, but the Petition relied upon Wallace’s teaching
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`of the benefits of multi-axis 360 degree movement as the sole motivation for using
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`Wallace’s articulation mechanism. Petition at 85.
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`4.
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`Page 13, lines 1-4: Petitioner makes new arguments that a POSITA
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`would have been motivated to use Wallace’s articulation mechanism with only one
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`axis of articulation, but the Petition relied upon Wallace’s teaching of the benefits
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`of multi-axis 360 degree movement as the sole motivation for using Wallace’s
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`articulation mechanism. Petition at 85.
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`Dated: August 14, 2019
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`Respectfully submitted,
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`
`
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`
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`/Anish R. Desai/
`Anish R. Desai
`Reg. No. 73,760
`WEIL, GOTSHAL & MANGES LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8730
`E: anish.desai@weil.com
`
`Counsel for Patent Owner
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`2
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`IPR2018-01254
`U.S. Patent No. 8,479,969
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`CERTIFICATE OF SERVICE
`I hereby certify that on August 14, 2019, a copy of PATENT OWNER’S
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`LIST OF IMPROPER REPLY ARGUMENTS and any accompanying exhibits
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`was served by filing this document through the PTAB’s E2E Filing System as well
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`as delivering a copy via electronic mail upon the following:
`
`
`Steven R. Katz
`John C. Phillips
`Ryan P. O’Connor
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`katz@fr.com
`phillips@fr.com
`oconnor@fr.com
`
`
`IPR11030-0049IPA@fr.com
`PTABInbound@fr.com
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`/Timothy J. Andersen/
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, DC 20036
`T: 202-682-7075
`E: timothy.andersen@weil.com
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