IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 17-871-LPS-CJB
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`
`
`) ) ) ) ) ) ) ) )
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`
`
`ETHICON LLC, et al.,
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`Plaintiffs,
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`v.
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`INTUITIVE SURGICAL, INC., et al.,
`
`Defendants.
`
`DEFENDANTS’ OPENING CLAIM CONSTRUCTION BRIEF
`
`
`
`
`
`
`
`OF COUNSEL:
`Robert A. Van Nest
`Brian L. Ferrall
`R. Adam Lauridsen
`William Hicks
`Eduardo E. Santacana
`KEKER, VAN NEST & PETERS LLP
`633 Battery Street
`San Francisco, CA 94111
`(415) 391-5400
`
`Dated: June 28, 2018
`
`
`
`
`John W. Shaw (No. 3362)
`Karen E. Keller (No. 4489)
`David M. Fry (No. 5486)
`SHAW KELLER LLP
`I.M. Pei Building
`1105 North Market Street, 12th Floor
`Wilmington, DE 19801
`(302) 298-0700
`jshaw@shawkeller.com
`kkeller@shawkeller.com
`dfry@shawkeller.com
`Attorneys for Defendants
`
`
`
`Ethicon Exhibit 2023.001
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`TABLE OF CONTENTS
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`
`Page
`
`I. Introduction ..................................................................................................................................1
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`II. Argument .....................................................................................................................................1
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`A. Legal standard for claim construction ....................................................................................1
`
`B. ’969 Patent terms ....................................................................................................................2
`
`1. “tool mounting portion operably coupled to a distal end of said proximal spine portion”
`(’969 claim 24) ...................................................................................................................2
`
`
`2. “[proximal/distal] spine portion” (’969 claim 24) ..............................................................4
`
`C. ’874 Patent terms ....................................................................................................................6
`
`1. “remote[ly] user-controlled console” (’874 claims 9 and 20) ............................................6
`
`2. “reciprocatable closure element configured to apply said opening and closing motions to
`said one of said first and second jaws” (’874 claim 9) .....................................................9
`
`
`3. “driver element supported for axial travel through the [surgical] end effector in response
`to [a] firing motion[s applied thereto]” (’874 claims 9 and 20) ......................................11
`
`
`D. ’658 Patent terms ..................................................................................................................12
`
`E. ’431 Patent terms ..................................................................................................................14
`
`1. “transmission arrangement communicating with the control unit of the robotic system”
`(’431 claim 1) ...................................................................................................................14
`
`
`2. “transmission arrangement” (’431 claims 1, 6, 13) ..........................................................17
`
`3. [first and second] control assembly operably interfacing with said elongated shaft
`assembly to apply said [first/second] control motion thereto” (’431 claim 6) .................18
`
`
`F. Power Patent terms ................................................................................................................19
`
`1. “housing”(’058 claims 6, 11; ’677 claims 6, 11; ’601 claim 1) .......................................20
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`2. “housing connector” (’058 claim 6; ‘677 claims 6, 17) ....................................................21
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`3. “engagement member” (‘601 claim 1) ..............................................................................23
`
`
`
`i
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`
`
`Ethicon Exhibit 2023.002
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`4. “actuator arrangement”(’601 claim 1) ..............................................................................24
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`III. Conclusion ...............................................................................................................................25
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`
`ii
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`
`
`Ethicon Exhibit 2023.003
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`Cases
`
`Alcon Research, Ltd. v. Watson Labs., Inc.,
`No. CV 16-129-LPS-SRF, 2017 WL 618441 (D. Del. Feb. 15, 2017) .......................................... 8
`
`Central Admixture Pharm. Svcs., Inc. v. Adv. Cardiac Solutions, P.C.,
`482 F.3d 1347 (Fed. Cir. 2007)................................................................................................... 2, 3
`
`Cubist Pharm., Inc. v. Hospira, Inc.,
`75 F. Supp. 3d 641 (D. Del. 2014), aff’d, 805 F.3d 1112 (Fed. Cir. 2015) .................................... 2
`
`Eon Corp. IP Holdings v. Silver Spring Networks,
`815 F. 3d 1314 (Fed. Cir. 2016).................................................................................................... 21
`
`Halliburton Energy Servs., Inc. v. M-I LLC,
`514 F.3d 1244 (Fed. Cir. 2008)..................................................................................................... 25
`
`ICU Med., Inc. v. Alaris Med. Sys., Inc.,
`558 F.3d 1368 (Fed. Cir. 2009)..................................................................................................... 24
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014)......................................................................................................25
`
`Lexington Luminance LLC v. Amazon.com Inc.,
`601 F. App’x 963 (Fed. Cir. 2015) ............................................................................................... 24
`
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995)........................................................................................................... 1
`
`Media Rights Techs., Inc. v. Capital One Fin. Corp.,
`800 F.3d 1366 (Fed. Cir. 2015)............................................................................................... 14, 19
`
`Nautilus Inc. v. BioSig Instruments, Inc.,
`134 S. Ct. 2120 (2014) .................................................................................................................. 26
`
`Nichia Corp. v. TCL Multimedia Tech. Holdings, Ltd.,
`No. CV 16-681-RGA, 2017 WL 5719267 (D. Del. Nov. 28, 2017)............................................. 10
`
`Novo Indus., L.P. v. Micro Molds Corp.,
`350 F.3d 1348 (Fed. Cir. 2003)....................................................................................................... 5
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)......................................................................................... 17, 21, 23
`
`
`
`
`iii
`
`
`
`Ethicon Exhibit 2023.004
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)....................................................................................................... 1
`
`S.O.I.Tec Silicon On Insulator Techs., S.A. v. MEMC Elec. Materials, Inc.,
`745 F. Supp. 2d 489 (D. Del. 2010) ................................................................................................ 3
`
`Superior Fireplace Co. v. Majestic Prods. Co.,
`270 F.3d 1358 (Fed. Cir. 2001)....................................................................................................... 3
`
`Toshiba Tec Corp. v. Katun Corp.,
`No. SACV1501979SJOJCX, 2016 WL 8861713 (C.D. Cal. Dec. 1, 2016) ................................. 13
`
`Verint Sys. Inc. v. Red Box Recorders Ltd.,
`166 F. Supp. 3d 364 (S.D.N.Y. 2016)........................................................................................... 13
`
`Vistan Corp. v. Fadei USA, Inc.,
`No. C 10-4862 JCS, 2012 WL 1496099 (N.D. Cal. Apr. 27, 2012) ............................................. 19
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)......................................................................................................... 1
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015)............................................................................................... 10, 11
`
` X
`
` One, Inc. v. Uber Techs., Inc.,
`2017 WL 3581184 (N.D. Cal. August 18, 2017) ...........................................................................22
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`iv
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`
`
`Ethicon Exhibit 2023.005
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`I.
`
`INTRODUCTION1
`
`Intuitive asks the Court to construe the claim terms in dispute according to governing law
`
`and both the intrinsic and extrinsic evidence.
`
`II.
`
`ARGUMENT
`
`A.
`
`Legal standard for claim construction
`
`Patent claims define the scope of a patentee’s monopoly right, and the interpretation of those
`
`claims presents a question of law. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78
`
`(Fed. Cir. 1995). A patent may disclose a wide range of technology, but “the claims of a patent
`
`define the invention[.]” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). The
`
`specification also “is always highly relevant to the claim construction analysis,” if not “dispositive”
`
`as “the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc.,
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`90 F.3d 1576, 1582 (Fed. Cir. 1996). “The construction that stays true to the claim language and
`
`most naturally aligns with the patent’s description of the invention will be, in the end, the correct
`
`construction.” Phillips, 415 F.3d at 1316.
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`The prosecution history may also provide useful insight. See Markman, 52 F.3d at 980. It can
`
`demonstrate, for instance, “how the inventor understood the invention and whether the inventor
`
`limited the invention in the course of prosecution, making the claim scope narrower than it would
`
`otherwise be.” Phillips, 415 F.3d at 1317. A court also may rely on extrinsic evidence, which
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`“consists of all evidence external to the patent and prosecution history, including expert and inventor
`
`testimony, dictionaries, and learned treatises.” Markman, 52 F.3d at 980. Extrinsic evidence is given
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`less weight than intrinsic evidence, but it can be a useful tool for understanding the relevant art and
`
`underlying technology. See Phillips, 415 F.3d at 1317-18.
`
`
`1 Throughout this brief, emphases in quotations were added unless otherwise stated; and quotation
`marks, alterations, and citations were omitted from quotations.
`
`
`
`1
`
`Ethicon Exhibit 2023.006
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`B.
`
`’969 Patent terms
`
`1.
`
`“tool mounting portion operably coupled to a distal end of said
`proximal spine portion” (’969 claim 24)
`
`Intuitive Surgical
`tool mounting portion operably coupled to a
`distal end of said proximal spine portion
`
`Ethicon
`tool mounting portion operably coupled to a
`proximal end of said proximal spine portion
`
`Ethicon seeks to construe this phrase in accordance with a January 2018 Certificate of
`
`Correction that substitutes “proximal” for “distal” as follows: “a tool mounting portion operably
`
`coupled to a distal proximal end of said proximal spine portion.” That Certificate is invalid as a
`
`matter of law, however, because “(1) the corrected claim [is] broader than the original claim[]; and
`
`(2) the presence of the clerical or typographical error, or how to correct that error, is not clearly
`
`evident to one of skill in the art.” Central Admixture Pharm. Svcs., Inc. v. Adv. Cardiac Solutions,
`
`P.C., 482 F.3d 1347, 1353–54 (Fed. Cir. 2007). For purposes of this analysis, a “corrected” claim is
`
`broader than the original claim if it “covers territory the old [claim] did not.” Id. at 1353 (certificate
`
`of correction substituting one unit of measurement for another was invalid because “the claims as
`
`corrected cover less-concentrated solutions which would not be covered under the original claims”).
`
`“Indeed, a certificate of correction is invalid if the corrected claim contains within its scope any
`
`conceivable apparatus or process which would not have infringed the original patent.” Cubist
`
`Pharm., Inc. v. Hospira, Inc., 75 F. Supp. 3d 641, 655 (D. Del. 2014), aff’d, 805 F.3d 1112 (Fed. Cir.
`
`2015); see also S.O.I.Tec Silicon On Insulator Techs., S.A. v. MEMC Elec. Materials, Inc., 745 F.
`
`Supp. 2d 489, 506–07 (D. Del. 2010) (certificate of correction substituting “ions” for “hydrogen
`
`ions” was invalid).
`
`It is not necessary that the Court engage in an exercise of estimating whether that corrected
`
`claim scope is somehow quantitatively or qualitatively greater than the original claim scope. Ethicon
`
`alleges that Intuitive infringes the corrected language of claim 24, but it has never alleged—even to
`
`
`
`2
`
`Ethicon Exhibit 2023.007
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`support its complaint filed six months before issuance of the Certificate—that Intuitive infringes the
`
`original language of claim 24. This amounts to an admission by Ethicon that the corrected claim
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`“covers territory the old [claim] did not.” Moreover, the corrected claim recites a first structure that
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`is “operably coupled” to a “proximal end” of a second structure, whereas the original claim language
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`recites a first structure that is “operably coupled” to a “distal end” of a second structure. If words in
`
`a claim mean anything, these two versions of the claim must encompass different “territory.”
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`Where, as here, the effect would be to broaden the claim, a clerical or typographical mistake
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`may be corrected with a certificate of correction only if the mistake is “immediately apparent and
`
`leave[s] no doubt as to what the mistake is.” Superior Fireplace Co. v. Majestic Prods. Co., 270 F.3d
`
`1358, 1370 (Fed. Cir. 2001). Mistakes in this category include obvious misspellings and “clerical
`
`errors in which [for instance] the patentee attempts to change every instance of a particular claim
`
`term in prosecution but misses one, leaving a claim that, on its face, is nonsensical in light of the
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`specification.” Central Admixture Pharm. Svcs., 482 F.3d at 1354. Here, in contrast, the as-printed
`
`original claim language is typographically and grammatically correct, and the uncorrected language
`
`appears in the version of the claim that was submitted to the PTO during prosecution. Ethicon asserts
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`that the original claim contains a clerical error, but it has never explained how that could be so.
`
`Moreover, the presence of an error in the original claim language would not have been
`
`clearly evident to a person of ordinary skill in the art. See Declaration of Bryan Knodel (“Knodel
`
`Decl.”) ¶¶13-19. First, the as-printed original language of claim 24 is consistent with other claims in
`
`the ’969 Patent. See Knodel Decl. ¶¶15, 18-19; claim 12 (reciting a proximal spine portion with “a
`
`distal end portion operably supported on said tool mounting portion”); dependent claim 26 (reciting
`
`“articulation system” comprising two articulation bars each having a proximal end operably
`
`interfacing with an “articulation transmission” and a “distal end coupled to a proximal portion of
`
`
`
`3
`
`Ethicon Exhibit 2023.008
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`said elongated shaft assembly”). Moreover, there is nothing nonsensical about “operably coupling”
`
`one element (a “tool mounting portion”) to “a distal end of said proximal spine portion.” Claim 24
`
`requires, for instance, that the “proximal spine portion [be] pivotally coupled to said distal spine
`
`portion at an articulation joint.” Because “operable coupling” does not require a direct physical
`
`connection, it is entirely logical that the tool mounting portion would be “operably coupled” to the
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`distal end of the proximal spine portion to facilitate the motions of the articulation joint. See id.
`
`¶¶15-18. Indeed, the specification describes an embodiment in which a “tool mounting plate” (the
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`recited “tool amounting portion”) interacts with the articulation joint via articulation bars that extend
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`from the distal end of the proximal spine portion. See id. ¶17; ’969 at 30:30-67; Figs. 32, 39-40.2
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`Nor is the purported error in the original claim language of 24 the sort of correction that is
`
`appropriate for the Court to make. Judicial correction is appropriate only if “(1) the correction is not
`
`subject to reasonable debate based on consideration of the claim language and the specification and
`
`(2) the prosecution history does not suggest a different interpretation of the claims.” Novo Indus.,
`
`L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). For the reasons set forth above,
`
`Ethicon cannot meet this standard.
`
`2.
`
`“[proximal/distal] spine portion” (’969 claim 24)
`
`Intuitive Surgical
`discrete [proximal/distal] interior supporting
`member within the elongated shaft assembly
`
`Ethicon
`structural member within [proximal/distal]
`portion of elongated shaft assembly
`
`The parties agree that the “[proximal/distal] spine portion” is a member within the
`
`[proximal/distal] portion of the elongated shaft assembly. But whereas Ethicon’s proposed
`
`
`2 Even if one of ordinary skill had known that there was a mistake in the as-printed claim, the
`manner of correcting it would not have been clearly evident. Knodel Decl. ¶20. Consistent with one
`of the disclosed embodiments, for instance, it is equally plausible that the Applicant had intended the
`claim to recite a “tool mounting portion operably coupled to a distal proximal end of said proximal
`distal spine portion.” Id.; see also ’969 at 30:26-31:43; Figs. 32, 37-40.
`
`
`
`4
`
`Ethicon Exhibit 2023.009
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`construction broadly encompasses any “structural member,” Intuitive’s construction is true to the
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`specification in explaining what that structure is.
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`First, Intuitive’s proposal makes clear that the proximal and distal spine portions are interior
`
`components. This is consistent with the specification, which consistently refers to the “spine” as an
`
`inner structure enclosed within outer portions of the elongated shaft assembly. See, e.g., ’969 at
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`13:12-13 (“Disposed inside the closure tubes 40, 42 may be a proximate spine tube 46.”); 33:26-30
`
`(“proximal spine shaft 2353 … is non-movably supported within the hollow outer tube 2340”). The
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`figures likewise confirm that the spine is an interior structure. See, e.g., id., Figs. 4, 5, 32, 41. For
`
`instance, Figure 41, which provides support for claim 24’s articulation joint, shows that proximal
`
`spine portion 2052 is enclosed within proximal closure tube 2040. Similarly, Figure 32 (an exploded
`
`view of the articulation joint) depicts proximal spine portion 2052 and distal spine portion 2050
`
`within a closure tube assembly 2009 that includes proximal closure tube 2040 and distal closure tube
`
`2042. Id. at 27:28-32; see also id. at 27:36-38 (noting that “closure tube assembly 2009 is configured
`
`to axially slide on the spine assembly 2049”).
`
`Second, Intuitive’s construction draws directly from the specification in clarifying that the
`
`spine portion is a supporting structure. It supports the exterior portion of the shaft assembly, such as
`
`closure tubes, and may also support other interior components, such as articulation bars. See, e.g.,
`
`’969 at 27:28-32 (shaft assembly may include closure tubes “operably supported on a spine
`
`assembly”); 29:45-47 (proximal spine portion 2052 “provide[s] support to the knife bar 2200 as it is
`
`axially pushed therethrough”); 30:31-34 (articulation bars “are slidably supported within
`
`corresponding passages 2053 provided through the proximal spine portion 2052”).3
`
`
`3 Intuitive’s construction is also consistent with extrinsic evidence defining “spine” as a supporting
`structure. See Declaration of Divya Musinipally (“Musinipally Decl.), Ex. A (defining “spine” as
`“something constituting a main strength, central axis, or chief support”).
`
`
`
`5
`
`Ethicon Exhibit 2023.010
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`Finally, Intuitive’s construction properly clarifies that each of the distal and proximal spine
`
`portions is a discrete member. As described in the specification, and shown in the figures, each such
`
`spine portion is physically distinct from one another, and from other components in the elongated
`
`shaft assembly. See, e.g.,’969 at 13:5-25; 27:19-38; 29:38-53; 30:26-64; 31:19-23; Figs. 4-5, 32, 37-
`
`41; claims 24, 26-28.
`
`C.
`
`’874 Patent terms
`
`1.
`
`“remote[ly] user-controlled console” (’874 claims 9 and 20)
`
`Intuitive Surgical
`plain and ordinary meaning, or in the
`alternative: user-controlled unit separate from
`the surgical instrument that communicates
`with the surgical instrument
`
`Ethicon
`remote input device operated by a user to
`actuate a surgical instrument supported on a
`manipulator such as a robotic arm
`
`The ’874 patent describes multiple embodiments employing a remote[ly] user-controlled
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`console, and only in the penultimate column does the specification state that “the above described
`
`invention also has applicability to robotic surgical systems,” such as systems “well known in the art
`
`and … available from Intuitive Surgical, Inc.” Id. at 30:49-50; see also id. at 30:51-53
`
`(incorporating by reference Intuitive patents). Not one of the ’874 patent’s 56 figures shows a
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`robotic console, nor does the specification disclose any robotic technology invented by Ethicon. But
`
`having incorporated Intuitive’s patents into the specification by way of a March 2011 continuation-
`
`in-part application filed years after the earlier applications, Ethicon now would have the Court
`
`believe that its purported invention not only “has applicability to robotic surgical systems,” but that
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`it is actually limited to such systems. The Court should reject Ethicon’s construction, because it
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`contradicts the plain teachings of the intrinsic record and violates black-letter claim construction law.
`
`First, Ethicon’s construction improperly purports to limit the claimed “remote[ly] user-
`
`controlled console” to a single embodiment without pointing to any language in the claim that
`
`suggests it covers only one embodiment. Nothing in the intrinsic record suggests that the generic
`
`
`
`6
`
`Ethicon Exhibit 2023.011
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`recitation of a “remote[ly] user-controlled console” was intended to limit the claims as Ethicon
`
`proposes. Indeed, the specification never mentions the words “remote input device” or
`
`“manipulator.” The specification also specifically disclaims any intent to limit the claims to a
`
`disclosed embodiment. See ’874 at 31:26-30.
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`Claim differentiation principles further confirm that Ethicon’s proposed construction is
`
`improper. Four independent claims specifically require a “remote user-controllable (or “user-
`
`controlled”) actuation console” (see claims 1, 16, 19, 21), whereas claims 9 and 20 (at issue here) do
`
`not. “There is a heavy presumption that claim terms mean what they say, and a difference in
`
`meaning and scope is likewise presumed when different words or phrases are used in separate
`
`claims.” Cooper Notification, Inc. v. Twitter, Inc., 867 F. Supp. 2d 485, 492 (D. Del. 2012), aff’d,
`
`545 F. App’x 959 (Fed. Cir. 2013). Here, the patentees’ decision to require an “actuation console” in
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`four independent claims (as compared with simply a “console” recited in claims 9 and 20)
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`demonstrates their intention to exclude the “actuation” limitation from claims 9 and 20. See, e.g.,
`
`Alcon Research, Ltd. v. Watson Labs., Inc., No. CV 16-129-LPS-SRF, 2017 WL 618441, at *4 (D.
`
`Del. Feb. 15, 2017), report and recommendation adopted, No. CV 16-129-LPS-SRF, 2017 WL
`
`5188056 (D. Del. Nov. 9, 2017). Ethicon’s construction, which requires a remote input device use to
`
`“actuate a surgical instrument,” is directly contrary to that demonstrated intention.
`
`Ethicon’s construction should be rejected for the additional reason that it excludes an
`
`embodiment with no claim language suggesting that was the patentee’s intent. In particular, the
`
`specification discloses a surgical instrument that communicates data collected from sensors in the
`
`instrument to a “remote computer device”—i.e., a “remote[ly] user-controlled console.” See ’874 at
`
`29:26-29; Figs. 55-56. “The remote computer device 2420 may be any device with a processor and a
`
`memory, and capable of communicating with … [the instrument] and downloading the sensor
`
`
`
`7
`
`Ethicon Exhibit 2023.012
`Intuitive v. Ethicon
`IPR2018-01254
`
`

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`data...” Id. at 29:43-46; see also id. at 29:46-49 (“the remote computer device 2420 may be a desktop
`
`computer, a laptop computer, a server, a workstation, … etc.”). The sensor data may include
`
`information regarding instrument conditions, such as the position of the knife or cutting surface. Id.
`
`at 25:66-67; see also 25:1-2 (describing closure trigger sensor that “senses a condition of the closure
`
`trigger”); 25:23-24 (“anvil closure sensor 2004 may sense whether the anvil 24 is closed”). Once the
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`sensor data is transmitted from the instrument to the remote computer device, the data may be
`
`analyzed and manipulated. Id. at 30:6-10; Fig. 56.
`
`The “remote computer device” in this embodiment falls squarely within the plain meaning of
`
`“remote[ly] user controlled console” because it is a unit separate from the surgical instrument (a
`
`remote console) that is user-controlled to view, analyze, and manipulate data received from the
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`instrument. Yet, Ethicon’s construction improperly excludes it without any indication in the claim
`
`that this was the drafter’s intent. Accordingly, the Court should reject Ethicon’s flawed construction
`
`and give this term its plain and ordinary meaning. Should the Court determine that further
`
`construction is appropriate, an interpretation consistent with its ordinary meaning is: “a user-
`
`controlled unit separate from the surgical instrument that communicates with the surgical
`
`instrument.”
`
`
`
`8
`
`Ethicon Exhibit 2023.013
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`2.
`
`“reciprocatable closure element configured to apply said opening and
`closing motions to said one of said first and second jaws” (’874 claim 9)
`
`Ethicon
`Term not subject to 112(6). Plain and
`ordinary meaning.
`
`Intuitive Surgical
`Term subject to 112(6). Function: to apply
`opening and closing motions to one of said
`first and second jaws. Structure: distal
`closure tube 42 and proximate closure tube 40
`(Fig. 4); or, in the alternative:
`
`outer tube configured to apply said opening
`and closing motions to said one of said first
`and second jaws
`
`The central dispute here is whether this limitation must be construed as a means-plus-
`
`function limitation subject to 35 U.S.C. § 112, ¶6.4 Intuitive submits that it must be so construed,
`
`because it is claimed by its function without the recitation of sufficient structure to perform that
`
`function. Declaration of Jeffrey Vaitekunas (“Vaitekinas Decl.”) ¶¶17-20.
`
`Although the absence of the word “means” in a claim limitation triggers a rebuttable
`
`presumption that § 112, ¶6 does not apply, the presumption is overcome where, as here, “the claim
`
`term fails to recite sufficiently definite structure or else recites function without reciting sufficient
`
`structure for performing that function.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348
`
`(Fed. Cir. 2015) (en banc). The “essential inquiry” is “whether the words of the claim are understood
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`by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for
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`structure.” Id. at 1348. “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce
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`words that reflect nothing more than verbal constructs may be used in a claim in a manner that is
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`tantamount to using the word ‘means’ because they typically do not connote sufficiently definite
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`structure.” Id. at 1350.
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`
`4 That provision provides that “[a]n element in a claim for a combination may be expressed as a
`means or step for performing a specified function without the recital of structure, material, or acts in
`support thereof, and such claim shall be construed to cover the corresponding structure, material, or
`acts described in the specification and equivalents thereof.”
`
`
`
`9
`
`Ethicon Exhibit 2023.014
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`Here, “element” is a well-known nonce word, see id., and the surrounding claim language
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`merely defines a function. The functional modifier “reciprocatable,” for instance, fails to impart any
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`meaningful structure; at most, that word suggests a back-and-forth movement typical of virtually any
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`mechanism that would open and close the jaws of an end effector. See Vaitekunas Decl. ¶19; see
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`also Musinipally Decl., Ex. A (defining “reciprocating” as “characterized by alternation in motion:
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`moving to and fro”).5 Similarly, the requirement that the “closure element” apply opening and
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`closing motions to “one of said first and second jaws” carries no generally understood structural
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`meaning in the art. Id. To the contrary, virtually every jaw opening and closing mechanism includes
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`some “element” that applies motion to at least one of the jaws. Id. Thus, while surrounding claim
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`language may sometimes save a “black box” nonce word from application of § 112, ¶6, no such
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`language is present here.6
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`Because § 112, ¶6 applies, the Court must define the claimed function and its corresponding
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`structure(s). Williamson, 792 F.3d at 1351. The claimed function of the “reciprocatable closure
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`element” is to apply opening and closing motions to one of said first and second jaws. See
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`Vaitekunas Decl. ¶20. The structure disclosed in the specification for performing that function is
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`distal closure tube 42 and proximate closure tube 40. Id. ¶21; see also, e.g., ’874 at 8:20-27, 11:65-
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`12:14; Figs. 4, 5. The proximate closure tube 40 and distal closure tube 42 are pivotably linked by a
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`pivot link 44. Id. at 8:22-24. “The distal closure tube 42 includes an opening 45 into which the tab 27
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`on the anvil 24 is inserted in order to open and close the anvil.” Id. at 8:24-26. In operation, when the
`
`
`5 The term “reciprocatable closure element” does not appear in the specification except in a summary
`section, added by amendment after the notice of allowance, that does not provide any structure for
`that term. See ’874 at 4:2-8; JA607-611 (6/17/2015 Amendment to Specification); see also
`Vaitekunas Decl. ¶18.
`
`6 See, e.g., Nichia Corp. v. TCL Multimedia Tech. Holdings, Ltd., No. CV 16-681-RGA, 2017 WL
`5719267, at *7–9 (D. Del. Nov. 28, 2017) (“dispersive member” and “reflective member” invoked §
`112, ¶6 because the claims merely defined the functions of each “member”).
`
`
`
`10
`
`Ethicon Exhibit 2023.015
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`proximate closure tube 40 moves distally, the distal closure tube 42 also moves distally, causing the
`
`anvil 24 to rotate into a closed position. Id. at 11:65-12:4. When, from the closed position, the
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`proximate closure tube 40 is caused to move proximally, the distal closure tube 42 also moves
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`proximately, causing the anvil 24 to pivot into the open position. Id. at 12:4-10.
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`Should the Court determine that § 112, ¶6 does not apply, it should construe this term,
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`consistent with the disclosures in the specification, as an outer tube configured to apply said opening
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`and closing motions to said one of said first and second jaws.
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`3.
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`“driver element supported for axial travel through the [surgical] end
`effector in response to [a] firing motion[s applied thereto]” (’874
`claims 9 and 20)
`
`Intuitive Surgical
`Term subject to 112(6). Function: providing
`axial travel through the surgical end effector
`in response to firing motions. Structure:
`knife 32 with threaded opening for receiving
`helical drive screw 36 (Fig. 3)
`
`Ethicon
`Term not subject to 112(6). Plain and
`ordinary meaning.
`
`This term also is subject to § 112, ¶6 because it is built around the nonce word “element” and
`
`claims a function without disclosing sufficient structure for performing that function. Vaitekunas
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`Decl. ¶¶22-26. The prefix “driver” does not impart sufficient structure; one of ordinary skill would
`
`understand that word as referring to any structural component that imparts motion to some other
`
`component. Id. ¶26. Nor does the specification provide any structural definition for t