IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`
` C.A. No. 17-871-LPS
`
`
`
`
`
`
`
`) ) ) ) ) ) ) ) )
`
`
`
`ETHICON LLC, et al.,
`
`
`
`Plaintiffs,
`
`
`
`v.
`
`
`INTUITIVE SURGICAL, INC., et al.,
`
`
`
`Defendants.
`
`
`
`
`
`DEFENDANTS’ RESPONSE TO
`ETHICON’S OPENING CLAIM CONSTRUCTION BRIEF
`
`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
`
`
`
`
`
`
`
`
`
`OF COUNSEL:
`Robert A. Van Nest
`Brian Ferrall
`R. Adam Lauridsen
`William S. Hicks
`Eduardo E. Santacana
`KEKER VAN NEST & PETERS LLP
`633 Battery Street
`San Francisco, CA 94111
`(415) 391-5400
`
`Dated: August 1, 2018
`
`
`
`
`
`
`Ethicon Exhibit 2024.001
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`
`INTRODUCTION ...............................................................................................................1
`
`
`
`
`
`I.
`
`II.
`
`CLAIM TERMS AT ISSUE ................................................................................................1
`
`A.
`
`’969 Patent terms .....................................................................................................1
`
`1.
`
`“tool mounting portion operably coupled to a distal end of said
`proximal spine portion” (’969 claim 24) .....................................................1
`
`2.
`
`“proximal/distal spine portion” ....................................................................4
`
`B.
`
`’874 Patent terms .....................................................................................................6
`
`1.
`
`2.
`
`3.
`
`“remote[ly] user-controlled console” (’874 claims 9 and 20) .....................6
`
`“reciprocatable closure element configured to apply said opening
`and closing motions to said one of said first and second jaws”
`(’874 claim 9) ...............................................................................................7
`
`“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
`
`C.
`
`D.
`
`’658 Patent terms ...................................................................................................12
`
`’431 Patent terms ...................................................................................................14
`
`1.
`
`2.
`
`3.
`
`“transmission arrangement communicating with the control unit of
`the robotic system” (’431 claim 1) .............................................................14
`
`“transmission arrangement” (’431 claims 1, 6, 13) ...................................15
`
`[first and second] control assembly operably interfacing with said
`elongated shaft assembly to apply said [first/second] control
`motion thereto” (’431 claim 6) ..................................................................16
`
`E.
`
`Power Patent terms ................................................................................................17
`
`1.
`
`2.
`
`3.
`
`“housing” (’058 claims 6, 11; ’677 claims 6, 11; ’601 claim 1) ................17
`
`“housing connector” (’058 claim 6; ‘677 claims 6, 17) .............................18
`
`“engagement member” (‘601 claim 1) .......................................................19
`
`
`
`i
`
`Ethicon Exhibit 2024.002
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`4.
`
`“actuator arrangement”(’601 claim 1) .......................................................20
`
`III.
`
`CONCLUSION ..................................................................................................................20
`
`
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`Ethicon Exhibit 2024.003
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`TABLE OF AUTHORITIES
`
`
`Pages
`
`Cases
`
`Boston Sci. Corp. v. Cook Grp. Inc.,
`C.A. No. 15-980-LPS-CJB, 2017 WL 1364205 (D. Del. Apr. 12, 2017)................................. 9, 18
`
`Cordance Corp. v. Amazon.com, Inc.,
`C.A. No. 06-491-MPT, 2009 WL 2252556 (D. Del. July 28, 2009) .......................................... 3, 4
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .................................................................................................................. 11
`
`Int’l Bus. Machines Corp. v. Priceline Grp. Inc.,
`C.A. No. 15-137-LPS, 2016 WL 6405824 (D. Del. Oct. 28, 2016) ........................................... 2, 4
`
`LG Elecs., Inc. v. Quanta Computer, Inc.,
`566 F. Supp. 2d 910 (W.D. Wis. 2008) .......................................................................................... 1
`
`Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp.,
`790 F.3d 1329 (Fed. Cir. 2015)..................................................................................................... 10
`
`Magnetar Techs. Corp. v. Six Flags Theme Parks, Inc.,
`C.A. No. 07-127-LPS-MPT, 2014 WL 547712 (D. Del. Feb. 7, 2014) ......................................... 3
`
`Mas-Hamilton Group v. Lagard, Inc.,
`156 F.3d 1206 (Fed. Cir. 1998)..................................................................................................... 10
`
`Novo Indus., L.P. v. Micro Molds Corp.,
`350 F.3d 1348 (Fed. Cir. 2003)................................................................................................... 1, 4
`
`Parallel Networks Licensing, LLC v. Int’l Bus. Machines Corp.,
`83 F. Supp. 3d 571 (D. Del. 2015) .................................................................................................. 4
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`C.A. No. 04-1371-LPS, 2016 WL 1171496 (D. Del. Mar. 24, 2016) .......................................... 12
`
`Regalo Int’l, LLC v. Munchkin, Inc.,
`C.A. No. 15-1103-LPS, 2016 WL 7107229 (D. Del. Dec. 6, 2016)............................................. 10
`
`Renishaw PLC v. Marposs Societa' per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998)..................................................................................................... 12
`
`TQ Beta LLC v. Dish Network Corp.,
`C.A. No. 14-848-LPS-CJB, 2016 WL 356024 (D. Del. Jan. 28, 2016) ....................................... 11
`
`
`
`iii
`
`Ethicon Exhibit 2024.004
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`
`Virginia Panel Corp. v. MAC Panel Co.,
`133 F.3d 860 (Fed. Cir. 1997)......................................................................................................... 9
`
`
`
`
`
`
`iv
`
`Ethicon Exhibit 2024.005
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`I.
`
`INTRODUCTION1
`
`As demonstrated below, Intuitive’s proposed constructions are consistent with governing
`
`law and both the intrinsic and extrinsic evidence. In contrast, Ethicon invites the Court to ignore
`
`the law of claim construction and to adopt constructions lacking any support in the patents.
`
`II.
`
`CLAIM TERMS AT ISSUE
`
`A.
`
`’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 fails to explain how the original as-printed language in claim 24 of the ’969
`
`patent could have been the result of a mere clerical error, yet urges the Court to judicially correct
`
`the patent claim such that Ethicon’s purported correction may apply retroactively. The Court
`
`should decline to do so because Ethicon fails to satisfy the controlling legal standard. See Novo
`
`Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003); see also LG Elecs.,
`
`Inc. v. Quanta Computer, Inc., 566 F. Supp. 2d 910, 913 (W.D. Wis. 2008) (citing Novo and
`
`noting the “nearly impossible standard for judicial correction”).2
`
`First, whether there is even a mistake in the claim is subject to reasonable debate. As set
`
`forth in Intuitive’s opening papers, the as-printed original claim language is typographically and
`
`grammatically correct, and reads logically in the context of the surrounding claim language, the
`
`specification, and the other claims of the ’969 patent. I.S. Op. Br. at 3-4; Knodel Decl. ¶¶15-19.
`
`
`1 Throughout this brief, emphases in quotations were added unless otherwise stated; and
`quotation marks, alterations, and citations were omitted from quotations.
`
`2 In addition, as explained in Intuitive’s opening brief, the January 2018 Certificate of Correction
`is invalid as a matter of law. I.S. Op. Br. at 2-4; Knodel Decl. ¶¶13-20.
`
`
`
`1
`
`Ethicon Exhibit 2024.006
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`Ethicon’s argument should be rejected for that reason alone. See, e.g., Int’l Bus. Machines Corp.
`
`v. Priceline Grp. Inc., No. C.A. No. 15-137-LPS, 2016 WL 6405824, at *6 (D. Del. Oct. 28,
`
`2016) (judicial correction inappropriate because alleged error was subject to reasonable debate).
`
`Moreover, even assuming there is a mistake in the as-printed claim, a person of ordinary
`
`skill in the art (“POSITA”) would not have known which of several plausible corrections the
`
`Applicant had intended. Knodel Decl. ¶20. Instead of Ethicon’s proposed correction, if claim 24
`
`contains a mistake, it is at least equally plausible that a POSITA would have concluded 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.” Knodel Decl. ¶20; I.S. Op. Br., n. 2. This
`
`“correction” is more than plausible in view the specification’s disclosure of an embodiment in
`
`which the motions of the claimed “articulation joint” are controlled by an articulation nut (2260)
`
`on the tool mounting plate (the recited “tool mounting portion”) in communication with
`
`articulation bars (2250a and 2250b) that extend through the proximal spine portion (2052). ’969
`
`at 30:26-31:43; Figs. 32, 39-40; Knodel Decl. ¶17. As shown in Figure 32, the distal ends of the
`
`articulation bars (2251a and 2251b) extend from the distal end of the proximal spine portion and
`
`pivotally connect to the proximal end of the distal spine portion (2050):
`
`
`
`
`
`2
`
`Ethicon Exhibit 2024.007
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`’969, Fig. 32; see also 30:30-59. Rotation of the articulation nut on the tool mounting plate
`
`causes the articulation bars to move in opposing directions “result[ing] in the articulation of the
`
`distal spine portion 2050 as well as the surgical end effector 2012 attached thereto...” Id. at
`
`30:59-63. The Court should not purport to correct a claim where there are multiple plausible
`
`“corrections,” particularly where, as here, the differences between them materially impact the
`
`claim scope. See, e.g., Cordance Corp. v. Amazon.com, Inc., C.A. No. 06-491-MPT, 2009 WL
`
`2252556, at *4 (D. Del. July 28, 2009) (refusing to judicially correct patent claim because the
`
`“impact of this change is subject to a reasonable debate and the change itself is not clear on the
`
`face of the patent”); see also Magnetar Techs. Corp. v. Six Flags Theme Parks, Inc., C.A. No.
`
`07-127-LPS-MPT, 2014 WL 547712, at *4 (D. Del. Feb. 7, 2014).3
`
`Ethicon notes that the PTO already has granted a Certificate of Correction, but that has no
`
`bearing on the question of whether the alleged mistake is one that this Court may correct.
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`District courts are only authorized to correct “obvious minor typographical and clerical errors”
`
`that are evident from the face of the patent; “major errors,” like the one at issue here, “are subject
`
`only to correction by the PTO.” Novo Indus., L.P., 350 F.3d at 1357; see also, e.g., Cordance
`
`Corp., 2009 WL 2252556, at *3–4 (refusing to judicially correct patent claim to conform to prior
`
`certificate of correction); Parallel Networks Licensing, LLC v. Int’l Bus. Machines Corp., 83 F.
`
`Supp. 3d 571, 574–75 (D. Del. 2015) (same).
`
`Ethicon also argues that the corrected claim language has support in the specification.
`
`See Eth. Op. Br. at 24-25. But this provides an insufficient legal basis for the Court to correct the
`
`alleged error because Ethicon does not even argue—much less demonstrate—that the claim
`
`language as “corrected” by Ethicon is the only version of the claim that has support. Ethicon fails
`
`
`3 Under Ethicon’s proposed correction, the “tool mounting portion” is “operably coupled” to an
`entirely different structure (the “proximal end of said proximal spine portion”).
`
`
`
`3
`
`Ethicon Exhibit 2024.008
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`to explain how a POSITA would have known that there was a mistake in the uncorrected
`
`language in the first place or that the manner of correcting the purported mistake is not subject to
`
`reasonable debate. Ethicon’s argument is also based on an incorrect assumption that the term
`
`“operably coupled” requires the “tool mounting portion” to be directly attached or affixed to the
`
`“distal end of said proximal spine portion.” Id.; see also I.S. Op. Br. at 4; Knodel Decl. ¶15.
`
`2.
`
` “proximal/distal spine portion”
`
`Intuitive Surgical
`(alternative construction)
`[proximal/distal] member
`within the elongated shaft
`assembly, which supports but is
`separate from an exterior
`member of the elongated shaft
`assembly
`
`Intuitive Surgical
`(original construction)
`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 claimed “spines” are interior components. Eth. Op. Br. at 14.
`
`Given Ethicon’s representation that it would be “redundant” to include the word “interior” in the
`
`construction of these terms, Intuitive agrees that the word “interior” need not be included.
`
`However, the parties continue to dispute whether each of the claimed “spines” must be a
`
`“discrete supporting member” (as Intuitive contends) or whether they can encompass any
`
`undefined “structural member” (as Ethicon contends).
`
`Ethicon does not seriously dispute that the claimed “spines” are supporting structures.
`
`Nor can it. See I.S. Op. Br. at 5-6; Musinipally Decl., Ex. A. Rather, Ethicon quibbles with
`
`Intuitive’s proposal because it purportedly “provides no guidance as to what must be supported.”
`
`Eth. Op. Br. at 15. Although Intuitive’s original construction provides sufficient guidance, to
`
`address Ethicon’s concern, Intuitive proposes an alternative construction that specifically
`
`identifies the structure that must be supported: an exterior member of the elongated shaft
`
`assembly. This clarification is consistent with the specification, which describes exterior closure
`
`
`
`4
`
`Ethicon Exhibit 2024.009
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`tubes that are “operably supported on a spine assembly.” ’969 at 27:28-32. It is also consistent
`
`with claims of the ’969 patent reciting closure tubes that are supported on the spine. See cl. 1
`
`(“closure tube assembly movably supported on said spine assembly”); cl. 18 (“distal closure tube
`
`portion operably supported on said distal spine portion”). Indeed, it makes perfect sense that the
`
`claimed “spines” must support an exterior member because the disclosed embodiments—
`
`including the purported embodiment cited by Ethicon in its opening brief—include an exterior
`
`member that moves axially on the spine. See ’969 at 78:7-9 (referring to Figure 134, “closure
`
`tube assembly 6009 is configured to axially slide on the spine assembly 6102 in response to
`
`actuation motions”); see also, e.g., 27:36-38 (“closure tube assembly 2009 is configured to
`
`axially slide on the spine assembly 2049 in response to actuation motions”); 28:26-29; 38:56-60
`
`(“the surgical tool 2500 further includes an axially movable actuation member in the form of a
`
`closure tube 2550 that is constrained to move axially relative to the elongated channel 2522 and
`
`the spine tube 1540”).
`
`It is equally clear that the claimed “spines” are discrete members. Ethicon contends that
`
`this requirement has no basis in the intrinsic record, but the specification repeatedly and
`
`consistently confirms that each of the proximal and distal spine portions is physically distinct
`
`from each other and from the exterior structures which they support. As shown in Figure 32 (see,
`
`supra, Section II.A.1), for instance, the proximal spine portion (2052) and distal spine portion
`
`(2050) are physically separate from each other and from the proximal and distal closure tubes
`
`(2042 and 2040). See also, e.g., ’969, Figs. 4-5 (proximal spine tube (46) and distal spine tube
`
`(58) are physically distinct from each other and from proximal and distal closure tubes (40 and
`
`42)); 13:5-25. Indeed, this is true in every disclosed embodiment, including the purported
`
`embodiment upon which Ethicon relies. See Eth. Op. Br. at 14; ’969, Fig. 134 (“proximal spine
`
`
`
`5
`
`Ethicon Exhibit 2024.010
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`portion 6110” and “distal spine portion 6120” are separate and distinct from closure tubes 6042,
`
`6043, and 6040); see also id. at 77:53-78:1; 78:35-45. Although Intuitive’s original construction
`
`accurately describes the claimed “spines,” to address Ethicon’s objection that it “provides no
`
`guidance as to what the spines must be ‘discrete’ from” (Eth. Op. Br. at 14), Intuitive proposes
`
`an alternative construction specifying that each spine portion is separate from the exterior
`
`member of the elongated shaft assembly that it supports. In contrast, Ethicon’s construction
`
`merely recites a black-box “structural member” without describing what that structure is.
`
`B.
`
`’874 Patent terms
`
`1.
`
`“remote[ly] user-controlled console” (’874 claims 9 and 20)4
`
`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
`
`Ethicon admits that its construction purports to limit the claims to a particular
`
`embodiment (see Eth. Op. Br. at 15), but it does not (and cannot) point to anything in the generic
`
`claim language, the specification, or the prosecution history indicating that the patentees
`
`intended to limit the claims as such. Rather, Ethicon’s argument is predicated entirely on two
`
`sentences plucked out of context from the specification that merely describe some of the
`
`characteristics of robotic systems generally. See Eth. Op. Br. at 15; ’874 at 30:53-59
`
`(“Generally, robotic surgical systems have a remotely controllable user interface and a remotely
`
`controllable arm... The arms are controllable with an electronic control system(s) that is typically
`
`
`4 Following the submission of opening papers, Ethicon offered to withdraw its proposed
`construction if Intuitive would agree that plain and ordinary meaning would apply to this term.
`Hicks Decl., Ex. A. But because the parties continue to disagree as to what that plain and
`ordinary meaning is, there remains an actual dispute regarding claim scope that the Court should
`appropriately resolve.
`
`
`
`6
`
`Ethicon Exhibit 2024.011
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`adapted to a localized console for user to interface with.”). But nothing in these passages
`
`suggests that the patentees intended to limit the scope of the claimed “remote[ly] user-controlled
`
`console” to a robotic system, much less that the construction should appropriately include terms
`
`(i.e., “remote input device,” “manipulator”) that are not even mentioned in the specification.
`
`Ethicon’s construction also omits a different embodiment falling within the term’s
`
`ordinary meaning. I.S. Op. Br. at 6-8. Ethicon does not dispute that the ’874 embodiment shown
`
`in Figures 54 and 55 discloses a “computer device” that is “remote,” that communicates with the
`
`surgical instrument, and that is operated by a user. See Eth. Op. Br. at 15 (noting that the remote
`
`computer device is “operated by a user and receives data from the surgical instrument”). It is,
`
`thus, a “remote[ly] user-controlled console,” and Ethicon’s construction improperly excludes it.
`
`Moreover, Ethicon’s argument obliterates the distinction made in the claims between a
`
`“remote[ly] user-controlled console” (claims 9 and 20) a “remote user-controllable (or “user-
`
`controlled”) actuation console” (claims 1, 16, 19, 21). I.S. Op. Br. at 7. It is clear from the
`
`structure of the claims that the “remote[ly] user-controlled console” of claims 9 and 20
`
`encompasses user-controlled consoles regardless of whether they actuate a surgical instrument.
`
`2.
`
`“reciprocatable closure element configured to apply said opening and
`closing motions to said one of said first and second jaws” (’874 claim
`9)
`
`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
`
`Ethicon
`Term not subject to
`112(6). Plain and
`ordinary meaning.
`
`Ethicon does not dispute that “element” is a nonce word that, standing alone, confers
`
`insufficient structure. Rather, Ethicon argues that the claim language overcomes this deficit
`
`because it tells a POSITA that the claimed “closure element” must move back and forth, that it
`
`
`
`7
`
`Ethicon Exhibit 2024.012
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`must engage an anvil, and that it must be sufficiently rigid in the direction that reciprocates to
`
`effectively apply opening and closing motions. Eth. Op. Br. at 10.5 These characteristics do not
`
`define structure, however, because they apply to virtually any mechanism that performs the
`
`function of opening and closing the jaws of an end effector. Vaitekunas Resp. Decl. ¶¶5-6.
`
`Ethicon’s reliance on Boston Scientific is misplaced. There, Judge Burke based his
`
`recommendation on claim language requiring the “opening element” to “engag[e] the inner walls
`
`of the clip arms and urge[] them away from one another” and to be “movable between an
`
`expanded configuration and a retracted configuration to correspond to a movement of the clip
`
`between the open tissue receiving configuration and the closed configuration.” Boston Sci. Corp.
`
`v. Cook Grp. Inc., No. C.A. No. 15-980-LPS-CJB, 2017 WL 1364205, at *8 (D. Del. Apr. 12,
`
`2017). Noting that this claim language “describes how the opening element structurally relates to
`
`other portions of the claimed device,” this Court concluded, in light of the claim language and
`
`figures in the specification, that the term did not merit means-plus-function treatment. See
`
`Boston Sci. Corp. v. Cook Grp. Inc., No. C.A. No. 15-980-LPS-CJB, 2017 WL 3977256, at *3
`
`(D. Del. Sept. 11, 2017). Here, in contrast, claim 9 does not describe in comparable detail how
`
`the “closure element” “structurally relates” to other structures of the claimed invention.
`
`Ethicon also asserts that “a ‘closure element’ in the context of reciprocating to open and
`
`close the jaw of a surgical instrument connotes sufficient structure” because there are a “limited
`
`class of structures” that can perform the claimed function. Eth. Op. Br. at 10. But while Ethicon
`
`contends that such limited structures “include a cam system, cable pulley system, and
`
`
`5 Ethicon’s expert, Dr. Awtar, has opined that the term “reciprocatable” requires the “closure
`element” to “move back and forth along an axis.” Awtar Decl. ¶32. To the extent Dr. Awtar
`opines that the back-and-forth movement must be linear, he is wrong. See Vaitekunas Resp.
`Decl. ¶5; see also Virginia Panel Corp. v. MAC Panel Co., 133 F.3d 860, 865–66 (Fed. Cir.
`1997) (ordinary meaning of “reciprocating” is not limited to linear reciprocation).
`
`
`
`8
`
`Ethicon Exhibit 2024.013
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`transmission rod/shaft,” id., neither Ethicon nor its expert identifies any structure that would not
`
`be included in these broad categories. That omission is telling because each of the enumerated
`
`“systems” itself encompasses numerous disparate structures, and, collectively, those “systems”
`
`encompass virtually every conceivable mechanism for performing the function of opening and
`
`closing the jaws of an end effector. Vaitekunas Resp. Decl. ¶¶7-11. “[Ethicon’s] claim … cannot
`
`be construed so broadly to cover every conceivable way or means to perform the function of
`
`[opening and closing the jaws of an end effector], and there is no structure recited in the
`
`limitation that would save it from application of section 112, ¶6.” Mas-Hamilton Group v.
`
`Lagard, Inc., 156 F.3d 1206, 1214 (Fed. Cir. 1998) (affirming application of § 112, ¶6 because
`
`claimed “lever moving element” would otherwise cover any device causing lever to move).
`
`This case is, thus, much different than Lighting Ballast Control LLC v. Philips Elecs. N.
`
`Am. Corp., 790 F.3d 1329, 1338–39 (Fed. Cir. 2015), and Regalo Int’l, LLC v. Munchkin, Inc.,
`
`C.A. No. 15-1103-LPS, 2016 WL 7107229, at *4–5 (D. Del. Dec. 6, 2016), upon which Ethicon
`
`relies. See Eth. Op. Br. at 10-11. In Lighting Ballast Control, the court noted that a rectifier was
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`the “only structure” that would provide “a constant or variable magnitude DC voltage,” as
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`required by the claim. 790 F.3d at 1338-39. Similarly, in Regalo, this Court (relying on Lighting
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`Ballast Control) noted that the determination of whether a claim limitation should be construed
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`under § 112, ¶6 should account for whether the recited claim language would invoke “a specific
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`structure or class of structures.” 2016 WL 7107229, at *5. Here, in contrast, Ethicon’s expert has
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`proposed three broad, ill-defined categories of “systems” encompassing nearly the full range of
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`mechanisms for opening and closing the jaws of an end effector.
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`Finally, Ethicon wrongly asserts that Intuitive has conceded that this limitation (and
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`others in the ’874 and ’658 patents) is not subject to § 112, ¶6 because Intuitive did not propose
`
`
`
`9
`
`Ethicon Exhibit 2024.014
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`to construe it as such in pending IPR proceedings. Eth. Op. Br. at 3-4. As this Court has noted in
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`rejecting a similar argument, “the legal standards applicable to claim construction in an IPR—the
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`‘broadest reasonable interpretation’—are different than those that apply in district court
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`litigation.” TQ Beta LLC v. Dish Network Corp., C.A. No. 14-CV-848-LPS-CJB, 2016 WL
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`356024, at n. 4 (D. Del. Jan. 28, 2016). Thus, “while the positions the parties have taken in the
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`IPR are not irrelevant … they are not binding, on either the parties or the Court.” Id.; see also
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2146 (2016) (noting that application of one
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`standard in inter partes review and another in district court proceedings “may produce
`
`inconsistent results,” and explaining that such inconsistency “is inherent to Congress’ regulatory
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`design”). Moreover, because the operative legal standard requires Intuitive to rebut a
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`presumption that the limitations at issue are not subject to § 112, ¶6, the decision not to propose
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`a means-plus-function construction under the more liberal “broadest reasonable interpretation”
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`standard is not at all inconsistent with Intuitive’s position here.
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`If the Court determines that this limitation should not be construed under § 112, ¶6, it still
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`“must determine
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`the appropriate construction.” Power Integrations, Inc. v. Fairchild
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`Semiconductor Int’l, Inc., C.A. No. CV 04-1371-LPS, 2016 WL 1171496, at *5 (D. Del. Mar.
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`24, 2016). In that event, Intuitive respectfully requests the Court to construe this phrase,
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`consistent with the disclosures in the specification, as an outer tube configured to apply said
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`opening and closing motions to said one of said first and second jaws. The specification only
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`discloses one structure capable of moving reciprocally to apply opening and closing motions (an
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`outer closure tube), and Ethicon should not be permitted to lay claim to technologies that it did
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`not invent and that extend well beyond the patent’s disclosure. See, e.g., Renishaw PLC v.
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`Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (“Ultimately, the
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`
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`10
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`Ethicon Exhibit 2024.015
`Intuitive v. Ethicon
`IPR2018-01254
`
`

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`interpretation to be given a term can only be determined and confirmed with a full understanding
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`of what the inventors actually invented and intended to envelop with the claim.”).
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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)
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`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.
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`Ethicon contends that this limitation is not subject to § 112, ¶6 because claim language
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`purportedly tells a POSITA that the “driver element” is in the end effector, that it is structurally
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`dynamic, that it is coupled directly or indirectly to the motor-powered firing element, and that it
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`imparts motion to some other component. Eth. Op. Br. at 8, citing Awtar Decl. ¶¶25-28. But
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`none of these characteristics imparts any meaningful structure to the claimed “driver element,”
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`nor does the claim language describe in any detail the structures with which it interacts.
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`Vaitekunas Resp. Decl. ¶¶15-20. Accordingly, § 112, ¶6 applies.
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`Ethicon disputes that knife 32 is the corresponding structure, but its argument that “the
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`knife is not a driver” (see Eth. Op. Br. at 9) does not withstand scrutiny. As explained in
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`Intuitive’s opening papers, knife 32 is attached to sled 33 such that when the helical drive screw
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`36 drives knife 32 through the end effector, the sled also travels axially pushing up the staples in
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`the staple cartridge. Vaitekunas Decl. ¶27; see also ’874 at 7:47-55; 8:58-61. Because knife 32
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`imparts motion to sled 33, it is a “driver.” Eth. Op. Br. at 8 (“a ‘driver’ is a structure or
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`component that imparts motion on another structure or component”); see also Vaitekunas Resp.
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`Decl. ¶21. It is likewise clear from the dependent claims of the ’874 patent that the
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`corresponding structure of the claimed “driver element” must include at least knife 32.
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`
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`11
`
`Ethicon Exhibit 2024.016
`Intuitive v. Ethicon
`IPR2018-01254
`
`

`

`Dependent claim 13, for instance, recites a “driver element [that] comprises a tissue cutting
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`surface.” Knife 32 is the only “tissue cutting surface” described in the specification. Likewise,
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`dependent claim 14 recites a “rotary draft shaft in threaded engagement with said driver
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`element.” See also dependent claim 7 (reciting “driver element in threaded engagement with said
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`rotary drive shaft”). Knife 32 is the only disclosed structure that travels axially through the end
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`effector by virtue of being threadingly engaged with a rotary drive shaft (helical drive shaft 36).
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`Sled 33 can travel through the end effector only by virtue of its engagement with knife 32.
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`C.
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`’658 Patent terms
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` “opening member configured to move longitudinally to apply an opening force to
`said anvil at a location other than said cam surface to move said anvil into said open
`position” (’658 claim 1)
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` “opening system configured to move longitudinally to apply an opening force to said
`second jaw at a location other than said cam surface to move said second jaw into
`said open position” (’658 claim 6)
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` “opening member configured to move longitudinally to apply a pulling force to said
`anvil at a location other than said cam surface to move said anvil into said fully-
`open position” (’658 claim 11)
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` “pulling member configured to move longitudinally to apply a pulling force to said
`anvil at a location other than said cam surface to move said anvil” (’658 claim 14)
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`
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`12
`
`Ethicon Exhibit 2024.017
`Intuitive v. Ethicon
`IPR2018-