IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Richard W. Timm, et al.
`In re Patent of:
`8,616,431 Attorney Docket No.: 11030-0049IP7
`U.S. Patent No.:
`December 31, 2013
`
`Issue Date:
`Appl. Serial No.: 13/369,578
`
`Filing Date:
`February 9, 2012
`
`Title:
`SHIFTABLE DRIVE INTERFACE FOR ROBOTICALLY-
`CONTROLLED SURGICAL TOOL
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`DECLARATION OF DR. BRYAN KNODEL IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,616,431
`
`
`1
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`IS 1003
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`

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`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`TABLE OF CONTENTS
`
`I.
`
`QUALIFICATIONS ........................................................................................ 5
`
`II. MY UNDERSTANDING OF CLAIM CONSTRUCTION ........................... 7
`
`III. LEGAL STANDARDS ................................................................................... 7
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 10
`
`V. OVERVIEW OF THE ’431 PATENT .......................................................... 10
`
`VI. PROSECUTION HISTORY OF THE ’431 PATENT .................................. 11
`
`VII. THE ’431 PATENT’S PRIORITY DATE .................................................... 12
`
`VIII. INTERPRETATION OF THE ’431 PATENT CLAIMS ............................. 13
`
`IX. OVERVIEW OF THE PRIOR ART ............................................................. 14
`
`A. Shelton Application ................................................................................ 14
`
`B. Tierney .................................................................................................... 16
`
`C. Whitman .................................................................................................. 19
`
`D. Zemlock .................................................................................................. 21
`
`E. Timm Application ................................................................................... 23
`
`X. APPLICATION OF THE PRIOR ART TO THE ’431 PATENT ................ 23
`
`A. Ground 1: Claims 1-6 and 10-13 would have been Obvious over Tierney
`
`in view of Whitman ................................................................................ 23
`
`B. Ground 2: Claims 7, 14, 16-20, and 23-26 are obvious over Tierney in
`
`view of Whitman and further in view of Zemlok ................................... 78
`
`C. Ground 3: Claim 1, 2, 6, and 10-13 are anticipated by Whitman........... 92
`
`D. Ground 4: Claim 11 is obvious over Tierney in view of Whitman and
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`further in view of the Timm Application ..............................................114
`
`XI. CONCLUSION ............................................................................................118
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`2
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`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`I, Bryan Knodel, declare as follows:
`
`1.
`
`I have been engaged as an expert by Fish & Richardson P.C. on behalf
`
`of Intuitive Surgical, Inc. (“Petitioner”) for the above-captioned inter partes
`
`review. I understand that this proceeding involves United States Patent No.
`
`8,616,431 entitled “Shiftable Drive Interface For Robotically-Controlled Surgical
`
`Tool” by Richard W. Timm and Frederick E. Shelton IV, filed February 9, 2012
`
`and issued December 31, 2013 (the “’431 Patent”). I understand that the ’431
`
`Patent is currently assigned to Ethicon LLC.
`
`2.
`
`I have reviewed and am familiar with the specification of the ’431
`
`Patent. I will cite to the specification using the following format (’431 Patent, 1:1-
`
`10). This example citation points to the ’431 Patent specification at column 1,
`
`lines 1-10.
`
`3.
`
`I have reviewed and am familiar with the file history of the ’431
`
`Patent (“FH”). I understand that the file history is being provided as an exhibit in a
`
`single PDF document. I will cite to the PDF pages when I cite to the file history.
`
`4.
`
`I have also reviewed the Petition for Inter Partes Review of the ’431
`
`Patent and am familiar with the following prior art and other materials used in the
`
`Petition:
`
`
`
`
`
`IS1004 U.S. Pat. App. Pub. No. 2009/0101692 to Whitman et al.
`(“Whitman”)
`
`IS1005 U.S. Patent No. 7,524,320 to Tierney et al. (“Tierney”)
`
`3
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`

`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`IS1006 U.S. Pat. App. Pub. No. 2008/0251568 to Zemlok et al.
`(“Zemlok”)
`
`IS1007 U.S. Pat. App. Pub. No. 2008/0300613 to Shelton et al.
`(“Shelton Application”)
`
`IS1008 U.S. Patent No. 8,196,796 to Shelton et al. (“Shelton Patent”)
`
`IS1009 U.S. Patent No. 8,931,682 to Timm et al. (“Timm Patent”)
`
`IS1010 Morris B., Robotic Surgery: Applications, Limitations, and
`Impact on Surgical Education, Medscape General Medicine,
`2005;7(3):72 (“Morris”)
`
`IS1011 Levinson, K., Robotic Assisted Surgery, Electrical and
`Computer Engineering Design Handbook (2015) (“Levinson”)
`
`IS1012 Tonet, O. et al., Comparison of Control Modes of a Hand-Held
`Robot for Laparoscopic Surgery, MICCAI 2006, LNCS 4190,
`pp. 429-36 (2006) (“Tonet”)
`
`IS1013 Piccigallo M. et al., Hand-held robotic instrument for dextrous
`laparoscopic interventions, The International Journal of
`Medical Robotics and Computer Assisted Surgery, Vol. 4, Issue
`4, pp. 331-38 (2008) (“Piccigallo”)
`
`IS1014 Zahraee, A. et al., Toward the Development of a Hand-Held
`Surgical Robot for Laparoscopy, IEEE/ASME Transactions on
`Mechatronics, Vol. 15, No. 6, pp. 853-61 (Dec. 2010)
`(“Zahraee”)
`
`IS1015 Pereira R. et al., Hand-held robotic device for laparoscopic
`surgery and training, 2014 IEEE 3rd International Conference
`on Serious Games and Applications for Health (SeGAH), pp. 1-
`8 (2014) (“Pereira”)
`
`IS1016 U.S. Pat. App. Pub. No. 2008/0308601 to Timm et al. (“Timm
`Application”)
`
`IS1017 U.S. Patent No. 6,817,974 to Cooper et al. (“Cooper”)
`
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`4
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`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`I.
`
`QUALIFICATIONS
`
`5. My resume is being provided with this Declaration. As indicated
`
`there, I have eight publications and I am a named inventor on over 130 patents for
`
`medical devices. I have extensive experience with surgical instruments, and
`
`surgical staplers in particular, which is the subject matter of the ’431 Patent.
`
`6.
`
`Specifically, I have been involved in the research and development,
`
`design, and manufacture of medical devices including surgical cutting and stapling
`
`devices since 1992, and am qualified to present the analysis provided in this
`
`declaration.
`
`7.
`
`I was employed in the Research and Development department as an
`
`engineer of Ethicon Endo-Surgery. I was the lead design engineer for endoscopic
`
`linear staplers/cutters. In this lead design engineer role, it was my responsibility to
`
`understand every aspect of these devices.
`
`8.
`
`One early patent of mine is U.S. Patent No. 5,465,895, entitled
`
`“Surgical Stapler Instrument,” and granted on November 14, 1995. The ’895
`
`Patent states: “The present invention relates in general to surgical stapler
`
`instruments which are capable of applying lines of staples to tissue while cutting
`
`the tissue between those staple lines and, more particularly, to improvements
`
`relating to stapler instruments and improvements in processes for forming various
`
`components of such stapler instruments.” ’895 Patent, 1:5-10. My ’895 Patent
`
`5
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`

`

`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`specifically discloses jaws that open and close and a gear-driven knife to cut
`
`stapled tissue. I am thus generally familiar with such mechanisms for surgical
`
`instruments.
`
`9.
`
`Beginning in 1998, I have been a consultant for medical device
`
`companies and law firms. I have consulted in the areas of conceptual design,
`
`prototyping, and turnkey product design.
`
`10.
`
`In addition, I have worked on a variety of surgical products for use in
`
`a wide range of surgical procedures including female reproductive system, female
`
`incontinence, female pelvic floor dysfunction, lung volume reduction, colon,
`
`GERD, bariatrics, CABG, heart valve repair, hernia, general surgical procedures,
`
`and surgical stapling, which is the general subject matter of the patent-at-issue.
`
`11. As part of my consulting practice, I have also acted as a non-testifying
`
`expert in a patent litigation case in the area of medical devices.
`
`12.
`
`I have not testified as an expert witness at trial or by deposition during
`
`the previous four years.
`
`13.
`
`I am being compensated at my usual and customary rate of $200/hour
`
`for my work on this case, plus reimbursement for actual expenses. My
`
`compensation is not contingent upon the conclusions I reach, the outcome of this
`
`inter partes review, or any litigation involving the ’431 Patent.
`
`
`
`6
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`

`

`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`II. MY UNDERSTANDING OF CLAIM CONSTRUCTION
`
`14.
`
`I understand that claim terms are read in light of the patent’s
`
`specification and file history as understood by a person of ordinary skill in the art
`
`at the time of the purported invention. I further understand that in an inter partes
`
`review proceeding of an unexpired patent, such as the ’431 Patent, the claim terms
`
`are to be given their broadest reasonable interpretation (“BRI”) consistent with the
`
`specification. I understand that constructions under the BRI standard should be at
`
`least as broad as constructions under the plain and ordinary meaning standard used
`
`in district court litigation.
`
`III. LEGAL STANDARDS
`
`15.
`
`I am not a lawyer and do not provide any legal opinions. Although I
`
`am not a lawyer, I have been advised that certain legal standards are to be applied
`
`by technical experts in forming opinions regarding meaning and validity of patent
`
`claims.
`
`16. As part of this inquiry, I have been asked to consider the level of
`
`ordinary skill in the field that someone would have had at the time the claimed
`
`invention was made. In deciding the level of ordinary skill, I considered the
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`following:
`
`
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`
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`the levels of education and experience of persons working in the field;
`
`the types of problems encountered in the field; and
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`7
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`

`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`
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`the sophistication of the technology.
`
`17.
`
`I understand that a claim is invalid if a single prior art reference
`
`(including information that the single prior art reference specifically incorporates
`
`by reference) discloses a claimed invention (the invention thus lacks novelty) or if
`
`the claim would have been obvious to one of ordinary skill in the art at the time of
`
`the purported invention based on the teachings of one or more prior art references.
`
`18.
`
`I understand that the time of the purported invention is the earliest
`
`possible effective filing date of the application that discloses the claimed subject
`
`matter.
`
`19.
`
`I am informed that a claim can be invalid based on anticipation if each
`
`limitation of the claim is found in the four corners of a single prior art reference
`
`(including any incorporated material), either explicitly or inherently.
`
`20.
`
`I am informed that a claim can be invalid based on obviousness in
`
`light of a single prior art reference alone (based on general knowledge in the art),
`
`or based upon a combination of prior art references, where there is some reason
`
`one of ordinary skill in the art would make the combination.
`
`21.
`
`I am informed that when evaluating whether an invention would have
`
`been obvious, the question is whether the differences between the subject matter
`
`sought to be patented and the prior art are such that the subject matter as a whole
`
`would have been obvious to a person of ordinary skill in the art at the time the
`
`8
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`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`purported invention was made. In other words, the question is not whether a single
`
`element “would have been obvious” but whether the claim as a whole would have
`
`been obvious given what was known in the prior art.
`
`22.
`
`I understand that an obviousness analysis should (1) identify the
`
`particular references that, singly or in combination, make the patent obvious; (2)
`
`specifically identify which elements of the patent claim appear in each of the
`
`asserted references; and (3) explain a motivation, teaching, need or market pressure
`
`that would have inspired a person of ordinary skill in the art to combine prior art
`
`references to solve a problem.
`
`23.
`
`I understand that certain objective indicia should be considered, if
`
`available, regarding whether a patent claim would have been obvious or
`
`nonobvious. Such indicia include: commercial success of products covered by the
`
`patent claims; a long-felt need for the invention; failed attempts by others to make
`
`the invention; copying of the invention by others in the field; unexpected results
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`achieved by the invention as compared to the closest prior art; praise of the
`
`invention by the infringer or others in the field; the taking of licenses under the
`
`patent by others; expressions of surprise by experts and those skilled in the art at
`
`the making of the invention; and the patentee proceeded contrary to the accepted
`
`wisdom of the prior art. I am not aware of any such indicia that would be pertinent
`
`to the challenged claims.
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`9
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`

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`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
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`24. Furthermore, I understand that the United Sates Supreme Court in its
`
`KSR vs. Teleflex decision ruled that “if a technique has been used to improve one
`
`device, and a person of ordinary skill in the art would have recognized that it
`
`would improve similar devices in the same way, using the technique is obvious
`
`unless its actual application is beyond that person’s skill.”
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`
`25. A person of ordinary skill in the art at the time of the alleged
`
`invention would have had the equivalent of a Bachelor’s degree or higher in
`
`mechanical engineering with at least 3 years working experience in the design of
`
`comparable surgical devices. Additional education in a relevant field, such as
`
`mechanical engineering or robotics (to the extent pertinent), or industry experience
`
`may compensate for a deficit in one of the other aspects of the requirements stated
`
`above.
`
`26.
`
`I am a person of at least ordinary skill in the art, and was such a
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`person as of the priority date of the ’431 Patent, which I am informed by counsel
`
`that, for purposes of this petition, is May 27, 2011. I was also a person of at least
`
`ordinary skill in the art as of June 4, 2007, the filing date of the grandparent ’380
`
`patent.
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`V. OVERVIEW OF THE ’431 PATENT
`
`27. The ’431 Patent’s specification generally has two parts. It first
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`10
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`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
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`discusses a hand-held embodiment at length, and this material generally comes
`
`from the original application filed in 2007. In 2011, the applicant filed a
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`“continuation-in-part” application that added new material related to a robotic
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`embodiment, essentially adapting the handheld surgical instrument to work with
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`then-existing surgical robot systems, such as those made by Intuitive Surgical.
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`Each of the claims of the ’431 Patent concern the robotic embodiments. The
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`claims also require a “transmission arrangement” that allows rotary motion to be
`
`selectively applied to at least two different functions, such as staple firing and
`
`articulation. Some claims require the transmission to operate with a shifter gear
`
`and shifter shaft. However, Ethicon did not invent shiftable transmissions or
`
`surgical robots, and the ’431 Patent claims simply combine these two typical and
`
`conventional components—and in a manner that already existed in the prior art.
`
`VI. PROSECUTION HISTORY OF THE ’431 PATENT
`
`28. During prosecution of the ’431 Patent, the Examiner rejected many of
`
`Applicant’s original claims as anticipated by U.S. Patent Application No.
`
`2002/0072736, which is assigned to Petitioner Intuitive Surgical and discloses the
`
`same robotic surgical system as Tierney. IS1002 (File History), 373-77. The
`
`Examiner also rejected two of Applicant’s original claims because they would have
`
`been obvious over the ’736 application in view of U.S. Patent No. 6,981,628. Id.,
`
`377-79.
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`11
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`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`29.
`
`In response to this rejection, the applicant amended the rejected
`
`claims to require “application of separate control motions to different portions of
`
`an end effector from a single rotatable driven element of the tool drive assembly.”
`
`IS1002 (File History), 345, 354-55 (emphasis in original) (also arguing that “a
`
`plurality of driven elements [] are required to control the end effector elements
`
`112a, 112b” in the tool drive assembly of the robotic system disclosed in the ’736
`
`application). A notice of allowance subsequently issued. Id., 168. As explained
`
`below, however, application of separate control motions to different portions of an
`
`end effector from a single rotatable driven element of a tool drive assembly was
`
`not new, and is disclosed by Whitman.
`
`VII. THE ’431 PATENT’S PRIORITY DATE
`
`30. The ’431 Patent claims priority as a continuation of U.S. App. No.
`
`13/118,223 (the “’223 Application”), filed on May 27, 2011, now U.S. Patent No.
`
`8,931,682 (IS1009, “Timm Patent”), which is a continuation-in-part of U.S. App.
`
`No. 13/020,053 (the “’053 Application”), filed on Feb. 3, 2011 and issued as U.S.
`
`Patent No. 8,196,796 (IS1008, “Shelton Patent”), which is a continuation of U.S.
`
`App. No. 11/810,015 (the “’015 Application”), filed on June 4, 2007 and issued as
`
`U.S. Patent No. 7,905,380 (the “’380 Patent”). I have not been asked to consider,
`
`and so have not considered, whether the parent ’223 Application provides written
`
`description support for the ’431 Patent. I have, however, considered whether the
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`12
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`

`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`grandparent Shelton Patent (IS008) and great grandparent ’380 Patent provide
`
`written description support for the challenged claims of the ’431 Patent, and I have
`
`concluded that they do not. In particular, each challenged claim of the ’431 Patent
`
`claims a “robotic system.”
`
`31.
`
`I reviewed the Shelton Patent and the ’380 Patent and saw no
`
`disclosure of a “robotic system,” as required by the claims. Rather, they discuss –
`
`and thus one of ordinary skill in the art would understand them to disclose – only a
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`handheld endoscopic surgical instrument. Accordingly, a person of skill in the art
`
`would not understand the inventors to have possession of the alleged invention of
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`the challenged claims prior to the filing of the 2011 application. My
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`understanding, therefore, is that the ’431 Patent has a priority date no earlier than
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`May 27, 2011.
`
`32. Again, I offer no opinion as to whether the parent ’223 Application
`
`provides written description support for any claim of the ’431 Patent, and
`
`understand that the burden to show such a disclosure in an alleged priority
`
`document falls on the patentee.
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`VIII. INTERPRETATION OF THE ’431 PATENT CLAIMS
`
`33.
`
`I apply the broadest reasonable interpretation of the terms of the
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`challenged claims of the ’431 Patent. Under BRI, I do not believe the claims to
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`require clarification beyond the plain meaning of those terms. I am informed that
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`in District Court, different legal standards apply that may narrow the claims in a
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`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
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`way not applicable under BRI.
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`IX. OVERVIEW OF THE PRIOR ART
`
`A.
`
`Shelton Application
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`34. The following annotated figures from the Shelton Application
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`illustrate a typical prior art motorized surgical stapler:
`
`
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`14
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`Elongated Shaft
`Assembly 56
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`Shifter
`handles 164
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`Trigger 54
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`End Effector 58
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`

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`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
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`
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`Shelton Application, FIGs. 1, 8.
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`35. This prior art surgical stapler has a knife that cuts the tissue between
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`two rows of staples. Id., FIG. 2 (element 99). As is typical, there is a transmission
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`between the motor and the end effector to transmit the rotary motion (and may
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`often, if desired, convert high motor speed into a lower speed / higher torque
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`motion). The transmission also uses a shifter to reverse the direction of the knife
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`(controlled by shifter handles 164). Id., ¶¶56-57, 63-65, FIG. 5. The Shelton
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`Application uses a sliding transmission in which movement of the shifter handles
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`causes “forward” and “reversing” gears to slide into and out of engagement with
`
`15
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`Transmission
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`End
`effector
`
`Trigger 54
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`Shifter
`Handles
`164
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`

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`bevel gear 114. Id. Below is highlighted the shifter shaft with a forward gear 136
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`and reversing gear 134 that are selectively engaged with the bevel gear 114.
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`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
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`
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`Id., FIG. 5.
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`36. When the shifter handles 164 are moved to the downward position,
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`the knife is driven by the “forward gear” and thus moves forward to cut tissue, and
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`when the shifter handles 164 are in the upward position, the knife is driven by the
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`“reversing gear” and thus reverses direction. Id., ¶65.
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`B.
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`Tierney
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`37. The ’431 Patent incorporates by reference, and largely copies, the
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`prior art drive interfaces for surgical robots designed by Petitioner Intuitive
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`Surgical and disclosed in its prior art patents, including Tierney:
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`Over the years a variety of minimally invasive robotic (or
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`“telesurgical”) systems have been developed to increase surgical
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`16
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`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
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`dexterity as well as to permit a surgeon to operate on a patient in
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`an intuitive manner. Many of such systems are disclosed in the
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`following U.S. patents which are each herein incorporated by
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`reference in their respective entirety: [such as]. . . U.S. Pat. No.
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`7,524,320, entitled “Mechanical Actuator Interface System For
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`Robotic Surgical Tools” [(“Tierney”)] . . . .
`
`’431 Patent, 26:11-34. Not surprisingly, the surgical robot of the ’431 Patent bears
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`a striking resemblance to Tierney:
`
`’431 Patent
`
`Tierney Prior Art
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`Robotic Controller
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`
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`FIG. 34
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`17
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`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`’431 Patent
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`Tierney Prior Art
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`Robotic Manipulator
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`Surgical Tool
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`18
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`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
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`’431 Patent
`
`Tierney Prior Art
`
`Tool Adapter and Tool Drive Assembly
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`
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`
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`C. Whitman
`
`38.
`
`In 2009, Whitman disclosed a surgical instrument with a shiftable
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`transmission that permits a single drive element to be selectively coupled to one of
`
`multiple drivers to control four different functions of a surgical tool. FIG. 3B of
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`Whitman, for example, depicts an embodiment with “function selector block 609”
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`that can select among four different functions, such as “[1] rotation, [2]
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`19
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`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
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`articulation, [3] opening/closing of the jaws relative to each other, and [4] firing
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`the cutting and/or stapling mechanism.” Whitman, ¶114. Each of these functions
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`is selectively driven by “function shaft 611” depending on the placement of
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`“function selector block 609.” Id., ¶¶92-94, 142-74, 241-44.
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`
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`Id., FIG. 3B. When function selector block is in the first position (3001 in FIG.
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`3B), function shaft 611 is coupled to rotating tube 677 such that rotation of the
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`function shaft 611 will cause the end effector to rotate. Id., ¶¶142-45. If the
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`function selector block is moved to the second position (3002 in FIG. 3B), then
`
`function shaft 611 is coupled to articulation gear shaft 693 such that rotation of the
`
`function shaft 611 will cause the end effector to articulate. Id., ¶¶147-54.
`
`20
`
`Firing gear shaft (inside tube 677)
`
`Articulation gear shaft 693
`
`Rotating tube 677
`
`Position 1:
`Rotation
`
`Position 2:
`Articulation
`
`Position 3:
`Clamping
`
`Position 4:
`Firing
`
`Rotation gear
`shaft 665
`
`Function selector
`block 609
`
`Input drive shaft:
`“function shaft 611”
`
`

`

`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`D. Zemlock
`
`39. Zemlock discloses a powered surgical instrument with a “[s]hift motor
`
`220 [that] is configured to selectively move [a] drive gear 200 between a plurality
`
`of positions.” Zemlock, ¶48, FIGs. 5-7, 9-11, 14. The drive gear is mounted on
`
`the shifter shaft and corresponds to the recited “driven gear” of claim 7. In the
`
`’431 Patent, the “driven” gear is “driven” by the shaft rotation, and drives gears
`
`associated with each function depending on the driven gear’s position. Zemlock’s
`
`transmission works in the same way. “[D]rive gear 200” is driven by the shaft, and
`
`drives gears associated with each function depending on drive gear 200’s axial
`
`position. Id.
`
`40. The drive gear is moved axially by the shifter shaft to mesh with
`
`different gears arranged axially adjacent the shifter shaft. Each of the gears that
`
`the drive gear can mesh with provides a different function (e.g., articulation or
`
`rotation). FIG. 10 illustrates the transmission with the “driven gear” (drive gear
`
`200) in the third position.
`
`21
`
`

`

`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`Zemlock, FIG. 10.
`
`
`
`41. Zemlock states: “The first position, illustrated in FIGs. 5 and 6,
`
`enables rotation of end effector 160; the second position, illustrated in FIG. 7,
`
`enables articulation of end effector 160; and the third position, illustrated in FIGS.
`
`9-11 and 14, enables actuation of powered surgical instrument 100.” Zemlock,
`
`¶48. Zemlock also discloses that in place of a shift motor, a three-position
`
`solenoid can be used. Id., ¶47 (“It is envisioned that a three-position solenoid, for
`
`instance, can be used as an alternative to shift motor 220.”), FIGs. 4-7, 9-11 and
`
`14.
`
`22
`
`Drive gear
`
`Articulation gear
`
`Ring gear/
`rotation member
`
`Drive motor
`
`Actuator
`gear
`
`Third
`position
`
`Second
`position
`
`First
`position
`
`Shift motor
`
`

`

`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`E.
`
`Timm Application
`
`42. The Timm Application discloses a “surgical instrument that has an
`
`elongate channel assembly configured to operably support a staple cartridge
`
`therein.” Timm Application, Abstract. Notably, the Timm Application discloses
`
`an articulation joint 1512 that is nearly identical to the articulation joint disclosed
`
`in the ’431 Patent. Compare Timm Application, ¶182, FIG. 41 with ’431 Patent,
`
`FIG. 145.
`
`
`X. APPLICATION OF THE PRIOR ART TO THE ’431 PATENT
`
`
`
`A. Ground 1: Claims 1-6 and 10-13 would have been Obvious over
`Tierney in view of Whitman
`
`[1.1] A tool mounting device for coupling a surgical end effector configured to
`selectively perform at least two actions in response to control motions applied
`thereto to a tool drive assembly of a robotic system that is operatively coupled to
`a control unit of the robotic system, said tool mounting device comprising
`
`43.
`
`If this preamble is a limitation, then Tierney discloses it.
`
`“A tool mounting device for coupling a surgical end effector . . . to a tool
`
`23
`
`First tool
`articulation axis
`
`First tool
`articulation axis
`
`Second tool
`articulation axis
`
`Second tool
`articulation axis
`
`

`

`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`drive assembly of a robotic system . . .”
`
`44. Tierney discloses a tool mounting device (the combination of rigid
`
`shaft 102 and proximal housing 108) for coupling a surgical end effector 112 to a
`
`tool drive assembly (the combination of tool holder 129, drive elements 119, and
`
`motors 70). Tierney, FIGs. 1-7L, 14A-C.
`
`
`
`24
`
`Tool mounting device (“shaft 102,” “proximal housing 108,” “adapter 128”)
`
`Surgical end effector
`(“end effector 112”)
`
`“Shaft 102”
`
`“Proximal housing 108”
`
`Tool drive assembly
`(“tool holder 129,” drive elements 119,” “motor 70” of “manipulator 58”)
`
`“Adapter 128”
`
`

`

`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`
`
`As shown above in FIGs. 4 and 7F, rigid shaft 102 couples end effector 112 to
`
`proximal housing 108, and adapter 128 couples proximal housing 108 to the
`
`combination of tool holder 129, drive elements 119, and motor 70 of manipulator
`
`58. Id.
`
`45. The tool drive assembly is part of a “robotic surgical system 10[,
`
`which] generally includes master controller 150 and a robotic arm slave cart 50.”
`
`Id., 7:1-3, FIG. 1.
`
`25
`
`“Rotatable drive
`elements 119”
`
`“Manipulator 58”
`
`“Motor 70”
`
`

`

`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`As noted above in Section IX.B, the Tierney surgical robot is incorporated by
`
`reference into the ’431 Patent, and the ’431 Patent figures are strikingly similar to
`
`
`
`Tierney’s figures.
`
`“Surgical end effector configured to selectively perform at least two actions
`
`in response to control motions applied thereto”
`
`46. Tierney’s end effector 112 is configured to selectively perform at least
`
`two actions (e.g., at least two of rotation, opening, closing, cutting, and
`
`articulating) in response to control motions provided by “drive system 116.”
`
`Tierney, 9:19-10:11, FIGs. 4A-5H. As explained in Tierney, “drive system 116
`
`26
`
`Robotic arm slave cart
`
`Robotic system
`(“robotic surgical system 10”)
`
`Master
`controller
`
`

`

`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`mechanically couples first and second end effector elements 112a, 112b to driven
`
`elements 118 of interface 110 [of proximal housing 108]. . . . Stated simply, the
`
`drive system [116] translates mechanical inputs from driven elements 118 into
`
`articulation of the wrist about first and second axes A1, A2, as well as into
`
`actuation of the two element end effector by relative movement of the end effector
`
`elements about axis A2.” Id., 9:19-28. Accordingly, “articulation of the wrist”
`
`and “actuation of the two element end effector” comprise the recited “at least two
`
`actions” that the surgical end effector can perform.
`
`In FIG. 4B of Tierney, control connections are drawn schematically, illustrating
`
`
`
`27
`
`Action 1: articulation of end effector components about axis A1
`
`“End
`effector
`elements
`112a,
`112b”
`
`“Driven elements 118”
`
`Action 2:
`relative
`movement of
`end effector
`elements
`about axis A2
`
`

`

`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`the control motions for articulation and opening and closing. In Tierney’s primary
`
`embodiments, control cables are used to make the control connections. The
`
`control cables are controlled independently and therefore allow various actions to
`
`be performed selectively. Articulation and opening of the jaws are two such
`
`actions.
`
`“[The tool drive assembly of a robotic system] is operatively coupled to a
`
`control unit of the robotic system”
`
`47. Tierney’s tool drive assembly (the combination of tool holder 129,
`
`drive elements 119, and motor 70 of manipulator 58) is operatively coupled to a
`
`control unit (master controller 150) of robotic surgical system 10. Tierney, 7:1-3,
`
`11:30-32, 12:45-58, FIGs. 1-2B, 8A-9. As shown below, drive elements 119 of
`
`tool holder 129 are part of manipulator 58, which is operatively coupled to
`
`processor 152 of master controller 150 by remote interface adapter (RIA) 56. Id.
`
`The surgeon would sit at the master controller and manipulate the user interface
`
`and such manipulation is translated into signals that control the motors in the tool
`
`drive assembly.
`
`28
`
`

`

`Attorney Docket No. 11030-0049IP7
`IPR of U.S. Patent No. 8,616,431
`
`
`
`[1.2] a tool mounting portion configured for operable attachment to the tool
`drive assembly of the robotic system
`
`48. Tierney discloses this limitation. As shown above in element [1.1],
`
`Tierney’s tool mounting device (the combination of rigid shaft 102 and proximal
`
`housing 108) includes a tool mounting portion (proximal housing 108) configured
`
`for releasable attachment to the tool drive assembly (the combination of tool holder
`
`129, drive elements 119, and motor 70) of robotic surgical system 10. Tierney,
`
`10:44-11:32, FIG. 7F. As explained in Tierney, “[a