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Intuitive Surgical, Inc. v. Rex Medical, L.P.

Docket IPR2020-00152, Patent Trial and Appeal Board (Nov. 19, 2019)
George Hoskins, John Schneider, Michael Woods, presiding
Case TypeInter Partes Review
Patent
9439650
Patent Owner Rex Medical, L.P.
Petitioner Intuitive Surgical, Inc.
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40 Other fed circuit mandate: Other fed circuit mandate

Document IPR2020-00152, No. 40 Other fed circuit mandate - Other fed circuit mandate (P.T.A.B. Jun. 22, 2022)

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41 Other other court decision: Other other court decision

Document IPR2020-00152, No. 41 Other other court decision - Other other court decision (P.T.A.B. Jun. 22, 2022)
STEVEN KATZ, Fish & Richardson, PC, Boston, MA, ar- gued for appellant.
Also represented by RYAN PATRICK O'CONNOR, JOHN C. PHILLIPS, San Diego, CA.
DENA CHEN, Cooley LLP, Palo Alto, CA, argued for ap- pellee.
Also represented by ERIK BENTON MILCH, JOSEPH VAN TASSEL, JENNIFER VOLK, Reston, VA; FRANK V. PIETRANTONIO, Washington, DC.
THIS CAUSE having been heard and considered, it is ORDERED and ADJUDGED: PER CURIAM (LOURIE, MAYER, and CUNNINGHAM, Cir- cuit Judges).
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40 Other Fed Circuit mandate: Other fed circuit mandate

Document IPR2020-00152, No. 40 Other Fed Circuit mandate - Other fed circuit mandate (P.T.A.B. Jun. 22, 2022)
United States Court of Appeals for the Federal Circuit
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2020- 00152.
In accordance with the judgment of this Court, entered December 9, 2021, and pursuant to Rule 41 of the Federal Rules of Appellate Procedure, the formal mandate is hereby issued.
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38 Other fed circuit mandate: Other fed circuit mandate

Document IPR2020-00152, No. 38 Other fed circuit mandate - Other fed circuit mandate (P.T.A.B. Apr. 25, 2022)
STEVEN KATZ, Fish & Richardson, PC, Boston, MA, ar- gued for appellant.
Also represented by RYAN PATRICK O'CONNOR, JOHN C. PHILLIPS, San Diego, CA.
DENA CHEN, Cooley LLP, Palo Alto, CA, argued for ap- pellee.
Also represented by ERIK BENTON MILCH, JOSEPH VAN TASSEL, JENNIFER VOLK, Reston, VA; FRANK V. PIETRANTONIO, Washington, DC.
THIS CAUSE having been heard and considered, it is ORDERED and ADJUDGED: PER CURIAM (LOURIE, MAYER, and CUNNINGHAM, Cir- cuit Judges).
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38 Other Fed Circuit mandate: Other fed circuit mandate

Document IPR2020-00152, No. 38 Other Fed Circuit mandate - Other fed circuit mandate (P.T.A.B. Apr. 25, 2022)
STEVEN KATZ, Fish & Richardson, PC, Boston, MA, ar- gued for appellant.
Also represented by RYAN PATRICK O'CONNOR, JOHN C. PHILLIPS, San Diego, CA.
DENA CHEN, Cooley LLP, Palo Alto, CA, argued for ap- pellee.
Also represented by ERIK BENTON MILCH, JOSEPH VAN TASSEL, JENNIFER VOLK, Reston, VA; FRANK V. PIETRANTONIO, Washington, DC.
THIS CAUSE having been heard and considered, it is ORDERED and ADJUDGED: PER CURIAM (LOURIE, MAYER, and CUNNINGHAM, Cir- cuit Judges).
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36 Order: Denying Motion to ExpungeDenying Motion to Exclude37 CFR �� 426

Document IPR2020-00152, No. 36 Order - Denying Motion to ExpungeDenying Motion to Exclude37 CFR �� 426 (P.T.A.B. Mar. 26, 2021)
We do not rely on paragraphs 14 or 17 in our Final Written Decision (see generally Paper 35), so we also dismiss this portion of Patent Owner’s motion as moot.
Paragraph 18 includes Dr. Knodel’s testimony as to whether adding an I-beam to Green-209’s stapler would have been obvious even if doing so would have created a safety issue by preventing operation of a spring-loaded retraction feature.
Patent Owner further argues that this paragraph should also “be excluded under FRE 403 because whatever probative value [it] provide[s] is substantially outweighed by confusing the issues relevant to this proceeding.” Id. at 4.
In its opposition, Petitioner responds that paragraph 18 is relevant as it is “offered in rebuttal to Patent Owner’s arguments concerning the safety of the proposed prior art combination.” Opp.
This testimony is relevant as it pertains directly to whether a skilled artisan would have added an I-beam to Green 209, a central issue in this proceeding.
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35 Termination Decision Document: Termination Decision Document

Document IPR2020-00152, No. 35 Termination Decision Document - Termination Decision Document (P.T.A.B. Mar. 26, 2021)
Petitioner’s expert, Dr. Knodel, testifies that: A person of ordinary skill in the art [(“POSITA”)] 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.
Based on the sophistication of the technology, as reflected in the prior art, we are not persuaded that product development experience—as opposed to graduate-level research in medical staplers, for example—is necessary to qualify a person as a POSITA, as Patent Owner’s expert testifies.
We agree with and credit Dr. Knodel’s understanding of this disclosure that a “POSITA would have understood that the use of a relatively low pressure gas would enable the pneumatic system (e.g., the air tanks and the components actuated by them) to be made of lighter construction and less expensive materials.” Id. ¶ 10.
As shown above in annotated Figure 9, Petitioner submits that Rothfuss’s actuator assembly 70 includes an I-beam with knife blade 100 “having an inclined front face 102 which is beveled to provide a sharp cutting edge.” Pet. 47 (quoting Ex. 1007, 8:38–45).
Patent 9,439,650 B2 blade to complete the I-beam structure.” Id. Rothfuss explains that upper I- beam flange member 104 is provided with staple pinning bars 108, which each include forwarding projecting tapered tip 110 and an inclined cam surface 112.
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