UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`______________________
`
`IPR2018-00934
`U.S. Patent No. 8,998,058
`______________________
`
`PATENT OWNER ETHICON LLC’S RESPONSE
`
`
`
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`______________________
`
`IPR2018-00934
`U.S. Patent No. 8,998,058
`______________________
`
`PATENT OWNER ETHICON LLC’S RESPONSE
`
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`IPR2018-00934
`U.S. Patent No. 8,998,058
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .......................................................................................... 1
`
`BACKGROUND ............................................................................................. 6
`
`A. Overview of the 058 Patent ................................................................... 6
`
`B.
`
`Overview of Challenged Independent Claims 6 and 1 ....................... 14
`
`III. CLAIM CONSTRUCTION .......................................................................... 17
`
`A.
`
`“stapling system comprising … an electric motor … configured
`to receive power from a power source such that said electrical
`motor can only selectively receive power from said power source
`when said housing connector is attached to the surgical
`instrument system” (Claim 6) / “disposable loading unit
`comprising: … a motor … configured to receive power from a
`power source such that said motor can only selectively receive
`power from said power source when said means for removably
`attaching said housing to the surgical instrument is operably
`coupled to the surgical instrument” (Claim 1) .................................... 17
`
`1.
`
`2.
`
`The Claim Language Confirms That These Limitations
`Require That The Electric Motor Is Attached To A Power
`Source And Configured Such That The Transfer Of Power
`To The Motor Is Prevented When The Housing Connector
`of the DLU/Stapling System Is Detached From The
`Surgical Instrument ................................................................... 19
`
`The Specification Confirms That This Limitation Requires
`That The Electric Motor Is Attached To A Power Source
`And Configured Such That The Transfer Of Power To The
`Motor Is Prevented When The DLU Is Detached From The
`Surgical Instrument ................................................................... 23
`
`3.
`
`Petitioner’s Analysis Vitiates This Claim Limitation ............... 28
`
`i
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`
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`IV. THE PRIOR ART .......................................................................................... 30
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`IPR2018-00934
`U.S. Patent No. 8,998,058
`
`A. Hooven ................................................................................................ 30
`
`B.
`
`Heinrich ............................................................................................... 36
`
`C. Milliman .............................................................................................. 41
`
`V.
`
`ITS BURDEN OF
`INTUITIVE DID NOT CARRY
`DEMONSTRATING THAT THE COMBINATION OF HOOVEN
`AND HEINRICH RENDERS OBVIOUS EVERY ELEMENT OF
`THE INDEPENDENT CLAIMS OF THE 058 PATENT........................ 43
`
`A. Hooven In View Of Heinrich Does Not Disclose A Motor
`Configured To Only Selectively Receive Power From An
`Attached Power Source As Required By Claims 6 and 1 ................... 44
`
`B.
`
`Petitioner Does Not Establish a Motivation to Combine Hooven
`with Heinrich or Milliman ................................................................... 54
`
`1.
`
`2.
`
`3.
`
`Heinrich Discourages a Combination With Hooven ................ 55
`
`Impermissible Hindsight To
`Petitioner Relies On
`Combine Hooven And Heinrich ............................................... 56
`
`A POSITA would not have a reasonable expectation of
`success in combining Hooven and Heinrich ............................. 59
`
`C.
`
`Dr. Fischer’s Testimony Is Entitled To Little Weight ........................ 61
`
`VI. CONCLUSION .............................................................................................. 64
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`ii
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Arctic Cat Inc. v. Bombardier Recreational Prod. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) ............................................................................ 4
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) ............................................................................ 55
`Carlson v. Bioremedi Therapeutic Sys.,
`822 F.3d 194 (5th Cir. 2016) .............................................................................. 62
`In re Chu,
`66 F.3d 292 (Fed. Cir. 1995) .............................................................................. 58
`Compass Bank v. Intellectual Ventures II,
`IPR2014-00786, Paper 46 ................................................................................... 58
`Corning Incorp. v. DSM IP Assets,
`IPR2013-00050, Paper 77 ................................................................................... 58
`Dell Inc. v. Acceleron, LLC,
`818 F.3d 1293 (Fed. Cir. 2016) .................................................................... 22, 29
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .................................................................................................. 4
`Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. De C.V.,
`865 F.3d 1348 (Fed. Cir. 2017) .......................................................................... 59
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .................................................................... 54, 55
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 4
`Kumho Tire Co. v. Carmichael,
`526 U.S. 137 (1999) ............................................................................................ 62
`
`iii
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`
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`L’Oréal USA Inc. v. Liqwd, Inc.,
`PGR2018-00023 Paper 9 (PTAB Aug. 10, 2018) .............................................. 61
`In re Laskowski,
`871 F.2d 115 (Fed. Cir. 1989) ........................................................................ 4, 59
`Merck & Co., Inc. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed.Cir.2005) ............................................................................ 22
`Microsoft Corp. v. Multi-Tech Sys., Inc.,
`357 F.3d 1340 (Fed. Cir. 2004) .......................................................................... 17
`In re NuVasive, Inc.,
`693 F. App’x 893 (Fed. Cir. 2017) ......................................................... 17, 22, 29
`PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,
`491 F.3d 1342 (Fed. Cir. 2007) .......................................................................... 62
`Philips Lighting N. Am. Corp. v. Wangs All. Corp.,
`727 F. App’x 676 (Fed. Cir. 2018) ..................................................................... 57
`Sciele Pharma Inc. v. Lupin Ltd.,
`684 F.3d 1253 (Fed. Cir. 2012) .......................................................................... 61
`Tech. Patents LLC v. T-Mobile (UK) Ltd.,
`700 F.3d 482 (Fed. Cir. 2012), cert. denied, 134 S.Ct. 67 (2013) ...................... 17
`TMI Prod., Inc. v. Rosen Entm’t Sys., L.P.,
`610 F.App’x 968 (Fed. Cir. 2015) ................................................................ 23, 29
`Total Containment, Inc. v. Intelpro Corp.,
`217 F.3d 852, 1999 WL 717945 (Fed. Cir. 1999) .................................... 4, 57, 59
`ViaTech Techs. Inc. v. Microsoft Corp.,
`733 F. App’x 542 (Fed. Cir. 2018) ..................................................................... 29
`Statutes
`35 U.S.C. § 253(a) ................................................................................................... 14
`Other Authorities
`37 C.F.R. § 1.321(a) ................................................................................................. 14
`iv
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`IPR2018-00934
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`
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`37 C.F.R. § 42.24(a) ................................................................................................. 65
`37 CPR. § 42.24(a) ................................................................................................. 65
`37 C.F.R. § 42.24(d) ................................................................................................ 65
`37 CPR. § 42.24(d) ................................................................................................ 65
`37 C.F.R. § 42.100(b) .............................................................................................. 17
`37 CPR. § 42.100(b) .............................................................................................. 17
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ...................................................................... 17
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ...................................................................... 17
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`EXHIBIT LIST FOR IPR2018-00934
`
`Description
`
`U.S. Patent No. 5,964,394 (“Robertson”)
`
`
`
`
`
`
`Ethicon
` Exhibit #
`Ex. 2001
`
`Ex. 2002
`
`U.S. Patent No. 6,231,565 (“Tovey”)
`
`Ex. 2003
`
`Excerpts from Technology Tutorial filed in Ethicon LLC, et al. v.
`Intuitive Surgical, Inc., et al., C.A. No. 17-871 (LPS)(CJB)
`(District of Delaware).
`
`Ex. 2004
`
`Statutory Disclaimer
`
`Ex. 2005
`
`Reserved
`
`Ex. 2006
`
`Declaration of Dr. William Cimino
`
`Ex. 2007
`
`Ex. 2008
`
`Deposition of Gregory Fischer, Ph.D., Volume 1 (February 18,
`2019)
`
`Deposition of Gregory Fischer, Ph.D., Volume 2 (February 20,
`2019)
`
`Ex. 2009
`
`Reserved
`
`Ex. 2010
`
`U.S. Pat. App. Pub. 2009/0206136 A1 (application publication of
`U.S. Appl. No. 12/031,628) (“the 628 Application”)
`
`Ex. 2011
`
`Reserved
`
`Ex. 2012
`
`Robert Glasgow et al., The Benefits of a Dedicated Minimally
`Invasive Surgery Program to Academic General Surgery
`Practice, Journal of Gastrointestinal Surgery, 869-73 (Nov. 2004)
`
`Ex. 2013
`
`U.S. Patent Application No. 2014/0252067 A1 (application
`publication of U.S. Appl. No. 14/282,494 (“the 494 Application”)
`
`vi
`
`
`
`
`I.
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`INTRODUCTION
`Ethicon is a market leader in developing endocutter1 technology and
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`commercially released its first endocutter in 1996. Since then, Ethicon has
`
`developed numerous endocutters to address changing surgical needs. In 2011,
`
`Ethicon introduced its first motor-powered endocutter – the ECHELON FLEXTM
`
`Powered ENDOPATH® Stapler. Ethicon’s motor-powered endocutters offer
`
`numerous benefits including dramatically reducing the force required to operate an
`
`endocutter and providing reliability across a broad range of tissue thicknesses.
`
`U.S. Patent No. 8,998,058 (“the 058 Patent”) is one of a family of patents
`
`awarded to Ethicon for innovations relating to motor-powered endocutters. Each of
`
`the challenged claims includes a “power” limitation related to the relationship
`
`between the stapling system’s motor and its power source. These limitations
`
`capture an improvement over prior art systems whereby the interface between the
`
`motor and the power was through the physical interface between the stapling
`
`system and a surgical instrument system. In contrast to the prior art, the invention
`
`
`1 An endocutter is a surgical instrument that both staples and cuts tissue. The term
`
`“stapler” can also be used to refer to this type of device, but can also refer to a
`
`device that only staples. Exhibit 2003 includes excerpts of a technology tutorial on
`
`endocutters that was filed in the District of Delaware on June 28, 2018.
`
`1
`
`
`
`
`
`described and claimed in the 058 Patent separates the electrical connection
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`between the power source and the motor from the physical interface between the
`
`stapling system and the surgical instrument system. This improved design provides
`
`numerous advantages. Ex. 2006, Cimino Decl. at ¶¶ 23, 32-34.
`
`Trial was instituted on one ground—obviousness over Hooven in view of
`
`Heinrich. As Petitioner acknowledges, these references were made of record
`
`during prosecution of the 058 Patent. See Petition at 4.
`
`Intuitive has failed to meet its burden of demonstrating that Hooven and
`
`Heinrich render obvious the independent claims of the 058 Patent for three reasons.
`
`First, all of the challenged independent claims of the 058 Patent require a
`
`motor in a stapling system (or a stapling disposable loading unit (DLU)) that is
`
`attached to a power source independent of the physical connection between the
`
`housing of the stapling system (or DLU) and the surgical instrument system. Thus,
`
`the claims require more than a system whereby the motor is simply disconnected
`
`and connected to a power source. Instead, for example, claim 6 requires that the
`
`stapling system’s motor is configured to receive power from a power source, but
`
`“only selectively” receives power when a housing connector of the stapling system
`
`2
`
`
`
`
`
`is attached to the surgical instrument system.2 Petitioner is only able to arrive at the
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`conclusion that Hooven or Heinrich disclose this power limitation by taking an
`
`unreasonable position that reads limitations out of the claims. The failure of the
`
`prior art to disclose the key inventive element is fatal to Intuitive’s ground for
`
`invalidity for all of the challenged claims.
`
`Second, Petitioner has not established a motivation to combine the teachings
`
`of Hooven and Heinrich. In fact, Heinrich, by incorporating Milliman by reference,
`
`specifically counsels against a combination with a device with a reusable knife
`
`blade. As explained further below, Hooven discloses a stapler with a reusable knife
`
`blade. As Dr. Cimino explains, the use of a fresh knife presents a number of
`
`advantages that are absent from Hooven. Ex. 2006, Cimino Decl. at ¶¶130-31, 174-
`
`76. Neither Petitioner nor Dr. Fischer considered this teaching. Regardless,
`
`
`2 The originally-issued language of claim 6 required attachment of the housing
`
`connector to a “surgical instrument,” whereas the preamble recited a “stapling
`
`system configured to be operably engaged with a surgical instrument system.” This
`
`was a plainly evident and minor error in antecedent basis and was corrected to read
`
`“surgical instrument system” in May 2017. The petition challenges the corrected
`
`language of claim 6.
`
`3
`
`
`
`
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`Petitioner’s purported motivations to combine cite the 058 Patent itself, and thus
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`are deficient and based on impermissible hindsight. KSR Int'l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 421 (2007) (warning against a “temptation to read into the prior art
`
`the teachings of the invention in issue” and instructing courts to “guard against
`
`slipping into use of hindsight”) (quoting Graham v. John Deere Co. of Kansas
`
`City, 383 U.S. 1, 36 (1966)); see also Total Containment, Inc. v. Intelpro Corp.,
`
`217 F.3d 852; 1999 WL 717946 at *5 n.4 (Fed. Cir. 1999) (“It is impermissible ‘to
`
`use the claimed invention itself as a blueprint for piecing together elements in the
`
`prior art to defeat the patentability of the claimed invention....’”); In re Laskowski,
`
`871 F.2d 115, 117 (Fed. Cir. 1989) (“the only source of the suggestion is [the
`
`patent in suit]; there is no prior art teaching that would provide the motivation”).
`
`Further, Petitioner has not met its burden to establish a reasonable expectation of
`
`success in combining the teachings of Hooven and Heinrich. See Arctic Cat Inc. v.
`
`Bombardier Recreational Prod. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017)
`
`(“where a party argues a skilled artisan would have been motivated to combine
`
`references, it must show the artisan would have had a reasonable expectation of
`
`success from doing so”).3
`
`
`3 All emphasis added unless otherwise noted.
`
`4
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`Finally, Petitioner relies heavily on the expert declaration of Dr. Fischer.
`
`
`
`
`This reliance must fail. Dr. Fischer’s opinions are unreliable, as he failed to
`
`provide any opinions on the most basic element of an obviousness analysis—the
`
`scope of the claims. Dr. Fischer testified that he did not understand the scope of the
`
`terms, that he made no attempt to understand the scope of the claims, and that he
`
`had not formed any understanding of the meaning of multiple basic claim
`
`limitations. See Exs. 2007, 2008. Dr. Fischer stated in no uncertain terms that he
`
`did not “believe it’s necessary to broadly define the term[s] or find the extents of
`
`the boundary of the scope of [a] term to find examples” in the prior art. Ex. 2008 at
`
`356:18-357:6. Moreover, Dr. Fischer testified that he had not considered any
`
`advantages or disadvantages to adapting a hand-held surgical instrument (such as
`
`Hooven) for use in a robotic surgical system (such as Heinrich) in offering his
`
`opinions on motivations to combine. Id. 312:4-313:13. Given this clear testimony,
`
`Dr. Fischer’s insistence in his declaration that either Hooven or Heinrich discloses
`
`the recited claim limitations, or that a POSITA would be motivated to combine
`
`Hooven with Heinrich, carries little weight. Given the fact that the ipse dixit of Dr.
`
`Fischer is the sole support outside of impermissible hindsight to make any of the
`
`obviousness combinations, Intuitive cannot carry its burden. Nonetheless, even if
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`Dr. Fischer’s testimony is considered, all of Petitioner’s grounds suffer from the
`
`same fatal flaws.
`
`5
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`U.S. Patent No. 8,998,058
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`For these reasons, and the additional reasons explained in detail below,
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`
`
`
`Patent Owner respectfully requests that the Board find that Intuitive has failed to
`
`show that any claims of the 058 Patent are unpatentable.
`
`II. BACKGROUND
`A. Overview of the 058 Patent
`The 058 Patent is directed to a novel implementation of a “detachable
`
`motor-powered surgical instrument”—in the case of challenged claims 6 and 1, a
`
`surgical cutting and stapling instrument. Ex. 1001 at Abstract, 80:08-82:48.
`
`References to a “DLU” in this Patent Owner Response apply equally to a “stapling
`
`system,” and vice versa.
`
`The 058 Patent discloses that surgical cutting and stapling tools were known
`
`in the art, including surgical stapling tools that are “configured to operate with
`
`disposable loading units (DLU’s)” which are discarded once the procedure is
`
`completed. Id. at 1:54-2:4. The 058 Patent identifies the Milliman reference (Ex.
`
`1006) as one of these known surgical cutting and stapling tools, and incorporates
`
`the disclosure of Milliman by reference. Id. at 2:7-11. The 058 Patent explains that
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`existing DLUs that lack motor power, such as the DLU disclosed in Milliman,
`
`have a disadvantage in that they “require the clinician to continuously ratchet the
`
`handle” of the tool in order to operate the device. Id. at 2:12-14. Thus, “[t]here is a
`
`need for a surgical stapling apparatus configured for use with a disposable loading
`
`6
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`
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`unit that is driven by a motor contained in the disposable loading unit.” Id. at 2:14-
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`U.S. Patent No. 8,998,058
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`17.
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`The 058 Patent recognizes, however, that it is not desirable for power to
`
`flow between an attached power source and motor until the housing of the DLU is
`
`attached to a surgical instrument system that controls it. For example, the 058
`
`Patent explains that preventing power from flowing “prevent[s] the battery 526
`
`from being drained during non-use.” Id. at 11:29-57. Thus, the motor-powered
`
`surgical instrument of the 058 Patent includes a “motor configured to receive
`
`power from a power source such that the motor can only selectively receive power
`
`from the power source when [the] means for removably attaching the housing to
`
`the surgical instrument is operably coupled to the surgical instrument.” Id. at 2:37-
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`43; see also id. at Abstract, 2:59-65, 11:29-57.
`
`An exemplary embodiment disclosed in the 058 Patent illustrates the
`
`principles of the invention. Figure 1 of the 058 Patent discloses “a disposable
`
`loading unit 16 of the present invention that is coupled to a conventional surgical
`
`cutting and stapling apparatus 10.” Id. at 10:22-25. As illustrated in Figure 1, the
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`DLU 16 includes a “tool assembly 17 for performing surgical procedures such as
`
`cutting tissue and applying staples on each side of the cut.” Id. at 10:45-48. Tool
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`assembly 17 includes a cartridge 18, which may contain staples, and an anvil 20,
`
`7
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`
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`which provides a series of concavities for forming the closures of the staples. Id. at
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`11:48-55. DLU 16 also includes housing 200.
`
`Conventional Apparatus
`
`DLU of Present
`Invention
`
`
`
`8
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`Figure 2 depicts the DLU 16 which includes a power source (battery 526)
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`
`
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`that is attached to motor 562 by a spring 550. Id. at 11:29-12:15. The configuration
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`of the motor 562 and battery 526 is shown in more detail in Figure 3.
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`
`
`
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`
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`As shown in Figure 3, there are two battery contacts, 528 and 530, “mounted
`
`in electrical contact with the battery 526 and also protrud[ing] out of the battery
`
`holder 524 to slide along the inside wall 523 of the battery cavity 522.” Id. at
`9
`
`
`
`
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`11:30-41. Battery holder 524 is configured to receive control rod 52 of the surgical
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`instrument system. Id. at 11:41-45. Along the inside wall 523 is a series of three
`
`contacts—540, 542, and 544—that can make contact with battery contacts 528 and
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`530 when control rod 52 is inserted into battery holder 524. Id. at 11:45-58.
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`However, because control rod 52 of the surgical instrument system has not yet
`
`been inserted into the DLU in Figures 2 and 3, the battery contacts are not in
`
`contact with contacts 540, 542, or 544, and the motor 562 and battery 526 are
`
`operably disconnected. See id. at 11:54-58 (“When retained in that ‘pre-use’ or
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`‘disconnected’ position by spring 550, the battery contacts 528 and 530 do not
`
`contact any of the contacts 540, 542, 544 within the battery cavity 522 to prevent
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`the battery 526 from being drained during non-use.”).
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`Figures 7 and 9 of this exemplary embodiment depict the DLU after control
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`rod 52 of the surgical instrument system has been inserted. In particular, these
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`figures and the associated text illustrate and describe how control rod 52 brings the
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`battery contacts into contact with anvil close contacts 542 (Figure 7) and fire
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`10
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`contacts (544) (Figure 9), which permit power to flow to motor 562 for closing and
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`firing actuations, respectively.
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`11
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`As can be seen in FIG. 7, as the control rod 52 is initially
`moved in the distal direction during the anvil close stroke,
`the battery holder 524 moves the battery 526 to a position
`wherein the battery contacts 528, 530 contact the anvil
`close contacts 542. Power is now permitted to flow from
`the battery 526 to the motor 562 which rotates the drive
`screw 600 and causes the drive beam 266 to move
`distally. … When the clinician desires to fire the
`instrument 10 (i.e., actuate the instrument 10 to cause it to
`cut and staple tissue), the clinician first depresses the
`plunger 82 of the firing lockout assembly 80 (FIG. 1) as
`discussed in U.S. Pat. No. 5,865,361. Thereafter, movable
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`12
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`handle 24 may be actuated. As the movable handle 24 is
`depressed, the control rod 52 moves the battery holder 524
`and battery 526 to the position illustrated in FIGS. 9 and
`10. As can be seen in those Figures, when the battery 526
`is moved into that position, the battery contacts 528, 530
`are brought into contact with the fire contacts 544. The
`switch 650 is normally closed until it is actuated by the
`knife nut 610. Thus, when the battery contacts 528, 530
`contact the firing contacts 544, power flows from the
`battery 526 to the motor 562 which drives the drive screw
`600.
`Id. at 12:59-13:24.
`
`
`Thus, as shown in this exemplary embodiment, a motor and its attached
`
`power source are operably connected, and power is selectively provided to the
`
`motor, only when the DLU is attached to the surgical instrument system.
`
`This novel arrangement of the power source and motor enables multiple
`
`advantages. First, this configuration “prevent[s] the battery 526 from being
`
`drained during non-use” by controlling the flow of power. Id. at 11:29-57.
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`Second, the safety of a patient is improved by eliminating the risk of the DLU
`
`13
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`misfiring before it is attached to the surgical instrument system. Ex. 2006, Cimino
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`Decl. at ¶33.
`
`These benefits can be realized by employing the claimed invention of the
`
`058 Patent over prior art systems that deliver power directly through the interface
`
`between the surgical instrument system and the DLU.
`
`B. Overview of Challenged Independent Claims 6 and 14
`There are two independent claims at issue in this proceeding—Claims 1 and
`
`6. Both claims recite a motor configured to only selectively receive power from an
`
`attached power source when the DLU/stapling system is attached to the surgical
`
`instrument/system.
`
`Independent claims 6 and 1 are reproduced below:
`
`6. A stapling system configured to be operably
`engaged with a surgical instrument system, said stapling
`system comprising:
`a staple cartridge carrier;
`
`
`4 On September 7, 2018, Ethicon filed with the U.S. Patent and Trademark Office a
`
`statutory disclaimer of claims 11-18 of the 058 Patent under 35 U.S.C. § 253(a)
`
`and 37 C.F.R. § 1.321(a). A copy of the statutory disclaimer was submitted as
`
`Exhibit 2004 in this proceeding.
`
`14
`
`
`
`
`
`
`IPR2018-00934
`U.S. Patent No. 8,998,058
`
`a staple cartridge assembly supported by said staple
`cartridge carrier;
`an anvil supported relative to said staple cartridge
`carrier and movable from an open position to a closed
`position;
`a housing, wherein said staple cartridge carrier
`extends from said housing, and wherein said housing
`comprises a housing connector removably attachable to
`the surgical instrument system;
`a rotary shaft;
`an axial drive member operably engaged with said
`rotary shaft, wherein said axial drive member is selectively
`movable through said staple cartridge assembly from a
`start position to an end position when a rotary motion is
`applied to said rotary shaft; and
`an electric motor operably interfacing with said
`rotary shaft to selectively apply said rotary motion to said
`rotary shaft, wherein said electric motor is configured to
`receive power from a power source such that said
`electrical motor can only selectively receive power from
`said power source when said housing connector is
`attached to the surgical instrument.
`
`
`Ex. 1001, Claim 6.
`
`
`1. A disposable loading unit configured for operable
`attachment
`to a surgical
`instrument configured
`to
`
`15
`
`
`
`
`
`
`IPR2018-00934
`U.S. Patent No. 8,998,058
`
`selectively generate at least one control motion for the
`operation of said disposable loading unit, said disposable
`loading unit comprising:
`a carrier operably supporting a cartridge assembly
`therein;
`an anvil supported relative to said carrier and being
`movable from an open position to closed positions upon
`application of at least one control motion thereto;
`a housing coupled to said carrier, said housing
`including means for removably attaching said housing to
`the surgical instrument;
`an axial drive assembly at least partially supported
`within said housing and being supported for selective axial
`travel through said cartridge assembly from a start position
`to an end position upon application of a rotary motion
`thereto, said axial drive assembly comprising a rotary
`shaft; and
`a motor operably interfacing with said rotary shaft
`to selectively apply said rotary motion thereto, said motor
`configured to receive power from a power source such
`that said motor can only selectively receive power from
`said power source when said means for removably
`attaching said housing to the surgical instrument is
`operably coupled to the surgical instrument.
`
`
`Ex. 1001, Claim 1.
`
`
`16
`
`
`
`IPR2018-00934
`U.S. Patent No. 8,998,058
`
`
`
`
`III. CLAIM CONSTRUCTION5
`Claims of an unexpired patent in a petition filed prior to November 13, 2018
`
`are construed using the broadest reasonable construction in light of the
`
`specification of the patent. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,766 (Aug. 14, 2012); 37 C.F.R. § 42.100(b). Although it is improper to
`
`read a limitation from the specification into the claims, the claims still must be read
`
`in view of the specification of which they are a part. See Microsoft Corp. v. Multi-
`
`Tech Sys., Inc., 357 F.3d 1340, 1347 (Fed. Cir. 2004). The specification may
`
`confirm the plain meaning of the term. Tech. Patents LLC v. T-Mobile (UK) Ltd.,
`
`700 F.3d 482 (Fed. Cir. 2012), cert. denied, 134 S.Ct. 67 (2013). “Even under the
`
`broadest reasonable interpretation, the Board's construction cannot be divorced
`
`from the specification and the record evidence and must be consistent with the one
`
`that those skilled in the art would reach. A construction that is unreasonably broad
`
`... will not pass muster.” In re NuVasive, Inc., 693 F. App'x 893, 897–98 (Fed. Cir.
`
`2017).
`
`A.
`
`“stapling system comprising … an electric motor … configured to
`receive power from a power source such that said electrical motor
`can only selectively receive power from said power source when
`
`5 The term Petitioner proposed for construction in its Petition is not relevant to this
`
`Patent Owner Response. Therefore, Patent Owner does not address this term.
`
`17
`
`
`
`
`
`
`IPR2018-00934
`U.S. Patent No. 8,998,058
`
`said housing connector is attached to the surgical instrument
`system” (Claim 6) / “disposable loading unit comprising: … a
`motor … configured to receive power from a power source such
`that said motor can only selectively receive power from said power
`source when said means for removably attaching said housing to
`the surgical instrument is operably coupled to the surgical
`instrument” (Claim 1)
`Petitioner attempts to read all meaning out of the key inventive limitations of
`
`the 058 Patent. Petitioner attempts to strip the inventive element out of these
`
`limitations by treating the claim language “configured to receive power” and “only
`
`selectively receive power” as nothing more than a requirement that the motor
`
`receive power when it is plugged into a power source. See Petition at 38-39.
`
`Based on the plain language of the claims and the specification, a POSITA
`
`would have understood that the power limitation of claim 6 means a “stapling
`
`system comprising … an electric motor … that is attached to a power source
`
`such that said electrical motor can receive power from said attached power
`
`source when said housing connector is attached to the surgical instrument
`
`system, and said electrical motor cannot receive power from said attached
`
`power source when said housing connector is not attached to the surgical
`
`instrument system.”
`
`Similarly, a POSITA would have understood that the power limitation of
`
`claim 1 means a “disposable loading unit comprising: … a motor … that is
`
`attached to a power source such that said motor can receive power from said
`18
`
`
`
`
`
`attached power source when said means for removably attaching said housing
`
`IPR2018-00934
`U.S. Patent No. 8,998,058
`
`to the surgical instrument is operably coupled to the surgical instrument, and
`
`said motor cannot receive power from said attached power source when said
`
`means for removably attaching said housing to the surgical instrument is
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`decoupled from the surgical instrument.” Ex. 2006, Cimino Decl. at ¶¶ 92-94;
`
`see also id. at ¶¶ 70-91.
`
`In other words, this limitation requires that the electric motor is attached to a
`
`power source and configured such that the transfer of power to the motor is
`
`controlled and that the control mechanism prevents the transfer of power when the
`
`stapling system/DLU is detached from the surgical instrument syste
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