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’S CORRECTED CONTINGENT MOTION TO AMEND
`UNDER 37 C.F.R. § 42.121
`
`
`
`

`

`
`
`I. 
`II. 
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`THE SUBSTITUTE CLAIMS DO NOT EXPAND THE SCOPE OF
`THE CLAIMS OF THE 058 PATENT ........................................................... 2 
`III.  PATENT OWNER PROPOSES A REASONABLE NUMBER OF
`SUBSTITUTE CLAIMS ................................................................................. 3 
`IV.  THE SUBSTITUTE CLAIMS DO NOT ADD NEW SUBJECT
`MATTER ......................................................................................................... 3 
`THE PROPOSED SUBSTITUTE CLAIMS RESPOND TO AND
`OVERCOME THE GROUNDS OF RECORD ............................................ 17 
`Substitute independent claims 19 and 24 are patentable over the
`A. 
`cited art. ............................................................................................... 18 
`Substitute dependent claims 20-23 and 25-28 are patentable
`over the cited art. ................................................................................. 21 
`VI.  CONCLUSION .............................................................................................. 21 
`
`
`V. 
`
`B. 
`
`
`
`i
`
`

`

`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases 
`Aqua Products, Inc. v. Joseph Matal,
`872 F.3d 1290 (Fed. Cir. 2017) (en banc) ....................................................... 1, 18
`
`
`Corning Optical Comm’n RF, LLC v. PPC Broadband, Inc.,
`IPR2014-00441, Paper 19 (P.T.A.B. Oct. 30, 2014) .............................................. 3
`
`
`Statutes 
`35 U.S.C. § 316(d) ............................................................................................ 1, 2, 3
`
`35 U.S.C. § 316(e) ................................................................................................... 18
`
`Rules 
`37 C.F.R. § 42.121 ...................................................................................... 1, 2, 3, 18
`
`
`
`
`ii
`
`

`

`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 5,964,394 (“Robertson”)
`
`U.S. Patent No. 6,231,565 (“Tovey”)
`
`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).
`
`Statutory Disclaimer
`
`Reserved
`
`Declaration of Dr. William Cimino
`
`Deposition of Gregory Fischer, Ph. D., Volume 1 (February
`18, 2019)
`
`Deposition of Gregory Fischer, Ph. D., Volume 2 (February
`20, 2019)
`
`Exhibit
`Ex. 2001
`
`Ex. 2002
`
`Ex. 2003
`
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`
`Ex. 2007
`
`Ex. 2008
`
`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
`
`Ex. 2013
`
`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)
`
`U.S. Patent Application No. 2014/0252067 A1 (application
`publication of U.S. Appl. No. 14/282,494 (“the 494
`Application”)
`
`
`
`iii
`
`

`

`I.
`
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121, Patent Owner
`
`Ethicon LLC submits this contingent motion to substitute proposed claims 19-28
`
`for original claims 1-10 (collectively, the “Challenged Claims”) of U.S. Patent No.
`
`8,998,058 (“the 058 Patent”) should any of the Challenged Claims be found
`
`unpatentable.1 Patent Owner has conferred with the Board prior to filing this
`
`motion, as required by 37 C.F.R. § 42.121, and the Board authorized the filing of
`
`this motion without a conference on February 25, 2019 via email.
`
`
`
`In Aqua Products, Inc. v. Joseph Matal, 872 F.3d 1290, 1327-28 (Fed. Cir.
`
`2017) (en banc), the Federal Circuit held that the burden of persuasion to establish
`
`that proposed amendments are patentable no longer rests with the patent owner.
`
`Instead, it is the petitioner’s burden to prove unpatentability of the proposed
`
`amendments. Id. In a motion to amend, a patent owner need only satisfy its burden
`
`of production under 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.
`
`
`1 Patent Owner submitted a statutory disclaimer for claims 11-18 – accordingly,
`
`claims 11-18 are treated as having never been part of the 058 Patent. See Paper 9
`
`at 8-10. However in order to avoid confusion, Patent Owner begins numberings its
`
`substitute proposed claims at 19.
`
`
`
`1
`
`

`

`
`
`As explained below, the proposed substitute claims satisfy the requisite
`
`showing for a motion to amend. They (1) do not impermissibly enlarge the scope
`
`of the claims; (2) present a reasonable number of substitute claims; (3) do not
`
`introduce new subject matter; and (4) respond to a ground of unpatentability in the
`
`trial. Patent Owner has thus met its burden. Accordingly, should any of the
`
`Challenged Claims be determined to be unpatentable, Patent Owner respectfully
`
`requests that the 058 Patent be amended to include the corresponding substitute
`
`claim(s).
`
`II. THE SUBSTITUTE CLAIMS2 DO NOT EXPAND THE SCOPE OF
`THE CLAIMS OF THE 058 PATENT
`35 U.S.C. § 316(d)(3) and 37 C.F.R. § 42.121(a)(2)(ii) require that an
`
`
`
`amendment not “enlarge the scope of the claims of the patent . . . .” Here, the
`
`proposed substitute claims narrow—and do not broaden—the original claims.
`
`
`
`Substitute independent claims 19 and 24 include all of the original features
`
`of original independent claims 1 and 6, respectively. With respect to independent
`
`claims 1 and 6, Patent Owner has clarified in proposed independent claims 19 and
`
`24 that the motor is configured for attachment to a power source independent from
`
`the housing connector attachment to the surgical instrument system.
`
`
`2 A full claim listing is provided in Appendix A.
`
`
`
`
`2
`
`

`

`
`
`Proposed dependent claims 20-23 and 25-28 are identical to dependent
`
`claims 2-5 and 7-10. The proposed claims 20-23 and 25-28 are, thus, narrower than
`
`the original, granted versions of those claims.
`
`III. PATENT OWNER PROPOSES A REASONABLE NUMBER OF
`SUBSTITUTE CLAIMS
`35 U.S.C. § 316(d)(1)(B) and 37 C.F.R. § 42.121(a)(3) require that, for each
`
`
`
`challenged claim, Patent Owner “propose a reasonable number of substitute
`
`claims.” There exists a “presumption . . . that only one substitute claim would be
`
`needed to replace each challenged claim.” See 37 C.F.R. § 42.121(a)(3); 35 U.S.C.
`
`§ 316(d)(1)(B); Corning Optical Comm’n RF, LLC v. PPC Broadband, Inc.,
`
`IPR2014-00441, Paper 19 at 3 (P.T.A.B. Oct. 30, 2014) (“The presumption is that
`
`only one substitute claim is needed for each original patent claim.”). Here, that is
`
`exactly what Patent Owner proposes—Patent Owner presents only one substitute
`
`claim for each challenged claim. Accordingly, Patent Owner presents a reasonable
`
`number of substitute claims.
`
`IV. THE SUBSTITUTE CLAIMS DO NOT ADD NEW SUBJECT
`MATTER
`The table below indicates where support can be found for the substitute
`
`
`
`claims from the original disclosure of the 058 Patent—U.S. Pat. App. Pub.
`
`2014/0252067 A1 (Exhibit 2013)—and from the application to which the 058
`
`Patent claims priority—U.S. Appl. No. 12/031,628 (Ex. 2010).
`
`
`
`
`3
`
`

`

`Claims
`
`[[1]]19. A disposable
`loading unit configured
`for operable attachment
`to a surgical instrument
`configured to selectively
`generate at least one
`control motion for the
`operation of said
`disposable loading unit,
`said disposable loading
`unit comprising:
`
`
`Exemplary Support in 494 and 628 Applications
`Proposed Claim 19
`See, e.g., Ex. 2013 at ¶ [0005]; Ex. 2010 at ¶ [0004]
`(“One type of surgical stapling apparatus is
`configured to operate with disposable loading units
`(DLU's) that are constructed to support a staple
`cartridge and knife assembly therein. Once the
`procedure is completed, the entire DLU is discarded.
`Such instruments that are designed to accommodate
`DLU's purport to offer the advantage of a “fresh”
`knife blade for each firing of the instrument.
`Examples of such surgical stapling apparatuses and
`DLU's are disclosed in U.S. Pat. No, 5,865,361,
`entitled SURGICAL STAPLING APPARATUS,
`which issued on Feb. 2, 1999,, the disclosure of
`which is herein incorporated by reference in its
`entirety.”)
`
`Ex. 2013 at ¶ [0009]; Ex. 2010 at ¶ [0008] (“In
`another general aspect of various embodiments of the
`present invention, there is provided a surgical cutting
`and stapling apparatus. Various embodiments of the
`instrument may include a handle assembly that
`operably supports a drive assembly therein that is
`constructed to impart drive motions and a retraction
`motion. A movable handle portion may be operably
`supported on the handle assembly and configured to
`interface with the drive system such that manipulation
`of the movable handle causes the drive system to
`impart the drive motions. An elongated body may
`protrude from the handle assembly and have a distal
`end that is couplable to a disposable loading unit. In
`various embodiments, the disposable loading unit
`may comprise a carrier that has a staple cartridge
`supported therein. An anvil assembly may be
`movably coupled to the carrier for selective movable
`travel between open and closed positions relative to
`the staple cartridge. An axial drive assembly may be
`supported within the carrier such that the axial drive
`assembly may move in a distal direction from a start
`
`
`
`
`4
`
`

`

`position to an end position through the carrier and the
`staple cartridge and also in a proximal direction from
`the end position to the start position. A motor may be
`supported within the carrier and configured to
`interface with the axial drive assembly to drive the
`axial drive assembly in the distal and proximal
`directions. A battery may be supported within the
`carrier and be coupled to the motor for supplying
`power thereto. The battery may be configured to
`interface with a portion of the elongated body to
`receive the drive motions therefrom upon
`manipulation of the moveable handle.”).
`
`See also Ex. 2013. at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]–[0166], claim 1;
`Ex. 2010. at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034], claims 1, 7-8, and 15.
`See, e.g., Ex. 2013 at ¶ [0157]; Ex. 2010 at ¶ [0025]
`(“As can be seen in FIG. 1, the disposable loading
`unit 16 may generally comprise a tool assembly 17
`for performing surgical procedures such as cutting
`tissue and applying staples on each side of the cut.
`The tool assembly 17 may include a cartridge
`assembly 18 that includes a staple cartridge 220 that
`is supported in a carrier 216.”).
`
`See also Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]– [0166], claim 1.
`Ex. 2010 at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034], claims 1, 7-8, and 15.
`See, e.g., Ex. 2013 at ¶ [0157]; Ex. 2010 at ¶ [0025]
`(“An anvil assembly 20 may be pivotally coupled to
`the carrier 216 in a known manner for selective
`pivotal travel between open and closed positions. The
`anvil assembly 20 includes an anvil portion 204 that
`
`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
`
`
`
`
`5
`
`

`

`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
`
`has a plurality of staple deforming concavities (not
`shown) formed in the undersurface thereof.”).
`
`See also Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]– [0166], claim 1.
`Ex. 2010 at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034], claims 1, 7-8, and 15.
`See, e.g., Ex. 2013 at ¶ [0159]; Ex. 2010 at ¶ [0027]
`(“As can also be seen in FIG. 1, the disposable
`loading unit 16 may also have a housing portion 200
`that is adapted to snap onto or otherwise be attached
`to the carrier 216. The proximal end 500 of housing
`200 may include engagement nubs 254 for releasably
`engaging elongated body 14 of a surgical stapling
`apparatus. Nubs 254 form a bayonet type coupling
`with the distal end of the elongated body portion 14
`of the surgical stapling apparatus as described in U.S.
`Pat. No. 5,865,361.”)
`
`See also Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]– [0166], claim 1.
`Ex. 2010 at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034], claims 1, 7-8, and 15.
`See, e.g., Ex. 2013 at ¶ [0009]; Ex. 2010 at ¶ [0008]
`(“An axial drive assembly may be supported within
`the carrier such that the axial drive assembly may
`move in a distal direction from a start position to an
`end position through the carrier and the staple
`cartridge and also in a proximal direction from the
`end position to the start position. A motor may be
`supported within the carrier and configured to
`interface with the axial drive assembly to drive the
`axial drive assembly in the distal and proximal
`directions. A battery may be supported within the
`carrier and be coupled to the motor for supplying
`power thereto. The battery may be configured to
`
`
`
`
`6
`
`

`

`
`
`a motor operably
`interfacing with said
`rotary shaft to selectively
`apply said rotary motion
`thereto, said motor
`configured to receive
`power from for
`attachment to a power
`source independent of
`said housing connector
`attachment to the surgical
`instrument system, and
`wherein such that said
`
`interface with a portion of the elongated body to
`receive the drive motions therefrom upon
`manipulation of the moveable handle.”).
`
`Ex. 2013 at ¶ [0161]; Ex. 2010 at ¶ [0008] (“As can
`also be seen in FIG. 5, the thrust disc 580 may be
`formed on a proximal end of a drive screw 600 that
`threadedly engages a drive nut 610 that is supported
`within an engagement section 270 formed on the
`distal end of the drive beam 266. In various
`embodiments, the engagement section 270 may
`include a pair of engagement fingers 270a and 270b
`that are dimensioned and configured to be received
`within a slot in the drive nut 610 to non-rotatably
`affix the drive nut 610 to the drive beam 266. Thus,
`rotation of the drive screw 600 within the drive nut
`610 will drive the drive beam 266 in the distal
`direction “DD” or in the proximal direction “PD”
`depending upon the direction of rotation of the drive
`screw 600.)
`
`Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶ [0002],
`[0005]–[0006], [0009]-[0010], [0157]–[0161],
`[0165]– [0166], claim 1.
`Ex. 2010 at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034], claims 1, 7-8, and 15.
`See, e.g., Ex. 2013 at ¶ [0166]; Ex. 2010 at ¶ [0034]
`(“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 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
`
`
`
`
`7
`
`

`

`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.
`
`[[2]]20. The disposable
`loading unit of claim 19
`[[1]], wherein said
`cartridge assembly
`comprises a plurality of
`staples removably stored
`therein.
`
`
`[[3]]21. The disposable
`loading unit of claim 20
`[[2]], wherein said axial
`drive assembly comprises
`a sled movable between
`said start position and
`said end position to eject
`said staples from said
`cartridge assembly.
`
`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.”).
`
`See also Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]– [0166], claim 1.
`Ex. 2010 at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034], claims 1, 7-8, and 15.
`Proposed Claim 20
`See, e.g., Ex. 2013 at ¶ [0157]; Ex. 2010 at ¶ [0025]
`(“The staple cartridge 220 houses a plurality of
`pushers or drivers (not shown) that each have a staple
`or staples (not shown) supported thereon. An
`actuation sled 234 is supported within the tool
`assembly 17 and is configured to drive the pushers
`and staples in the staple cartridge 220 in a direction
`toward the anvil assembly 20 as the actuation sled
`234 is driven from the proximal end of the tool
`assembly 17 to the distal end 220. See FIG. 2.”)
`
`See also Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]– [0166], claim 2.
`Ex. 2010 at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034], claims 1, 7-8, and 15.
`Proposed Claim 21
`See, e.g., Ex. 2013 at ¶ [0157]; Ex. 2010 at ¶ [0025]
`(“The staple cartridge 220 houses a plurality of
`pushers or drivers (not shown) that each have a staple
`or staples (not shown) supported thereon. An
`actuation sled 234 is supported within the tool
`assembly 17 and is configured to drive the pushers
`and staples in the staple cartridge 220 in a direction
`toward the anvil assembly 20 as the actuation sled
`
`
`
`
`8
`
`

`

`
`
`[[4]]22. The disposable
`loading unit of claim 21
`[[3]], wherein said axial
`drive assembly further
`comprises a knife
`configured to incise
`tissue captured between
`said anvil and said
`cartridge assembly.
`
`
`[[5]]23. The disposable
`loading unit of claim 19
`[[1]], wherein said
`cartridge assembly is
`configured to be removed
`from said carrier and
`replaced with a different
`cartridge assembly.
`
`
`234 is driven from the proximal end of the tool
`assembly 17 to the distal end 220. See FIG. 2.”)
`
`See also Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]– [0166], claim 3.
`Ex. 2010 at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034], claims 1, 7-8, and 15.
`Proposed Claim 22
`See, e.g., Ex. 2013 at ¶ [0158]; Ex. 2010 at ¶ [0026]
`(“The distal end of drive beam 266 may include a
`vertical support strut 271 which supports a knife
`blade 280 and an abutment surface 283 which
`engages the central portion of actuation sled 234
`during a stapling procedure. Knife blade 280 may be
`generally positioned to translate slightly behind
`actuation sled 234 through a central longitudinal slot
`in staple cartridge 220 to form an incision between
`rows of stapled body tissue.”)
`
`See also Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]– [0166], claim 4.
`Ex. 2010 at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034], claims 1, 7-8, and 15.
`Proposed Claim 23
`See, e.g., Ex. 2013 at ¶ [0005]; Ex. 2010 at ¶ [0004]
`(“One type of surgical stapling apparatus is
`configured to operate with disposable loading units
`(DLU's) that are constructed to support a staple
`cartridge and knife assembly therein. Once the
`procedure is completed, the entire DLU is discarded.
`Such instruments that are designed to accommodate
`DLU's purport to offer the advantage of a “fresh”
`knife blade for each firing of the instrument.
`Examples of such surgical stapling apparatuses and
`DLU's are disclosed in U.S. Pat. No, 5,865,361,
`entitled SURGICAL STAPLING APPARATUS,
`
`
`
`
`9
`
`

`

`[[6]]24. A stapling
`system configured to be
`operably engaged with a
`surgical instrument
`system, said stapling
`system comprising:
`
`
`which issued on Feb. 2, 1999, the disclosure of which
`is herein incorporated by reference in its entirety.”)
`
`See also Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]– [0166], claim 5.
`Ex. 2010 at ¶ [0004] at Abstract, Figs. 1-2, 5-10, ¶¶
`[0001], [0004]–[0005], [0007]-[0008], [0025]–
`[0029], [0033]–[0034], claims 1, 7-8, and 15.
`Proposed Claim 24
`See, e.g., Ex. 2013 at ¶ [0005]; Ex. 2010 at ¶ [0004]
`(“One type of surgical stapling apparatus is
`configured to operate with disposable loading units
`(DLU's) that are constructed to support a staple
`cartridge and knife assembly therein. Once the
`procedure is completed, the entire DLU is discarded.
`Such instruments that are designed to accommodate
`DLU's purport to offer the advantage of a “fresh”
`knife blade for each firing of the instrument.
`Examples of such surgical stapling apparatuses and
`DLU's are disclosed in U.S. Pat. No, 5,865, entitled
`SURGICAL STAPLING APPARATUS, which
`issued on Feb. 2, 1999, the disclosure of which is
`herein incorporated by reference in its entirety.)
`
`Ex. 2013 at ¶ [0009]; Ex. 2010 at ¶ [0008] (“In
`another general aspect of various embodiments of the
`present invention, there is provided a surgical cutting
`and stapling apparatus. Various embodiments of the
`instrument may include a handle assembly that
`operably supports a drive assembly therein that is
`constructed to impart drive motions and a retraction
`motion. A movable handle portion may be operably
`supported on the handle assembly and configured to
`interface with the drive system such that manipulation
`of the movable handle causes the drive system to
`impart the drive motions. An elongated body may
`protrude from the handle assembly and have a distal
`end that is couplable to a disposable loading unit. In
`
`
`
`
`10
`
`

`

`various embodiments, the disposable loading unit
`may comprise a carrier that has a staple cartridge
`supported therein. An anvil assembly may be
`movably coupled to the carrier for selective movable
`travel between open and closed positions relative to
`the staple cartridge. An axial drive assembly may be
`supported within the carrier such that the axial drive
`assembly may move in a distal direction from a start
`position to an end position through the carrier and the
`staple cartridge and also in a proximal direction from
`the end position to the start position. A motor may be
`supported within the carrier and configured to
`interface with the axial drive assembly to drive the
`axial drive assembly in the distal and proximal
`directions. A battery may be supported within the
`carrier and be coupled to the motor for supplying
`power thereto. The battery may be configured to
`interface with a portion of the elongated body to
`receive the drive motions therefrom upon
`manipulation of the moveable handle.”).
`
`See also Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]– [0166], claim 6.
`Ex. 2010 at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034], claims 1, 7-8, and 15.
`See, e.g., Ex. 2013 at ¶ [0009]; Ex. 2010 at ¶ [0008]
`(“In various embodiments, the disposable loading unit
`may comprise a carrier that has a staple cartridge
`supported therein.”).
`
`Ex. 2013 at ¶ [0157]; Ex. 2010 at ¶ [0025] (“As can
`be seen in FIG. 1, the disposable loading unit 16 may
`generally comprise a tool assembly 17 for performing
`surgical procedures such as cutting tissue and
`applying staples on each side of the cut. The tool
`assembly 17 may include a cartridge assembly 18 that
`includes a staple cartridge 220 that is supported in a
`carrier 216.”).
`
`a staple cartridge carrier;
`
`
`
`
`
`11
`
`

`

`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;
`
`
`
`See also Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]– [0166], claim 6.
`Ex. 2010 at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034], claims 1, 7-8, and 15.
`See, e.g., Ex. 2013 at ¶ [0009]; Ex. 2010 at ¶ [0008]
`(“In various embodiments, the disposable loading unit
`may comprise a carrier that has a staple cartridge
`supported therein.”).
`
`Ex. 2013 at ¶ [0157]; Ex. 2010 at ¶ [0025] (“As can
`be seen in FIG. 1, the disposable loading unit 16 may
`generally comprise a tool assembly 17 for performing
`surgical procedures such as cutting tissue and
`applying staples on each side of the cut. The tool
`assembly 17 may include a cartridge assembly 18 that
`includes a staple cartridge 220 that is supported in a
`carrier 216.”).
`
`See also Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]– [0166], claim 6.
`Ex. 2010 at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034], claims 1, 7-8, and 15.
`See, e.g., Ex. 2013 at ¶ [0157]; Ex. 2010 at ¶ [0025]
`(“As can be seen in FIG. 1, the disposable loading
`unit 16 may generally comprise a tool assembly 17
`for performing surgical procedures such as cutting
`tissue and applying staples on each side of the cut.
`The tool assembly 17 may include a cartridge
`assembly 18 that includes a staple cartridge 220 that
`is supported in a carrier 216. An anvil assembly 20
`may be pivotally coupled to the carrier 216 in a
`known manner for selective pivotal travel between
`open and closed positions. The anvil assembly 20
`includes an anvil portion 204 that has a plurality of
`
`
`
`
`12
`
`

`

`staple deforming concavities (not shown) formed in
`the undersurface thereof.”)
`
`See also Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]– [0166], claim 6.
`Ex. 2010 at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034], claims 1, 7-8, and 15.
`See, e.g., Ex. 2013 at ¶ [0159]; Ex. 2010 at ¶ [0027]
`(“As can also be seen in FIG. 1, the disposable
`loading unit 16 may also have a housing portion 200
`that is adapted to snap onto or otherwise be attached
`to the carrier 216. The proximal end 500 of housing
`200 may include engagement nubs 254 for releasably
`engaging elongated body 14 of a surgical stapling
`apparatus. Nubs 254 form a bayonet type coupling
`with the distal end of the elongated body portion 14
`of the surgical stapling apparatus as described in U.S.
`Pat. No. 5,865,361.”)
`
`Ex. 2013 at ¶ [0157]; Ex. 2010 at ¶ [0025] (“As can
`be seen in FIG. 1, the disposable loading unit 16 may
`generally comprise a tool assembly 17 for performing
`surgical procedures such as cutting tissue and
`applying staples on each side of the cut. The tool
`assembly 17 may include a cartridge assembly 18 that
`includes a staple cartridge 220 that is supported in a
`carrier 216.”).
`
`See also Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]– [0166], claim 6.
`Ex. 2010 at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034], claims 1, 7-8, and 15.
`See, e.g., Ex. 2013 at ¶ [0009]; Ex. 2010 at ¶ [0008]
`(“An axial drive assembly may be supported within
`the carrier such that the axial drive assembly may
`move in a distal direction from a start position to an
`
`13
`
`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;
`
`
`
`
`
`

`

`end position through the carrier and the staple
`cartridge and also in a proximal direction from the
`end position to the start position. A motor may be
`supported within the carrier and configured to
`interface with the axial drive assembly to drive the
`axial drive assembly in the distal and proximal
`directions. A battery may be supported within the
`carrier and be coupled to the motor for supplying
`power thereto. The battery may be configured to
`interface with a portion of the elongated body to
`receive the drive motions therefrom upon
`manipulation of the moveable handle.”).
`
`Ex. 2013 at ¶ [0161]; Ex. 2010 at ¶ [0029] (“As can
`also be seen in FIG. 5, the thrust disc 580 may be
`formed on a proximal end of a drive screw 600 that
`threadedly engages a drive nut 610 that is supported
`within an engagement section 270 formed on the
`distal end of the drive beam 266. In various
`embodiments, the engagement section 270 may
`include a pair of engagement fingers 270a and 270b
`that are dimensioned and configured to be received
`within a slot in the drive nut 610 to non-rotatably
`affix the drive nut 610 to the drive beam 266. Thus,
`rotation of the drive screw 600 within the drive nut
`610 will drive the drive beam 266 in the distal
`direction “DD” or in the proximal direction “PD”
`depending upon the direction of rotation of the drive
`screw 600.”)
`
`See also Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]– [0166], claim 6.
`Ex. 2010 at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034], claims 1, 7-8, and 15.
`See, e.g., Ex. 2013 at ¶ [0009]; Ex. 2010 at ¶ [0008]
`(“An axial drive assembly may be supported within
`the carrier such that the axial drive assembly may
`move in a distal direction from a start position to an
`
`an axial drive member
`operably engaged with
`said rotary shaft, wherein
`said axial drive member
`
`
`
`
`14
`
`

`

`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
`
`end position through the carrier and the staple
`cartridge and also in a proximal direction from the
`end position to the start position. A motor may be
`supported within the carrier and configured to
`interface with the axial drive assembly to drive the
`axial drive assembly in the distal and proximal
`directions. A battery may be supported within the
`carrier and be coupled to the motor for supplying
`power thereto. The battery may be configured to
`interface with a portion of the elongated body to
`receive the drive motions therefrom upon
`manipulation of the moveable handle.”).
`
`Ex. 2013 at ¶ [0161]; Ex. 2010 at ¶ [0029] (“As can
`also be seen in FIG. 5, the thrust disc 580 may be
`formed on a proximal end of a drive screw 600 that
`threadedly engages a drive nut 610 that is supported
`within an engagement section 270 formed on the
`distal end of the drive beam 266. In various
`embodiments, the engagement section 270 may
`include a pair of engagement fingers 270a and 270b
`that are dimensioned and configured to be received
`within a slot in the drive nut 610 to non-rotatably
`affix the drive nut 610 to the drive beam 266. Thus,
`rotation of the drive screw 600 within the drive nut
`610 will drive the drive beam 266 in the distal
`direction “DD” or in the proximal direction “PD”
`depending upon the direction of rotation of the drive
`screw 600.”)
`
`See also Ex. 2013 at Abstract, Figs. 1-2, 5-10, ¶¶
`[0002], [0005]–[0006], [0009]-[0010], [0157]–
`[0161], [0165]– [0166], claim 6.
`Ex. 2010 at Abstract, Figs. 1-2, 5-10, ¶¶ [0001],
`[0004]–[0005], [0007]-[0008], [0025]–[0029],
`[0033]–[0034