UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
`
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`INTUITIVE SURGICAL, INC.
`Petitioner
`
`v.
`
`ETHICON LLC
`Patent Owner
`
`______________
`
`
`Case IPR2018-00934
`U.S. Patent No. 8,998,058
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`_______________
`
`
`PETITIONER’S REPLY TO
`
`PATENT OWNER’S RESPONSE
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`
`
`
`
`
`
`______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`INTUITIVE SURGICAL, INC.
`Petitioner
`
`v.
`
`ETHICON LLC
`Patent Owner
`
`______________
`
`
`Case IPR2018-00934
`U.S. Patent No. 8,998,058
`
`_______________
`
`
`PETITIONER’S REPLY TO
`
`PATENT OWNER’S RESPONSE
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`
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`
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`
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`Proceeding No. IPR2018-00934
`Attorney docket No. 11030-0049IP2
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`TABLE OF CONTENTS
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`
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`I.
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`Introduction .......................................................................................................... 1
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`II. Claim Construction .............................................................................................. 1
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`A. Patent Owner’s Proposed Constructions Are Inconsistent with the Plain
`
`Meaning of the Claims ........................................................................................... 3
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`B. Patent Owner’s Proposed Constructions Are Not Supported by the
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`Specification ........................................................................................................... 7
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`C. Patent Owner’s Proposed Constructions Improperly Attempt to Limit the
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`Claims to a Particular Embodiment when the Claims and the Specification are
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`Broader than that Particular Embodiment .............................................................. 9
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`III. The ’058 Patent Is Obvious Over Hooven in View of Heinrich .................... 12
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`A. Hooven in View of Heinrich Discloses the Power Terms ............................. 13
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`B. A POSITA Would Have Been Motivated to Combine Hooven and Heinrich
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`with a Reasonable Expectation of Success ........................................................... 15
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`1. Heinrich does not discourage a combination with Hooven ........................ 15
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`2. The Petition does not rely on hindsight ....................................................... 16
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`3. A POSITA would have had a reasonable expectation of success in
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`combining Hooven and Heinrich ...................................................................... 18
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`C. Dr. Fischer’s Testimony Is Reliable ............................................................... 19
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`IV. Conclusion ......................................................................................................... 24
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`EXHIBITS
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`IS1001
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`U.S. Patent No. 8,998,058 to Moore, et al. (“the ’058 patent”)
`
`IS1002
`
`Excerpts from the prosecution histories of U.S. Pat. Nos.
`9,084,601 (Serial No. 13/832,522), 8,998,058 (Serial No.
`14/282,494), 8,991,677 (Serial No. 14/283,729), 8,752,749
`(Serial No. 13/118,210), 8,196,795 (Serial No. 12/856,099), and
`7,793,812 (Serial No. 12/031,628)
`
`IS1003
`
`Declaration of Dr. Gregory S. Fischer
`
`IS1004
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`U.S. Patent No. 5,383,880 to Hooven (“Hooven”)
`
`IS1005
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`U.S. Patent App. Pub. No. 2005/0131390 to Heinrich et al.
`(“Heinrich”)
`
`IS1006
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`U.S. Patent No. 5,865,361 to Milliman et al. (“Milliman”)
`
`IS1007
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`U.S. Patent No. 7,524,320 to Tierney et al. (“the ’320 patent”)
`
`IS1008
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`U.S. Patent No. 8,196,795 to Moore et al. (“the ’795 patent”)
`
`IS1009
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`U.S. Patent No. 8,752,749 to Moore et al. (“the ’749 patent”)
`
`IS1010
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`U.S. Patent No. 5,779,130 to Alesi et al. (“Alesi”)
`
`IS1011
`
`[Reserved]
`
`IS1012
`
`IS1013
`
`
`
`
`
`[Reserved]
`
`U.S. Patent No. 6,783,524 to Anderson et al. (“the ’524 patent”)
`
`IS1014-IS1028
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`Reserved
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`IS1029
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`Webster’s Ninth New Collegiate Dictionary (1991)
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`ii
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`IS1030
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`Supplemental Declaration of Gregory S. Fischer (“Fischer
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`Supp. Decl.”)
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`IS1031
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`U.S. Pat. No. 5,954,259 to Viola et al. (“Viola”)
`
`IS1032
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`U.S. Pat. No. 5,653,374 to Young et al. (“Young”)
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`IS1033
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`Transcript of deposition of Dr. William Cimino, May 29, 2019
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`iii
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`I.
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`Introduction
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`Patent Owner effectively concedes that Hooven in view of Heinrich renders
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`obvious each of the challenged claims as they are written. It tries to save the
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`claims by improperly injecting new limitations through claim construction.
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`However, “it is important not [to use claim construction] to import into a claim
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`limitations that are not part of the claim.” Superguide Corp. v. DirecTV
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`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “Claim terms should be
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`given their plain and ordinary meaning to one of skill in the art at the relevant time
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`and cannot be rewritten by the courts to save their validity.” Hill-Rom Services,
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`Inc. v. Stryker Corp., 755 F.3d 1367, 1374 (Fed. Cir. 2014).
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`II. Claim Construction
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`Petitioner proposed a single term for construction in its Petition—“means for
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`removably attaching said housing to the surgical instrument,” present in claim 1.
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`Petition, 15. Petitioner also proposed that all remaining terms in the challenged
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`claims be given their plain and ordinary meaning under the BRI standard. Id., 14.
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`Patent Owner did not address the means plus function term in its Response, so
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`Petitioner does not address it further in this Reply. See POR, 17.
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`1
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`Patent Owner, however, proposed constructions for two additional terms in
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`its Response.1 The first term appears in claim 1:
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`“disposable loading unit comprising: … a motor … configured to
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`receive power from a power source such that said motor can only
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`selectively receive power from said power source when said means
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`for removably attaching said housing to the surgical instrument is
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`operably coupled to the surgical instrument”
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`The second term appears in claim 6 and is similar to the corresponding term in
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`claim 1:
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`“stapling system comprising … an electric motor … configured to
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`receive power from a power source such that said electrical motor can
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`only selectively receive power from said power source when said
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`housing connector is attached to the surgical instrument system”
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`
`
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`1 Patent Owner, in its Response, argued these two terms together, and referred to
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`them collectively as the “power limitations.” POR, 18. The terms use different
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`language in some instances (for example, claim 1 uses “disposable loading unit”
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`where claim 6 uses “stapling system”), but these differences are not relevant to the
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`disputed claim construction issue. Because of the terms’ similarities and for ease
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`of reference, Petitioner will refer to them collectively as the “power terms” and
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`will use representative language from claim 1.
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`2
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`Patent Owner’s proposed constructions for these terms are incorrect and
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`should be rejected because they (1) are inconsistent with the plain and ordinary
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`meaning of the claims, (2) are not supported by the specification, and (3)
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`improperly attempt to limit the claims to a particular embodiment (i.e., one in
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`which the motor and its power source both reside within the stapling sub-system’s
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`housing) when the claims and the specification are broader than that particular
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`embodiment.
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`A.
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`Patent Owner’s Proposed Constructions Are Inconsistent with
`the Plain Meaning of the Claims
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`“Ordinary, simple English words whose meaning is clear and
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`unquestionable, absent any indication that their use in a particular context changes
`
`their meaning, are construed to mean exactly what they say.” Chef America, Inc. v.
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`Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004).
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`Here, Patent Owner has not proposed a specific “term” for construction, but
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`rather seeks to rewrite the claims to add a requirement to the power terms that the
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`motor be “attached” to the power source. In the table below, terms that are the
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`same in the claim language and in Patent Owner’s proposed construction are
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`highlighted in grey and the terms that are different are highlighted in yellow. As
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`can be seen, the only words in the power term that are not in Patent Owner’s
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`proposed construction are “configured to receive power from” and “only
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`selectively.” Thus, to reach its proposed construction, Patent Owner replaced these
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`3
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`phrases with the phrases “that is attached to” and “said motor cannot receive power
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`from said attached power source when said means for removably attaching said
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`housing to the surgical instrument is decoupled from the surgical instrument,”
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`respectively. Patent Owner also inserted the word “attached” into the phrase “said
`
`power source.”
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`Power Term
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`Patent Owner’s Construction
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`“disposable loading unit comprising:
`
`“disposable loading unit comprising:
`
`… a motor … configured to receive
`
`… a motor … that is attached to a
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`power from a power source such that
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`power source such that said motor can
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`said motor can only selectively receive
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`receive power from said attached
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`power from said power source when
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`power source when said means for
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`said means for removably attaching
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`removably attaching said housing to
`
`said housing to the surgical instrument
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`the surgical instrument is operably
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`is operably coupled to the surgical
`
`coupled to the surgical instrument, and
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`instrument”
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`said motor cannot receive power from
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`said attached power source when said
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`means for removably attaching said
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`housing to the surgical instrument is
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`decoupled from the surgical
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`instrument”
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`
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`None of these modifications is consistent with the plain and ordinary
`
`meaning of the challenged claims. IS1030, ¶12. Indeed, there can be no
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`reasonable dispute that the plain meaning of “configured to receive power from” is
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`4
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`not “attached to.” Id.; IS1029 (Webster’s Dictionary), 3 (defining “configured” to
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`mean “set up for operation especially in a particular way”), 5 (defining “receive” to
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`mean “to act as a receptacle or container for”). Patent Owner does not identify any
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`dictionary definitions or expert testimony to suggest otherwise. Nonetheless, to the
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`extent the phrase “configured to receive power from” requires a construction (it
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`does not), then it can be construed to mean “set up for operation to receive power
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`from.” Id.
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`In support of its argument that the Board should read in a requirement that
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`the claimed motor be attached to the power source, Patent Owner incorrectly
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`argues that “Claims 6 and 1 describe two separate requirements describing two
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`separate connections.” POR, 20. Specifically, Patent Owner asserts that the claim
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`language in question requires that (i) “the motor be connected to an attached power
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`source,” and (ii) “the connection between the motor and the attached power source
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`be controlled and that the control mechanism ‘only’ permit power to flow when it
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`detects that the housing connector … is attached to the surgical instrument
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`system.” Id.
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`Patent Owner’s argument, however, ignores the “such that” claim language
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`that links the two allegedly separate limitations, and which makes clear that the
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`latter of the two clauses (“said motor can only selectively receive power…”)
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`defines what the former clause (“said motor configured to receive power”)
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`5
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`means. IS1030, ¶13. Thus, the two clauses are not separate limitations but rather
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`only a single limitation that requires no more than that the motor be set up (i.e.,
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`“configured”) to receive power from the power source only when the housing and
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`surgical instrument are “operably coupled” (claim 1) or “attached” (claim 6). Id.
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`Not surprisingly, Patent Owner deleted the “such that” claim language in its
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`contingent motion to amend the challenged claims, apparently recognizing that its
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`presence contradicts Patent Owner’s desired meaning of the claims. Paper 18, 6-8,
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`15-16.
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`Finally, Patent Owner’s omission of the term “selectively” from its proposed
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`construction, and thus failure to give meaning to that term, is an admittedly fatal
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`flaw in the proposed construction. See POR, 29 (citing NuVasive, Dell, TMI Prod.,
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`and ViaTech for the claim construction principle that meaning should be given to
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`all of a claim’s terms, which Patent Owner’s construction fails to do). Petitioner
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`agrees with Patent Owner that every term in a patent claim is presumed to have a
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`meaning; ignoring a claim term, thereby rendering it superfluous, is improper. See,
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`e.g., Power Mosfet Techs., L.L.C. v. Siemens AG, 378 F.3d 1396, 1410 (Fed. Cir.
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`2004) (“[I]nterpretations that render some portion of the claim language
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`superfluous are disfavored.”). Consequently, Patent Owner’s construction, which
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`renders the term “selectively” superfluous, is flawed and should be rejected.
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`6
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`B.
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`Patent Owner’s Proposed Constructions Are Not Supported by
`the Specification
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`In support of its argument that the Board should read in a requirement that
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`claimed motor be attached to the power source, Patent Owner also argues “that the
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`motor must be configured to receive power independent of whether or not the
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`housing connector is attached to the surgical instrument system. … In other words,
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`the motor has an attached power source even when the housing connector is not
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`attached to the surgical instrument system.” Id., 20–21. But the words
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`“independent of whether or not the housing connector is attached to the surgical
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`instrument system” do not appear in the claims or the specification. In fact, the
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`’058 patent clearly teaches the opposite, namely, that “attachment” of the power
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`source to the motor (i.e., an electrical connection that allows current to flow there
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`between) is dependent on whether or not the housing connector is attached to the
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`surgical instrument system. IS1030, ¶14.
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`More specifically, when the housing connector is attached to the surgical
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`instrument system, the motor is connected to the power source because the
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`battery’s contacts 528, 530 are in contact with the motor’s contacts 540, 542, 544.
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`In that attached state, the motor is able to receive power from the battery.
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`However, as the ’058 patent explains, “[w]hen retained in [the] ‘pre-use’ or
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`‘disconnected’ position [i.e., when the housing is unattached to the surgical
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`instrument system], the battery contacts 528 and 530 do not contact any of the
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`[motor’s] contacts 540, 542, 544 … to prevent the battery from being drained
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`during non-use.” ’058 patent, 11:54-58 (emphasis added). In other words, when
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`the housing is attached to the surgical instrument system, the motor and battery are
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`connected or attached. But when the housing is disconnected from the surgical
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`instrument system, the motor and battery are purposely unconnected or unattached.
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`Consequently, attachment of the motor and battery vel non is purposely dependent
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`on whether or not the housing is connected to the surgical instrument system,
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`directly contradicting Patent Owner’s proposed construction. See, e.g., ’058
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`patent, 11:54-58; IS1030, ¶14. The embodiment shown in Fig. 52 is not materially
`
`different in that on/off switch 3024 is configured to move between a contact state
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`(power source and motor connected) and a non-contact state (power source and
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`motor disconnected) depending on whether tool mounting portion 3010 is attached
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`to the robotic system 1000.
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`Thus, Patent Owner’s argument that that the motor must be configured to
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`receive power independent of whether or not the housing connector is attached to
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`the surgical instrument system has no support in the ’058 patent because there is no
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`disclosure of any means for attaching the motor to the power source apart from
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`attaching the housing to the surgical instrument system. Id.
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`Not surprisingly, Patent Owner’s proposed construction, which replaces the
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`phrase “configured to receive power from” with the phrase “that is attached to,” is
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`inconsistent with other uses of the phrase “configured to receive” in the
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`specification. For example, the specification notes that “tool mounting portion
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`1300 includes a rotational transmission assembly 2069 that is configured to
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`receive a corresponding rotary output motion from the tool drive assembly 1010
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`of the robotic system 1000.” 19:47-50. Applying Patent Owner’s proposed
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`construction of “configured to receive” to this example would require that tool
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`mounting portion 1300 include a rotational transmission assembly 2069 “that is
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`attached to” tool drive assembly 1010 of robotic system 1000—even when tool
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`mounting portion 1300 is not attached to robotic system 1000. However, it is clear
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`in the ’058 patent that rotational transmission assembly 2069 is not attached to tool
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`drive assembly 1010 even when tool mounting portion 1300 is not attached to
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`robotic system 1000. Instead, like the claimed motor, which is set up to receive
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`power from the power source only when the housing is attached to the surgical
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`instrument system, rotational transmission assembly 2069 is set up to receive
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`rotary output motion from tool drive assembly 1010 only when tool mounting
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`portion 1300 is attached to tool drive assembly 1010.
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`C.
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`Patent Owner’s Proposed Constructions Improperly Attempt
`to Limit the Claims to a Particular Embodiment when the
`Claims and the Specification are Broader than that Particular
`Embodiment
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`“Though understanding the claim language may be aided by explanations
`
`contained in the written description, it is important not to import … limitations that
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`are not part of the claim. For example, a particular embodiment appearing in the
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`written description may not be read into a claim when the claim language is
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`broader than the embodiment.” Superguide, 358 F.3d at 875.
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`Here, the ’058 patent expressly discloses two types of embodiments: (i)
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`embodiments in which the motor and its power source are in the same housing, and
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`(ii) embodiments where the motor and its power source are not in the same
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`housing. These two types of embodiments are explained in the specification:
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`The above-described embodiments employ a battery or
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`
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`batteries to power the motors used to drive the end
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`effector components. Activation of the motors is
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`controlled by the robotic system 1000. In alternative
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`Power source is a
`battery inside the
`same housing as
`the motor
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`embodiments, the power supply may comprise
`
`
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`alternating current “AC” that is supplied to the
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`motors by the robotic system 1000. That is, the AC
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`power would be supplied from the system powering
`
`the robotic system 1000 through the tool holder and
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`Power source is
`not in the same
`housing as the
`motor
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`adapter.
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`’058 patent, 44:1-8 (emphasis added).
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`More specifically, in the first type of embodiment shown in Fig. 3, the
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`power source is a moveable battery inside the DLU, which, as explained above, is
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`separated from the motor inside the DLU when the housing is unconnected to the
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`surgical instrument system (i.e., the “pre-use” or “disconnected” position) but
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`which moves when the housing is connected to the surgical instrument system to
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`make contact with the motor. See POR, 23-27. Another variant of the first type
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`(i.e., motor and power source within same housing) is shown in Fig. 52. Id., 27. It
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`is this first type of embodiment to which Patent Owner seeks to limit the claims.2
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`In the second type of embodiment, the motor and its power source are not in
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`the same housing. Rather, the power for the motor is supplied externally by the
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`robotic system. ’058 patent, 44:6-8.
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`In arguing that its proposed construction is consistent with the specification,
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`Patent Owner improperly relies solely on the first type of embodiment. But the
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`patent expressly envisions, and the plain language of the claims clearly covers,
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`both types of embodiments. And there is nothing in the specification or the file
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`history limiting the claimed invention to only the first type of embodiment.
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`Consequently, Patent Owner’s proposed constructions improperly attempt to limit
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`the scope of the power terms to a specific embodiment. Tellingly, neither Patent
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`Owner, nor its expert, appear to be aware of the ’058 patent’s disclosure of an
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`2 Patent Owner’s apparent position is that, because the motor and the battery reside
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`within the same housing, “the motor has an attached power source even when the
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`housing connector is not attached to the surgical instrument system.” POR, 21. As
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`explained above in Section II.B, however, Patent Owner is factually incorrect.
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`embodiment contrary to Patent Owner’s proposed claim construction (POR, 29),
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`which would require that “the motor has an attached power source even when the
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`housing connector is not attached to the surgical instrument.” See also IS1033,
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`61:2-62:14. Patent Owner’s position is plainly wrong because the second
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`embodiment demonstrates that the power source need not be contained within the
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`housing supporting the motor. Thus, when “the housing connector is not attached
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`to the surgical instrument” the motor does not have “an attached power source.”
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`See POR, 21; IS1033, 70:13-20.
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` Thus, for the reasons explained above, Patent Owner’s proposed
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`constructions should be rejected because they are inconsistent with the plain
`
`meaning of the claims, unsupported by the intrinsic evidence, and overly narrow.
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`III.
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` The ’058 Patent Is Obvious Over Hooven in View of Heinrich
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`As shown in the Petition, claims 1-10 of the ’058 patent are obvious over
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`Hooven in view of Heinrich.3 Petition, 21-53. Patent Owner’s Response does not
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`establish otherwise.
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`3 The Petition also showed that claims 11-18 are obvious, but Patent Owner has
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`since disclaimed those claims and they are thus no longer part of the proceeding.
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`See Paper 9, 8-9.
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`A. Hooven in View of Heinrich Discloses the Power Terms
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`The power terms are the only limitations in the challenged claims that Patent
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`Owner argues are not disclosed by Hooven in view of Heinrich. Patent Owner’s
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`argument that the power terms are not disclosed, however, is based almost entirely
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`on its proposed constructions of the power terms, which, for the reasons explained
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`above, are incorrect and should not be adopted. Thus, Patent Owner’s arguments
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`that the combination of Hooven and Heinrich does not disclose the power terms are
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`unavailing.
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`Patent Owner’s only other argument that the combination of Hooven and
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`Heinrich does not disclose the power terms is an unexplained and clearly incorrect
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`statement that “the combination [does not] disclose or render obvious a control
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`mechanism to limit the power supply to the motor such that the motor can
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`selectively receive power or only selectively receive power when the stapling
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`system (or DLU) is attached to the surgical instrument system/surgical
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`instrument.” POR, 52. To the contrary, Hooven in view of Heinrich discloses a
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`control mechanism (Heinrich’s actuation assembly 612) to limit the power supply
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`to the motor such that the motor can only selectively receive power when the
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`stapling system (Hooven’s DLU) is attached to the surgical instrument system
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`(Heinrich’s robotic surgical instrument). Heinrich, ¶¶136-37, Fig. 7; IS1003, ¶¶75-
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`78, 103, 113, 118, 121, 229-30; see IS1033, 152:8-153:19.
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`13
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`Notably, Patent Owner incorrectly assumes that “Petitioner’s argument is
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`that the power limitations are rendered obvious by nothing more than a motor that
`
`can receive power when connected to a power source and that cannot receive
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`power when disconnected from a power source.” See POR, 52; see also IS2006, ¶
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`153 (arguing that “Petitioner’s argument is that Hooven and Heinrich disclose a
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`DLU that plugs into the power source like a vacuum cleaner plugging into a wall
`
`outlet”). That is obviously not the case. In the proposed combination, Heinrich’s
`
`robotic system does much more than supply power. Most importantly, it includes
`
`an actuation assembly 612 “to control the movement and operation of robot 616
`
`and disposable loading unit 618.” IS1005, ¶136; IS1033, 152:8-153:19. Thus, the
`
`motor in the Hooven/Heinrich loading unit, which is actuated by Heinrich’s
`
`actuation assembly 612, only selectively receives power from the power source in
`
`Heinrich’s robotic system when the Hooven/Heinrich loading unit is attached to
`
`the robotic system and is selectively actuated by actuation assembly 612.
`
`Relying on its incorrect assumption about Petitioner’s argument, Patent
`
`Owner also incorrectly asserts that “Petitioner would read the power limitation of
`
`claim 6 to require only:
`
`A stapling system configured to be operably engaged with a surgical
`
`instrument system, said stapling system comprising: … an electrical
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`motor … wherein said electrical motor is configured to receive power
`
`from a power source such that said electrical motor can only
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`14
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`Proceeding No. IPR2018-00934
`Attorney Docket No. 11030-0049IP2
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`selectively receives power from said power source when said housing
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`connector is attached to the surgical instrument system.”
`
`
`See POR, 53-54. Petitioner’s position is that the words of the claims should be
`
`given their plain and ordinary meaning, and the Petition explains how Hooven in
`
`view of Heinrich discloses each limitation of the power terms. Petition, 14-15.
`
`Thus, it is difficult to comprehend how Petitioner would read any limitations out of
`
`claim 6. To the contrary, it is Patent Owner that seeks to alter the meaning of the
`
`claims by injecting a limitation that is not present and removing another.
`
`
`
`B. A POSITA Would Have Been Motivated to Combine Hooven
`and Heinrich with a Reasonable Expectation of Success
`
`As explained in the Petition, a POSITA would have been motivated to
`
`combine Hooven and Heinrich with a reasonable expectation of success. Petition,
`
`23-25, 31-32; IS1003, ¶¶209-212. Nonetheless, in its Response, Patent Owner
`
`argues that: (1) Heinrich discourages a combination with Hooven; (2) the Petition
`
`relies on impermissible hindsight; and (3) a POSITA would not have a reasonable
`
`expectation of success. Each of these arguments should be rejected.
`
`1. Heinrich does not discourage a combination with Hooven
`
`Patent Owner’s argument that Heinrich discourages a combination with
`
`Hooven misses the mark. Indeed, Patent Owner’s argument is based on the fact
`
`that Heinrich incorporates a reference (Milliman) that explains the advantages of
`
`single-use knife blades, and Hooven discloses a reusable knife blade. POR, 54-56.
`
`
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`15
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`However, Hooven does not require a knife at all, much less a specific type of knife.
`
`Hooven, 2:58-63. And Milliman is not part of the proposed combination of
`
`Hooven and Heinrich. Thus, Patent Owner’s argument that Milliman could
`
`somehow discourage the combination of Hooven and Heinrich is irrelevant.
`
`2. The Petition does not rely on hindsight
`
`Patent Owner’s argument that the Petition relies on impermissible hindsight
`
`because “Petitioner’s sole support for its motivations to combine Hooven with
`
`Heinrich comes from the ’058 Patent itself” (POR, 56-57) is also incorrect. As
`
`explained in the Petition, a POSITA would have been motivated to combine
`
`Hooven and Heinrich because there were a finite number of predictable solutions
`
`for manipulating a surgical instrument. Petition, 23-24; IS1003, ¶¶209-212.
`
`“Hooven describes one predictable solution for manipulating the surgical
`
`instrument—i.e., partially by hand and partially based on signals received from the
`
`control unit 31. And Heinrich describes another predictable solution—i.e., using a
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`robotic arm.” Petition, 23-24. Furthermore, “Heinrich provides several examples
`
`of modifying hand-held stapling systems, like Hooven’s instrument 30, to include a
`
`housing connector … that is removably attachable to the surgical instrument
`
`system….” Id., 31-32.
`
`Moreover, the portions of the ’058 patent cited in the Petition to show that a
`
`POSITA would have been motivated to combine Hooven with Heinrich are
`
`
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`16
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`Attorney Docket No. 11030-0049IP2
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`descriptions in the ’058 patent of prior art; not the claimed invention, as Patent
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`Owner disingenuously implies. See id. Thus, Patent Owner’s reliance on Total
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`Containment is inapposite. 1999 WL 717946 at *5 n.4 (noting that 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”) (emphasis added). Patent Owner ignores the fact that the Petition
`
`explicitly cites and describes portions of the prior art identified in the ’058 patent.
`
`See Petition, 24 (citing IS1013).
`
`Notably, Patent Owner also argues that the ’058 Patent, which states that
`
`“[m]any such [prior art robotic surgical] systems … have in the past been unable to
`
`generate the magnitude of forces required to effectively cut and fasten tissue,”
`
`somehow teaches against combining Hooven with Heinrich. However, Heinrich
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`explicitly discloses a prior art robotic surgical system for use with a disposable
`
`loading unit that cuts and fastens tissue. Heinrich, ¶¶132-133, Figs. 3, 7. And
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`Hooven discloses a prior art motor-powered surgical stapler that can cut and fasten
`
`tissue. Hooven, Abstract. Not surprisingly, Patent Owner introduced no evidence
`
`to even remotely suggest that the combination of Hooven and Heinrich at issue
`
`here could not generate the forces required to effectively cut and fasten tissue.
`
`
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`17
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`Proceeding No. IPR2018-00934
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`3. A POSITA would have had a reasonable expectation of
`success in combining Hooven and Heinrich
`
`Patent Owner’s argument that a POSITA would not have had a reasonable
`
`expectation of success in combining Hooven and Heinrich should be rejected
`
`because it is based entirely on a false premise: specifically, the premise that
`
`“Heinrich never discloses a surgical cutting and stapling instrument (such as the
`
`handheld cutting and stapling device disclosed in Milliman and shown in Heinrich
`
`Figure 3) coupled to the robotic system.” POR, 59-60. As explained by Dr.
`
`Fischer, Heinrich explicitly discloses a surgical cutting and stapling instrument
`
`(such as a loading unit based on the handheld cutting and stapling device disclosed
`
`in Milliman and shown in Heinrich Figure 3) coupled to the robotic system.
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`IS1003, ¶¶76-78; Heinrich, ¶¶132-133, Figs. 3, 7.
`
`Patent Owner also incorrectly asserts that “Dr. Fischer merely states that
`
`modifying Hooven for use on Heinrich’s system would be within the skill of a
`
`POSITA without any support.” POR, 60. Indeed, Dr. Fischer specifically
`
`explained that the proposed modification of Hooven would have been well within a
`
`POSITA’s abilities because it would have been merely the application of a known
`
`technique (e.g., using a robotic arm) to a known system (e.g., Hooven’s disposable
`
`loading unit) in the same field of endeavor (remote controlled surgical staplers).
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`IS1003, ¶211. In combination, each element (Heinrich’s robotic system and
`
`Hooven’s disposable loading unit) merely performs the same function as it does
`
`
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`18
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`separately. Id. And the proposed combination of Hooven and Heinrich would
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`have yielded predictable results without significantly altering or hindering the
`
`functions performed by Hooven’s device. Id. Dr. Fischer also noted the named
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`inventors’ admission in the’058 patent that a POSITA would have known how to
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