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 SUR-REPLY
`
`
`
`
`
`______________________
`
`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 SUR-REPLY
`
`
`
`
`
`
`
`
`
`I.
`
`II.
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`IPR2018-00934
`U.S. Patent No. 8,998,058
`
`TABLE OF CONTENTS
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`Page
`
`INTRODUCTION .......................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 2
`
`A.
`
`B.
`
`C.
`
`Petitioner’s Interpretation Disregards That The Claims Require
`A Stapling System / DLU That Includes A Motor Configured
`To Receive Power From A Power Source ............................................ 3
`
`The Specification Supports Patent Owner’s Construction .................... 7
`
`Patent Owner is Not Limiting the Claims to an Embodiment
`Where the Motor and Power Source are in the Same Housing ........... 11
`
`III. THE COMBINATION OF HOOVEN AND HEINRICH DOES
`NOT DISCLOSE THE POWER LIMITATIONS .................................... 14
`
`IV. PETITIONER FAILS TO IDENTIFY ANY PERMISSIBLE
`MOTIVATIONS TO COMBINE HOOVEN AND HEINRICH ............. 16
`
`A. Heinrich Teaches Away From Combination With Hooven ................ 17
`
`B.
`
`Petitioner’s Sole Surviving Motivation To Combine Is Based
`On Impermissible Hindsight ............................................................... 21
`
`V.
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`PETITIONER OFFERS NO REASONABLE EXPECTATION OF
`SUCCESS IN THE COMBINATION ....................................................... 22
`
`VI. DR. FISCHER HAS CONSISTENTLY FAILED TO ADDRESS
`CORE FUNDAMENTAL CONCEPTS .................................................... 23
`
`VII. CONCLUSION .............................................................................................. 26
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`i
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) ............................................................................ 22
`PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,
`491 F.3d 1342 (Fed. Cir. 2007) .......................................................................... 25
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`ii
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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”)
`
`Ex. 2014
`
`Supplemental Declaration of Dr. William Cimino
`
`iii
`
`
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`Description
`
`Excerpts of American Heritage College Dictionary 3d (1993)
`
`
`
`
`Ethicon
` Exhibit #
`Ex. 2015
`
`Ex. 2016
`
`Deposition Transcript of Dr. Gregory Fischer (July 11, 2019)
`
`iv
`
`
`
`
`I.
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`INTRODUCTION
`The key power limitation of the challenged claims provides a new
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`configuration for a stapling system or disposable loading unit (“DLU”) that is
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`removably attachable to a surgical instrument system. Specifically, the stapling
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`system / DLU itself includes a motor that is attached to a power source
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`independent of the physical connection between the housing of the stapling system
`
`/ DLU and the surgical instrument system, and the motor is configured such that it
`
`cannot receive power from that attached power source when the stapling system is
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`detached from the surgical instrument system. In the prior art relied on by
`
`Petitioner, there is no disclosure of or need for such a configuration because the
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`stapling system / DLU itself does not have a motor with an attached power source.
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`Rather, in the prior art, the motor is simply attached to, or detached from, a power
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`source as part of the attachment of the stapling system / DLU to the surgical
`
`instrument system.
`
`Petitioner’s reply brief fails to rebut Patent Owner’s arguments that the
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`combination of Hooven and Heinrich does not render obvious the invention set
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`forth in the challenged claims of the 058 Patent. On the issue of claim
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`construction, Patent Owner’s construction of the power limitation gives meaning to
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`all of the claim terms, is consistent with the relevant specification embodiments,
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`and does not improperly limit the claims to one embodiment over another. In
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`1
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`
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`contrast, Petitioner’s interpretation of the claims is not read in light of the
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`specification, vitiates the key power limitations, and thereby strips the claims of
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`the inventive aspect by reducing them to nothing more than a stapling system with
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`a motor that can receive power when the motor is plugged into a power source.
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`Under the correct construction, it is undisputed that the claims are patentable over
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`the combination of Heinrich and Hooven. Moreover, even assuming the Board
`
`adopts Petitioner’s unreasonable interpretation of the claims, the obviousness
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`combination fails because Heinrich teaches away from the combination with
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`Hooven’s reusable knife architecture.
`
`II. CLAIM CONSTRUCTION
`One of the two fundamental disputes in this IPR proceeding is whether the
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`power limitations identified in Patent Owner’s Response (POR) provide
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`meaningful limitations as Patent Owner contends, or whether they should be
`
`reduced to the requirement that the stapling system / DLU includes a motor that
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`can receive power when it is plugged into a power source as Petitioner contends.
`
`The POR set forth in detail how the power limitations require that the
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`electric motor of the stapling system / DLU is attached to a power source and
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`configured such that the transfer of power to the motor is controlled and that the
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`control mechanism prevents the transfer of power when the stapling system / DLU
`
`is detached from the surgical instrument system. POR at 18-22. Patent Owner
`2
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`
`
`
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`also described how the power limitations are consistent with the 058 Patent
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`specification. Id. at 23-27.
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`Rather than engaging with Patent Owner’s clear description of the claims
`
`and the specification, Petitioner mounts three attacks. First, Petitioner contends
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`that “configured to receive power from” means “set up for operation to receive
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`power from,” but argues that this does not require that the stapling system / DLU
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`motor be attached to a power source. Paper 20 at 3-6. Second, Petitioner argues
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`that Patent Owner’s proposed construction is not supported by any embodiment of
`
`the 058 Patent. Id. at 7-9. Third, Petitioner reverses course and argues that Patent
`
`Owner is attempting to read an embodiment into the claims. Id. at 9-12. All of
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`Petitioner’s arguments fail.
`
`A.
`
`Petitioner’s Interpretation Disregards That The Claims Require
`A Stapling System / DLU That Includes A Motor Configured To
`Receive Power From A Power Source
`As Patent Owner explained in its Response, the claims require that the
`
`stapling system or DLU comprises a motor that is “configured to receive” power
`
`from a power source, and separately require that the stapling system / DLU can be
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`removably attached to a surgical instrument system. POR at 21-22; Ex. 1001 at
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`Claims 1, 6. Taken in the context of the claims, “configured to receive” thus
`
`requires that the stapling system or DLU must include a motor that is attached to a
`
`3
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`
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`
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`power source1 so that the motor is “configured to receive power from a power
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`source.” See id.2 This basic claim structure dictates that, independent of any
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`attachment to a surgical instrument system, the stapling system / DLU must
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`include a motor that is attached to a power source.
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`Petitioner first argues that the claims require only a motor “set up for
`
`operation to receive power from” a power source. This interpretation conflicts
`
`with the plain claim language because, fundamentally, Petitioner is arguing that the
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`stapling system / DLU does not have to comprise a motor configured to receive
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`power from a power source. Petitioner’s interpretation is an attempt to broaden the
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`1 As explained below in Section II.C., the invention and claims are agnostic as to
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`whether the power source is in the same housing as the motor. The specification
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`discloses embodiments with a motor and battery in the same housing. Ex. 1001 at
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`Figures 3, 52-54. In addition, the specification discloses that “a power cord or
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`tether may be attached to the tool mounting portion 3300 to supply the requisite
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`power from a separate source of alternating or direct current.” Id. at 44:8-12. In
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`either configuration, the stapling system / DLU itself has an attached power source
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`independent of any attachment to the surgical instrument system.
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`2 All emphases added unless otherwise noted.
`
`4
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`
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`
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`claims to cover the configuration of the Heinrich prior art reference, where the
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`U.S. Patent No. 8,998,058
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`stapling system / DLU itself does not comprise a motor configured to receive
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`power from a power source independent of its attachment to a surgical instrument
`
`system. See Ex. 2006, ¶¶ 71-72, 78-79, 158-60, 168-69. Indeed, in Heinrich, it is
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`only the combination of the stapling system / DLU and a surgical instrument
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`system that includes a motor configured to receive power from a power source. Id.
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`In other words, Heinrich’s stapling system / DLU itself does not comprise a motor
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`configured to receive power from a power source.
`
`The configuration in Heinrich is not what Patent Owner has claimed. Patent
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`Owner’s claims require “said [stapling system] / [disposable loading unit]
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`comprising…a[n] [electric] motor…said [electric] motor configured to receive
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`power from a power source.” Ex. 1001 at Claims 1, 6. Accordingly, unlike
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`Heinrich (or Hooven), the 058 Patent discloses and claims an invention that
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`prevents power from being delivered to the motor when the stapling system / DLU
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`is not attached to the surgical instrument system. Id. at 12:27-36; see also Ex.
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`2006, ¶¶ 30-32, 58-59, 63. This configuration is not needed in Heinrich or Hooven
`
`because the stapling system / DLU itself does not have a motor configured to
`
`receive power from a power source.
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`Second, Petitioner contends that Patent Owner’s construction ignores the
`
`phrase “such that” found in the claim language. Paper 20 at 5. Petitioner is
`5
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`
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`incorrect. As Patent Owner explained in the POR, the claim language includes two
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`U.S. Patent No. 8,998,058
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`separate requirements for the stapling system / DLU: 1) that the motor be
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`connected to a power source; and 2) the motor only selectively receives power
`
`when the housing is attached to the surgical instrument system. POR at 20. Patent
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`Owner fails to see how this interpretation of the power limitations ignores the
`
`“such that” claim language.3
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`Finally, Petitioner argues that Patent Owner’s construction omits the term
`
`“selectively,” and thus fails to give meaning to that term. Paper 20 at 6. This too
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`is incorrect. Patent Owner’s construction expressly addresses the phrase “only
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`selectively.” POR at 20-21. As Patent Owner explained, the phase “only
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`selectively receive[s]” power describes the control of the connection between the
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`motor and power source. Id. Patent Owner’s construction gives life to this
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`limitation by specifying that the motor can receive power when the housing is
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`attached to the surgical instrument system, and it cannot receive power when the
`
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`3 Petitioner’s attempt to use the contingent motion to amend against Patent Owner
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`is baseless. See Paper 20 at 6. To the extent the Board disagrees with Patent
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`Owner’s proposed claim constructions, the contingent amendments are intended to
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`use more plain language to achieve the claim scope.
`
`6
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`
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`housing is detached. Id. In other words, the motor “only selectively” receives
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`power when the housing is attached. Petitioner has never provided any meaning
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`for the term “selectively,” nor has it explained why Patent Owner’s express
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`construction would read the term out of the claims. See Paper 20 at 6.
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`Petitioner still offers no proposed meaning for the term selectively, an error
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`that persists from its Petition and Dr. Fischer’s declarations. Id. Petitioner does
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`not explain how “selectively” should be read, nor why Patent Owner’s proposed
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`construction fails to give life to the term. Id. Notably, Dr. Fischer’s only proffered
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`explanation for the term is that “selectivity” is simply “plugging in or unplugging”
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`the cable of Hooven. Ex. 2007, 114:16-115:2. This construction would read out
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`the term selectively, and would reduce the claim to merely requiring that the motor
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`“only receive power” when the housing is attached to the surgical instrument
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`system. POR at 28.
`
`The Specification Supports Patent Owner’s Construction
`B.
`Petitioner next argues that Patent Owner’s construction is not supported by
`
`the specification because “there is no disclosure of any means for attaching the
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`motor to the power source apart from attaching the housing to the surgical
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`instrument system.” Paper 20 at 8. This argument turns on misrepresenting what
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`Patent Owner meant by stating that the motor and power source are “attached,” and
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`further turns on the false premise that in order for the motor and power source to
`7
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`be attached there must be “an electrical connection that allows current to flow there
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`between.” Id. at 7. This is not a reasonable reading of Patent Owner’s argument,
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`the plain meaning of the term “attached,” or the use of the term “attached” in the
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`058 Patent.
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`Patent Owner could not have been clearer in the POR—for the motor and
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`power source to be attached, they merely need to be physically connected. No
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`electrical connection is required. POR at 24-27. Specifically, Patent Owner stated
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`“[a]lthough the power source is attached (a battery located in the DLU), the
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`electric motor can ‘only selectively receive power’ when the stapling system is
`
`attached to the surgical instrument.” Id. at 24. Patent Owner included the
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`following annotated figure, showing the motor (in blue) attached to the power
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`source (in yellow) through the housing of the DLU when the stapling system and
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`surgical instrument system are detached.
`
`
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`8
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`
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`Id. Patent Owner further stated that “[o]nly if the stapling system is attached to the
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`surgical instrument system can the control rod position the battery in such a way
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`that the battery contacts can supply current to the electric motor.” Id. at 24-25
`
`(citing Ex. 1001 at 12:40-58). In other words, Patent Owner was crystal clear that
`
`in the stapling system / DLU, the motor and power source are “attached” based on
`
`a physical coupling—not an electrical connection.
`
`This understanding that “attached” simply means a physical connection is
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`consistent with the plain meaning4 of the word and its use in the 058 Patent. The
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`common dictionary definition for attach is “[t]o fasten, secure, or join.” Ex. 2015,
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`3. Moreover, the very embodiment discussed above supports this plain meaning.
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`The 058 Patent describes the “control rod 52 [as] attached to the battery holder
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`524.” Ex. 1001 at 12:42-46; see also id. at 4:3-5 (“disposable loading unit has
`
`been attached to the elongated body of the surgical instrument”); 21:51-52 (“knife
`
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`4 Dr. Fischer testified that he was not applying “a special definition” for
`
`“attached,” Ex. 2016, 74:15-24, but that he did believe that, in context, attached
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`was referring to “battery contacts being pushed up against contacts of a motor.”
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`74:3-14. Notably, Dr. Fischer provided no explanation for why he deviated from
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`the plain meaning of the term and its use in the 058 Patent.
`
`9
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`
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`bar 2200 is attached to the cutting instrument 2032”); 25:53-55 (“locking collar
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`2390 is non-movably attached (e.g., welded, glued, etc.)”).
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`As illustrated above, and described in detail in the POR, it is beyond dispute
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`that the embodiments of the 058 Patent support Patent Owner’s interpretation
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`because they disclose a stapling system / DLU having a motor attached to a power
`
`source when the housing of the stapling system / DLU is detached from the
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`surgical instrument system (and further that the motor can only selectively receive
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`power from that attached power source when the stapling system / DLU is attached
`
`to the surgical instrument system). POR at 23-28.
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`Petitioner also makes a strained argument that Patent Owner’s interpretation
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`of the power limitation does not comport with an embodiment of the 058 Patent
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`specification that describes a “tool mounting portion 1300 [that] includes a
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`rotational transmission assembly 2069 that is configured to receive a
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`corresponding rotary output motion from the tool drive assembly 1010.” Paper 20
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`at 9. This portion of the specification is entirely irrelevant to the meaning of the
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`power limitation because it is has nothing whatsoever to do with a stapling system
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`/ DLU that comprises a motor configured to receive power from a power source.
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`Rather, the embodiment that Petitioner cites relates to Figures 22-29, which
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`disclose a stapling system that attaches to a robotic system. However, as is evident
`
`10
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`
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`from the specification, the stapling system lacks a motor. See Ex. 1001 at 19:16-
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`U.S. Patent No. 8,998,058
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`24:2. Thus, the embodiment cited by Petitioner is unrelated to the claims at issue.5
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`C.
`
`Patent Owner Is Not Limiting The Claims To An Embodiment
`Where The Motor And Power Source Are In The Same Housing
`Next, Petitioner switches tactics and argues that Patent Owner is attempting
`
`to import limitations in order to limit the claims to an embodiment in which the
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`motor and power source are in the same housing. Paper 20 at 10-11. Once again,
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`Petitioner is incorrect.
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`First, it should be understood that the 058 Patent is part of a large patent
`
`family and discloses numerous embodiments, not all of which are covered by the
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`challenged claims of the 058 Patent. Specifically, the challenged claims are
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`limited to those embodiments with a stapling system / DLU that is removably
`
`
`5 In comparison, Figures 52 and 53 (as well as Figure 3 discussed above), illustrate
`
`a stapling system that includes a motor 3011 configured to receive power from an
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`attached power source 3022. See Ex. 1001 at 39:8-26. This embodiment, unlike
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`the embodiment of Figures 22-29, utilizes the claimed invention because the motor
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`3011 is attached to a power source. However, because of the control circuit, power
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`can only be selectively received when the stapling system is attached to robotic
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`system 1000. Id.
`
`11
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`
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`attachable to a surgical instrument system and the stapling system / DLU
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`comprises a motor that is configured to receive power (and can only selectively
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`receive that power when the stapling system / DLU is attached to the surgical
`
`instrument system). As already explained above, Figures 3 and 52-54 disclose
`
`such a stapling system / DLU, whereas, for example, Figures 22-29 do not.
`
`Second, Petitioner’s argument that Patent Owner is attempting to limit the
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`claims to an embodiment whereby the power source is in the same housing as the
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`as motor is a red herring. Paper 20 at 10. Nowhere in Patent Owner’s construction
`
`does it require that the motor and power source must be in the same housing.
`
`Patent Owner’s construction covers those embodiments in the 058 Patent, such as
`
`Figures 3 and 52-54, irrespective of whether the power source is contained in the
`
`same housing as the motor or not. As specifically described in the 058 Patent,
`
`while those embodiments are depicted with a battery in the housing attached to the
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`motor, it is a contemplated alternative that “a power cord or tether may be attached
`
`to the tool mounting portion 3300 to supply the requisite power from a separate
`
`source of alternating or direct current.” Ex. 1001 at 44:8-12.6 In either case, the
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`6 Notably, Petitioner’s citation to column 44 of the 058 Patent on page 10 of its
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`reply omitted lines 8-12. These lines are relevant because they confirm that the
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`Patent Owner’s assessment of the claim scope is consistent with the use of either a
`
`
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`12
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`
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`stapling system / DLU comprises a motor with an attached power source
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`(independent of any attachment to a surgical instrument system). Thus, Patent
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`Owner’s construction is consistent with the relevant embodiments, as well as with
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`the very passage that Petitioner cites.
`
`Patent Owner’s position, however, is that the plain language of the claims
`
`excludes a configuration where the stapling system / DLU has a motor that is never
`
`configured to receive power from a power source unless the stapling system / DLU
`
`is attached to a surgical instrument system. The reason being that in such a
`
`configuration, the stapling system / DLU itself does not have a motor configured to
`
`receive power from a power source as required by the claims. Id. at Claims 1, 6
`
`(“said [stapling system] / [disposable loading unit] comprising…a[n] [electric]
`
`motor…said [electric] motor configured to receive power from a power source.”).
`
`Furthermore, in a configuration where only the stapling system / DLU in
`
`combination with the surgical instrument has a motor configured to receive power
`
`from a power source, there would be no need for the control aspect of the 058
`
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`battery or a power cord, and further, that the invention in the 058 Patent has
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`nothing to do with whether the motor and the power source are located in the same
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`housing.
`
`13
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`
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`Patent invention that prevents power from being supplied to the motor when the
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`stapling system / DLU is not attached to the surgical instrument system.
`
`III. THE COMBINATION OF HOOVEN AND HEINRICH DOES
`NOT DISCLOSE THE POWER LIMITATIONS
`Petitioner acknowledges that the power limitations are the crux of the
`
`dispute between the parties, and that the dispute turns on the proper constructions
`
`of those terms. Paper 20 at 13. Despite this clear statement, Petitioner provides no
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`analysis of the combination of Hooven and Heinrich under Patent Owner’s claim
`
`constructions, thus conceding that the combination does not render obvious the
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`challenged claims when they are properly construed. Id. at 13-15. Instead,
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`Petitioner attempts to re-characterize its original combination set forth in the
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`Petition as something more nuanced than it is.
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`First and foremost, Petitioner offers no analysis of the combination of
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`Hooven and Heinrich under Patent Owner’s claim constructions. Id. Petitioner
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`effectively concedes that, if Patent Owner’s claim constructions are adopted, the
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`combination of Hooven and Heinrich does not render obvious any of the
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`challenged claims. Id. This is unsurprising, as Hooven and Heinrich simply
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`disclose plugging in a motor to provide power, consistent with the well-known
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`prior art. See POR at 53. There is no explanation from Petitioner how the
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`combination of Hooven and Heinrich discloses a stapling system / DLU that has an
`
`14
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`attached power source, and further that the included motor cannot receive power
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`from an attached power source when the housing is not attached to the surgical
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`instrument system.
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`Any such argument by Petitioner is foreclosed by the arguments it made in
`
`the Petition regarding the combination of Hooven and Heinrich. Specifically,
`
`Petitioner argued that in Hooven “power can be supplied to the motor 45 only
`
`when handle 40 is attached to controller 31 via cable 205.” Paper 2 at 38. The
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`Petition continues:
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`Because the housing of Hooven’s instrument 30 (i.e., the housing of
`handle portion 40) would be detachable from Heinrich’s surgical
`instrument system (i.e., the robot 616 portion of the surgical
`instrument system), Hooven’s DC motor 45 would be operably
`disconnected from the power source in Heinrich’s surgical instrument
`system when the housing of Hooven’s handle 40 is not attached to
`Heinrich’s robot 616. Likewise, Hooven’s DC motor 45 would be
`operably connected to the power source in Heinrich’s surgical
`instrument system only when the housing of Hooven’s handle 40 is
`attached to Heinrich’s robot 616.
`
`Id. at 39 (internal citations omitted); see also id. at 52 (providing no additional
`
`support for claim 1). In other words, according to the Petition, the combination of
`
`Hooven and Heinrich discloses a stapling system / DLU with a motor that is
`
`attached to a power source when attached to the surgical instrument system, and a
`
`15
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`
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`motor that is detached from a power source when detached from the surgical
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`instrument system. Thus, there is no possibility that the combination discloses a
`
`stapling system having a motor that cannot receive power from an attached power
`
`source when the stapling system / DLU is detached from the surgical instrument
`
`system.
`
`Ultimately, Petitioner has not—and cannot—offer any explanation of how
`
`the combination of Hooven and Heinrich renders obvious the challenged claims as
`
`properly construed. Accordingly, the challenged claims should be found
`
`patentable over the combination of Hooven and Heinrich.
`
`IV. PETITIONER FAILS TO IDENTIFY ANY PERMISSIBLE
`MOTIVATIONS TO COMBINE HOOVEN AND HEINRICH
`With respect to the motivations to combine, Petitioner first argues that
`
`Heinrich does not teach away from the combination with Hooven because (1)
`
`neither Hooven nor Heinrich requires a knife; and (2) the Petition does not rely on
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`embodiments including a knife. This is simply false. Second, Petitioner argues
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`that the motivations to combine Hooven and Heinrich were not based on
`
`impermissible hindsight because Heinrich discloses embodiments of surgical
`
`cutting and stapling devices. Petitioner’s second argument misses the point and
`
`directly contradicts its first argument.
`
`16
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`IPR2018-00934
`U.S. Patent No. 8,998,058
`
`A. Heinrich Teaches Away From Combination With Hooven
`Patent Owner described the reasons why the teachings of Heinrich,
`
`incorporating Milliman, would “strongly discourage a combination with Hooven’s
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`reusable knife architecture.” POR at 55-56. Petitioner does not address any of
`
`these arguments, but rather makes the bold claim that “Hooven does not require a
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`knife at all… [a]nd Milliman is not part of the proposed combination of Hooven
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`and Heinrich.” Paper 20 at 15-16. Petitioner’s argument is meritless.
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`First, the Petition is rife with references to Hooven as a cutting instrument,
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`specifically identifying the knife used in Hooven. See e.g., Paper 2 at 16 (“Hooven
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`discloses … a disposable loading unit (i.e., endoscopic surgical cutting and
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`stapling instrument 30) that is capable of applying lines of staples to tissue while
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`cutting the tissue between those staple lines.”); id. at 17:
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`17
`
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`
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`
`
`id. at 21 (“Hooven discloses a stapling system (i.e., endoscopic stapling and
`
`cutting instrument 30); 22 (same); 24 (“a modification of Hooven’s endoscopic
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`stapling and cutting instrument 30 would have been well within a POSITA’s
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`abilities”); 33 (“Hooven discloses an axial drive member (i.e., the combination of
`
`firing nut 86, knife 82, and wedge 83)”); 34 (same). Notably, the Petition
`
`challenges dependent claims 4 and 9, both of which require a knife. Id. at 41, 52.
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`In both instances, Petitioner relies on Hooven’s disclosure of a “knife” to satisfy
`
`the limitations. Id.
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`Furthermore, Petitioner’s expert Dr. Fischer only identifies Hooven as a
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`cutting instrument and specifically relied on Hooven’s embodiments disclosing a
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`reusable knife. Ex. 1003, ¶¶ 82-83, 187, 189, 212, 224. Dr. Fischer further
`
`18
`
`
`
`
`
`testified that he specifically referred to Hooven as a cutting instrument, which
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`includes a knife. Ex. 2016, 22:14-24:8. Petitioner’s claim that it is not relying on
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`Hooven’s disclosure of a knife is not credible.
`
`Petitioner’s second argument—that Milliman is irrelevant to its proposed
`
`combination of Heinrich and Hooven—is also not credible. See Paper 20 at 16.
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`The Petition specifically states that “Heinrich incorporates by reference the entire
`
`contents of Milliman for a more detailed explanation of the operation of the
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`surgical stapler.” Paper 2 at 19. Dr. Fischer stated that “[a] POSITA would have
`
`understood that this statement incorporates all of Milliman into Heinrich as if it
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`were set out expressly rather than through incorporation.” Ex. 1003 at ¶ 76.
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`Notably, the Petition describes in detail the structure of Milliman, including the
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`non-reusable knife blade in the description of the Heinrich reference. Paper 2 at
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`19-20.
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`Dr. Fischer even testified that his analysis turned on the discussion of “endoscopic
`
`19
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`
`
`
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`surgical stapling and cutting devices” in Heinrich, such as Milliman. Ex. 2016,
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`IPR2018-00934
`U.S. Patent No. 8,998,058
`
`9:3-14. Petitioner went to great lengths to incorporate Milliman into Heinrich in in
`
`the Petition and cannot now disavow the disclosure of Milliman because it
`
`supports Patent Owner’s teaching away argument.
`
`In fact, Petitioner’s entire argument is undercut by the very next section of
`
`its Reply brief. On the next page, Petitioner argues that “Hooven discloses a prior
`
`art motor-powered surgical stapler that can cut and fasten tissue” and that “the
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`combination of Hooven and Heinrich at issue here could… generate the forces
`
`required to effectively cut and fasten tissue.” Paper 20 at 17. Moreover, Petitioner
`
`argues that “Heinrich explicitly discloses a surgical cutting and stapling instrument
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`(such as a loading unit based on the handheld cutting and stapling device disclosed
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`in Milliman and shown in Heinrich Figure 3).” Id. at 18. Petitioner cannot now
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`argue that Milliman’s disclosures concerning the importance of a fresh knife blade
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`are irrelevant. Nor can Petitioner refute that Hooven discloses a reusable knife.
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`Petitioner has offered no credible response to the argument that Heinrich
`
`discourages a combination with the reusable cutting device of Hooven. See Paper
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`20 at 15-16. Petitioner has effectively conceded this argument, and therefore, the
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`challenged claims are patentable over the proposed combination of Hooven and
`
`Heinrich.
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`20
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`IPR2018-00934
`U.S. Patent No. 8,998,058
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`B.
`
`Petitioner’s Sole Surviving Motivation To Combine Is Based On
`Impermissible Hindsight
`In addition to the teaching away argument, Patent Owner raised two other
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`challenges to Petitioner’s pu
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