Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 9
`December 7, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00934
`Patent 8,998,058 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 9
`December 7, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00934
`Patent 8,998,058 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`IPR2018-00934
`Patent 8,998,058 B2
`
`I. INTRODUCTION
`Intuitive Surgical, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 1–18 of U.S. Patent
`No. 8,998,058 B2 (Ex. 1001, “the ’058 patent”). Ethicon LLC (“Patent
`Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”) to the
`Petition. We have authority under 35 U.S.C. § 314(a), which provides that
`an inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” Moreover, a decision to institute
`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
`in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`Upon consideration of the Petition and the Preliminary Response, we
`conclude that the information presented shows there is a reasonable
`likelihood that Petitioner would prevail in showing the unpatentability of at
`least one challenged claim. Although the Petitioner initially sought to
`challenge claims 11–18 of the ’058 patent, Patent Owner has statutorily
`disclaimed those claims. See Ex. 2004. For the reasons discussed infra,
`claims 11–18 are no longer regarded as claims challenged in the Petition.
`Accordingly, we authorize an inter partes review to be instituted as to claims
`1–10 of the ’058 patent on the ground raised in the Petition. Our factual
`findings and conclusions at this stage of the proceeding are based on the
`evidentiary record developed thus far (prior to Patent Owner’s Response).
`This is not a final decision as to patentability of claims for which inter
`partes review is instituted. Any final decision will be based on the record,
`as fully developed during trial.
`
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`Patent 8,998,058 B2
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`II. BACKGROUND
`A. The ’058 Patent
`The ’058 patent is titled “Detachable Motor Powered Surgical
`Instrument,” and generally relates to endoscopic surgical instruments. Ex.
`1001, [54]; 1:49–51. The ’058 patent summarizes its disclosure as
`encompassing a surgical instrument including “a housing that includes at
`least one engagement member for removably attaching the housing to an
`actuator arrangement.” Id. at [57]. The housing supporting a motor that
`“may include a contact arrangement that is configured to permit power to be
`supplied to the motor only when the housing is operably attached to the
`actuator arrangement.” Id. Figure 1 of the ’058 patent is reproduced below
`
`Figure 1 shows “a perspective view of a disposable loading unit
`
`embodiment of the present invention coupled to a conventional surgical
`cutting and stapling apparatus.” Id. at 3:59–61. In particular, disposable
`loading unit 16 is coupled to surgical stapling apparatus 10. Id. at 10:21–25.
`
`
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`3
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`Patent 8,998,058 B2
`Disposable loading unit 16 includes housing portion 200 that is configured
`to engage elongated body portion 14 of surgical stapling apparatus 10. Id. at
`11:21–28. Figure 2 of the ’058 patent is reproduced below.
`
`
`
`
`Figure 2 “is a cross-sectional view of the disposable loading unit of
`
`FIG. 1 with several components shown in full view for clarity.” Id. at 3:62–
`64. The ’058 patent describes the following
`[T]he disposable loading unit 16 may generally comprise a tool
`assembly 17 for performing surgical procedures such as cutting
`tissue and applying staples on each side of the cut. The tool
`assembly 17 may include a cartridge assembly 18 that includes a
`staple cartridge 220 that is supported in a carrier 216. An anvil
`assembly 20 may be pivotally coupled to the carrier 216 in a
`known manner for selective pivotal travel between open and
`closed positions. The anvil assembly 20 includes an anvil
`portion 204 that has a plurality of staple deforming concavities
`(not shown) formed in the undersurface thereof. The staple
`cartridge 220 houses a plurality of pushers or drivers (not shown)
`that each have a staple or staples (not shown) supported thereon.
`An actuation sled 234 is supported within the tool assembly 17
`and is configured to drive the pushers and staples in the staple
`cartridge 220 in a direction toward the anvil assembly 20 as the
`
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`IPR2018-00934
`Patent 8,998,058 B2
`actuation sled 234 is driven from the proximal end of the tool
`assembly 17 to the distal end 220.
`Id. at 10:45–63.
`Figure 3 of the ’058 patent is reproduced below.
`
`
`
`Figure 3 above illustrates a cross-sectional view of the proximal end
`
`of disposable loading unit 16 shown in Figure 1. Id. at 3:65–67. Housing
`portion 200 of the disposable loading unit defines battery cavity 522 that
`movably supports battery holder 524 that houses battery 526. Id. at 11:29–
`33. First battery contact 528 and second battery contact 530 are supported in
`electrical contact with battery 526. Id. at 11:33–41. The ’058 further
`describes the following:
`As can also be seen in FIG. 3, a biasing member or switch spring
`550 is positioned within the battery cavity 522 to bias the battery
`holder 524 in the proximal direction “PD” such that when the
`disposable reload 16 is not attached to the elongated body 14, the
`battery holder 524 is biased to its proximal-most position shown
`in FIG. 3. When retained in that “pre-use” or “disconnected”
`position by spring 550, the battery contacts 528 and 530 do not
`contact any of the contacts 540, 542, 544 within battery cavity
`522 to prevent the battery 526 from being drained during non-
`use.
`
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`Patent 8,998,058 B2
`Id. at 11:48–58. Housing 200 also includes motor cavity 560 that houses
`motor 562 and gear box 564. Id. at 11:59–61. Based on the contact
`arrangement of battery contacts 528 and 530 with contacts 540, 542, and
`544, battery 526 either supplies or prevents power to motor 562. See, e.g.,
`id. at 12:27–13:37.
`
`B. Illustrative Claims
`Challenged claims 1 and 6 are independent. Claims 2–5 ultimately
`
`depend from claim 1, and claims 7–10 ultimately depend from claim 6.
`Claims 1 and 6 are reproduced below.
`
`1.
`A disposable loading unit configured for operable
`attachment to a surgical instrument configured to selectively
`generate at least one control motion for the operation of said
`disposable loading unit, said disposable loading unit comprising:
`
`a carrier operably supporting a cartridge assembly therein;
`
`an anvil supported relative to said carrier and being
`movable from an open position to closed positions upon
`application of at least one control motion thereto;
`
`a housing coupled to said carrier, said housing including
`means for removably attaching said housing to the surgical
`instrument;
`
`an axial drive assembly at least partially supported within
`said housing and being supported for selective axial travel
`through said cartridge assembly from a start position to an end
`position upon application of a rotary motion thereto, said axial
`drive assembly comprising a rotary shaft; and
`
`a motor operably interfacing with said rotary shaft to
`selectively supply said rotary motion thereto, said motor
`configured to receive power from a power source such that said
`motor can only selectively receive power from said power source
`when said means for removably attaching said housing to the
`surgical
`instrument
`is operably coupled
`to
`the surgical
`instrument.
`
`
`6
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`Patent 8,998,058 B2
`
`6.
`A stapling system configured to be operably
`engaged with a surgical instrument system, said stapling system
`comprising:
`
`a staple cartridge carrier;
`
`a staple cartridge assembly supported by said staple
`cartridge carrier;
`
`an anvil supported relative to said staple cartridge carrier
`and movable from an open position to a closed position;
`
`a housing, wherein said staple cartridge carrier extends
`from said housing, and wherein said housing comprises a
`housing connector removably attachable
`to
`the surgical
`instrument system;
`
`a rotary shaft;
`
`an axial drive member operably engaged with said rotary
`shaft, wherein said axial drive member is selectively movably
`through said staple cartridge assembly from a start position to an
`end position when a rotary motion is applied to said rotary shaft;
`and
`an electric motor operably interfacing with said rotary
`
`shaft to selectively apply said rotary motion to said rotary shaft,
`wherein said electric motor is configured to receive power from
`a power source such that said electrical motor can only
`selectively receive power from said power source when said
`housing connector is attached to the surgical instrument.
`
`
`
`C. Related Proceedings
`The parties indicate that the ’058 patent is involved in: Ethicon LLC
`et al. v. Intuitive Surgical, Inc. et al., No. 1:17-cv-00871 in the United States
`District Court for the District of Delaware (“the Delaware litigation”).1 Pet.
`2; Paper 6, 2.
`
`
`1 Patent Owner contends that U.S. Patent Nos. 9,585,658 B2 (“the ’658
`Patent”), 8,616,431 B2 (“the ’431 Patent”), 8,479,969 B2 (“the ’969
`Patent”), 9,113,874 B2 (“the ’874 Patent”), 9,084,601 B2 (“the ’601
`Patent”), and 8,991,677 B2 (“the ’677 Patent”) are also asserted in the
`Delaware litigation. Paper 6, 2.
`
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`IPR2018-00934
`Patent 8,998,058 B2
`Petitioner is also challenging related patents in the following
`proceedings before the Board: (1) Case No. IPR2018-00933 (the ’601
`patent); (2) Case No. IPR2018-00935 (the ’677 patent); (3) Case Nos.
`IPR2018-01248 and IPR2018-01254 (the ’969 patent); (4) Case Nos.
`IPR2018-01247 and IPR2018-00936 (the ’658 patent); (5) Case No.
`IPR2018-00938 (the ’874 patent); and (6) Case No. IPR2018-01703 (the
`’431 patent).
`
`D. Real Parties in Interest
`Petitioner identifies itself as the only real party-in-interest. Pet. 1.
`E. Evidence and Asserted Ground of Unpatentability
`Petitioner contends that claims 1–18 are unpatentable under 35 U.S.C.
`§ 103 based on Hooven2 and Heinrich.3 Pet. 3–4. Petitioner also relies upon
`a Declaration of Dr. Gregory S. Fischer. Ex. 1003.
`III. ANALYSIS
`A. Statutory Disclaimer of Claims 11–18
`As noted above, along with claims 1–10, Petitioner sought inter partes
`review of claims 11–18 of the ’058 patent. After the filing of the Petition,
`Patent Owner filed a statutory disclaimer of claims 11–18. Ex. 2004; see
`Prelim. Resp. 9.
`Patent Owner contends that “[b]ased on this disclaimer, the [’058
`patent] is to be treated as though claims 11–18 never existed.” Prelim. Resp.
`9 (citing Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed.
`Circ. 1998)(“This court has interpreted the term ‘considered as part of the
`
`
`2 U.S. Patent No. 5,383,880 issued Jan. 24, 1995 (Ex. 1004, “Hooven”)
`3 U.S. Patent App. Pub. No. US 2005/0131390 A1 published June 16, 2005
`(Ex. 1005, “Heinrich”)
`
`8
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`IPR2018-00934
`Patent 8,998,058 B2
`original patent’ in section 253 to mean that the patent is treated as though the
`disclaimed claims never existed.”). We also observe that our rules state that
`“[n]o inter partes review will be instituted based on disclaimed claims.” 37
`C.F.R. §42.107(e).
`In considering Federal Circuit precedent and our rules, we conclude
`that we cannot institute a trial on claims that have been disclaimed, and,
`thus, no longer exist. That conclusion is consistent with other panel
`decisions in inter partes review proceedings that addressed nearly identical
`circumstances as we do here. See, e.g., Vestas-American Wind Technology,
`Inc. and Vestas Wind Systems A/S v. General Electric Co., IPR2018-01015,
`Paper 9, 12–14 (PTAB, Nov. 14, 2018)(“the ’1015 IPR”). We share the
`same view as the panel in the ’1015 IPR that such a conclusion is consistent
`with the statutory scope of inter partes review as laid out in
`35 U.S.C. §§ 311(b) and 318(a), and is not at odds with the Supreme Court’s
`recent decision in SAS. See id. Accordingly, we treat claims 11–18 as
`having never been part of the ’058 patent, and Petitioner cannot seek inter
`partes review of those claims.
`B. Claim Construction
`The claim construction standard to be employed in an inter partes
`review recently has changed. See Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`and Appeal Board, 83 Fed. Reg. 51,340 (Nov. 13, 2018) (to be codified at 37
`C.F.R. pt. 42). That new standard, however, applies only to proceedings in
`which the petition is filed on or after November 13, 2018. This Petition was
`filed on May 22, 2018. Under the standard in effect at that time, “[a] claim
`in an unexpired patent . . . shall be given its broadest reasonable construction
`
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`IPR2018-00934
`Patent 8,998,058 B2
`in light of the specification of the patent in which it appears.” 37 C.F.R.
`§ 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2142 (2016) (upholding the use of the broadest reasonable interpretation
`standard). Accordingly, we determine whether to institute trial in this
`proceeding using the broadest reasonable construction standard. In
`determining the broadest reasonable construction, we presume that claim
`terms carry their ordinary and customary meaning. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A patentee may define a
`claim term in a manner that differs from its ordinary meaning; however, any
`special definitions must be set forth in the specification with reasonable
`clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994).
`Petitioner offers construction for a single phrase appearing in claim 1:
`“means for removably attaching said housing to the surgical instrument.”
`Pet. 15. According to Petitioner, that phrase in using the word “means”
`presumptively invokes 35 U.S.C. § 112(f). Pet. 15. Petitioner contends that
`the claimed function, as recited in the claim, “is ‘removably attaching said
`housing to the surgical instrument.” Id. Petitioner further contends that
`“[t]he corresponding structures in the ’058 patent that perform this function
`include engagement nubs 254.’” Id. (citing Ex. 1001, 11:23–28; Fig. 2; Ex.
`1003 ¶¶62–65). Patent Owner does not dispute the above-noted function
`and structure identified by Petitioner. For purposes of this Decision, we
`accept the parties’ representations in that regard.
`We find that it is unnecessary to provide an explicit construction or
`discussion of any additional claim term in order to resolve the issues in
`dispute at this stage of the proceeding. Nidec Motor Corp. v. Zhongshan
`
`10
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`IPR2018-00934
`Patent 8,998,058 B2
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining
`that claim terms need to be construed “only to the extent necessary to
`resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`C. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the claimed subject matter and the prior art are “such that the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`matter pertains.” 35 U.S.C. § 103(a). The question of obviousness under
`35 U.S.C. § 103 is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) objective evidence of nonobviousness, i.e.,
`secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).4 “While the sequence of these questions might be reordered in
`any particular case, the factors continue to define the inquiry that controls.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007).
`D. Level of Ordinary Skill in the Art
`Petitioner’s Declarant, Dr. Fischer, testifies the following in
`connection with the level of ordinary skill in the art:
`A person of ordinary skill in the art at the time of the
`claimed invention (“POSITA”) would have had the equivalent of
`a Bachelor’s degree or higher in mechanical engineering,
`electrical engineering, biomedical engineering, or a related field
`
`
`4 At this stage of the proceeding, neither party has submitted or relied on any
`objective evidence of non-obviousness.
`
`11
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`IPR2018-00934
`Patent 8,998,058 B2
`directed towards medical electro-mechanical systems and at least
`3 years working experience in research and development for
`surgical instruments. Experience could take the place of some
`formal training, as relevant skills may be learned on the job. This
`description is approximate, and a higher level of education might
`make up for less experience, and vice versa.
`Ex. 1003 ¶ 27.
`
`Patent Owner does not challenge the above-noted testimony offer any
`assessment of its own as to the level of ordinary skill in the art. For
`purposes of this Decision, we adopt Dr. Fischer’s assessment of the level of
`ordinary skill in the art. We further find that the cited prior art references
`reflect the appropriate level of skill at the time of the claimed invention and
`that the level of appropriate skill reflected in these references is consistent
`with the definition of a person of ordinary skill in the art proposed by
`Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`E. Scope and Content of the Prior Art
`1. Overview of Hooven
`Hooven is titled “Endoscopic Surgical System with Sensing Means.”
`Ex. 1004, [54]. Hooven discloses endoscopic stapling and cutting
`instrument 30 that includes “a sensing means which controls and/or monitors
`the operation of the instrument while conducting the desired step [, e.g.,
`ligating, stapling, cutting, manipulation of the tissue,] in the procedure and
`provides feedback information to the surgeon.” Id. at 2:54–58, 61–63.
`Figure 1 of Hooven is reproduced below.
`
`12
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`IPR2018-00934
`Patent 8,998,058 B2
`
`
`Figure 1 illustrates a schematic view of an endoscopic surgical system
`of the present invention interconnected with a microprocessor/controller and
`a video display screen. More particularly, Hooven explains the following:
`endoscopic stapling and cutting instrument 30 is interconnected
`with a controller 31 and a video display monitor 32. The
`controller includes a microprocessor, power supply, hardwired
`logic, sensor interface and motor drive circuits. The instrument
`is connected to the controller so that the controller can accept,
`store, manipulate, and present data. The controller may feed
`appropriate signals back to the instrument in order to operate the
`instrument.
`Id. at 4:15–24; see also id. at 9:15–17. Hooven discloses that “[a]ll sensors,
`switches, and motors are connected to the controller via the interface cable
`205. This information, fed into the appropriate controller, is stored and
`manipulated and fed to a central processing communication system.” Id. at
`9:1–5. Figure 6 of Hooven is reproduced below.
`
`13
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`IPR2018-00934
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`
`
`Figure 6 depicts an enlarged longitudinal cross-sectional view of the
`active or business head of endoscopic stapling and cutting instrument 30.
`Hooven discloses that its “head includes a staple or staple cartridge portion
`74 and an anvil portion 75. The staple portion and the anvil portion are
`pivotally connected [t]o each other by the anvil pivot pin 76.” Id. at 5:38–
`41. Hooven further discloses a knife member 82 and driving wedge member
`83 which are interconnected. Id. at 6:9–19.
`
`2. Overview of Heinrich
`Heinrich is titled “Surgical Instruments Including MEMS devices.”
`Ex. 1005, [54]. Heinrich’s Abstract reads as follows:
`Surgical instruments are disclosed that are couplable to or
`have an end effector or a disposable loading unit with an end
`effector, and at least one micro-electromechanical system
`(MEMS) device operatively connected to the surgical instrument
`for at least one of sensing a condition, measuring a parameter and
`controlling the condition and/or parameter.
`Id. at [57]. Figure 1 of Heinrich is reproduced below.
`
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`
`
`Figure 1 shows a perspective view of a surgical stapling instrument
`
`according to Heinrich’s disclosure. Id. ¶ 53. Surgical stapler 100 includes
`housing 112 with handle 114 and distally extending body portion 116
`operatively connected to housing 112. Id. ¶ 82. Surgical stapler 100 also
`includes anvil 120 fastened to first leg 124 of support fame 118. Id. ¶ 83.
`Figure 7 of Heinrich is reproduced below.
`
`15
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`
`
`Figure 7 is a perspective view of a “robotic system” according to
`
`Heinrich’s disclosure. Id. ¶ 62. Robotic system 600 includes actuation
`assembly 612 and disposable loading unit 618 having at least one surgical
`instrument 620 attached to robot 616. Id. ¶ 132. Heinrich explains that
`disposable loading unit 618 is “releasably attach[ed]” to robot 616 via
`mounting flange 636. Id. ¶ 134. Figures 9 and 10 of Heinrich is reproduced
`below.
`
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`
`
`Figure 9 show perspective view of a robotic system coupled to a
`
`various disposable loading units. Id. ¶¶ 64, 65. More particularly, Figures 9
`and 10 illustrate disposable loading unit 718 and disposable loading unit
`800, respectively, “removably coupled” to robot 616 (not shown) via
`mounting flange 636. Id. ¶¶ 139–143.
`
`
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`
`F. Petitioner’s Contentions
`Petitioner contends that claims 1–10 of the ’058 patent would have
`been obvious in view of the combined teachings of Hooven and Heinrich.
`Petitioner provides detailed assessment of the content of the prior art in
`advocating that all the features of claims 1–10 are shown therein. See Pet.
`21–53. Petitioner also supports that assessment with citation to the
`Declaration testimony of Dr. Fischer (Ex. 1003).
`For instance, with respect to claim 6, Petitioner explains how Hooven
`discloses a “stapling system.” Pet. 21 (citing Ex. 1004, 4:15–17; 2:58–63;
`4:45–53; Figs. 1–9; Ex. 1003 ¶¶ 205–12). Petitioner also explains that
`Hooven discloses a system that is “configured to be operably engaged with a
`surgical instrument system.” Id. at 22–25. We observe that Petitioner
`contends that Hooven discloses a “surgical instrument system” composed of
`the combination of controller 31 and video display monitor 32. Id. at 22
`(citing Ex. 1003 ¶ 207; Ex. 1004 ¶ 4:13–17). For purposes of this Decision,
`we accept Petitioner’s contention in that regard.
`Petitioner also explains how Hooven and Heinrich account for each
`of: (1) “a staple cartridge carrier” (id. at 25–26) ; (2) “a staple cartridge
`assembly supported by said staple cartridge carrier” (id. at 27) ; (3) “an anvil
`supported relative to said staple cartridge carrier and movable from an open
`position to a closed position” (id. at 28–29) ; (4) “a housing, wherein said
`staple cartridge carrier extends from said housing, and wherein said housing
`comprises a housing connector removably attachable to the surgical
`instrument system” (id. at 29–32); (5) “a rotary shaft” (id. at 33); (6) “an
`axial drive member operably engaged with said rotary shaft, wherein said
`axial drive member is selectively movable through said staple cartridge
`
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`assembly from a start position to an end position when a rotary motion is
`applied to said rotary shaft” (id. at 33–36); and, finally, (7) “an electric
`motor operably interfacing with said rotary shaft to selectively apply said
`rotary motion to said rotary shaft, wherein said electric motor is configured
`to receive power from a power source such that said electrical motor can
`only selectively receive power from said power source when said housing
`connector is attached to the surgical instrument system” (id. at 36–39).
`In further respect in connection with the requirement noted above of a
`“housing connector removably attachable to the surgical instrument system,”
`we are cognizant that Petitioner directs our attention to Heinrich’s teachings
`concerning mounting flange 636 (and is associated components). Id. at 29–
`32. As discussed above, Heinrich describes that connection of a disposable
`loading unit to a robot via that mounting flange is one that provides for
`“releasably attaching” those components. Ex. 1004 ¶ 134. Petitioner
`reasons that a person of ordinary skill in the art would have appreciated that
`Hooven’s stapling system may incorporate the type of connection
`mechanism disclosed in Heinrich to harness the releasable attachment
`capability. Pet. 31.
`
`G. Patent Owner’s Contentions
`Patent Owner contends that Petitioner’s ground of unpatentability
`based on Hooven and Heinrich is deficient. In particular, Patent Owner
`contends that, contrary to Petitioner’s view, the prior art does not show a
`“motor configured to receive power from a power source” as required by
`claims 1 and 6. Prelim. Resp. 20–23. Patent Owner also contends that
`“Petitioner does not establish a motivation to combine or reasonable
`
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`expectation of success” in its proposal to combine teachings of Hooven and
`Heinrich. Id. at 23–29.
`
`H. Discussion
`Having considered the conflicting positions of the parties, we
`conclude that, at this stage of the proceeding, Petitioner has shown a
`reasonable likelihood of success in challenging the patentability of claims 1–
`10. In our view, Petitioner’s obviousness approach, on this record,
`adequately identifies where all the elements of claims 1–10 are found in the
`prior art and Petitioner demonstrates adequate reasoning to combine the
`teachings of Hooven and Heinrich.
`We not persuaded, at this time, that Patent Owner’s arguments are
`availing and demonstrate that institution of a trial is unwarranted. In
`particular, Patent Owner’s view that the prior art does not show a “motor
`configured to receive power from a power source” does not account for the
`full disclosure of Hooven. In accounting for that feature, Petitioner express
`the following:
`Hooven’s electric motor (i.e. DC motor 45) is configured
`to receive power from controller 31, which includes a power
`source [Ex.]1003 ¶ 230; [Ex.]1004, 9:1-3) (“All sensors,
`switches, and motors are connected to the controller via the
`interface cable 205.”), 4:17–26 (The controller includes a . . .
`power supply . . . and motor drive circuits . . . . The controller
`also acts to supply power to the instrument at the appropriate
`level, frequency, timing, etc.).
`Pet. 38.
`
`Hooven, thus, clearly provides that its controller 31 includes a power
`supply and the “controller acts to supply power to the instrument,” which
`includes motor 45. Patent Owner simply does not credibly explain why
`
`20
`
`
`
`IPR2018-00934
`Patent 8,998,058 B2
`those teachings fall short of disclosure of a motor configured to receive
`power from a power source.
`
`Furthermore, Patent Owner’s contention that there is inadequate
`reason to combine the teachings of Hooven and Heinrich and no reasonable
`expectation of success for such combination is, at this stage, unpersuasive.
`The similarity of the disposable loading unit disclosed in Hooven (e.g., Ex.
`1004, Fig. 1) and that disclosed in Heinrich (e.g., Ex. 1005, Fig. 1) is
`notable. Heinrich explains that it was known in the art that a variety of its
`disclosed disposable loading units may be attached to a robotic assembly via
`a type of releasable coupling. See, e.g., Ex. 1005, Figs. 9–12. Thus, the
`record at hand demonstrates that there are a finite number of known
`solutions for coupling a disposable loading unit with a robotic surgical
`instrument system. A person of ordinary skill seemingly would have
`adequate reason to apply those known finite solutions so as to connect
`Hooven’s disposable unit to such a robotic system. See KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 421 (2007) (“When there is a design need or
`market pressure to solve a problem and there are a finite number of
`identified, predictable solutions, a person of ordinary skill has good reason
`to pursue the known options within his or her technical grasp. If this leads
`to the anticipated success, it is likely the product not of innovation but of
`ordinary skill and common sense.”)
`
`Having considered the Petition, and its underlying supporting
`documents, and Patent Owner’s Preliminary response, we conclude that
`institution of trial is warranted. Accordingly, we do so.
`
`
`21
`
`
`
`IPR2018-00934
`Patent 8,998,058 B2
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–10 of the ’058 patent is instituted with respect to the
`ground of unpatentability presented in the Petition; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4(b), notice is hereby given of the institution of a trial, which
`commences on the entry date of this Decision.
`
`
`
`22
`
`
`
`IPR2018-00934
`Patent 8,998,058 B2
`PETITIONER:
`
`John Phillips
`Steven Katz
`Ryan O'Connor
`FISH & RICHARDSON P.C.
`phillips@fr.com
`katz@fr.com
`oconnor@fr.com
`
`
`PATENT OWNER:
`
`Anish Desai
`Elizabeth Weiswasser
`Adrian Percer
`Christopher Marando
`Christopher Pepe
`WEIL, GOTSHAL, & MANGES LLP
`anish.desai@weil.com
`elizabeth.weiswasser@weil.com
`adrian.percer@weil.com
`christopher.marando@weil.com
`christopher.pepe@weil.com
`
`
`23
`
`
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