Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 34
`Entered: December 4, 2019
`
`
`
`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.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`

`

`IPR2018-00934
`Patent 8,998,058 B2
`
`I. INTRODUCTION
`
`A. Summary
`
`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”). After the filing of the
`Petition, Ethicon LLC (“Patent Owner”) filed a statutory disclaimer of
`claims 11–18. Ex. 2004; see Paper 8, 9. We instituted trial to determine
`whether claims 1–10 were unpatentable under 35 U.S.C. § 1031 based on
`Hooven2 and Heinrich3. See Paper 9 (“Decision on Institution” or “Dec. on
`Inst.”).4 Patent Owner filed a Patent Owner Response. Paper 15 (“PO
`
`
`1 It is not entirely clear what version of § 103 Petitioner argues under. The
`application for the ’058 patent proper was filed on May 20, 2014. Ex. 1001,
`code (22). The earliest effective filing date of the ’058 patent, however,
`based on various chains of continuation and continuation-in-part
`applications, is February 14, 2008. Pet. 3; Ex. 1001, code (63). If this date
`is afforded priority, it would make the patent subject to pre-AIA § 103(a).
`See 35 U.S.C. § 100 (note) (2015) (applicability of AIA). While Petitioner
`“does not concede that the challenged claims . . . are entitled to [the 2008]
`priority date,” it asserts that its arguments are not affected by this difference,
`since both Hooven and Heinrich predate the earliest effective filing date.
`See Pet. 3–4. Petitioner claims entitlement for relief under “§ 103,”
`implying reliance on the post-AIA law (and in light of the refusal to concede
`an earlier priority date), but uses “§ 102(b)” to show that Hooven and
`Heinrich qualify as prior art, which corresponds better to the pre-AIA
`version of the law (as current § 102(b) deals only with exceptions to the
`novelty requirement). Id. Neither Petitioner nor Patent Owner, however,
`has pursued this point since. Therefore, we use the post-AIA version here.
`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”).
`4 In our Decision on Institution, we treated claims 11–18 as having never
`2
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`IPR2018-00934
`Patent 8,998,058 B2
`Resp.”). Patent Owner also filed a “Corrected Contingent Motion to Amend
`Under 37 C.F.R. § 42.121.” Paper 18 (“Motion to Amend” or “Mot. to
`Amend”).5 Petitioner filed a Reply to Patent Owner’s Response. Paper 20
`(“Pet. Reply”). Petitioner also filed an Opposition to Patent Owner’s Motion
`to Amend. Paper 21 (“Pet. Opp.”). Patent Owner filed a Reply in Support
`of its Contingent Motion to Amend. Paper 25 (“PO Reply”). Patent Owner
`filed a Sur-reply to Petitioner’s Reply to Patent Owner’s Response. Paper
`26 (“PO Sur-reply”). Petitioner filed a Sur-reply to Patent Owner’s Reply in
`Support of the Contingent Motion to Amend. Paper 30 “(Pet. Sur-reply”).
`Oral hearing was conducted on September 5, 2019, and a transcript of the
`hearing is in the record. Paper 33.
`We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden
`of proving unpatentability of the challenged claims, and the burden of
`persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner
`must prove unpatentability by a preponderance of the evidence. See 35
`U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This decision is a Final Written
`Decision under 35 U.S.C. § 318(a). For the reasons discussed below, we
`hold that Petitioner has demonstrated by a preponderance of the evidence
`that claims 1–10 of the ’058 patent are unpatentable under 35 U.S.C.
`§ 103(a). We grant Patent Owner’s Contingent Motion to Amend to
`substitute claims 19–28 for claims 1–10 in the ’058 patent.
`
`
`been part of the ’058 patent, and concluded that Petitioner could not seek
`inter partes review of those claims. See Dec. on Inst. 8–9.
`5 A listing of proposed substitute claims 19–28 appears in Appendix A of
`Paper 18.
`
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`IPR2018-00934
`Patent 8,998,058 B2
`
`B. Real Parties-In-Interest
`
`Petitioner identifies itself as the only real party-in-interest. Pet. 1.
`
`C. Related Matters
`
`The parties indicate that the ’058 patent is involved in: Ethicon LLC
`v. Intuitive Surgical, Inc., No. 1:17-cv-00871 in the United States District
`Court for the District of Delaware (“the Delaware litigation”).6 Pet. 1–2;
`Paper 6, 2. Petitioner is also challenging related patents in the following
`proceedings before the Board: (1) IPR2018-00933 (the ’601 patent); (2)
`IPR2018-00935 (the ’677 patent); (3) IPR2018-01247, IPR2018-01248, and
`IPR2018-01254 (the ’969 patent); (4) IPR2018-00936 (the ’658 patent); (5)
`IPR2018-00938 (the ’874 patent); (6) IPR2018-01703 (the ’431 patent); and
`(7) IPR2019-00880 (U.S. Patent No. 7,490,749).
`
`D. The ’058 Patent
`
`The ’058 patent is titled “Detachable Motor Powered Surgical
`Instrument,” and generally relates to endoscopic surgical instruments. Ex.
`1001, code (54), 1:42–53. 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 code (57). The housing supports a motor that
`“may include a contact arrangement that is configured to permit power to be
`
`
`6 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.
`
`4
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`

`IPR2018-00934
`Patent 8,998,058 B2
`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.
`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.
`
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`IPR2018-00934
`Patent 8,998,058 B2
`
`
`
`
`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
`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.
`
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`IPR2018-00934
`Patent 8,998,058 B2
`
`
`
`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 patent 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.
`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.
`
`7
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`

`IPR2018-00934
`Patent 8,998,058 B2
`
`E. 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.
`Ex. 1001, 80:8–32.
`
`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;
`
`8
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`IPR2018-00934
`Patent 8,998,058 B2
`
`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.
`Id. at 80:47–81:4.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`The claim construction standard to be employed in an inter partes
`review 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 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,
`
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`IPR2018-00934
`Patent 8,998,058 B2
`2142 (2016) (upholding the use of the broadest reasonable interpretation
`standard). Accordingly, we evaluate patentability 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).
`In our Decision on Institution, we determined that it was only
`necessary to evaluate the meaning of a single phrase appearing in claim 1:
`“means for removably attaching said housing to the surgical instrument.”
`See Dec. on Inst. 10–11. In particular, for purposes of deciding whether to
`institute trial, we observed the following:
`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.
`Id. at 10.
`
`The parties do not challenge the above-noted construction, and both
`parties contend that it is unnecessary to further address it. PO Resp. 17 n.5;
`
`10
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`IPR2018-00934
`Patent 8,998,058 B2
`Pet. Reply 1. We do not discern a reason to alter or further address that
`construction.
`
`Patent Owner also discusses construction of the following claim
`clauses: (1) “disposable loading unit comprising: . . . a motor . . . configured
`to receive power from a power source such that said motor can only
`selectively receive power from said power source when said means for
`removably attaching said housing to the surgical instrument is operably
`coupled to the surgical instrument” as appears in claim 1; and (2) “stapling
`system comprising . . . electric motor . . . configured to receive power from a
`power source such that said electrical motor can only selectively receive
`power from said power source when said housing connector is attached to
`the surgical instrument system” as appears in claim 6. PO Resp. 17–19
`(quoting Ex. 1001, 80:11–32, 48–58).7
`According to Patent Owner, the above-noted power limitations
`“describe two separate requirements describing two separate connections.”
`Id. at 20. Patent Owner further distills the requirement of the claims to an
`assertion that the claims “as a whole” indicate “the motor must be
`configured to receive power independent of whether or not the housing
`connector is attached to the surgical instrument system.” Id. at 20–21 (citing
`Declaration of Dr. William Cimino, Ex. 2006 ¶¶ 71, 74–76, 76–78). Patent
`Owner generally bases that assertion on disclosure in the ’058 patent: (1)
`related to Figures 3–7 that Patent Owner characterizes as an embodiment of
`
`
`7 The parties generally argue those claim clauses together, and refer to them
`as the “power limitations” or “power terms” PO Resp. 20; Pet. Reply 2 n.1.
`For convenience, we refer to the features as the “power limitations.”
`
`11
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`IPR2018-00934
`Patent 8,998,058 B2
`the claimed invention (id. at 24–26); and (2) related to Figure 52 that Patent
`Owner characterizes as a second embodiment (id. at 26–28).
`
`Petitioner does not agree with Patent Owner’s contentions as to the
`requirements of the power limitations of claims 1 and 6. Specifically,
`Petitioner contends that Patent Owner’s proposed constructions are: (1)
`“Inconsistent with the Plain Meaning of the Claims” (Pet. Reply 3–6);
`(2) “Are Not Supported by the Specification” (id. at 7–9); and (3)
`“Improperly Attempt to Limit the Claims to a Particular Embodiment when
`the Claims and the Specification are Broader than that Particular
`Embodiment” (id. at 9–12).
`
`We are not persuaded that Patent Owner’s assessment of the power
`limitations is correct. In that regard, it is difficult to reconcile Patent
`Owner’s contention with the actual language of the claims. We observe that
`the claims do not refer to a “separate requirement” or “separate
`connections.” Neither do they use the term “independent” in describing any
`connection of components of a disposable loading unit (claim 1) or a
`stapling system (claim 6). Claims 1 and 6 recite, in pertinent part, a motor
`that is configured to receive power from a power source such that the motor
`“only selectively” receives power from a power source when a housing
`attachment or connection mechanism is “operably coupled to the surgical
`instrument” (claim 1) or “attached to the surgical instrument” (claim 6).
`Patent Owner’s attempt to imbue the claims with a “separate” or
`“independent” aspect of the motor configuration and that of the housing
`attachment or connection mechanism simply lacks adequate explanation or
`assessment of the actual claim language. Furthermore, Patent Owner’s
`recourse to example embodiments appearing in various portions of the
`
`12
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`IPR2018-00934
`Patent 8,998,058 B2
`Specification does not convey credibly that unrecited requirements should
`somehow make their way into the claims under the general rubric that the
`claims “as a whole” require their inclusion.
`
`In effect, Patent Owner is of the view that the power limitations
`mandate that the claimed motor must always be attached to the power source
`irrespective of whether the housing connector is attached to the surgical
`system. The claims, however, are not so limiting. We share the following
`view expressed by Petitioner:
`In support of its argument that the Board should read in a
`requirement that the claimed motor be attached to the power
`source, Patent Owner incorrectly argues that “Claims 6 and 1
`describe two separate requirements describing two separate
`connections.” POR, 20. Specifically, Patent Owner asserts that
`the claim language in question requires that (i) “the motor be
`connected to an attached power source,” and (ii) “the connection
`between the motor and the attached power source be controlled
`and that the control mechanism ‘only’ permit power to flow
`when it detects that the housing connector … is attached to the
`surgical instrument system.” Id.
`Patent Owner’s argument, however, ignores the “such
`that” claim language that links the two allegedly separate
`limitations, and which makes clear that the latter of the two
`clauses (“said motor can only selectively receive power…”)
`defines what the former clause (“said motor configured to
`receive power”) means. IS1030, ¶13. Thus, the two clauses are
`not separate limitations but rather only a single limitation that
`requires no more than that the motor be set up (i.e.,“configured”)
`to receive power from the power source only when the housing
`and surgical instrument are “operably coupled” (claim 1) or
`“attached” (claim 6). Id.
`Pet. Reply 5–6.
`
`13
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`IPR2018-00934
`Patent 8,998,058 B2
`Accordingly, we reject Patent Owner’s inadequately explained
`construction of the power limitations of claims 1 and 6 that spans pages 17
`through 29 of Patent Owner’s Response.
`We determine that it is unnecessary to further discuss any other
`matters of claim construction to resolve the issues in controversy in this
`proceeding. See Nidec Motor Corp. v. Zhongshan 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))).
`
`B. 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 such 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).8 “While the sequence of these questions might be reordered in
`
`
`8 Neither party has submitted or relied on any objective evidence of non-
`obviousness during the course of this proceeding.
`
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`IPR2018-00934
`Patent 8,998,058 B2
`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).
`
`C. 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
`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 or offer
`any assessment of its own as to the level of ordinary skill in the art. For
`purposes of this Final Written 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).
`
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`Patent 8,998,058 B2
`D. Scope and Content of the Prior Art
`1. Overview of Hooven
`Hooven is titled “Endoscopic Surgical System with Sensing Means.”
`Ex. 1004, code (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.
`
`
`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
`
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`IPR2018-00934
`Patent 8,998,058 B2
`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.
`
`
`
`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.
`
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`IPR2018-00934
`Patent 8,998,058 B2
`2. Overview of Heinrich
`Heinrich is titled “Surgical Instruments Including MEMS devices.”
`Ex. 1005, code (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 code (57). Figure 1 of Heinrich is reproduced below.
`
`
`
`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.
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`Figure 7 is a perspective view of a “robotic system” according to
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`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 are
`reproduced below.
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`Figures 9 and 10 show perspective views of a robotic system coupled
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`to 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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`E. Petitioner’s Contentions
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`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. Gregory S. 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 ¶¶ 205–212). 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). 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,”
`Petitioner directs our attention to Heinrich’s teachings concerning mounting
`flange 636 (and its associated components). Id. at 29–32. As discussed
`above, Heinrich describes that connection of a disposable loading unit to a
`robot via a mounting flange is one that provides for “releasably attaching”
`those components. Ex. 1005 ¶ 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. Petitioner
`also reasons that modification of Hooven’s system based on Heinrich’s
`teachings “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 (i.e., remote controlled surgical
`staplers)” that “would have yielded predictable results without significantly
`altering or hindering the functions performed by Hooven’s device.” Id. at
`25.
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`Petitioner also contends that combining the teachings of Hooven and
`Heinrich accounts for all the features of claims 7–10, which depend from
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`claim 6, as well as independent claim 1, and its dependent claims 2–5. Id. at
`40–42, 48–53.
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`F. Patent Owner’s Contentions
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`Patent Owner contends that Petitioner’s ground of unpatentability
`based on Hooven and Heinrich is deficient. In particular, Patent Owne