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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Intuitive Surgical, Inc.,
`Petitioner,
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`v.
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`Ethicon LLC,
`Patent Owner.
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`Case IPR2018-00935
`Patent 8,991,677
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`PETITIONER’S NOTICE OF APPEAL
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`Proceeding No.: IPR2018-00935
`Attorney Docket: 11030-0049IP3
`Pursuant to 35 U.S.C. §§ 142 and 37 C.F.R. § 90.2(a), Petitioner Intuitive
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`Surgical, Inc. hereby appeals to the United States Court of Appeals for the Federal
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`Circuit from the Patent Trial and Appeal Board’s (“Board”) Final Written Decision
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`entered on December 4, 2019 (Paper 34), and from all other underlying orders,
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`decisions, rulings and opinions that are adverse to Petitioner, including, without
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`limitation, those within the Decision on Institution of Inter Partes Review entered
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`on December 7, 2018 (Paper 9).
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner indicates that the
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`issues on appeal include, but are not limited to, the following:
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`(1) whether the Board erred in finding that Patent Owner’s Contingent
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`Motion to Amend satisfied the requirements of 35 U.S.C. § 316(d) and
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`37 C.F.R. § 42.121;
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`(2) whether Board erred in finding that Petitioner failed to meet its burden to
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`establish that substitute claims 19-22 and 24 were unpatentable under 35
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`U.S.C. § 103 over Viola (Ex. 1031) in view of Heinrich (Ex. 1005);
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`(3) whether the Board erred in finding that Petitioner failed to meet its
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`burden to establish that substitute claim 23 was unpatentable under 35
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`U.S.C. § 103 over Viola (Ex. 1031) in view of Heinrich (Ex. 1005), and
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`further in view of Young (Ex. 1032);
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`(4) the Board’s claim constructions or failure to construe any terms; and
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`1
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`Proceeding No.: IPR2018-00935
`Attorney Docket: 11030-0049IP3
`(5) any findings or determinations supporting or related to the
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`aforementioned issues as well as other issues decided adversely to
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`Petitioner in any orders, decisions, rulings, or opinions.
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`Simultaneous with this submission, a copy of the Notice of Appeal is being
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`filed electronically with the Patent Trial and Appeal Board. In addition, a copy of
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`this Notice of Appeal, along with the required docketing fees, are being
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`electronically filed with the Clerk’s Office for the United States Court of Appeals
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`for the Federal Circuit.
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`Date: February 3, 2020
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`Respectfully submitted,
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`/John C. Phillips/
`John C. Phillips
`Reg. No. 35,322
`Attorney for Petitioner
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`Proceeding No.: IPR2018-00935
`Attorney Docket: 11030-0049IP3
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4), the undersigned certifies that on February
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`3, 2020, a complete and entire copy of this Petitioner’s Notice of Appeal was
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`provided via email to the Patent Owner by serving the correspondence email
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`addresses of record as follows:
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`Anish R. Desai
`Elizabeth Stotland Weiswasser
`Robert S. Magee
`Adrian Percer
`Christopher T. Marando
`Christopher M. Pepe
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
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`Email:
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`Ethicon.IPR.Service@weil.com
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`Proceeding No.: IPR2018-00935
`Attorney Docket: 11030-0049IP3
`I hereby certify that, in addition to being filed electronically through the
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`Board’s E2E System, the original version of the foregoing Notice of Appeal, was
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`filed by hand on February 3, 2020, with the Director of the United States Patent
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`and Trademark Office, at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 1 OB20
`600 Dulany Street
`Alexandria, VA 22314-5793
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`I hereby certify that on February 3, 2020, a true and correct copy of the
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`foregoing Notice of Appeal, along with a copy of the Final Written Decision, was
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`filed electronically with the Clerk’s Office of the United States Court of Appeals
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`for the Federal Circuit, at the following address:
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`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, DC 20005
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`/John C. Phillips/
`John C. Phillips
`Reg. No. 35,322
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 335-5070
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