`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`
`Case IPR2018-00935
`U.S. Patent No. 8,991,677 B2
`
`PATENT OWNER ETHICON LLC’S
`NOTICE OF APPEAL UNDER 37 C.F.R. § 90.2(a)
`
`
`
`Pursuant to 35 U.S.C. §§ 141-144, 319 and 37 C.F.R § 90.2(a), notice is
`
`hereby given that Patent Owner Ethicon LLC (“Ethicon”) appeals to the United
`
`States Court of Appeals for the Federal Circuit from the Final Written Decision
`
`(Paper No. 34) (the “Final Written Decision”), in IPR2018-00935, entered on
`
`December 4, 2019, by the United States Patent and Trademark Office, Patent
`
`Trial and Appeal Board (the “Board”), and from all orders, decisions, rulings, and
`
`opinions antecedent to the Final Written Decision. A copy of the Final Written
`
`Decision is attached hereto as Exhibit A.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Ethicon further indicates that
`
`the issues on appeal may include, but are not limited to, the Board’s
`
`determination that claims 6-10 and 17 of U.S. Patent No. 8,991,677 have been
`
`shown to be unpatentable under 35 U.S.C. § 103 in view of the grounds of
`
`unpatentability identified in the Board’s Final Written Decision, challenges to
`
`any findings supporting the determination, the Board’s failure to properly
`
`consider evidence of record, the Board’s legal errors in undertaking the
`
`obviousness analysis, the Board’s failure to consider Ethicon’s arguments in
`
`support of patentability, the Board’s findings that conflict with the evidence of
`
`record and are not supported by substantial evidence, and other issues decided
`
`adversely to Ethicon.
`
`Simultaneous with this submission, a copy of this Notice of Appeal is
`
`being filed through the Patent Trial and Appeal Board End to End (“PTAB E2E”)
`
`
`
`
`
`System. In addition, a copy of the Notice of Appeal, along with the required
`
`docketing fee, is being filed with the Clerk of the Court for the United States
`
`Court of Appeals for the Federal Circuit.
`
`Dated: February 4, 2020
`
`Respectfully submitted,
`
`/Anish R. Desai/
`Anish R. Desai (Reg. No. 73,760)
`Elizabeth S. Weiswasser (Reg. No. 55,721)
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`Anish.Desai@weil.com
`Elizabeth.Weiswasser@weil.com
`
`Brian E. Ferguson (Reg. No. 36,801)
`Christopher T. Marando (Reg. No. 67,898)
`Christopher M. Pepe (Reg. No. 73,851)
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, DC 20036
`Brian.Ferguson@weil.com
`Christopher.Marando@weil.com
`Christopher.Pepe@weil.com
`
`Robert S. Magee (Reg. No. 70,227)
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Robert.Magee@weil.com
`
`Counsel for Patent Owner Ethicon LLC
`
`2
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, in addition to being filed electronically
`
`through the PTAB E2E System, the original version of PATENT OWNER’S
`
`NOTICE OF APPEAL UNDER 37 C.F.R. § 90.2(a) has been sent via priority
`
`mail on February 4, 2020, to the Director of the United States Patent and Trademark
`
`Office, at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`Madison Building East, Room 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`The undersigned also certifies that a true and correct copy of PATENT
`
`OWNER’S NOTICE OF APPEAL UNDER 37 C.F.R. § 90.2(a) and required
`
`filing fee were filed electronically via CM/ECF on February 4, 2020, with the Clerk
`
`of Court for the United States Court of Appeals for the Federal Circuit.
`
`The undersigned also certifies that a true and correct copy of PATENT
`
`OWNER’S NOTICE OF APPEAL UNDER 37 C.F.R. § 90.2(a) was served on
`
`February 4, 2020, via electronic mail, upon the following:
`
`3
`
`
`
`Steven R. Katz
`John C. Phillips
`Ryan P. O’Connor
`Grant Rice
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`katz@fr.com
`phillips@fr.com
`oconnor@fr.com
`rice@fr.com
`
`IPR11030-0049IP4@fr.com
`PTABInbound@fr.com
`
`/Timothy J. Andersen/
`Timothy J. Andersen Case
`Manager
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, DC 20036
`T: 202-682-7075
`timothy.andersen@weil.com
`
`4
`
`
`
`EXHIBIT A
`
`EXHIBIT A
`
`
`
`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 IPR2018-00935
`Patent 8,991,677 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)
`
`
`
`
`
`IPR2018-00935
`Patent 8,991,677 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. 8,991,677 B2 (Ex. 1001, “the ’677 patent”). After the filing of the
`Petition, Ethicon LLC (“Patent Owner”), filed a statutory disclaimer of
`claims 11–15 and 18. Ex. 2004; see Paper 8, 11. We instituted trial to
`determine whether: (1) claims 1–10, 16, and 17 were unpatentable under 35
`U.S.C. § 103 as follows:
`Claims Challenged
`1–10, 16, 17
`
`References
`Hooven2, Heinrich3
`
`35 U.S.C. §
`1031
`
`
`1 It is not entirely clear what version of § 103 Petitioner argues under. The
`application for the ’677 patent proper was filed on May 21, 2014. Ex. 1001,
`code (22). The earliest effective filing date of the ’677 patent, however,
`based on various chains of continuation and continuation-in-part
`applications, is February 14, 2008. Pet. 3–4; 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 Hooven, Heinrich, Milliman, and Alesi all predate the
`earliest effective filing date. See Pet. 4–5. 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, Heinrich, Milliman, and Alesi 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
`2
`
`
`
`IPR2018-00935
`Patent 8,991,677 B2
`Claims Challenged
`1–5, 16
`1–5, 16
`
`35 U.S.C. §
`103
`103
`
`References
`
`Hooven, Heinrich, Milliman4
`Hooven, Heinrich, Alesi5
`
`See Paper 9 (Decision on Institution” or “Dec. on Inst.”). 6
`Patent Owner filed a Patent Owner Response. Paper 15 (“PO 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”).7
`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
`
`
`(Ex. 1005, “Heinrich”).
`4 U.S. Patent No. 5,865,361 issued Feb. 2, 1999 (Ex. 1006, “Milliman”).
`5 U.S. Patent No. 5,779,130 issued July 14, 1998 (Ex. 1010, “Alesi”).
`6 In our Decision on Institution, we treated claims 11-15 and 18 as having
`never been part of the ’677 patent, and concluded that Petitioner could not
`seek inter partes review of those claims. See Dec. on Inst. 9–10.
`7 A listing of proposed substitute claims 19–24 appears in Appendix A of
`Paper 18.
`
`3
`
`
`
`IPR2018-00935
`Patent 8,991,677 B2
`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, 16, and 17 of the ’677 patent are unpatentable under 35
`U.S.C. § 103(a). We grant Patent Owner’s Contingent Motion to Amend to
`substitute claims 19–24 for claims 1–5 and 16 in the ’677 patent.
`
`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 ’677 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”).8 Pet.
`2; Paper 6, 2. Petitioner is also challenging related patents in the following
`proceedings before the Board: (1) IPR2018-00933 (the ’601 patent); (2)
`IPR2018-00934 (the ’058 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).
`
`
`8 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 8,998,058 B2 (“the ’058 Patent”) are also asserted in the
`Delaware litigation. Paper 6, 2.
`
`4
`
`
`
`IPR2018-00935
`Patent 8,991,677 B2
`
`D. The ’677 Patent
`
`The ’677 patent is titled “Detachable Motor Powered Surgical
`Instrument,” and generally relates to endoscopic surgical instruments. Ex.
`1001, code (54), 1:32–33. The ’677 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
`supplied to the motor only when the housing is operably attached to the
`actuator arrangement.” Id. Figure 1 of the ’677 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 4:21–23. In particular, disposable
`loading unit 16 is coupled to surgical stapling apparatus 10. Id. at 10:54–58.
`Disposable loading unit 16 includes housing portion 200 that is configured
`
`
`
`5
`
`
`
`IPR2018-00935
`Patent 8,991,677 B2
`to engage elongated body portion 14 of surgical stapling apparatus 10. Id. at
`11:54–61. Figure 2 of the ’677 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 4:24–
`26. The ’677 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.
`
`6
`
`
`
`IPR2018-00935
`Patent 8,991,677 B2
`Id. at 11:11–28.
`Figure 3 of the ’677 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 4:27–29. Housing
`portion 200 of the disposable loading unit defines battery cavity 522 that
`movably supports battery holder 524 that houses battery 526. Id. at 11:64–
`66. First battery contact 528 and second battery contact 530 are supported in
`electrical contact with battery 526. Id. at 11:66–12:7. The ’677 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 12:14–24. Housing 200 also includes motor cavity 560 that houses
`motor 562 and gear box 564. Id. at 11:25–27. Based on the contact
`arrangement of battery contacts 528 and 530 with contacts 540, 542, and
`7
`
`
`
`IPR2018-00935
`Patent 8,991,677 B2
`544, battery 526 either supplies or prevents power to motor 562. See, e.g.,
`id. at 12:60–14:2.
`
`E. Illustrative Claims
`
`Challenged claims 1, 6, 16, and 17 are independent. Claims 2–5
`
`ultimately depend from claim 1, and claims 7–10 ultimately depend from
`claim 6. Claims 1 and 6 are illustrative and are reproduced below.
`
`1.
`A disposable loading unit configured for operable
`attachment to a surgical instrument which is 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
`moveable 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;
`
`a rotary drive at least partially supported within said
`housing;
`
`a motor supported within said housing and operably
`interfacing with said rotary drive to selectively apply a rotary
`motion thereto, wherein said motor is 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; and
`
`a linear member coupled with said rotary drive which
`moves axially upon the application of a rotary motion thereto
`from said motor.
`Ex. 1001, 80:40–64.
`
`
`8
`
`
`
`IPR2018-00935
`Patent 8,991,677 B2
`
`6.
`A stapling sub-system configured to be operably
`engaged with a surgical instrument system, said stapling sub-
`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; and
`
`a rotary drive system, comprising
`
`a rotary shaft;
`
`a translatable drive member operably engaged with said
`rotary shaft, wherein said translatable drive member
`is
`selectively translatable 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 operably disconnected from a
`power source when said housing is not attached to the surgical
`instrument system, and wherein said electric motor is operably
`connected to the power source when said housing is attached to
`the surgical instrument system.
`Id. at 81:12–41.
`
`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
`
`9
`
`
`
`IPR2018-00935
`Patent 8,991,677 B2
`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,
`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. 16 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 ’677 patent that perform this function include engagement
`nubs 254.” Id. at 17 (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
`
`10
`
`
`
`IPR2018-00935
`Patent 8,991,677 B2
`this Decision, we accept the parties’ representations in that
`regard.
`Dec. on Inst. 11.
`
`The parties do not challenge the above-noted construction, and both
`parties contend that it is unnecessary to further address it. PO Resp. 15 n.4;
`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 . . . wherein
`said motor is 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 claims 1 and 16
`(PO Resp. 26–35); and (2) “stapling sub-system comprising: . . . an electric
`motor . . . wherein said electric motor is operably disconnected from a power
`source when said housing is not attached to the surgical instrument system,
`and wherein said electric motor is operably connected to the power source
`when said housing is attached to the surgical instrument system” as appears
`in claims 6 and 17 (id. at 16–26).9 We consider below the meaning of those
`clauses.
`
`1. The Power Limitation
`According to Patent Owner, the power limitation sets forth “two
`separate requirements describing two separate connections.” PO Resp. 28.
`
`
`9 As a matter of convenience, we refer to the first clause generally as “the
`power limitation,” and we refer to the second clause generally as the
`“operably disconnected/connected limitation.”
`
`11
`
`
`
`IPR2018-00935
`Patent 8,991,677 B2
`More specifically, Patent Owner contends the following:
`First, the limitation that the motor is configured to receive power
`from a power source requires that the motor be connected to an
`attached power source. Second, the requirement that the motor
`“only selectively receive[s]” power when the DLU’s housing
`connector is attached to the surgical instrument system requires
`the connection between the motor and the attached power source
`be controlled and that the control mechanism “only” permit[s]
`power to flow when it detects the DLU is attached to the surgical
`instrument that operates the tool.
`Id. (citing Ex. 2006 ¶¶ 73–79).
`
`Patent Owner further distills the requirement of the claims to an
`assertion that the claims “as a whole” indicate “that the motor must be
`configured to receive power independent of whether or not the housing is
`attached to the surgical instrument.” Id. at 28–29 (citing Ex. 2006 ¶ 78).
`Patent Owner generally bases that assertion on disclosure in the ’677 patent:
`(1) related to Figures 3 and 7 that Patent Owner characterizes as an
`embodiment of the claimed invention (id. at 31–32); and (2) related to
`Figure 52 that Patent Owner characterizes as another embodiment (id. at 32–
`33).
`Petitioner does not agree with Patent Owner’s contentions as to the
`
`requirements of the power limitation of claims 1 and 16. Specifically,
`Petitioner contends that Patent Owner’s proposed constructions are: (1)
`“Inconsistent with the Plain Meaning” of the claims (Pet. Reply 2–6);
`(2) “Are Not Supported by the Specification” (id. at 6–9); 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).
`
`12
`
`
`
`IPR2018-00935
`Patent 8,991,677 B2
`
`We are not persuaded that Patent Owner’s assessment of the power
`limitation 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 “separate requirements” or “separate connections.”
`Neither do they use the term “independent” in describing any connection of
`components of a disposable loading unit (claim 1) or loading unit (claim 16).
`Claims 1 and 16 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 the means for removably
`attaching the housing to the surgical instrument is operably coupled to the
`surgical instrument. 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 Specification does not convey credibly that un-recited 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 limitation
`mandates 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 is “attached” to the power
`source, Ethicon incorrectly argues that the claim describes “two
`separate requirements describing two separate connections.”
`POR, 28. Specifically, Ethicon asserts that the claim language
`
`13
`
`
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`IPR2018-00935
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`requires (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
`DLU is attached to the surgical instrument that operates the tool.”
`Id.
`
`Ethicon’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 is configured to receive power”)
`means. IS1030, ¶13. Thus, the two clauses are not separate
`limitations but rather a single limitation requiring no more than
`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.” Id.
`Pet. Reply 5.
`Accordingly, we reject Patent Owner’s inadequately explained
`construction of the power limitation of claims 1 and 16 that spans pages 20
`through 35 of Patent Owner’s Response.
`
`2. The Operably Disconnected/Connected Limitation
`Patent Owner argues that the operably disconnected/connected
`limitation of claims 6 and 17 “requires that the electrical connection of the
`stapling sub-system’s electric motor to an attached power source is
`controlled by, but separate from, the attachment between the stapling sub-
`system housing and the surgical instrument system.” PO Resp. 16–17
`(citing Ex. 2006 ¶ 55). More particularly, Patent Owner is of the view that
`“the stapling sub-system is (a) electrically disconnected (such that it cannot
`operate from the attached power source when the sub-system housing is
`detached from the surgical instrument system; and (2) electrically connected
`to the attached power source when the housing is attached to the surgical
`
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`instrument system.” Id. at 17.
`In making the above-noted argument, Patent Owner focuses on the
`claim term “operably.” Id. at 17–20. In that respect, Patent Owner advances
`arguments such as: (1) an electric motor that is “operably disconnected” is
`“not merely ‘disconnected’” (id. at 18); (2) “[t]he use of the ‘operably’
`modifier indicates that the electrical connection between the stapling sub-
`system’s electric motor and the power source, but not the physical
`connection, is dependent upon the physical attachment of the sub-system
`housing to the surgical instrument system” (id. at 19 (citing Ex. 2006 ¶¶ 47–
`55); and (3) “‘operably disconnected’ refers to an electrical disconnection
`(i.e., functional or operable disconnection) but not a physical one” (id. at 20
`(citing Ex. 2006 ¶ 54)). As with the power limitation discussed above,
`Patent Owner seeks to support its construction of the operably
`disconnected/connected limitation through reference to embodiments of the
`‘677 Patent appearing in Figures 3–7 and 52. Id. at 20–25.
`Here, too, Petitioner challenges Patent Owner’s construction.
`Petitioner contends that Patent Owner’s construction is “inconsistent with
`the plain meaning of the claim[s]”. Pet. Reply 12. Petitioner disputes Patent
`Owner’s argument that the term “operably,” in conjunction with a
`connection or disconnection, is “superfluous” in designating a physical
`connection or disconnection. Id. at 14. Petitioner contends that “the term
`‘operably’ has meaning because it is clearly possible for a motor and a
`power source to be physically connected through the connection between the
`housing of the stapling sub-system and the surgical instrument system in a
`way that is not operable.” Id. (citing Ex. 1030 ¶¶ 21–24; Ex. 1033, 126:13–
`127:8.). Petitioner also submits that
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`the term “operable” makes clear that the motor and the power
`source must be connected, for example, in a way that they
`perform a designated function (i.e., the claimed function of
`“selectively apply[ing] said rotary motion to said rotary shaft”)
`when the housing to the stapling sub-system is attached to the
`surgical instrument system.
`Id. at 14–15.
`Having considered the conflicting positions of the parties, we are not
`persuaded on this record by Patent Owner that “operably connected,” for
`instance, precludes a physical connection between a motor and a power
`source. Neither Patent Owner, nor its declarant, Dr. William Cimino,
`meaningfully or adequately explains why the term “operably” sets forth a
`distinction between an electrical connection and a physical one. Simply put,
`Patent Owner does not offer a cogent basis for concluding that a physical
`disconnection between a motor and power source that prevents operation of
`the motor, nevertheless, does not establish those components as “operably
`disconnected.” Likewise, Patent Owner does not articulate adequately why
`a physical connection between a motor and power source, that enables
`operation of the motor, does not render those components “operably
`connected.” Accordingly, we decline to view “operably connected” and
`“operably disconnected” as excluding physical connection and
`disconnection.
`
`3. Remaining Claim Terms
`We determine that it is unnecessary to further discuss any other
`matters of claim construction for any claim term 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
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`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).10 “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).
`
`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 t