UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`______________________
`
`IPR2018-00935
`U.S. Patent No. 8,991,677
`______________________
`
`PATENT OWNER’S CONTINGENT MOTION TO AMEND UNDER 37
`C.F.R. § 42.121
`
`
`
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`
`I. 
`II. 
`
`V. 
`
`INTRODUCTION ........................................................................................... 1 
`THE SUBSTITUTE CLAIMS DO NOT EXPAND THE SCOPE OF
`THE CLAIMS OF THE 677 PATENT ........................................................... 2 
`III.  PATENT OWNER PROPOSES A REASONABLE NUMBER OF
`SUBSTITUTE CLAIMS ................................................................................. 3 
`IV.  THE SUBSTITUTE CLAIMS DO NOT ADD NEW SUBJECT
`MATTER ......................................................................................................... 3 
`A.  Original Application .............................................................................. 3 
`B. 
`Earlier-Filed Applications ..................................................................... 4 
`THE PROPOSED SUBSTITUTE CLAIMS RESPOND TO AND
`OVERCOME THE GROUNDS OF RECORD .............................................. 4 
`Substitute independent claims 19 and 24 are patentable over the
`A. 
`cited art. ................................................................................................. 5 
`Substitute dependent claims 20-23 are patentable over the cited
`art. .......................................................................................................... 9 
`VI.  CONCLUSION ................................................................................................ 9 
`
`
`A. 
`
`
`
`i
`
`

`

`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Aqua Products, Inc. v. Joseph Matal et al.,
`Case No. 2015-1177 (Fed. Cir. Oct. 4, 2017) (en banc) ........................................................1, 5
`
`Corning Optical Comm’n RF, LLC v. PPC Broadband, Inc.,
`IPR2014-00441, Paper 19 (PTAB Oct. 30, 2014) .....................................................................3
`
`Statutes
`
`35 U.S.C. § 316(d) ...........................................................................................................................1
`
`35 U.S.C. § 316(d)(1)(B) .................................................................................................................3
`
`35 U.S.C. § 316(d)(3) ......................................................................................................................2
`
`35 U.S.C. § 316(e) ...........................................................................................................................5
`
`Other Authorities
`
`37 C.F.R. § 41.121(a)(2)(ii) .............................................................................................................2
`
`37 C.F.R. § 42.24(a).......................................................................................................................11
`
`37 C.F.R. § 42.24(d) ......................................................................................................................11
`
`37 C.F.R. § 42.121 .....................................................................................................................1, 12
`
`37 C.F.R. § 42.121(a)(2) ..................................................................................................................4
`
`37 C.F.R. § 42.121(b) ......................................................................................................................4
`
`37 C.F.R. § 42.121(b)(1) ..................................................................................................................4
`
`37 C.F.R. § 42.121(b)(2) ..................................................................................................................4
`
`37 CFR § 42.121(a)(3) .....................................................................................................................3
`
`
`
`
`ii
`
`

`

`
`
`
`
`
`
`Exhibit
`Ex. 2001
`
`Ex. 2002
`
`Ex. 2003
`
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`
`Ex. 2007
`
`Ex. 2008
`
`Ex. 2009
`
`Ex. 2010
`
`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 5,964,394 (“Robertson”)
`
`U.S. Patent No. 6,231,565 (“Tovey”)
`
`Excerpts from Technology Tutorial filed in Ethicon LLC, et
`al. v. Intuitive Surgical, Inc., et al., C.A. No. 17-871
`(LPS)(CJB) (District of Delaware).
`
`Statutory Disclaimer
`
`Excerpts from the File History of U.S. Patent No. 8,991,677
`
`Declaration of Dr. William Cimino
`
`Deposition of Gregory Fischer, Ph. D., Volume 1 (February
`18, 2019)
`
`Deposition of Gregory Fischer, Ph. D., Volume 2 (February
`20, 2019)
`
`U.S. Pat. Appl. Pub. 2014/0252071 A1 (application
`publication of U.S. Appl. No. 14,283,729) (“the 729
`Application”)
`
`U.S. Pat. App. Pub. 2009/0206136 A1 (application
`publication of U.S. Appl. No. 12/031,628) (“the 628
`Application”)
`
`Ex. 2011
`
`Reserved
`
`Ex. 2012
`
`Robert Glasgow et al., The Benefits of a Dedicated Minimally
`Invasive Surgery Program to Academic General Surgery
`Practice, Journal of Gastrointestinal Surgery, 869-73 (Nov.
`2004)
`
`Ex. 2013
`
`Reserved
`
`iii
`
`

`

`
`
`I.
`
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121, Patent Owner
`
`Ethicon LLC submits this contingent motion to substitute proposed claims 19-24
`
`for original claims 1-5, and 16 (collectively, the “Amended Claims”) of U.S.
`
`Patent No. 8,991,677 (“the 677 Patent”) should any of the Amended Claims be
`
`found unpatentable.1 Patent Owner has conferred with the Board prior to filing this
`
`motion, as required by 37 C.F.R. § 42.121, and the Board authorized the filing of
`
`this motion without a conference on February 25, 2019 via email.
`
`
`
`In Aqua Products, Inc. v. Joseph Matal., 872 F.3d 1290, 1327-28 (Fed. Cir.
`
`2017) (en banc), the Federal Circuit held that the burden of persuasion to establish
`
`that proposed amendments are patentable no longer rests with the patent owner.
`
`Instead, it is the petitioner’s burden to prove unpatentability of the proposed
`
`amendments. Id. In a motion to amend, a patent owner need only satisfy its burden
`
`of production under 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.
`
`
`1 Patent Owner submitted a statutory disclaimer for claims 11-15 and 18 –
`
`accordingly, claims 11-5 and 18 are treated as having never been part of the 677
`
`Patent. See Paper 9 at 9-10. However in order to avoid confusion, Patent Owner
`
`begins numberings its substitute proposed claims at 19.
`
`
`
`1
`
`

`

`
`
`
`
`As explained below, the proposed substitute claims satisfy the requisite
`
`showing for a motion to amend. They (1) do not impermissibly enlarge the scope
`
`of the claims; (2) present a reasonable number of substitute claims; (3) do not
`
`introduce new subject matter; and (4) respond to a ground of unpatentability in the
`
`trial. Patent Owner has thus met its burden. Accordingly, should any of the
`
`Challenged Claims be determined to be unpatentable, Patent Owner respectfully
`
`requests that the 677 Patent be amended to include the corresponding substitute
`
`claim(s).
`
`II. THE SUBSTITUTE CLAIMS DO NOT EXPAND THE SCOPE OF
`THE CLAIMS OF THE 677 PATENT
`35 U.S.C. § 316(d)(3) and 37 C.F.R. § 42.121(a)(2)(ii) require that an
`
`
`
`amendment not “enlarge the scope of the claims of the patent . . . .” Here, the
`
`proposed substitute claims narrow—and do not broaden—the original claims.
`
`
`
`Substitute independent claims 19 and 24 include all of the original features
`
`of original independent claims 1 and 16, respectively. With respect to independent
`
`claims 1 and 16, Patent Owner has clarified in proposed independent claims 19 and
`
`24 that the claimed motor is configured for attachment to a power source
`
`independent from the means for removably attaching the housing to the surgical
`
`instrument.
`
`
`
`
`
`2
`
`

`

`
`
`
`
`Proposed dependent claims 20-23 are identical to dependent claims 2-5. The
`
`proposed claims 20-23 are, thus, narrower than the original, granted versions of
`
`those claims.
`
`III. PATENT OWNER PROPOSES A REASONABLE NUMBER OF
`SUBSTITUTE CLAIMS
`35 U.S.C. § 316(d)(1)(B) and 37 C.F.R. § 42.121(a)(3) require that, for each
`
`
`
`challenged claim, Patent Owner “propose a reasonable number of substitute
`
`claims.” There exists a “presumption . . . that only one substitute claim would be
`
`needed to replace each challenged claim.” See 37 C.F.R. § 42.121(a)(3); 35 U.S.C.
`
`§ 316(d)(1)(B); Corning Optical Comm’n RF, LLC v. PPC Broadband, Inc.,
`
`IPR2014-00441, Paper 19 at 3 (P.T.A.B. Oct. 30, 2014) (“The presumption is that
`
`only one substitute claim is needed for each original patent claim.”). Here, that is
`
`exactly what Patent Owner proposes—Patent Owner presents only one substitute
`
`claim for each challenged claim. Accordingly, Patent Owner presents a reasonable
`
`number of substitute claims.
`
`IV. THE SUBSTITUTE CLAIMS DO NOT ADD NEW SUBJECT
`MATTER
`A. Original Application
`The chart included in Appendix A indicates where support can be found for
`
`
`
`the substitute claims from the original disclosure of the 677 Patent – from U.S. Pat.
`
`
`
`
`
`3
`
`

`

`
`
`App. Pub. 2014/0252071 A1 (application publication of U.S. Appl. No.
`
`14/283,729) (“the 729 Application”) (Exhibit 2009).2 37 C.F.R. § 42.121(b)(1).
`
`B.
`Earlier-Filed Applications
`The 677 Patent claims priority through a series of continuation and
`
`
`
`continuation-in-part applications to U.S. Appl. No. 12/031,628 (now U.S. Patent
`
`No. 7,793,812), filed February 14, 2008 (“the 628 Application”) (published as U.S.
`
`Pat. App. Pub. 2009/0206136 A1) (Ex. 2010). “[S]upport in an earlier-filed
`
`disclosure” for which “benefit of the filing date of the earlier filed disclosure is
`
`sought” is shown in the chart included as Appendix B. 37 C.F.R. § 42.121(b)(2).
`
`V. THE PROPOSED SUBSTITUTE CLAIMS RESPOND TO AND
`OVERCOME THE GROUNDS OF RECORD3
`The proposed substitute claims also satisfy the last requirement for a motion
`
`
`
`to amend—they “respond to a ground of unpatentability involved in the trial.” 37
`
`
`2 A full claim listing is provided in Appendix C, which does not count towards the
`
`25-page limit on Patent Owner’s contingent motion to amend. See 37 C.F.R. §§
`
`42.121(b), 42.24(a).
`
`3 Patent Owner reserves its right to argue the patentability of the proposed claims
`
`for any other reason or over any other additional prior art that Petitioner may assert
`
`in its Opposition to this Contingent Motion to Amend. Moreover, to the extent the
`
`Board issues a precedential opinion or other guidance for patent owners on filing
`
`
`
`
`
`4
`
`

`

`
`
`C.F.R. § 42.121(a)(2). In view of Aqua Products, the burden of establishing the
`
`unpatentability of the amended claims has been placed on Petitioner. 872 F.3d at
`
`1327-28. Nevertheless, Patent Owner’s claim amendments overcome the asserted
`
`grounds of unpatentability.
`
`A.
`
`Substitute independent claims 19 and 24 are patentable over the
`cited art.
`Hooven (Ex. 1004) in combination with either Heinrich (Ex. 1005),
`
`
`
`Milliman (Ex. 1006), and/or Alesi (Ex. 1010) fails to disclose that the motor is
`
`configured for attachment to a power source independent from the means for
`
`removably attaching the housing to the surgical instrument as required by
`
`substitute claims 19 and 24.
`
`
`
`Hooven discloses “an endoscopic stapling and cutting instrument 30 [that] is
`
`interconnected with a controller 31 and a video display monitor 32.” Ex. 1004 at
`
`4:15-17. The surgical instrument 30 contains a DC motor, and the controller 31
`
`includes the power supply for the motor “to supply power to the instrument.” Id. at
`
`4:17-26, 4:54-64. These components are illustrated in Figure 1:
`
`
`Motions to Amend, Patent Owner reserves its rights under the Aqua Products case
`
`and 35 U.S.C. § 316(e) to address that opinion or guidance.
`
`
`
`
`
`5
`
`

`

`
`
`
`In Hooven, power is supplied from the power source to the DC motor through a
`
`means for removably attaching the housing to the surgical instrument—cable 205.
`
`This is plainly visible in Figure 1 above—no other connection exists between the
`
`DC motor and the power source besides the lone cable. Therefore, it is impossible
`
`that the motor is configured for attachment to a power source independent from the
`
`means for removably attaching the housing to the surgical instrument, because the
`
`motor is not attached to a power source unless the means for removably attaching
`
`the housing is attached to the surgical instrument.
`
`
`
`Petitioner’s secondary reference, Heinrich, fails to remedy this deficiency.
`
`Like Hooven, Heinrich also discloses a surgical instrument that provides power to
`
`
`
`
`
`6
`
`

`

`
`
`a motor through the means for removably attaching the housing to the surgical
`
`instrument.
`
`Heinrich discloses only one electrical connection 633, which resides
`
`between the mounting flange and platform that attach loading unit 618 and surgical
`
`instrument 620 (i.e., the stapler) to robot 616 (i.e., the surgical instrument system).
`
`See Ex. 1005 at [0132], [0134]. The loading unit contains “electro-mechanical
`
`assembly 619” which may include “servo motors” for operating the stapler. See
`
`Ex. 1005 at [0137]. Thus, it is impossible for the stapler’s motor to be configured
`
`for attachment to a power source independent from the means for removably
`
`attaching the housing to the surgical instrument.
`
`This is visually apparent in Figure 9, which illustrates the point of
`
`attachment between the means for removably attaching the housing and the
`
`surgical instrument:
`
`
`
`
`
`7
`
`

`

`
`
`
`Id. at Fig. 9. Heinrich therefore fails to disclose that the motor is configured for
`
`attachment to a power source independent from the means for removably attaching
`
`the housing to the surgical instrument. Moreover, the combination of Hooven and
`
`Heinrich does not disclose the amended limitation.
`
`
`
`Neither Milliman nor Alesi remedy this deficiency. For example, even if
`
`Milliman in combination with Heinrich would render obvious attaching Milliman’s
`
`endocutter to Heinrich’s surgical instrument, Petitioner’s own illustration still
`
`clearly demonstrates that the stapler’s motor would not receive power independent
`
`from the means for removably attaching the housing to the surgical instrument:
`
`
`
`
`
`8
`
`

`

`
`
`
`See Ex. 1003 at ¶ 97. Alesi does not disclose any attachment between a housing of
`
`the surgical stapler and a surgical instrument.
`
`B.
`
`Substitute dependent claims 20-23 are patentable over the cited
`art.
`Substitute dependent claims 20-23 depend either directly or indirectly upon
`
`
`
`substitute claim 19, and therefore overcome the cited prior art for the same reasons
`
`discussed above.
`
`VI. CONCLUSION
`
`For the foregoing reasons, should any of claims 1-5 and 16 be determined to
`
`be unpatentable, Patent Owner respectfully requests that the Board grant this
`
`contingent motion such that the 677 Patent is amended to include the
`
`corresponding substitute claim(s) 19-24.
`
`
`
`
`
`9
`
`

`

`
`
`
`Dated: March 5, 2019
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Anish R. Desai
`Anish R. Desai
`Reg. No. 73,760
`WEIL, GOTSHAL & MANGES LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8730
`E: anish.desai@weil.com
`
`
`
`
`
`
`
`10
`
`

`

`
`
`
`
`CERTIFICATE OF COMPLIANCE
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the
`
`foregoing Contingent Motion To Amend, exclusive of the exempted portions as
`
`provided in 37 C.F.R. § 42.24(a), contains no more than 9 pages and therefore
`
`complies with the limitations of 37 C.F.R. § 42.24(a).
`
`
`
`Dated: March 5, 2019
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Anish R. Desai
`Anish R. Desai
`Reg. No. 73,760
`WEIL, GOTSHAL & MANGES LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8730
`E: anish.desai@weil.com
`
`
`
`11
`
`

`

`
`
`CERTIFICATE OF SERVICE
`I hereby certify that on March 5, 2019, a copy of PATENT OWNER’S
`
`CONTINGENT MOTION TO AMEND UNDER 37 C.F.R. § 42.121 and any
`
`accompanying exhibits was served by filing this document through the PTAB’s
`
`E2E Filing System as well as delivering a copy via electronic mail upon the
`
`following:
`
`John C. Phillips
`Steven R. Katz
`Ryan P. O’Connor
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`phillips@fr.com
`katz@fr.com
`oconnor@fr.com
`
`IPR11030-0049IP3@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
`E: timothy.andersen@weil.com
`
`12
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`Claim
`
`[[1]]19. A
`disposable loading
`unit configured to
`be operably
`attached 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:
`
`
`APPENDIX A
`SUPPORT FROM ORIGINAL DISCLOSURE
`
`Exemplary Support in the 729 Application
`Proposed Claim 19
`See, e.g., Ex. 2009 at ¶ [0005] (“One type of surgical stapling
`apparatus is configured to operate with disposable loading
`units (DLU's) that are constructed to support a staple cartridge
`and knife assembly therein. Once the procedure is completed,
`the entire DLU is discarded. Such instruments that are
`designed to accommodate DLU's purport to offer the
`advantage of a “fresh” knife blade for each firing of the
`instrument. Examples of such surgical stapling apparatuses
`and DLU's are disclosed in U.S. Pat. No, 5,865,361 entitled
`SURGICAL STAPLING APPARAUTS, which issued on
`Feb. 2, 1999, the disclosure of which is herein incorporated by
`reference in its entirety.)
`
`Id. at ¶ [0009] (“In another general aspect of various
`embodiments of the present invention, there is provided a
`surgical cutting and stapling apparatus. Various embodiments
`of the instrument may include a handle assembly that operably
`supports a drive assembly therein that is constructed to impart
`drive motions and a retraction motion. A movable handle
`portion may be operably supported on the handle assembly
`and configured to interface with the drive system such that
`manipulation of the movable handle causes the drive system
`to impart the drive motions. An elongated body may protrude
`from the handle assembly and have a distal end that is
`couplable to a disposable loading unit. In various
`embodiments, the disposable loading unit may comprise a
`carrier that has a staple cartridge supported therein. An anvil
`assembly may be movably coupled to the carrier for selective
`movable travel between open and closed positions relative to
`the staple cartridge. An axial drive assembly may be
`supported within the carrier such that the axial drive assembly
`may move in a distal direction from a start position to an end
`position through the carrier and the staple cartridge and also in
`a proximal direction from the end position to the start
`position. A motor may be supported within the carrier and
`
`13
`
`

`

`
`
`
`
`
`
`Claim
`
`a carrier operably
`supporting a
`cartridge assembly
`therein;
`
`Exemplary Support in the 729 Application
`configured to interface with the axial drive assembly to drive
`the axial drive assembly in the distal and proximal directions.
`A battery may be supported within the carrier and be coupled
`to the motor for supplying power thereto. The battery may be
`configured to interface with a portion of the elongated body to
`receive the drive motions therefrom upon manipulation of the
`moveable handle.”).
`
`See also id. at Abstract, Figs. 1-2, 5-10, ¶¶ [0002], [0005]–
`[0006], [0009]-[0010], [0157]–[0161], [0165]– [0166], claim
`1.
`
`See, e.g., Ex. 2009 at ¶ [0157] (“As can be seen in FIG. 1, the
`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.”).
`
`See also id. at Abstract, Figs. 1-2, 5-10, ¶¶ [0002], [0005]–
`[0006], [0009]-[0010], [0157]–[0161], [0165]– [0166], claim
`1.
`
`
`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;
`
`
`See, e.g., Ex. 2009 at ¶ [0157] (“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.”).
`
`See also id. at Abstract, Figs. 1-2, 5-10, ¶¶ [0002], [0005]–
`[0006], [0009]-[0010], [0157]–[0161], [0165]– [0166], claim
`1.
`
`
`14
`
`

`

`
`
`
`
`
`
`Claim
`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;
`
`
`Exemplary Support in the 729 Application
`See, e.g., Ex. 2009 at ¶ [0159] (“As can also be seen in FIG. 1,
`the disposable loading unit 16 may also have a housing
`portion 200 that is adapted to snap onto or otherwise be
`attached to the carrier 216. The proximal end 500 of housing
`200 may include engagement nubs 254 for releasably
`engaging elongated body 14 of a surgical stapling apparatus.
`Nubs 254 form a bayonet type coupling with the distal end of
`the elongated body portion 14 of the surgical stapling
`apparatus as described in U.S. Pat. No. 5,865,361.”)
`
`See also id. at Abstract, Figs. 1-2, 5-10, ¶¶ [0002], [0005]–
`[0006], [0009]-[0010], [0157]–[0161], [0165]– [0166], claim
`1.
`
`See, e.g., Ex. 2009 at ¶ [0161] (“As can also be seen in FIG. 5,
`the thrust disc 580 may be formed on a proximal end of a
`drive screw 600 that threadedly engages a drive nut 610 that is
`supported within an engagement section 270 formed on the
`distal end of the drive beam 266. In various embodiments, the
`engagement section 270 may include a pair of engagement
`fingers 270a and 270b that are dimensioned and configured to
`be received within a slot in the drive nut 610 to non-rotatably
`affix the drive nut 610 to the drive beam 266. Thus, rotation
`of the drive screw 600 within the drive nut 610 will drive the
`drive beam 266 in the distal direction “DD” or in the proximal
`direction “PD” depending upon the direction of rotation of the
`drive screw 600.”)
`
`See also id. at Abstract, Figs. 1-2, 5-10, ¶¶ [0002], [0005]–
`[0006], [0009]-[0010], [0157]–[0161], [0165]– [0166], claim
`1.
`
`
`15
`
`

`

`Claim
`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 for
`attachment to a
`power source
`independent of
`said housing
`connector
`attachment to the
`surgical
`instrument system,
`and wherein 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
`
`
`
`
`
`
`
`Exemplary Support in the 729 Application
`See, e.g., Ex. 2009 at ¶ [0166] (“When the clinician desires to
`fire the instrument 10 (i.e., actuate the instrument 10 to cause
`it to cut and staple tissue), the clinician first depresses the
`plunger 82 of the firing lockout assembly 80 (FIG. 1) as
`discussed in U.S. Pat. No. 5,865,361. Thereafter, movable
`handle 24 may be actuated. As the movable handle 24 is
`depressed, the control rod 52 moves the battery holder 524
`and battery 526 to the position illustrated in FIGS. 9 and 10.
`As can be seen in those Figures, when the battery 526 is
`moved into that position, the battery contacts 528, 530 are
`brought into contact with the fire contacts 544. The switch
`650 is normally closed until it is actuated by the knife nut 610.
`Thus, when the battery contacts 528, 530 contact the firing
`contacts 544, power flows from the battery 526 to the motor
`562 which drives the drive screw 600.”).
`
`See also id. at Abstract, Figs. 1-2, 5-10, ¶¶ [0002], [0005]–
`[0006], [0009]-[0010], [0157]–[0161], [0165]– [0166], claim
`1.
`
`
`16
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`

`
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`
`
`
`
`Claim
`a linear member
`coupled with said
`rotary drive which
`moves axially
`upon the
`application of a
`rotary motion
`thereto from said
`motor.
`
`[[2]]20. The
`disposable loading
`unit of claim 19
`[[1]], wherein said
`cartridge assembly
`comprises a
`plurality of staples
`removably stored
`therein.
`
`
`Exemplary Support in the 729 Application
`See, e.g., Ex. 2009 at ¶ [0166] (“As the drive screw 600 is
`rotated, the drive beam 266 and knife nut 610 are driven in the
`distal direction “DD” to advance actuation sled 234 through
`staple cartridge 220 to effect ejection of staples and cutting of
`tissue. Once the drive beam 266 reaches the end of the firing
`stroke (i.e., all of the staples in the staple cartridge 220 have
`been fired), knife nut 610 is positioned to actuate the normally
`closed switch 650 and move it to an open position (illustrated
`in FIG. 10) which stops the flow of power from the battery
`526 to the motor 562. In various embodiments, a distal
`indication light or lights 670 may be mounted on the housing
`200 to provide an indication to the clinician that the drive
`beam 266 has reached its distal-most fired position.”)
`
`See also id. at Abstract, Figs. 1-2, 5-10, ¶¶ [0002], [0005]–
`[0006], [0009]-[0010], [0157]–[0161], [0165]– [0166], claim
`1.
`
`
`Proposed Claim 20
`See, e.g., Ex. 2009 at ¶ [0157] (“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. See FIG. 2.”)
`
`See also id. at Abstract, Figs. 1-2, 5-10, ¶¶ [0002], [0005]–
`[0006], [0009]-[0010], [0157]–[0161], [0165]– [0166], claim
`2.
`
`
`17
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`

`
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`
`
`
`
`Claim
`
`[[3]]21. The
`disposable loading
`unit of claim 20
`[[2]], wherein said
`linear member
`comprises a sled
`movable between
`a start position
`and an end
`position to eject
`said staples from
`said cartridge
`assembly.
`
`
`[[4]]22. The
`disposable loading
`unit of claim 21
`[[3]], wherein said
`linear member
`further comprises
`a knife configured
`to incise tissue
`captured between
`said anvil and said
`cartridge
`assembly.
`
`Exemplary Support in the 729 Application
`Proposed Claim 21
`See, e.g., Ex. 2009 at ¶ [0157] (“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. See FIG. 2.”)
`
`See also id. at Abstract, Figs. 1-2, 5-10, ¶¶ [0002], [0005]–
`[0006], [0009]-[0010], [0157]–[0161], [0165]– [0166], claim
`3.
`
`
`Proposed Claim 22
`See, e.g., Ex. 2009 at ¶ [0158] “The distal end of drive beam
`266 may include a vertical support strut 271 which supports a
`knife blade 280 and an abutment surface 283 which engages
`the central portion of actuation sled 234 during a stapling
`procedure. Knife blade 280 may be generally positioned to
`translate slightly behind actuation sled 234 through a central
`longitudinal slot in staple cartridge 220 to form an incision
`between rows of stapled body tissue.”
`
`See also id. at Abstract, Figs. 1-2, 5-10, ¶¶ [0002], [0005]–
`[0006], [0009]-[0010], [0157]–[0161], [0165]– [0166], claim
`4.
`
`
`18
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`
`
`Claim
`
`[[5]]23. The
`disposable loading
`unit of claim 19
`[[1]], wherein said
`cartridge assembly
`is configured to be
`removed from said
`carrier and
`replaced with a
`different cartridge
`assembly.
`
`
`[[16]]24. A
`loading unit
`configured to be
`operably attached
`to a surgical
`instrument which
`is configured to
`selectively
`generate at least
`one control
`motion for the
`operation of said
`loading unit, said
`loading unit
`comprising:
`
`Exemplary Support in the 729 Application
`Proposed Claim 23
`See, e.g., Ex. 2009 at ¶ [0005] “One type of surgical stapling
`apparatus is configured to operate with disposable loading
`units (DLU's) that are constructed to support a staple cartridge
`and knife assembly therein. Once the procedure is completed,
`the entire DLU is discarded. Such instruments that are
`designed to accommodate DLU's purport to offer the
`advantage of a “fresh” knife blade for each firing of the
`instrument. Examples of such surgical stapling apparatuses
`and DLU's are disclosed in U.S. Pat. No, 5,865,361 entitled
`SURGICAL STAPLING APPARAUTS, which issued on
`Feb. 2, 1999, the disclosure of which is herein incorporated by
`reference in its entirety.”
`
`See also id. at Abstract, Figs. 1-2, 5-10, ¶¶ [0002], [0005]–
`[0006], [0009]-[0010], [0157]–[0161], [0165]– [0166], claim
`5.
`
`
`Proposed Claim 24
`See, e.g., Ex. 2009 at ¶ [0005] (“One type of surgical stapling
`apparatus is configured to operate with disposable loading
`units (DLU's) that are constructed to support a staple cartridge
`and knife assembly therein. Once the procedure is completed,
`the entire DLU is discarded. Such instruments that are
`designed to accommodate DLU's purport to offer the
`advantage of a “fresh” knife blade for each firing of the
`instrument. Examples of such surgical stapling apparatuses
`and DLU's are disclosed in U.S. Pat. No, 5,865,361 entitled
`SURGICAL STAPLING APPARAUTS, which issued on
`Feb. 2, 1999, the disclosure of which is herein incorporated by
`reference in its entirety.).
`
`Id. at ¶ [0009] (“In another general aspect of various
`embodiments of the present invention, there is provided a
`surgical cutting and stapling apparatus. Various embodiments
`of the instrument may include a handle assembly that operably
`supports a drive assembly therein that is constructed to impart
`drive motions and a retraction motion. A movable handle
`portion may be operably supported on the handle assembly
`
`19
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`

`

`
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`
`
`
`
`Claim
`
`Exemplary Support in the 729 Application
`and configured to interface with the drive system such that
`manipulation of the movable handle causes the drive system
`to impart the drive motions. An elongated body may protrude
`from the handle assembly and have a distal end that is
`couplable to a disposable loading unit. In various
`embodiments, the disposable loading unit may comprise a
`carrier that has a staple cartridge supported therein. An anvil
`assembly may be movably coupled to the carrier for selective
`movable travel between open and closed positions relative to
`the staple cartridge. An axial drive assembly may be
`supported within the carrier such that the axial drive assembly
`may move in a distal direction from a start position to an end
`position through the carrier and the staple cartridge and also in
`a proximal direction from the end position to the start
`position. A motor may be supported within the carrier and
`configured to interface with the axial drive assembly to drive
`the axial drive assembly in the distal and proximal directions.
`A battery may be supported within the carrier and be coupled
`to the motor for supplying power thereto. The battery may be
`configured to interface with a portion of the elongated body to
`receive the drive motions therefrom upon manipulation of the
`moveable handle.”).
`
`See also id. at Abstract, Figs. 1-2, 5-10, ¶¶ [0002], [0005]–
`[0006], [0009]-[0010], [0157]–[0161], [0165]– [0166], claim
`16.
`
`
`20
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`

`
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`
`
`
`
`Claim
`an end effector;
`
`Exemplary Support in the 729 Application
`See, e.g., Ex. 2009 at ¶ [0004] (“Known surgical staplers
`include an end effector that simultaneously makes a
`longitudinal incision in tissue and applies lines of staples on
`opposing sides of the incision. The end effector includes a pair
`of cooperating jaw members that, if the instrument is intended
`for endoscopic or laparoscopic applications, are capabl