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 ETHICON LLC’S RESPONSE
`
`
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`

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`
`I. 
`
`II. 
`
`IPR2018-00935
`U.S. Patent No. 8,991,677
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .......................................................................................... 1 
`
`BACKGROUND ............................................................................................. 5 
`
`A.  Overview of the 677 Patent ................................................................... 5 
`
`B. 
`
`Overview of Challenged Independent Claims 1, 6, 16 and 17 ........... 13 
`
`III.  CLAIM CONSTRUCTION .......................................................................... 15 
`
`A. 
`
`“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” (Claims 6, 17) .................................. 16 
`
`1. 
`
`2. 
`
`The Claim Language Confirms That This Limitation
`Requires That The Stapling Sub-System’s Electric Motor
`Is Attached To A Power Source Independent Of The
`Connection Between The Stapling Sub-System Housing
`And The Surgical Instrument System ....................................... 18 
`
`The Specification Confirms That This Limitation
`Requires That The Stapling Sub-System’s Electric Motor
`Is Attached To A Power Source Independent Of The
`Connection Between The Stapling Sub-System Housing
`And The Surgical Instrument System ....................................... 20 
`
`3. 
`
`Petitioner’s Analysis Vitiates This Claim Limitation ............... 25 
`
`B. 
`
`“[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” (Claims 1, 16) .............................................. 26 
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`1. 
`
`2. 
`
`The Claim Language Confirms That This Limitation
`Requires That The Electric Motor Is Attached To A
`Power Source And Configured Such That The Transfer
`Of Power To The Motor Is Prevented When The DLU Is
`Detached From The Surgical Instrument .................................. 28 
`
`The Specification Confirms That This Limitation
`Requires That The Electric Motor Is Attached To A
`Power Source And Configured Such That The Transfer
`Of Power To The Motor Is Prevented When The DLU Is
`Detached From The Surgical Instrument .................................. 31 
`
`3. 
`
`Petitioner’s Analysis Vitiates This Claim Limitation ............... 33 
`
`IV.  THE PRIOR ART .......................................................................................... 35 
`
`A.  Hooven ................................................................................................ 35 
`
`B. 
`
`Heinrich ............................................................................................... 41 
`
`C.  Milliman .............................................................................................. 46 
`
`V. 
`
`INTUITIVE DID NOT CARRY ITS BURDEN OF
`DEMONSTRATING THAT THE COMBINATION OF
`HOOVEN AND HEINRICH RENDERS OBVIOUS EVERY
`ELEMENT OF THE INDEPENDENT CLAIMS OF THE 677
`PATENT ....................................................................................................... 48 
`
`A.  Hooven In View Of Heinrich Does Not Disclose The Key
`Inventive Power Limitations Of Independent Claims 1, 6, 16,
`and 17 .................................................................................................. 48 
`
`1. 
`
`2. 
`
`Claims 6 and 17: Hooven in view of Heinrich does not
`disclose a motor that is “operably connected” and
`“operably disconnected” from an attached power source......... 49 
`
`Claims 1 and 16: Hooven in view of Heinrich does not
`disclose a motor configured to only selectively receive
`power from an attached power source ...................................... 56 
`
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`B. 
`
`Petitioner Does Not Establish a Motivation to Combine Hooven
`with Heinrich or Milliman ................................................................... 62 
`
`1. 
`
`2. 
`
`3. 
`
`Heinrich and Milliman Discourage a Combination With
`Hooven ...................................................................................... 64 
`
`Petitioner Relies On Impermissible Hindsight To
`Combine Hooven And Heinrich ............................................... 65 
`
`A POSITA would not have a reasonable expectation of
`success in combining Hooven and Heinrich ............................. 67 
`
`C. 
`
`Dr. Fischer’s Testimony Is Entitled To Little Weight ........................ 69 
`
`VI.  CONCLUSION .............................................................................................. 72 
`
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`IPR2018-00935
`U.S. Patent No. 8,991,677
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Arctic Cat Inc. v. Bombardier Recreational Prod. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) ............................................................................ 4
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) ............................................................................ 63
`Carlson v. Bioremedi Therapeutic Sys.,
`822 F.3d 194 (5th Cir. 2016) .............................................................................. 71
`In re Chu,
`66 F.3d 292 (Fed. Cir. 1995) .............................................................................. 66
`Compass Bank v. Intellectual Ventures II,
`IPR2014-00786, Paper 46 ................................................................................... 67
`Corning Incorp., v. DSM IP Assets,
`IPR2013-00050, Paper 77 ................................................................................... 67
`Dell Inc. v. Acceleron, LLC,
`818 F.3d 1293 (Fed. Cir. 2016) .............................................................. 18, 31, 34
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .................................................................................................. 3
`Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. De C.V.,
`865 F.3d 1348 (Fed. Cir. 2017) ............................................................................ 8
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .................................................................... 63, 64
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 3
`Kumho Tire Co. v. Carmichael,
`526 U.S. 137 (1999) ............................................................................................ 71
`
`iv
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`

`

`IPR2018-00935
`U.S. Patent No. 8,991,677
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`
`L’Oréal USA Inc. v. Liqwd, Inc.,
`PGR2018-00023 Paper 9 (PTAB Aug. 10, 2018) .............................................. 70
`In re Laskowski,
`871 F.2d 115 (Fed. Cir. 1989) ........................................................................ 4, 67
`Merck & Co., Inc. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed.Cir.2005) ...................................................................... 18, 60
`Microsoft Corp. v. Multi-Tech Sys., Inc.,
`357 F.3d 1340 (Fed. Cir. 2004) .......................................................................... 15
`In re NuVasive, Inc.,
`693 F. App’x 893 (Fed. Cir. 2017) ................................................... 16, 18, 26, 30
`PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,
`491 F.3d 1342 (Fed. Cir. 2007) .......................................................................... 70
`Philips Lighting N. Am. Corp. v. Wangs All. Corp.,
`727 F. App’x 676 (Fed. Cir. 2018) ..................................................................... 66
`Sciele Pharma Inc. v. Lupin Ltd.,
`684 F.3d 1253 (Fed. Cir. 2012) .......................................................................... 70
`Tech. Patents LLC v. T-Mobile (UK) Ltd.,
`700 F.3d 482 (Fed. Cir. 2012), cert. denied, 134 S. Ct. 67 (2013) ..................... 16
`Total Containment, Inc. v. Intelpro Corp.,
`217 F.3d 852, 1999 WL 717946 at *5 n.4 (Fed. Cir. 1999) ..................... 3, 66, 67
`ViaTech Techs. Inc. v. Microsoft Corp.,
`733 F. App’x 542 (Fed. Cir. 2018) ..................................................................... 19
`Statutes
`35 U.S.C. § 253(a) ................................................................................................... 13
`Other Authorities
`37 C.F.R. § 1.321(a) ................................................................................................. 13
`37 C.F.R. § 42.24(a) ................................................................................................. 72
`37 C.F.R. § 42.24(d) ................................................................................................ 72
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`U.S. Patent No. 8,991,677
`U.S. Patent No. 8,991,677
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`IPR2018-00935
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`
`37 C.F.R. § 42.100(b) .............................................................................................. 15
`37 CPR. § 42.100(b) .............................................................................................. 15
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ...................................................................... 15
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ...................................................................... 15
`
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`Vi
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`IPR2018-00935
`U.S. Patent No. 8,991,677
`
`EXHIBIT LIST FOR IPR2018-00935
`
`Description
`
`U.S. Patent No. 5,964,394 (“Robertson”)
`
`
`
`
`
`Ethicon
` Exhibit #
`Ex. 2001
`
`Ex. 2002
`
`U.S. Patent No. 6,231,565 (“Tovey”)
`
`Ex. 2003
`
`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).
`
`Ex. 2004
`
`Statutory Disclaimer from the File History of U.S. Patent No.
`8,991,677
`
`Ex. 2005
`
`Excerpts from the File History of U.S. Patent No. 8,991,677
`
`Ex. 2006
`
`Declaration of Dr. William Cimino
`
`Ex. 2007
`
`Ex. 2008
`
`Ex. 2009
`
`Ex. 2010
`
`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
`
`vii
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`

`

`
`I.
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`IPR2018-00935
`U.S. Patent No. 8,991,677
`
`INTRODUCTION
`Ethicon is a market leader in developing endocutter1 technology and
`
`commercially released its first endocutter in 1996. Since then, Ethicon has
`
`developed numerous endocutters to address changing surgical needs. In 2011,
`
`Ethicon introduced its first motor-powered endocutter – the ECHELON FLEXTM
`
`Powered ENDOPATH® Stapler. Ethicon’s motor-powered endocutters offer
`
`numerous benefits including dramatically reducing the force required to operate an
`
`endocutter and providing reliability across a broad range of tissue thicknesses.
`
`U.S. Patent No. 8,991,677 (“the 677 Patent”) is one of a family of patents
`
`awarded to Ethicon for innovations relating to motor-powered endocutters. Each of
`
`the challenged claims includes a “power” limitation related to the relationship
`
`between the stapling sub-system’s motor and its power source. These limitations
`
`capture an improvement over prior art systems whereby the interface between the
`
`motor and the power was through the physical interface between the stapling sub-
`
`system and a surgical instrument system. In contrast to the prior art, the invention
`
`
`1 An endocutter is a surgical instrument that both staples and cuts tissue. The term
`
`“stapler” can also be used to refer to this type of device, but can also refer to a
`
`device that only staples. Exhibit 2003 includes excerpts of a technology tutorial on
`
`endocutters that was filed in the District of Delaware on June 28, 2018.
`
`1
`
`

`

`
`described and claimed in the 677 Patent separates the electrical connection
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`between the power source and the motor from the physical interface between the
`
`stapling sub-system and the surgical instrument system. This improved design
`
`provides numerous advantages. Ex. 2006, Cimino Decl. at ¶¶23, 32-34, 59.
`
`Trial was instituted on three grounds of invalidity: 1) obviousness over
`
`Hooven in view of Heinrich, 2) obviousness over Hooven in view of Heinrich and
`
`Milliman, and 3) obviousness over Hooven in view of Heinrich and Alesi. As
`
`Petitioner acknowledges, all of these references were made of record during
`
`prosecution of the 677 Patent. See Petition at 4-5.
`
`As discussed further below, Petitioner relies solely on Hooven and Heinrich
`
`for the key “power” limitation of these challenged claims. Hooven and Heinrich
`
`are thus the focus of this Patent Owner Response. Intuitive has failed to meet its
`
`burden of demonstrating that Hooven and Heinrich render obvious the independent
`
`claims of the 677 Patent for three reasons.
`
`First, all of the challenged independent claims of the 677 Patent require a
`
`motor in a stapling disposable loading unit (DLU) or stapling sub-system that is
`
`attached to a power source independent of the physical connection between the
`
`housing of the DLU and the surgical instrument system. Thus, the claims require
`
`more than a system whereby the motor is simply disconnected and connected to a
`
`power source. Instead, for example, claim 6 requires that the stapling sub-system’s
`
`2
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`

`

`
`motor is operably disconnected from the power source when the housing of the
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`tool is not attached to the surgical instrument system, and is operably connected to
`
`the power source when the housing is attached to the surgical instrument system.
`
`Petitioner is only able to arrive at the conclusion that Hooven or Heinrich disclose
`
`this power limitation by taking an unreasonable position that reads limitations out
`
`of the claims. The failure of the prior art to disclose the key inventive element is
`
`fatal to all of Intuitive’s grounds for invalidity.
`
`Second, Petitioner has not established a motivation to combine the teachings
`
`of Hooven and Heinrich. In fact, Heinrich, by incorporating Milliman by reference,
`
`specifically counsels against a combination with a device with a reusable knife
`
`blade. As explained further below, Hooven discloses a stapler with a reusable knife
`
`blade. As Dr. Cimino explains, the use of a fresh knife presents a number of
`
`advantages that are absent from Hooven. Ex. 2006, Cimino Decl. at ¶¶130-31, 174-
`
`76. Neither Petitioner nor Dr. Fischer considered this teaching. Regardless,
`
`Petitioner’s purported motivations to combine cite the 677 Patent itself, and thus
`
`are deficient and based on impermissible hindsight. KSR Int'l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 421 (2007) (warning against a “temptation to read into the prior art
`
`the teachings of the invention in issue” and instructing courts to “guard against
`
`slipping into use of hindsight”) (quoting Graham v. John Deere Co. of Kansas
`
`City, 383 U.S. 1, 36 (1966)); see also Total Containment, Inc. v. Intelpro Corp.,
`
`3
`
`

`

`
`217 F.3d 852; 1999 WL 717946 at *5 n.4 (Fed. Cir. 1999) (“It is impermissible ‘to
`
`IPR2018-00935
`U.S. Patent No. 8,991,677
`
`use the claimed invention itself as a blueprint for piecing together elements in the
`
`prior art to defeat the patentability of the claimed invention....’”); In re Laskowski,
`
`871 F.2d 115, 117 (Fed. Cir. 1989) (“the only source of the suggestion is [the
`
`patent in suit]; there is no prior art teaching that would provide the motivation”).
`
`Further, Petitioner has not met its burden to establish a reasonable expectation of
`
`success in combining the teachings of Hooven and Heinrich. See Arctic Cat Inc. v.
`
`Bombardier Recreational Prod. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017)
`
`(“where a party argues a skilled artisan would have been motivated to combine
`
`references, it must show the artisan would have had a reasonable expectation of
`
`success from doing so”).2
`
`Finally, Petitioner relies heavily on the expert declaration of Dr. Fischer.
`
`This reliance must fail. Dr. Fischer’s opinions are unreliable, as he failed to
`
`provide any opinions on the most basic element of an obviousness analysis—the
`
`scope of the claims. Dr. Fischer testified that he did not understand the scope of the
`
`terms, that he made no attempt to understand the scope of the claims, and that he
`
`had not formed any understanding of the meaning of multiple basic claim
`
`limitations. See Exs. 2007, 2008. Dr. Fischer stated in no uncertain terms that he
`
`
`2 All emphasis added unless otherwise noted.
`
`4
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`

`

`
`did not “believe it’s necessary to broadly define the term[s] or find the extents of
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`the boundary of the scope of [a] term to find examples” in the prior art. Ex. 2008.
`
`at 356:18-357:6. Moreover, Dr. Fischer testified that he had not considered any
`
`advantages or disadvantages to adapting a hand-held surgical instrument (such as
`
`Hooven) for use in a robotic surgical system (such as Heinrich) in offering his
`
`opinions on motivations to combine. Id. 312:4-313:13. Given this clear testimony,
`
`Dr. Fischer’s insistence in his declaration that either Hooven or Heinrich discloses
`
`the recited claim limitations, or that a POSITA would be motivated to combine
`
`Hooven with Heinrich, carries little weight. Given the fact that the ipse dixit of Dr.
`
`Fischer is the sole support outside of impermissible hindsight to make any of the
`
`obviousness combinations, Intuitive cannot carry its burden. Nonetheless, even if
`
`Dr. Fischer’s testimony is considered, all of Petitioner’s grounds suffer from the
`
`same fatal flaws.
`
`For these reasons, and the additional reasons explained in detail below,
`
`Patent Owner respectfully requests that the Board deny institution as to all grounds
`
`challenging the 677 Patent.
`
`II. BACKGROUND
`A. Overview of the 677 Patent
`The 677 Patent is directed to a novel implementation of a “detachable
`
`motor-powered surgical instrument”—in the case of the challenged claims, a
`
`5
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`

`
`surgical cutting and stapling instrument. Ex. 1001 at Abstract, 80:40-83:17. The
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`677 Patent discloses that surgical cutting and stapling tools were known in the art,
`
`including surgical stapling tools that are “configured to operate with disposable
`
`loading units (DLU’s),” which are discarded once the procedure is completed. Id.
`
`at 1:54-2:5. The 677 Patent identifies the Milliman reference (Ex. 1006) as one of
`
`these known surgical cutting and stapling tools, and incorporates the disclosure of
`
`Milliman by reference. Id. at 2:7-11. The 677 Patent explains that existing DLUs
`
`that lack motor power, such as the DLU disclosed in Milliman, have a
`
`disadvantage in that they “require the clinician to continuously ratchet the handle”
`
`of the tool in order to operate the device. Id. at 2:12-14. Thus, “[t]here is a need for
`
`a surgical stapling apparatus configured for use with a disposable loading unit that
`
`is driven by a motor contained in the disposable loading unit.” Id. at 2:14-17.
`
`The 677 Patent recognizes, however, that it is not desirable for power to
`
`flow between an attached power source and motor until the housing of the DLU is
`
`attached to a surgical instrument system that controls it. For example, the 677
`
`Patent explains that preventing power to flow “prevent[s] the battery 526 from
`
`being drained during non-use.” Id. at 11:62-12:24. Thus, the motor-powered
`
`surgical instrument of the 677 Patent includes an “electrical motor [that] is
`
`operably disconnected from a power source when the housing is not attached to the
`
`surgical instrument system, and … operably connected to the power source when
`
`6
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`

`
`the housing is attached to the surgical instrument system.” Id. at 2:65-3:3. The 677
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`Patent also describes a “motor [that] is configured to receive power from a power
`
`source such that the motor can only selectively receive power from the power
`
`source when the means for removably attaching the housing to the surgical
`
`instrument is operably coupled to the surgical instrument.” Id. at 2:36-42; see also
`
`id. at Abstract, 11:62-12:24.
`
`An exemplary embodiment disclosed in the 677 Patent illustrates the
`
`principles of the invention. Figure 1 of the 677 Patent discloses “a disposable
`
`loading unit 16 of the present invention that is coupled to a conventional surgical
`
`cutting and stapling apparatus 10.” Id. at 10:54-58. As illustrated in Figure 1, the
`
`DLU 16 includes a “tool assembly 17 for performing surgical procedures such as
`
`cutting tissue and applying staples on each side of the cut.” Id. at 11:12-14. Tool
`
`assembly 17 includes a cartridge 18, which may contain staples, and an anvil 20,
`
`which provides a series of concavities for forming the closures of the staples. Id. at
`
`11:14-21. DLU 16 also includes housing 200.
`
`7
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`

`

`IPR2018-00935
`U.S. Patent No. 8,991,677
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`Conventional Apparatus
`
`
`
`DLU of Present
`Invention
`
`Figure 2 depicts DLU 16, which includes a power source (battery 526) that
`
`is attached to motor 562 by a spring 550. The configuration of the motor 562 and
`
`battery 526 is shown in more detail in Figure 3.
`
`
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`8
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`As shown in Figure 3, there are two battery contacts, 528 and 530, “mounted
`
`in electrical contact with the battery 526 and also protrud[ing] out of the battery
`
`holder 524 to slide along the inside wall 523 of the battery cavity 522.” Id. at
`
`11:66-12:7. Battery holder 524 is configured to receive control rod 52 of the
`
`surgical instrument system. Id. at 12:7-11. Along the inside wall 523 is a series of
`
`three contacts—540, 542, and 544—that can make contact with battery contacts
`
`528 and 530 when control rod 52 is inserted into battery holder 524. Id. at 12:11-
`
`24. However, because control rod 52 of the surgical instrument system has not yet
`
`been inserted into the DLU in Figures 2 and 3, the battery contacts are not in
`
`contact with contacts 540, 542, or 544, and the motor 562 and battery 526 are
`
`operably disconnected. See id. at 12:20-24 (“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 the battery cavity 522 to prevent
`9
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`

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`the battery 526 from being drained during non-use.”).
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`Figures 7 and 9 of this exemplary embodiment depict the DLU after control
`
`rod 52 of the surgical instrument system has been inserted. In particular, these
`
`figures and the associated text illustrate and describe how control rod 52 brings the
`
`battery contacts into contact with anvil close contacts 542 (Figure 7) and fire
`
`contacts 544 (Figure 9), which permit power to flow to motor 562 for closing and
`
`firing actuations, respectively.
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`
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`10
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`
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`As can be seen in FIG. 7, as the control rod 52 is initially moved in the
`distal direction during the anvil close stroke, the battery holder 524
`moves the battery 526 to a position wherein the battery contacts 528,
`530 contact the anvil close contacts 542. Power is now permitted to
`flow from the battery 526 to the motor 562 which rotates the drive
`screw 600 and causes the drive beam 266 to move distally. … 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
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`11
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`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.
`Id. at 13:25-57.
`
`
`Thus, as shown in this exemplary embodiment, a motor and its attached
`
`power source are operably connected, and power is selectively provided to the
`
`motor, only when the DLU is attached to the surgical instrument system.
`
`This novel arrangement of the power source and motor enables multiple
`
`advantages. First, this configuration “prevent[s] the battery 526 from being drained
`
`during non-use” by controlling the flow of power. Id. at 11:62-12:24; Ex. 2006,
`
`Cimino Decl. at ¶32. Second, the safety of a patient is improved by eliminating the
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`risk of the DLU misfiring before it is attached to the surgical instrument system.
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`Ex. 2006, Cimino Decl. at ¶33.
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`These benefits can be realized by employing the claimed invention of the
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`677 Patent over prior art systems that deliver power directly through the interface
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`between the surgical instrument system and the DLU.
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`B. Overview of Challenged Independent Claims 1, 6, 16 and 173
`There are four independent claims at issue in this proceeding. Claims 6 and
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`17 both recite a motor in the surgical stapling sub-system that can be “operably
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`connected” and “operably disconnected” from an attached power source based on
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`whether the housing of the surgical stapling sub-system is attached or detached
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`from the surgical instrument system. Claims 1 and 16 both recite a motor
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`configured to only selectively receive power from an attached power source when
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`the housing of the DLU is attached to the surgical instrument.
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`Independent challenged claims 6 and 1 are representative, and are
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`reproduced below:
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`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;
`
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`3 On September 7, 2018, Ethicon filed with the U.S. Patent and Trademark Office a
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`statutory disclaimer of claims 11-15 and 18 of the 677 Patent under 35 U.S.C. §
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`253(a) and 37 C.F.R. § 1.321(a). A copy of the statutory disclaimer is submitted as
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`Exhibit 2004 in this proceeding.
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`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.
`
`
`Ex. 1001, Claim 6.
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`1. 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:
`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;
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`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.
`
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`Ex. 1001, Claim 1.
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`III. CLAIM CONSTRUCTION4
`Claims of an unexpired patent in a petition filed prior to November 13, 2018
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`are construed using the broadest reasonable construction in light of the
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`specification of the patent. See Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,766 (Aug. 14, 2012); 37 C.F.R. § 42.100(b). Although it is improper to
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`read a limitation from the specification into the claims, the claims still must be read
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`in view of the specification of which they are a part. See Microsoft Corp. v. Multi-
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`4 The terms Petitioner proposed for construction in its Petition are not relevant to
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`this Patent Owner Response. Therefore, Patent Owner does not address them.
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`Tech Sys., Inc., 357 F.3d 1340, 1347 (Fed. Cir. 2004). The specification may
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`confirm the plain meaning of the term. Tech. Patents LLC v. T-Mobile (UK) Ltd.,
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`700 F.3d 482 (Fed. Cir. 2012), cert. denied, 134 S. Ct. 67 (2013). “Even under the
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`broadest reasonable interpretation, the Board’s construction cannot be divorced
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`from the specification and the record evidence and must be consistent with the one
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`that those skilled in the art would reach. A construction that is unreasonably broad
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`... will not pass muster.” In re NuVasive, Inc., 693 F. App'x 893, 897–98 (Fed. Cir.
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`2017).
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`A.
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` “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” (Claims 6, 17)
`A POSITA would have understood that this limitation requires more than
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`simply disconnecting and connecting a motor to its power source. Indeed, the
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`claims require that “the electric motor is operably disconnected from a power
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`source when said housing is not attached to the surgical instrument system” and the
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`“electric motor is operably connected to the power source when said housing is
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`attached to the surgical instrument system.” As explained in detail below, the
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`“operably connected”/“operably disconnected” limitation requires that the
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`electrical connection of the stapling sub-system’s electric motor to an attached
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`power source is controlled by, but separate from, the attachment between the
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`stapling sub-system housing and the surgical instrument system. Ex. 2006, Cimino
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`Decl. at ¶55. In parti