IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patents of:
`U.S. Patent Nos.:
`
`Kyle P. Moore, et al.
`9,084,601
`Attorney Docket Nos.: 11030-0049IP1
`8,998,058
`11030-0049IP2
`8,991,677
`11030-0049IP3
`
`Title:
`
`DETATCHABLE MOTOR POWERED SURGICAL
`INSTRUMENT
`
`SUPPLEMENTAL DECLARATION OF DR. GREGORY S. FISCHER
`
`1
`
`Exhibit 1030
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`II.
`
`ETHICON’S PROPOSED CONSTRUCTIONS OF THE ORIGINAL
`CLAIMS OF THE ’058 AND ’677 PATENTS ARE INCONSISTENT
`WITH THE PLAIN LANGUAGE OF THE CLAIMS AND THE
`SPECIFICATION ............................................................................................ 5
`
`SCOPE OF THE SUBSTITUTE CLAIMS ................................................... 13
`A. The substitute claims of the ’601 patent expand the
`scope of the claims .................................................................................. 13
`B. The substitute claims of the ’601 patent introduce claim
`elements that are not described in the original disclosure ...................... 14
`C. The substitute claims of the ’058 patent and the ’677 patent
`introduce claim elements that are not described in the
`original disclosure ................................................................................... 15
`
`III. OVERVIEW OF THE PRIOR ART ............................................................. 17
`A. Heinrich and Tonet ................................................................................. 17
`B. Viola ....................................................................................................... 17
`C. Viola in view of Heinrich (the Viola/Heinrich loading unit) ................. 20
`
`IV. THE SUBSTITUTE CLAIMS OF THE ’601 PATENT ARE INVALID .... 25
`A. Substitute claims 21-22, 24-31, and 33-40 are obvious over
`Viola in view of Heinrich ....................................................................... 25
`B. Substitute claims 23 and 32 are obvious over
`Viola in view of Heinrich and further in view of Tonet ......................... 51
`
`V.
`
`THE SUBSTITUTE CLAIMS OF THE ’058 PATENT ARE INVALID .... 53
`A. Substitute claims 19-22 and 24-27 are obvious over
`Viola in view of Heinrich ....................................................................... 53
`B. Substitute claims 23 and 28 are obvious over Viola
`in view of Heinrich and, if necessary, further in view of Young ........... 59
`
`VI. THE SUBSTITUTE CLAIMS OF THE ’677 PATENT ARE INVALID .... 63
`A. Substitute claims 19-22 and 24 are obvious over Viola
`in view of Heinrich ................................................................................. 63
`B. Claim 23 is obvious over Viola in view of Heinrich
`and, if necessary, further in view of Young ........................................... 66
`
`VII. CONCLUSION .............................................................................................. 67
`
`
`
`
`i
`
`2
`
`

`

`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`I, Gregory S. Fischer PhD, declare as follows:
`
`1.
`
`I have been engaged by Fish & Richardson P.C. on behalf of Intuitive
`
`Surgical, Inc. (“Petitioner”) for the above-captioned inter partes review (“IPR”)
`
`proceedings. I understand that these proceedings involve United States Patent Nos.
`
`9,084,601 (“the ’601 patent”), 8,998,058 (“the ’058 patent), and 8,991,677 (“the
`
`’677 patent) (collectively, “the challenged patents”), each of which is entitled
`
`“Detachable motor powered surgical instrument,” by Kyle P. Moore, et al., and
`
`which share a common specification and figures. These patents were filed March
`
`15, 2013, May 20, 2014, and May 21, 2014, respectively, and they issued on July
`
`21, 2015, April 7, 2015, and March 31, 2015, respectively. I understand that the
`
`challenged patents are currently assigned to Ethicon Endo-Surgery, Inc.
`
`(“Ethicon”).
`
`2.
`
`I understand the challenged patents claim priority to U.S. Application
`
`No. 12/031,628 (“the ’628 application”). For purposes of this IPR, I assume the
`
`earliest possible priority date of the challenged patents is the February 14, 2008
`
`filing date of the ’628 application.
`
`3.
`
`I have reviewed and am familiar with the specifications of the
`
`challenged patents. I understand that the challenged patents have been provided as
`
`Exhibit 1001 in each of their respective Petitions for IPR. I will cite to the
`
`specification using the following format: IS1001 (’601 patent), 1:1-10. This
`
`1
`
`
`3
`
`

`

`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`example citation points to the ’601 patent specification at column 1, lines 1-10.
`
`The same disclosures, however, are also found in the ’058 and ’677 patent because
`
`they share a common specification and figures, which I will cite as IS1001 (’058
`
`patent) and IS1001 (’677 patent), respectively.
`
`4.
`
`I have reviewed and am familiar with the file history of the challenged
`
`patents. I understand that excerpts from the file histories of the challenged patents
`
`have been combined into a single document that has been provided as Exhibit 1002
`
`(File History) in each of the Petitions for IPR of the challenged patents.
`
`5.
`
`As noted in my initial declaration, I have reviewed and am familiar
`
`with the following prior art used in the Petitions for IPR of the challenged patents:
`
`a. U.S. Patent App. Pub. No. 2005/0131390 to Heinrich et al.
`(“Heinrich”). I understand that Heinrich has been provided as Exhibit
`IS1005 in each of the Petitions for IPR of the challenged patents.
`
`b. U.S. Patent No. 5,383,880 to Hooven (“Hooven”). I understand that
`Hooven has been provided as Exhibit IS1004 in the Petitions for IPR
`of the ’058 and ’677 patents.
`
`c. U.S. Patent No. 5,865,361 to Milliman et al. (“Milliman”). I
`understand that Milliman has been provided as Exhibit IS1006 in each
`of the Petitions for IPR of the challenged patents.
`
`d. U.S. Patent No. 5,779,130 to Alesi et al. (“Alesi”). I understand that
`Alesi has been provided as Exhibit IS1010 in each of the Petitions for
`IPR of the challenged patents.
`
`e. U.S. Pat. No. 6,783,524 to Anderson et al. (“Anderson”). I
`understand that Anderson has been provided as Exhibit IS1013 in
`each of the Petitions for IPR of the ’058 and ’677 patents.
`
`
`2
`
`
`4
`
`

`

`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`f. Tonet O. et al., Comparison of Control Modes of a Hand-Held Robot
`for Laparoscopic Surgery. In: Larsen R., Nielsen M., Sporring J. (eds)
`Medical Image Computing and Computer-Assisted Intervention –
`MICCAI 2006. MICCAI 2006. Lecture Notes in Computer Science,
`vol. 4190, pp. 429-36 (Springer, Berlin, Heidelberg 2006) (ISBN 978-
`3-540-44707-8) (“Tonet”). I understand that Tonet has been provided
`as Exhibit IS1014 in the Petition for IPR of the ’601 patent.
`
`I have also reviewed an am familiar with the following prior art used
`
`6.
`
`in Intuitive’s oppositions to Ethicon’s motions to amend the challenged claims.
`
`a. U.S. Patent No. 5,954,259 to Viola et al. (“Viola”). I understand that
`Viola has been provided as Exhibit IS1031 in each of the Petitions for
`IPR of the challenged patents.
`
`b. U.S. Pat. No. 5,653,374 to Young et al. (“Young”). I understand that
`Young has been provided as Exhibit IS1032 in each of the Petitions
`for IPR of the ’058 and ’677 patents.
`
`The challenged patents describe a “detachable motor-powered
`
`7.
`
`surgical instrument” in general, and a “surgical cutting and stapling instrument” in
`
`particular. E.g., ’601 patent, Abstract. I am familiar with the technology described
`
`in the challenged patents as of the earliest possible priority date of the challenged
`
`patents (i.e., February 14, 2008).
`
`8.
`
`I understand that Ethicon has asked the PTO to consider the substitute
`
`claims for the original claims of the ’601, ’058, and ’677 patents identified in the
`
`table below:
`
`3
`
`
`5
`
`

`

`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`Patent
`
`Original claims
`
`Substitute claims
`
`’601 patent
`
`’058 patent
`
`’677 patent
`
`
`
`1-20
`
`1-10
`
`1-5, 16
`
`21-40
`
`19-28
`
`19-24
`
`9.
`
`I have been asked to provide my technical review, analysis, insights
`
`and opinions regarding these substitute claims proposed by Ethicon and the above-
`
`noted references that form the basis for the grounds of invalidity set forth in
`
`Intuitive’s oppositions to Ethicon’s motions to amend the challenged claims.
`
`10.
`
`I have also been asked to provide technical review, analysis, insights,
`
`and opinions replying to certain assertions made in Ethicon’s Responses to the IPR
`
`Petitions for both the ’058 and ’677 patents.
`
`11. Summaries of my qualifications, my understanding of the law, the
`
`level of ordinary skill in the art at the time of the claimed invention (which I have
`
`applied here), the background of the technologies disclosed in the challenged
`
`patents, and my overview of the challenged patents are each provided in my initial
`
`declaration (IS1003 (“Fischer Decl.”)) and thus not reproduced here.
`
`4
`
`
`6
`
`

`

`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`I.
`
`ETHICON’S PROPOSED CONSTRUCTIONS OF THE ORIGINAL
`CLAIMS OF THE ’058 AND ’677 PATENTS ARE INCONSISTENT
`WITH THE PLAIN LANGUAGE OF THE CLAIMS AND THE
`SPECIFICATION
`
`Disputed “Power Term,” from ’058
`
`Ethicon’s Proposed Construction
`
`Patent Claim 1 (Similar Language in
`
`Claim 6, and Claims 1 and 16 of the
`
`’677 Patent)
`
`“disposable loading unit comprising:
`
`“disposable loading unit comprising:
`
`… a motor … configured to receive
`
`… a motor … that is attached to a
`
`power from a power source such that
`
`power source such that said motor can
`
`said motor can only selectively receive
`
`receive power from said attached
`
`power from said power source when
`
`power source when said means for re-
`
`said means for removably attaching
`
`movably attaching said housing to the
`
`said housing to the surgical instrument
`
`surgical instrument is operably cou-
`
`is operably coupled to the surgical in-
`
`pled to the surgical instrument, and
`
`strument”
`
`said motor cannot receive power from
`
`said attached power source when said
`
`means for removably attaching said
`
`housing to the surgical instrument is
`
`decoupled from the surgical instru-
`
`ment”
`
`
`
`12. For claims 1 and 6 of the ’058 patent, and claims 1 and 16 of the ’677
`
`patents, Ethicon construes “configured to receive power from a power source” to
`
`mean “[that is] attached to a power source.” This is not how a POSITA would
`
`5
`
`
`7
`
`

`

`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`understand “configured to receive power from a power source” in the context of
`
`these patents. A POSITA would readily understand the plain and ordinary meaning
`
`of these terms, which is “set up for operation to receive power from.” This is
`
`consistent with the dictionary definition of the word “configure.” See IS1029
`
`(Webster’s dictionary defining “configure” to mean “to set up for operation,
`
`especially in a particular way.”).
`
`13.
`
`In its Patent Owner’s Response for the ’058 patent, Ethicon argues:
`
`Claims 6 and 1 describe two separate requirements de-
`
`scribing two separate connections. Claim 6 is representa-
`
`tive. First, the limitation that the motor is configured to
`
`receive power from a power source requires that the mo-
`
`tor be connected to an attached power source. Second,
`
`the requirement that the motor “only selectively re-
`
`ceive[s]” power when the stapling system’s housing con-
`
`nector is attached to the surgical instrument system re-
`
`quires the connection between the\ motor and the at-
`
`tached power source be controlled and that the control
`
`mechanism “only” permit power to flow when it detects
`
`that the housing connector of the stapling system is at-
`
`tached to the surgical instrument system that operates the
`
`tool.
`
`
`’058 POR, 20. Ethicon makes a similar argument in its Patent Owner’s Response
`
`for the ’677 patent. ’677 POR, 28. I disagree that these claim limitations each
`
`6
`
`
`8
`
`

`

`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`describe two separate limitations. Each of these limitations contains two clauses
`
`separated by the words “such that.” The effect of the word “such that” in each of
`
`these limitations would be clear to a POSITA. It would be clear to a POSITA that
`
`the clause before “such that” and the clause after “such that” are not themselves
`
`two separate limitations. Instead, 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. Thus, the two clauses are not separate
`
`limitations but rather only a single limitation that requires no more than that the
`
`motor be set up (i.e., “configured”) to receive power from the power source only
`
`when the housing and surgical instrument are “operably coupled.”
`
`14. Ethicon’s proposed construction is also inconsistent with the
`
`specification of the challenged patents. For example, in the first embodiment in
`
`each of the ’058 and ’677 patents, described at pages 7-14 of Ethicon’s ’058
`
`Response and pages 7-13 of Ethicon’s ’677 Response, it would be clear to a
`
`POSITA that the motor and the battery are purposely disconnected or detached
`
`when the housing is not connected to the surgical instrument system. As explained
`
`in the patents, the only described purpose of this design is to prevent the battery
`
`from being drained during non-use: “[w]hen 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
`
`7
`
`
`9
`
`

`

`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`the battery 526 from being drained during non-use.” ’058 patent 11:54-58/’677
`
`patent 12:20-24. Thus, a POSITA would understand that Ethicon’s proposed
`
`constructions, which would require that the motor always be attached to the power
`
`source, directly contradicts the specifications.
`
`15. Furthermore, I understand that it is important not to assume that a
`
`claim includes limitations that are not actually recited in a claim. For example, I
`
`understand that a particular embodiment appearing in the written description may
`
`not be used to add a limitation to a claim when the claim language is broader than
`
`the embodiment. In this case, the ’058 and ’677 patents expressly discloses two
`
`types of embodiments: (i) embodiments in which the motor and its power source
`
`are in the same housing, and (ii) embodiments where the motor and its power
`
`source are not in the same housing. These two types of embodiments are explained
`
`in the specification:
`
`[1] The above-described embodiments employ a battery
`
`or batteries to power the motors used to drive the end ef-
`
`fector components. Activation of the motors is controlled
`
`by the robotic system 1000. [2] In alternative embodi-
`
`ments, the power supply may comprise alternating cur-
`
`rent “AC” that is supplied to the motors by the robotic
`
`system 1000. That is, the AC power would be supplied
`
`from the system powering the robotic system 1000
`
`through the tool holder and adapter.
`
`8
`
`
`10
`
`

`

`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`
`’058 patent, 44:1-8.
`
`
`16.
`
`In the first type of embodiment shown in Fig. 3, the power source is a
`
`moveable battery inside the DLU, which, as explained above, is separated from the
`
`motor inside the DLU when the housing is unconnected to the surgical instrument
`
`system (i.e., the “pre-use” or “disconnected” position) but which moves when the
`
`housing is connected to the surgical instrument system to make contact with the
`
`motor. Another variant of the first type (i.e., motor and power source within same
`
`housing) is shown in Fig. 52. It is this first type of embodiment to which Ethicon
`
`seeks to limit the claims.
`
`17.
`
`In the second type of embodiment, the motor and its power source are
`
`not in the same housing. Rather, the power for the motor is supplied externally by
`
`the robotic system. ’058 patent, 44:6-8.
`
`18. Thus, the challenged patents expressly envision both types of
`
`embodiments. The plain language of the claims clearly cover both types of
`
`embodiments. And a POSITA would have found nothing in the specification or
`
`the file history indicating that the claimed invention is limited to only the first type
`
`of embodiment.
`
`9
`
`
`11
`
`

`

`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`Disputed Limitation from Claims 6
`
`Ethicon’s Proposed Construction
`
`and 17 of the ’677 Patent
`
`“stapling sub-system comprising: …
`
`“stapling sub-system comprising: …
`
`an electric motor … wherein said elec-
`
`an electric motor … wherein said elec-
`
`tric motor is operably disconnected
`
`tric motor is electrically disconnected
`
`from a power source when said hous-
`
`from an attached power source when
`
`ing is not attached to the surgical in-
`
`said housing is not attached to the sur-
`
`strument system, and wherein said
`
`gical instrument system, and wherein
`
`electric motor is operably connected to
`
`said electric motor is electrically con-
`
`the power source when said housing is
`
`nected to the attached power source
`
`attached to the surgical instrument sys-
`
`when said housing is attached to the
`
`tem”
`
`
`
`surgical instrument system”
`
`19. For claims 6 and 17 of the ’677 patent, in addition to inserting the
`
`word “attached” into the claims, which is incorrect for the reasons explained
`
`above, Ethicon construes “operably” to mean “electrically.” This is inconsistent
`
`with how a POSITA would understand the plain and ordinary meaning of this
`
`term. A POSITA, in the context of the ’677 patent, would understand that
`
`“operably” means “fit to use.” This is consistent with the dictionary definition of
`
`the word “operable.” See IS1029 (Webster’s dictionary defining the word
`
`“operable” to mean “fit, possible, or desirable to use”).
`
`20. Ethicon’s proposed construction of “operably” is too broad. It is
`
`certainly possible for a motor and a power source to have an electrical connection
`
`10
`
`
`12
`
`

`

`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`that is not operable.
`
`21.
`
`I understand that Ethicon has also argued that “[a] POSITA would …
`
`have understood that the use of the term ‘operably disconnected’ refers to an
`
`electrical disconnection (i.e., functional or operable disconnection) but not a
`
`physical one.” ’677 POR, 20. It argues:
`
`The 677 Patent captures this narrower scope through the
`
`use of “operably” disconnected and “operably” con-
`
`nected. The use of the “operably” modifier indicates that
`
`the electrical connection between the stapling sub-sys-
`
`tem’s electric motor and the power source, but not the
`
`physical connection, is dependent upon the physical at-
`
`tachment of the sub-system housing to the surgical in-
`
`strument system. Ex. 2006, Cimino Decl. at ¶¶47-55. In
`
`other words, detaching the stapling subsystem housing
`
`from the surgical instrument system does not disconnect
`
`the motor from the power supply, but rather it electrically
`
`disconnects the motor such that it cannot operate—i.e.,
`
`such that it is operably disconnected. Id. To find other-
`
`wise would render the term “operably” superfluous, a
`
`construction that cannot be correct.
`
`
`’677 POR, 19.
`
`
`22.
`
`I disagree. A POSITA would have understood that a physical
`
`disconnection, like a purely electrical disconnection, can operably disconnect a
`
`11
`
`
`13
`
`

`

`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`motor and a power source and there is nothing in the plain language of the claims
`
`or the specification that excludes a physical disconnection that operably
`
`disconnects the motor and the power source.
`
`23.
`
`I further understand that Ethicon has argued that there would have
`
`been no reason to use the modifier “operably,” if the claims were directed to
`
`nothing more than a motor that is physically connected to a power source through
`
`the connection between the housing of the stapling sub-system and the surgical
`
`instrument system. According to Ethicon, “the term ‘operably’ would lose any
`
`meaning since the electric motor would always be disconnected or connected from
`
`the power source depending on whether the stapling sub-system was disconnected
`
`or connected to the surgical instrument system.”
`
`24. Once again, I disagree. It is certainly possible for a motor and a
`
`power source to have a physical connection through the connection between the
`
`housing of the stapling sub-system and the surgical instrument system that is not
`
`operable. Thus, the term “operably” has meaning. For example, it makes clear
`
`that the motor and the power source must be connected in a way that 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 of the stapling sub-
`
`system is attached to the surgical instrument system.
`
`25. Finally, Ethicon’s proposed construction of claims 6 and 17 of the
`
`12
`
`
`14
`
`

`

`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`’677 Patent is inconsistent with the specification for the same reasons that
`
`Ethicon’s proposed constructions of claims 1 and 6 of the ’058 Patent and claims 1
`
`and 16 of the ’677 Patent are inconsistent with the specification. Specifically, the
`
`’058 and ’677 patents described embodiments wherein the motor and the power
`
`source are physically disconnected to operably disconnect the motor and the power
`
`source when the housing is not connected to the surgical instrument system. See,
`
`e.g., ’058 patent, Figs. 1-12, 44:1-12. The challenged claims clearly cover these
`
`embodiments. And there is nothing in the plain language of the claims, the
`
`specification, or the file history that would have informed a POSITA that the
`
`challenged claims do not cover these embodiments.
`
`II.
`
`SCOPE OF THE SUBSTITUTE CLAIMS
`
`26.
`
`I understand that an amended claim may not enlarge the scope of the
`
`original claim in any respect or introduce claim elements that are not described in
`
`the original disclosure (i.e., the priority patent application(s)). Instead, the original
`
`disclosure must actually or inherently disclose each claim element.
`
`A. The substitute claims of the ’601 patent expand the scope of the
`claims
`
`27.
`
`I understand that Ethicon has proposed the following amendment in
`
`the substitute claims of the ’601 patent: “a housing including at least one
`
`engagement member for removably coupling the housing to an actuator in a
`
`surgical instrument system arrangement.”
`
`13
`
`
`15
`
`

`

`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`28. This proposed amendments broadens the scope of the actuator
`
`arrangement term by removing a feature of the claim (the term “arrangement”).
`
`Indeed, the plain meaning of “arrangement” is “a structure or combination of
`
`things arranged in a particular way or for a specific purpose: combination.”
`
`IS1011 (Webster’s Dictionary), p. 6. By removing the word “arrangement,”
`
`Ethicon removed the requirement that the claimed actuator be a “combination of
`
`things arranged in a particular way.” Thus, the proposed amendments
`
`impermissibly broaden the scope of the claims.
`
`B.
`
`The substitute claims of the ’601 patent introduce claim elements
`that are not described in the original disclosure
`
`29.
`
`I understand that each of the substitute claims of the ’601 patent adds
`
`the clause: “wherein said motor is coupled to a power source when said housing is
`
`not coupled to the surgical instrument system.”
`
`30. However, this new element is not described in the specification of the
`
`’601 patent or any of its priority applications. In fact, the ’601 patent teaches the
`
`opposite—i.e., that the motor is not coupled to the power source when the housing
`
`is not coupled to the surgical instrument system, but rather is intentionally
`
`decoupled to prevent battery drain when in the detached state. E.g., ’601 patent at
`
`12:24-35.
`
`31. More specifically, when the housing is coupled to the surgical
`
`instrument, the motor is coupled to the power source because the battery contacts
`
`14
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`16
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`

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`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`528, 530 are in contact with the motor’s contacts 540, 542, 544. In that coupled
`
`state, the motor is able to receive power from the battery.
`
`32. However, the only described purpose of the circuit design of the
`
`embodiment identified by Ethicon as support for the substitute claims is to prevent
`
`the battery from being drained during non-use, “[w]hen retained in [the] ‘pre-use’
`
`or ‘disconnected’ position…, the battery contacts 528 and 530 do not contact any
`
`of the [motor’s] contacts 540, 542, 544 … to prevent the battery from being
`
`drained during non-use.” ’601 patent, 12:30-35. In other words, the patent
`
`expressly discloses that the motor is not coupled to a power source (i.e., the
`
`battery) when the housing is not coupled to the surgical instrument system. This is
`
`directly contrary to what the substitute claims require—i.e., that the motor and
`
`battery are coupled when the housing is not coupled to the surgical instrument
`
`system.
`
`C. The substitute claims of the ’058 patent and the ’677 patent intro-
`duce claim elements that are not described in the original disclo-
`sure
`
`33.
`
`I understand that each of the substitute claims of the ’058 patent and
`
`the ’677 patent includes the following amendment: “said motor 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.”
`
`34. However, this new element is not described in the common
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`15
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`17
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`

`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`specification of the ’058 patent and the ’677 patent or any of their priority
`
`applications. In fact, the ’058 and ’677 patents teach the opposite, for example,
`
`that an electrical connection that allows current to flow between the power source
`
`and the motor is dependent on the housing connector’s connection to the surgical
`
`instrument system. As explained above, the only described purpose of the circuit
`
`design in the embodiment identified by Ethicon as support for the substitute claims
`
`is to prevent the battery from being drained during non-use: “[w]hen 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 the battery 526 from being drained during non-use.” ’058 patent,
`
`11:54-58/’677 patent, 12:20-24. Ethicon’s insertion of “attachment” into the
`
`claims is clearly contrary to this key teaching of the claimed invention.
`
`35. More specifically, the ’058 and ’677 patents discloses that “switch
`
`portion 520 … movably houses a battery 526 therein,” (shown in Fig. 3) and
`
`switch portion 520 is configured to move between a contact state and a non-contact
`
`state depending on whether the disposable loading unit (“DLU”) is attached to the
`
`handheld surgical cutting and stapling instrument 10. E.g., ’058 patent, 11:29-48.
`
`36. Accordingly, the ’058 and ’677 patents disclose no means for
`
`attaching the motor to the power source apart from attaching the housing of the
`
`disposable loading unit or the tool mounting portion to the surgical instrument
`
`16
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`18
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`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`system. Consequently, attachment of the motor to the power source is necessarily
`
`dependent on the housing connector’s attachment to the surgical instrument
`
`system, in direct contradiction with the requirements of the amended claims.
`
`III. OVERVIEW OF THE PRIOR ART
`
`A. Heinrich and Tonet
`
`37.
`
`See Fischer Decl. at ¶¶75-81, 85-91.
`
`B. Viola
`
`38. Viola discloses a surgical cutting and stapling instrument (surgical
`
`stapler 10) in which the power source (power cells 45a, 45b) and the motor (motor
`
`assembly 22) both reside within the same housing (handle 12, excluding the trigger
`
`44). Viola, Abstract, 4:18-57, Figs. 1, 2a.
`
`Viola, Fig. 1.
`
`
`
`
`17
`
`
`19
`
`

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`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`
`
`
`Viola, Fig. 2a.
`
`
`39. Viola also incorporates by reference “the contents” of U.S. Pat. App.
`
`No. 08/287,455 to Young et al. Viola, 1:7-11. A POSITA would have understood
`
`that this statement incorporates all of the Young ’455 application into Viola as if it
`
`were set out expressly rather than through incorporation. I understand that the
`
`Young ’455 application was abandoned and therefore did not publish, but I also
`
`understand that Young should include the same disclosure as the Young ’455
`
`application because it is a continuation of the Young ’455 application.
`
`40. Young also discloses a “powered surgical apparatus 10” in which the
`
`power source (power cells 98a-c) and the motor (motor assembly 86) both reside
`
`within the same housing (e.g., elongate body 20).
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`18
`
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`20
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`

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`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`Young, Fig. 1.
`
`
`Young, Fig. 6.
`
`19
`
`
`
`
`
`
`21
`
`

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`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`C. Viola in view of Heinrich (the Viola/Heinrich loading unit)
`
`41.
`
`It would have been obvious in view of Heinrich to combine Viola’s
`
`instrument 10 with Heinrich’s robotic surgical system (the combination of
`
`actuation assembly 612, monitor 614, and robot 616). Specifically, it would have
`
`been obvious to (1) incorporate the components inside Viola’s handle 12 (e.g., its
`
`motor 22 and power cells 45a-b) into Heinrich’s housing, and (2) replace or actuate
`
`Viola’s trigger 44 with Heinrich’s electromechanical assembly 619, which is also
`
`included in the housing and controlled by Heinrich’s robotic surgical system as
`
`shown below in Figure 8 of Heinrich.
`
`DLU 618
`containing
`electrome-
`chanical as-
`sembly 619
`
`Robot arm 616 of ro-
`botic system that con-
`trols electromechani-
`cal assembly 619
`
`
`Heinrich, Fig. 8.
`
`
`
`
`42. The resulting device (the Viola/Heinrich loading unit highlighted in
`
`yellow) is shown below in the composite image of Heinrich’s Fig. 9 with Viola’s
`
`Fig. 1.
`
`20
`
`
`22
`
`

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`Attorney Docket No. 11030-0049IP1 through IP3
`IPR of U.S. Patent Nos. 9,084,601, 8,998,058, and 8,991,677
`
`Housing, which includes
`motor and power source
`
`Trigger (replaceable
`with Heinrich’s elec-
`tro-mechanical actu-
`ation assembly 619)
`
`Housing, which includes
`Viola’s motor and power
`source as well as Hein-
`rich’s electromechanical
`assembly 619
`
`
`
`Composite image of Heinrich’s Fig. 9
`with Viola’s Fig. 1.
`
`I understand that a POSITA has good reason to pursue the known
`
`
`
`
`Viola Fig. 1
`
`
`43.
`
`options within his or her technical grasp when there are a finite number of
`
`identified, predictable solutions. In this case, Viola describes one predictable
`
`solution for manipulating the surgical instrument (by hand) and Heinrich describes
`
`another predictable solution (using a robot). Heinrich, ¶ 132, Fig. 7.
`
`44. A POSITA would have