UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTUITIVE SURGICAL, INC.
`Petitioner
`v.
`ETHICON LLC
`Patent Owner
`
`Case IPR2018-00935
`Patent 8,991,677
`
`PETITIONER’S OPPOSITION TO
`
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTUITIVE SURGICAL, INC.
`Petitioner
`v.
`ETHICON LLC
`Patent Owner
`
`Case IPR2018-00935
`Patent 8,991,677
`
`PETITIONER’S OPPOSITION TO
`
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
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`THE SUBSTITUTE CLAIMS INTRODUCE NEW MATTER .................... 1
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`I.
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`II.
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`III. THE SUBSTITUTE CLAIMS ARE OBVIOUS ............................................ 3
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`A.
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`B.
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`Substitute claims 19-22 and 24 are obvious over Viola in view of
`Heinrich ................................................................................................. 3
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`Claim 23 is obvious over Viola in view of Heinrich and, if necessary,
`further in view of Young ..................................................................... 16
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`IV. CONCLUSION .............................................................................................. 18
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`Proceeding No. IPR2018-00935
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`IS1001
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`IS1002
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`IS1003
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`IS1004
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`IS1005
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`IS1006
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`IS1007
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`IS1008
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`IS1009
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`IS1010
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`IS1011
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`IS1012
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`IS1013
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`EXHIBITS
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`U.S. Patent No. 8,991,677 to Moore et al. (“the ’677 patent”)
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`Excerpts from the prosecution histories of U.S. Pat. Nos.
`9,084,601 (Serial No. 13/832,522), 8,998,058 (Serial No.
`14/282,494), 8,991,677 (Serial No. 14/283,729), 8,752,749
`(Serial No. 13/118,210), 8,196,795 (Serial No. 12/856,099), and
`7,793,812 (Serial No. 12/031,628)
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`Declaration of Dr. Gregory S. Fischer
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`U.S. Patent No. 5,383,880 to Hooven (“Hooven”)
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`U.S. Patent App. Pub. No. 2005/0131390 to Heinrich et al.
`(“Heinrich”)
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`U.S. Patent No. 5,865,361 to Milliman et al. (“Milliman”)
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`U.S. Patent No. 7,524,320 to Tierney et al. (“the ’320 patent”)
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`U.S. Patent No. 8,196,795 to Moore et al. (“the ’795 patent”)
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`U.S. Patent No. 8,752,749 to Moore et al. (“the ’749 patent”)
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`U.S. Patent No. 5,779,130 to Alesi et al. (“Alesi”)
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`[Reserved]
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`[Reserved]
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`U.S. Patent No. 6,783,524 to Anderson et al. (“the ’524 patent”)
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`IS1014-IS1028
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`[Reserved]
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`IS1029
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`Webster’s Ninth New Collegiate Dictionary (1991)
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`ii
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`Proceeding No. IPR2018-00935
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`Supplemental Declaration of Gregory S. Fischer (“Fischer
`Supp. Decl.”)
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`U.S. Pat. No. 5,954,259 to Viola et al. (“Viola”)
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`U.S. Pat. No. 5,653,374 to Young et al. (“Young”)
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`Transcript of deposition of Dr. William Cimino, May 29, 2019
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`IS1030
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`IS1031
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`IS1032
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`IS1033
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`Proceeding No. IPR2018-00935
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`I.
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`INTRODUCTION
`The Board should deny Patent Owner’s Motion to Amend (“MTA”) seeking
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`to substitute proposed claims 19-24 (“substitute claims”) for original claims 1-5,
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`and 16. MTA at 1. For the reasons discussed below, Petitioner requests that the
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`Board deny the MTA because each substitute claim: (1) introduces new matter;
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`and (2) is obvious over the prior art.
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`II. THE SUBSTITUTE CLAIMS INTRODUCE NEW MATTER
`An MTA may not present substitute claims that introduce new subject
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`matter. 35 U.S.C. § 316(d); 37 C.F.R. § 42.121(A)(2)(ii). New matter is any
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`addition to the claims without support in the original disclosure. TurboCare Div.
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`of Demag Delaval Turbomach. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir.
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`2001). And a claim element without support in the original disclosure merits a
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`rejection under 35 U.S.C. § 112 for lack of written description support. In re
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`Rasmussen, 650 F.2d 1212, 1214 (C.C.P.A. 1981). When amending a claim to add
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`a new claim element, the disclosure as filed must “actually or inherently disclose
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`the claim element” to satisfy the written description requirement PowerOasis, Inc.
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`v. T-Mobile USA, Inc., 522 F.3d 1299, 1306-07 (Fed. Cir. 2008). And pursuant to
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`35 U.S.C. § 316(d), the Board may properly consider Section 112 and rely on it to
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`reject proposed substitute claims, as it should here. See, e.g., Apple Inc. v.
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`Valencell, Inc., Case No. IPR2017-00315, Paper 45 at 44 (PTAB May 31, 2018)
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`(“[W]e agree with Petitioner that the proposed substitute claims do not pass muster
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`under 35 U.S.C. § 112 because they are indefinite.”).
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`Here, each of the substitute claims includes the following amendment: “said
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`motor is configured to receive power from for attachment to a power source
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`independent of said housing connector attachment to the surgical instrument
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`system, and wherein such that.” MTA at 16, 23. However, this amendment does
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`not have written description support (and thus introduces new matter) because the
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`portions of the ’677 patent and all of its priority applications identified by Patent
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`Owner clearly teach the opposite; namely, that “attachment” of the power source to
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`the motor (i.e., an electrical connection that allows current to flow there between)
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`is dependent on the housing connector’s attachment to the surgical instrument
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`system.
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`More specifically, the ’677 patent discloses that “switch portion 520 …
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`movably houses a battery 526 therein,” (shown in Fig. 3) and switch portion 520 is
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`configured to move between a contact state and a non-contact state depending on
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`whether the disposable loading unit is attached to the handheld surgical cutting and
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`stapling instrument 10. ’677 patent, 11:62-24; Fischer Supp. Decl., ¶¶33-36.
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`Accordingly, the ’677 patent discloses no means for “attaching” the motor to
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`the power source apart from attaching the housing of the disposable loading unit or
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`the tool mounting portion to the surgical instrument system. Id. Consequently,
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`“attachment” of the motor to the power source is necessarily dependent on the
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`housing connector’s attachment to the surgical instrument system, in direct
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`contradiction with the requirements of the amended claims.
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`In sum, the alternative embodiment contemplated by the substitute claims
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`has no written description support in the ’677 patent and thus constitutes the
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`impermissible introduction of new matter.
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`III. THE SUBSTITUTE CLAIMS ARE OBVIOUS
`A.
`Substitute claims 19-22 and 24 are obvious over Viola in view of
`Heinrich
`Viola discloses a surgical cutting and stapling instrument (surgical stapler
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`10) in which the power source (power cells 45a-b) and the motor (motor assembly
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`22) both reside within the same housing (handle portion 12, excluding trigger 44).
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`The power cells 45a-b and motor assembly 22 are highlighted in red, the housing is
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`highlighted in yellow, and trigger 44 is highlighted in blue in Figure 2a below.
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`Fischer Supp. Decl., ¶¶38-40; Viola, Abstract, 4:18-57, Figs. 1, 2a.
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`Motor
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`Housing
`
`Trigger (replaceable with electro-
`mechanical assembly 619)
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`It would have been obvious in view of Heinrich to combine Viola’s
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`Power source
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`
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`instrument 10 with Heinrich’s surgical instrument system (actuation assembly 612,
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`monitor 614, and robot 616). Fischer Supp. Decl., ¶¶41-50; see also IPR2018-
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`00934, Paper No. 9 at 20-21 (instituting review on the basis that the challenged
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`claims would have been obvious over Heinrich in view of Hooven’s motor-
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`powered surgical stapler); IPR2018-00935, Paper No. 9 at 23-27 (same).
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`Specifically, it would have been obvious to (1) incorporate the components inside
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`Viola’s handle portion 12 (e.g., motor assembly 22 and power cells 45a-b) into
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`Heinrich’s housing, and (2) replace or actuate Viola’s trigger 44 with Heinrich’s
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`electromechanical assembly 619, which is also included in the housing of
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`disposable loading unit 618 and is controlled by Heinrich’s robotic surgical system
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`as shown below in Figure 8. Id.
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`Disposable loading unit 618
`containing electromechanical
`assembly 619
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`Robot arm 616 of robotic
`system that controls electro-
`mechanical assembly 619
`
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`The resulting device (the Viola/Heinrich loading unit, highlighted in yellow)
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`is shown below connected to Heinrich’s robotic arm in the composite image of
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`Heinrich’s Fig. 9 with Viola’s Fig. 1:
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`Housing, which includes
`motor and power source
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`Trigger (replaceable
`with Heinrich’s elec-
`tro-mechanical actu-
`ation assembly 619)
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`
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`Heinrich’s housing of head
`portion 640, including elec-
`tromechanical assembly 619,
`modified to include Viola’s
`motor and power source
`When, as here, “there are a finite number of identified, predictable solutions,
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`a person of ordinary skill has good reason to pursue the known options within his
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`or her technical grasp.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
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`In this case, Viola describes one predictable solution for manipulating the surgical
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`instrument (by hand) and Heinrich describes another predictable solution (using a
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`robotic system). Heinrich, ¶132, Fig. 7; Fischer Supp. Decl., ¶43.
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`A POSITA would have been motivated to configure Viola’s instrument 10
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`for operable attachment to Heinrich’s robotic system for several reasons.1 For
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`example, as shown by Heinrich, making a handheld surgical stapler compatible
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`with a robotic system was desirable. Fischer Supp. Decl., ¶¶44-47. Indeed,
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`Heinrich expressly motivates replacing one or more manual actuators, e.g., as
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`shown below in Heinrich’s Figure 1, with electromechanical assembly 619, which
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`is controlled by Heinrich’s robotic system as shown above in Figure 8. Id.
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`Housing
`
`Fig. 1
`
`Fig. 9
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`Actuators replaceable with
`robot-controlled electro-
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`mechanical assembly 619
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`1 See also IPR2018-00934, Paper No. 9 at 20 (“Petitioner demonstrates adequate
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`Housing, which includes
`robot-controlled electro-
`mechanical assembly 619
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`
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`reasoning to combine the teachings of Hooven with Heinrich”); IPR2018-00935,
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`Paper No. 9 at 24 (same).
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`Heinrich provides additional examples of replacing the manual actuators of various
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`handheld tools with a robotically controlled electromechanical assembly 619 to
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`create loading units that can be removably attached to the robotic system. Compare
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`Heinrich, Figs. 5, 6 with Heinrich, Figs. 11, 10; see also Petition at 27 (illustrating
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`same). And Heinrich specifically envisions the use of “locally powered” surgical
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`instruments, like the instruments disclosed in Viola. Heinrich, ¶131; Fischer Supp.
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`Decl., ¶46. Accordingly, a POSITA would have recognized that Heinrich’s robotic
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`system is an effective and efficient mechanism for manipulating handheld surgical
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`staplers, like Viola’s instrument 10. Fischer Supp. Decl., ¶47.
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`Further motivation, as recognized by the ’677 patent, is provided by the
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`prior art teaching that “[m]any [robotic] systems are disclosed in [the prior art]”
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`and that “robotic (or ‘telesurgical’) systems . . . increase surgical dexterity [and]
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`permit a surgeon to operate on a patient in an intuitive manner.” ’677 patent,
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`15:26-29; see also Anderson, 2:37-55 (describing advantages of robotic systems
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`over manual systems; e.g. “The surgeon can [also] typically perform the surgical
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`procedure at [a] location remote from the patient”). Notably, that same prior art
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`also teaches that loading units for robotic systems “may include OEM parts” from
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`handheld instruments, like the parts disclosed in Viola, “to reduce costs and for
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`manufacturing convenience.” Anderson, 7:6-7, see also 15:8-13. Thus, like the
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`inventors in Anderson, a POSITA modifying Viola’s instrument for use with
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`Heinrich’s robotic system would not move Viola’s power source into Heinrich’s
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`robotic system because such a modification would significantly increase the cost
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`and complexity of the task. Fischer Supp. Decl., ¶¶48-49.
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`Moreover, such a modification of Viola would have been well within a
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`POSITA’s abilities. Indeed, it would have been merely the application of a known
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`technique (adapting a handheld surgical instrument for use with a robotic system
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`by replacing manually actuatable triggers with robotically controlled actuators) to a
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`known system (Viola’s instrument) in the same field of endeavor (surgical staplers)
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`in a known way. Fischer Supp. Decl., ¶50; Anderson, 7:6-15; 18:25-49, Figs., 4-9,
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`12A-D, 20, 26-36; Heinrich, Figs. 1, 5, 6, 9-12; KSR, 550 U.S. at 417; see also
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`’677 patent, 17:6-12 (conceding that a POSITA would have known how to use a
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`“wide variety of alternative robotic structures.”). In combination, each element
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`(Heinrich’s robot and Viola’s instrument) merely performs the same function as it
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`does separately. Fischer Supp. Decl., ¶50. And the combination of Viola and
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`Heinrich proposed here would have yielded predictable results without
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`significantly altering or hindering the functions performed by Viola’s device. Id.
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`As shown in the claim chart below, the Viola/Heinrich loading unit discloses
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`each limitation of substitute claims 19-22 and 24.
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`140.
`See, e.g., Viola, 6:3-20, 6:60-67, Fig. 5; Fischer Supp. Decl., ¶¶59-61, 79, 86,
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`relative to said carrier and
`[19.3] an anvil supported
`
`ably supporting a cartridge assembly
`Carrier (“housing channel 80”) oper-
`
`
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`(“fastener retaining
`Cartridge assembly
`
`cartridge 90”)
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`87, 139.
`See, e.g., Viola, 5:44-6:59, 7:14-55, Figs. 5, 8; Fischer Supp. Decl., ¶¶74, 86-
`
`
`
`loading unit) for the operation of the disposable loading unit
`ment of electro-mechanical assembly 619 to operate, the Viola/Heinrich
`least one control motion (e.g., the movements to position, and the move-
`Heinrich’s robotic surgical system is configured to selectively generate at
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`
`
`a surgical instrument (Heinrich’s robotic surgical system)
`operably attached (via attachment platform 642 and mounting flange 636) to
`A disposable loading unit (the Viola/Heinrich loading unit) configured to be
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`4, 8-9; Petition at 49-50; Fischer Decl., ¶ 191; Fischer Supp. Decl., ¶¶107, 138.
`See, e.g., Viola, Abstract, Figs. 1-2; Heinrich, ¶¶132-33, 136-37, 191. Figs. 1-
`Viola/Heinrich loading unit
`
`assembly therein;
`supporting a cartridge
`[19.2] a carrier operably
`
`loading unit comprising:
`loading unit, said disposable
`operation of said disposable
`one control motion for the
`to selectively generate at least
`instrument which is configured
`attached to a surgical
`unit configured to be operably
`[19.1] A disposable loading
`Substitute Claims
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`Proceeding No. IPR2018-00935
`Attorney docket No. 11030-0049IP3
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`9
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`shaft portion of the housing
`at least partially supported within the
`tridge coupling 76 and drive shaft 42)
`alone or in combination with car-
`Rotary drive (axial drive screw 78
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`
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`
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`Fig. 5
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`142.
`See, e.g., Viola, 5:43-7:13, 7:56-8:16, Figs. 5, 9-10; Fischer Supp. Decl., ¶¶80,
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`platform 642 and “protrusions 638)
`ing to the surgical instrument (attachment
`Means for removably attaching said hous-
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`portion of the housing
`80) coupled the shaft 8
`Carrier (housing channel
`
`housing;
`partially supported within said
`[19.5] a rotary drive at least
`
`Housing (housing of head portion 640 and shaft 14)
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`Fischer Supp. Decl., ¶¶54-61, 141.
`See, e.g., Heinrich, ¶134, Fig. 7; Viola, 4:18-39, Figs. 1-2a; Petition at 58-59;
`
`surgical instrument;
`attaching said housing to the
`including means for removably
`said carrier, said housing
`[19.4] a housing coupled to
`
`Fig. 5
`
`motion of cam roller 104)
`least one control motion thereto (e.g., the
`closed positions upon application of at
`and movable from an open position to
`tive to the carrier by flanges 84a and 84b
`Anvil (anvil member 86) supported rela-
`
`Viola/Heinrich loading unit
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`control motion thereto;
`upon application of at least one
`position to closed positions
`being movable from an open
`Substitute Claims
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`
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`Proceeding No. IPR2018-00935
`Attorney docket No. 11030-0049IP3
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`10
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`
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`cartridge coupling 76
`set 24, drive shaft 42, and
`drive (e.g., 78) via gear
`interfaces with the rotary
`The motor (22) operably
`
`
`
`
`
`Viola, Figs. 2, 8, 9
`
`screw 78
`Axial drive
`
`Motor assembly 22
`
`Viola, Fig. 2a Viola/Heinrich loading unit
`
`
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`113-115, 143.
`See, e.g., Viola, 4:40-5:12, 7:56-8:16, Figs. 2a-b; Fischer Supp. Decl., ¶¶65-73,
`Viola/Heinrich loading unit
`
`
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`Patent Owner’s apparent construction of this term.
`tachment” to the surgical instrument system under
`(45a-b) independent of the housing connector “at-
`configured for “attachment” to the power source
`rich loading unit’s housing. The motor (22) is thus
`supported within head portion 640 of the Viola/Hein-
`(power cells 45a-b) are both included in and therefore
`Viola’s motor (motor assembly 22) and power source
`
`to the surgical instrument; and
`instrument is operably coupled
`said housing to the surgical
`means for removably attaching
`said power source when said
`selectively receive power from
`wherein said motor can only
`instrument system, and
`attachment to the surgical
`said housing connector
`power source independent of
`configured for attachment to a
`wherein said motor is
`apply a rotary motion thereto,
`rotary drive to selectively
`operably interfacing with said
`within said housing and
`[19.6] a motor supported
`Substitute Claims
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`
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`Proceeding No. IPR2018-00935
`Attorney docket No. 11030-0049IP3
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`11
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`ated when the Viola/Heinrich loading unit is attached to the robotic system.
`assembly 619 that replaces trigger 44 to move link bar 48 can only be actu-
`the power source to the motor, but the robot-controlled electromechanical
`spective terminals T5, T6 (or T1, T2) to permit power to be supplied from
`link bar 48 must be moved to connect the middle terminals T3, T4 with re-
`the housing connector is attached to the surgical instrument system because
`The motor can only selectively receive power from the power source when
`
`
`
`Viola, Fig. 2b
`
`motor and the power source
`assembly 46 to connect the
`T6 (or T1, T2) in switching
`with respective terminals T5,
`nects middle terminals T3, T4
`Movement of link bar 48 con-
`
`
`
` Viola, Fig. 2a Viola/Heinrich loading unit
`
`
`
`
`sembly 619, controls switching assembly 46.
`and distally by Heinrich’s electromechanical as-
`housing. Link bar 48, which is moved proximally
`also included in the Viola/Heinrich loading unit’s
`Viola’s switching assembly 46 and link bar 48 are
`
`Viola/Heinrich loading unit
`
`Substitute Claims
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`Proceeding No. IPR2018-00935
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`12
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`position to eject said staples from said cartridge assembly
`Sled (“sled 120”) movable between a start position and an end
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`
`
`position
`Ending
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`
`
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`position
`Starting
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`
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`See, e.g., Viola, 5:44-7:13, Fig. 5; Fischer Supp. Decl., ¶¶62-70, 146.
`
`See, e.g., Viola, 5:59-6:59, Fig. 5; Fischer Supp. Decl., ¶¶81, 145.
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`70, 144.
`See, e.g., Viola, 5:44-7:13, 7:56-8:16, Figs. 5, 9-10; Fischer Supp. Decl., ¶¶62-
`Viola/Heinrich loading unit
`
`motion thereto from the motor
`78) upon the application of a rotary
`gitudinal axis of axial drive screw
`which moves axially (along the lon-
`the rotary drive (78) by bearing 38,
`and follower nut 94) coupled with
`104, beam 100, follower housing 95,
`sled 120, cam beam 108, cam roller
`Linear member (cutting blade 130,
`
`
`
`Fig. 5
`
`Direction of axial movement
`
`cartridge assembly.
`eject said staples from said
`position and an end position to
`movable between a start
`linear member comprises a sled
`unit of claim 20, wherein said
`[21] The disposable loading
`stored therein.
`plurality of staples removably
`cartridge assembly comprises a
`unit of claim 19, wherein said
`[20] The disposable loading
`
`thereto from said motor.
`application of a rotary motion
`moves axially upon the
`with said rotary drive which
`[19.7] a linear member coupled
`Substitute Claims
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`Proceeding No. IPR2018-00935
`Attorney docket No. 11030-0049IP3
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`13
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`instrument”).
`claimed “means for removably attaching said housing to the surgical
`patent’s engagement nubs 254,” which is a structure corresponding to the
`protrusions 638 are “the same as, or, at a minimum, equivalent to, the ’677
`See element [19.4]; see also Petition at 58-59 (explaining why Heinrich’s
`
`instrument;
`said housing to the surgical
`means for removably attaching
`[24.3] a housing including
`
`
`
`80, and fastener retainer cartridge 90)
`End effector (anvil member 86, channel
`
`See, e.g., Viola, 5:44-6:44, Fig. 1; Fischer Supp. Decl., 97, 149.
`
`See element [19.1].
`
`Decl., ¶¶59-64, 77, 147.
`and the cartridge assembly); see also Viola, 6:40-44, Fig. 5; Fischer Supp.
`knife (cutting blade 130) configured to incise tissue captured between the anvil
`See element [19.7] (confirming that the linear member further comprises a
`Viola/Heinrich loading unit
`
`[24.2] an end effector;
`said loading unit comprising:
`operation of said loading unit,
`one control motion for the
`to selectively generate at least
`instrument which is configured
`attached to a surgical
`configured to be operably
`[24.1] A loading unit
`assembly.
`said anvil and said cartridge
`incise tissue captured between
`comprises a knife configured to
`linear member further
`unit of claim 21, wherein said
`[22] The disposable loading
`Substitute Claims
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`
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`Proceeding No. IPR2018-00935
`Attorney docket No. 11030-0049IP3
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`14
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`See element [19.7].
`
`See element [19.6].
`
`See element [19.5].
`Viola/Heinrich loading unit
`
`thereto from said motor.
`application of a rotary motion
`moves axially upon the
`with said rotary drive which
`[24.6] a linear member coupled
`to the surgical instrument; and
`instrument is operably coupled
`said housing to the surgical
`means for removably attaching
`said power source when said
`selectively receive power from
`wherein said motor can only
`instrument system, and
`attachment to the surgical
`said housing connector
`power source independent of
`configured for attachment to a
`wherein said motor is
`apply a rotary motion thereto,
`rotary drive to selectively
`operably interfacing with said
`within said housing and
`[24.5] a motor supported
`housing;
`partially supported within said
`[24.4] a rotary drive at least
`Substitute Claims
`
`
`
`
`
`Proceeding No. IPR2018-00935
`Attorney docket No. 11030-0049IP3
`
`15
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`
`
`B. Claim 23 is obvious over Viola in view of Heinrich and, if neces-
`sary, further in view of Young
`Claim 23 recites: “wherein said cartridge assembly is configured to be re-
`
`moved from said carrier and replaced with a different cartridge assembly.” It
`
`would have been obvious in view of Young to modify the Viola/Heinrich loading
`
`unit to use an end effector with a staple cartridge assembly configured to be re-
`
`moved from the staple cartridge carrier and replaced with a different cartridge as-
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`sembly. Fischer Supp. Decl., ¶¶131-35, 154-56.
`
`When, as here, “there are a finite number of identified, predictable solutions,
`
`a person of ordinary skill has good reason to pursue the known options within his
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`or her technical grasp.” KSR, 550 U.S. at 421. Indeed, at the time of the alleged
`
`invention, there were two solutions for replacing a staple cartridge in a surgical sta-
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`pler—replacing the cartridge or replacing a loading unit containing the cartridge.
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`Fischer Supp. Decl., ¶132. Viola describes both. Id.
`
`More specifically, Viola discloses a “cartridge assembly 16 [that] is config-
`
`ured as a separate unit which is detachably connected to the distal end of elongated
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`body portion 14. This enables the apparatus to be reloaded with a fresh cartridge
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`for additional application of rows of fasteners.” See Viola, 5:44-54; Fischer Supp.
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`Decl., ¶133-34.
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`Viola also incorporates by reference “the contents” of U.S. Pat. App. No.
`
`08/287,455. Viola, 1:7-11. A POSITA would have understood that this statement
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`
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`Proceeding No. IPR2018-00935
`Attorney docket No. 11030-0049IP3
`
`16
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`
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`
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`incorporates all of the ’455 application into Viola as if it were set out expressly ra-
`
`ther than through incorporation. Fischer Supp. Decl., ¶134. Young is a continua-
`
`tion of the ’455 application and therefore includes the same disclosure as the ’455
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`application.
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`Notably, Young, which discloses an embodiment very similar to Viola’s, is
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`assigned to the same company as Viola, and names many of the same inventors,
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`discloses that “the staple cartridge 44 can be removable so that … staple cartridge
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`44 can be removed and replaced with a loaded staple cartridge.” Young, 8:26-32,
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`Fig. 4; Fischer Supp. Decl., ¶134. And it was known at the time of the alleged in-
`
`vention that either solution could be used. See, e.g., Alesi, 9:20-35, Figs. 4, 14
`
`(disclosing both solutions as alternative embodiments); Fischer Supp. Decl., ¶134.
`
`If Viola is deemed not to disclose the Young subject matter incorporated by
`
`reference, it would have been obvious to combine the Viola/Heinrich loading unit
`
`with Young to arrive at the same subject matter. Fischer Supp. Decl., ¶135. A
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`POSITA implementing the Viola/Heinrich loading unit with a replaceable staple
`
`cartridge would have been motivated to combine the Viola/Heinrich loading unit
`
`with Young because Heinrich conveniently and explicitly directs a POSITA to
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`Young’s parent application. Id.; Viola, 1:7-11.
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`
`
`Proceeding No. IPR2018-00935
`Attorney docket No. 11030-0049IP3
`
`17
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`
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`IV. CONCLUSION
`For the above reasons, Patent Owner’s Motion to Amend should be denied.
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`
`
`Date: June 11, 2019
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`/John C. Phillips/
`John C. Phillips, Reg. No. 35,322
`Steven Katz, Reg. No. 43,706
`Ryan O'Connor, Reg. No. 60,254
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 858-678-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
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`Proceeding No. IPR2018-00935
`Attorney docket No. 11030-0049IP3
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`18
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`
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`Proceeding No. IPR2018-00935
`Attorney docket No. 11030-0004IP3
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned certi-
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`fies that on June 11, 2019, a complete and entire copy of this Petitioner’s Opposi-
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`tion to Patent Owner’s Motion to Amend and accompanying Exhibits were pro-
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`vided via email to the Patent Owner by serving the email correspondence ad-
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`dresses of record as follows:
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`
`
`Anish R. Desai
`Elizabeth Stotland Weiswasser
`Robert S. Magee
`Adrian Percer
`Christopher T. Marando
`Christopher M. Pepe
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`
`Email: Ethicon.IPR.Service@weil.com
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`/Diana Bradley/
`
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
`
`
`
`
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