UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
`
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`INTUITIVE SURGICAL, INC.
`Petitioner
`
`v.
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`Ethicon LLC
`Patent Owner
`
`______________
`
`
`Case IPR2018-00935
`U.S. Patent No. 8,991,677
`
`_______________
`
`
`PETITIONER’S REPLY TO
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`INTUITIVE SURGICAL, INC.
`Petitioner
`
`v.
`
`Ethicon LLC
`Patent Owner
`
`______________
`
`
`Case IPR2018-00935
`U.S. Patent No. 8,991,677
`
`_______________
`
`
`PETITIONER’S REPLY TO
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`Proceeding No. IPR2018-00935
`Attorney docket No. 11030-0049IP3
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`TABLE OF CONTENTS
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`I.
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`Introduction ......................................................................................................... 1
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`II. Claim Construction ............................................................................................. 1
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`A. Ethicon’s Term 2: “[disposable] loading unit comprising: … a motor …
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`wherein said motor is configured to receive power from a power source such that
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`said motor can only selectively receive power from said power source when said
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`means for removably attaching said housing to the surgical instrument is
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`operably coupled to the surgical instrument” (Claims 1, 16) ................................. 2
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`B. Ethicon’s Term 1: “stapling sub-system comprising: … an electric motor
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`… wherein said electric motor is operably disconnected from a power source
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`when said housing is not attached to the surgical instrument system, and wherein
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`said electric motor is operably connected to the power source when said housing
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`is attached to the surgical instrument system” (Claims 6, 17) ............................. 12
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`III. The ’677 Patent Is Obvious ............................................................................ 15
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`A. Hooven in View of Heinrich, in further View of Alesi and Milliman,
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`Renders Obvious the Challenged Claims ............................................................. 15
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`B. A POSITA would Have Been Motivated to Combine Hooven and Heinrich
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`
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` ..................................................................................................................... 18
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`C.
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`Fischer’s Testimony Is Reliable and Entitled to Weight ............................ 22
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`IV. Conclusion ...................................................................................................... 26
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`EXHIBITS
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`IS1001
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`U.S. Patent No. 8,991,677 to Moore et al. (“the ’677 patent”)
`
`IS1002
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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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`IS1003
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`Declaration of Dr. Gregory S. Fischer
`
`IS1004
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`U.S. Patent No. 5,383,880 to Hooven (“Hooven”)
`
`IS1005
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`U.S. Patent App. Pub. No. 2005/0131390 to Heinrich et al.
`(“Heinrich”)
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`IS1006
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`U.S. Patent No. 5,865,361 to Milliman et al. (“Milliman”)
`
`IS1007
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`U.S. Patent No. 7,524,320 to Tierney et al. (“the ’320 patent”)
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`IS1008
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`U.S. Patent No. 8,196,795 to Moore et al. (“the ’795 patent”)
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`IS1009
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`U.S. Patent No. 8,752,749 to Moore et al. (“the ’749 patent”)
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`IS1010
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`U.S. Patent No. 5,779,130 to Alesi et al. (“Alesi”)
`
`IS1011
`
`[Reserved]
`
`IS1012
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`IS1013
`
`
`
`
`
`[Reserved]
`
`U.S. Patent No. 6,783,524 to Anderson et al. (“the ’524 patent”)
`
`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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`IS1030
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`Supplemental Declaration of Gregory S. Fischer (“Fischer
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`Supp. Decl.”)
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`IS1031
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`U.S. Pat. No. 5,954,259 to Viola et al. (“Viola”)
`
`IS1032
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`U.S. Pat. No. 5,653,374 to Young et al. (“Young”)
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`IS1033
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`Transcript of deposition of Dr. William Cimino, May 29, 2019
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`iii
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`I.
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`Introduction
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`Ethicon effectively concedes that Hooven/Heinrich renders obvious the
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`challenged claims as issued. It tries to save the claims by improperly injecting
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`limitations through claim construction. However, “it is important not to import …
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`limitations that are not part of the claim.” Superguide Corp. v. DirecTV
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`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “Claim terms should be
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`given their plain and ordinary meaning to one of skill in the art at the relevant time
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`and cannot be rewritten by the courts to save their validity.” Hill-Rom Services,
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`Inc. v. Stryker Corp., 755 F.3d 1367, 1374 (Fed. Cir. 2014).
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`II. Claim Construction
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`Intuitive proposed two terms for construction—“means for removably
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`attaching said housing to the surgical instrument,” present in claims 1 and 16, and
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`“drive means for converting the rotational motion produced by said electric motor
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`to translational motion to eject said staples from said staple cartridge body,”
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`present in claims 11 and 18. Petition, 16-22. Intuitive also proposed that all
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`remaining terms be given their plain and ordinary meaning. Id., 16. Ethicon did
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`not address the terms that Intuitive proposed for construction, so they are not
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`addressed further.
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`Ethicon, however, proposed constructions for two additional terms. The first
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`term (“Term 1”) appears in claims 1 and 16:
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`1
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`[disposable] loading unit comprising: … a motor … wherein said
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`motor is configured to receive power from a power source such that
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`said motor can only selectively receive power from said power source
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`when said means for removably attaching said housing to the surgical
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`instrument is operably coupled to the surgical instrument”
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`The second term (“Term 2”) appears in claims 6 and 17:
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`“stapling sub-system comprising: … an electric motor … wherein said
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`electric motor is operably disconnected from a power source when
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`said housing is not attached to the surgical instrument system, and
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`wherein said electric motor is operably connected to the power source
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`when said housing is attached to the surgical instrument system”
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`
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` Despite Ethicon’s proposed constructions, the plain meaning of each term is
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`clear and no construction is necessary.
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`A. Ethicon’s Term 2: “[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)
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`1.
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`Ethicon’s Construction Is Inconsistent with the Plain
`Meaning
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`“Ordinary, simple English words whose meaning is clear and
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`unquestionable, absent any indication that their use in a particular context changes
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`2
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`their meaning, are construed to mean exactly what they say.” Chef America, Inc. v.
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`Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004).
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`Here, Ethicon has not proposed a specific “term” for construction, but rather
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`seeks to rewrite the claims to add a requirement that the motor be “attached” to the
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`power source. In the table below, terms that are the same in the claim language
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`and in Ethicon’s proposed construction are grey-highlighted and terms that are
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`different are yellow-highlighted. The only claim language not in Ethicon’s
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`proposed construction is “configured to receive power from” and “only
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`selectively.” Ethicon replaced these phrases with “attached to” and “said motor
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`cannot receive power from said attached power source when said means for
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`removably attaching said housing to the surgical instrument is decoupled from the
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`surgical instrument,” respectively. Ethicon also inserted the word “attached” into
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`the phrase “said power source.”
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`3
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`Power Term
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`Ethicon’s Construction
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`“[disposable] loading unit comprising:
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`“[disposable] loading unit comprising:
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`… a motor … wherein said motor is
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`… a motor … wherein said motor is
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`configured to receive power from a
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`attached to a power source such that
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`power source such that said motor can
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`said motor can receive power from
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`only selectively receive power from
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`said attached power source when said
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`said power source when said means
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`means for removably attaching said
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`for removably attaching said housing
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`housing to the surgical instrument is
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`to the surgical instrument is operably
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`operably coupled to the surgical
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`coupled to the surgical instrument”
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`instrument, and said motor cannot
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`receive power from said attached
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`power source when said means for
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`removably attaching said housing to
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`the surgical instrument is decoupled
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`from the surgical instrument.”
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`
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`None of the proposed modifications is consistent with the plain and ordinary
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`meaning. IS1030, ¶12. Indeed, there can be no reasonable dispute that the plain
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`meaning of “configured to receive power from” is not “attached to.” Id.; IS1029
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`(Webster’s Dictionary), 3 (defining “configure” to mean “to set up for operation
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`especially in a particular way”), 5 (defining “receive” to mean “to act as a
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`receptacle or container for”); IS1030, ¶12. Ethicon does not identify any
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`dictionary definitions or expert testimony to suggest otherwise. Nonetheless, to the
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`extent the phrase “configured to receive power from” requires a construction (it
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`4
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`
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`does not), then it can be construed to mean “set up for operation to receive power
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`from.” Id.
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`In support of its argument that the Board should read in a requirement that
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`the claimed motor is “attached” to the power source, Ethicon incorrectly argues
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`that the claim describes “two separate requirements describing two separate
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`connections.” POR, 28. Specifically, Ethicon asserts that the claim language
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`requires (i) “the motor be connected to an attached power source,” and (ii) “the
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`connection between the motor and the attached power source be controlled and that
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`the control mechanism ‘only’ permit power to flow when it detects that the DLU is
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`attached to the surgical instrument that operates the tool.” Id.
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`Ethicon’s argument, however, ignores the “such that” claim language that
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`links the two allegedly separate limitations, and which makes clear that the latter of
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`the two clauses (“said motor can only selectively receive power”) defines what the
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`former clause (“said motor is configured to receive power”) means. IS1030, ¶13.
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`Thus, the two clauses are not separate limitations but rather a single limitation
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`requiring no more than the motor be set up (i.e., “configured”) to receive power
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`from the power source only when the housing and surgical instrument are
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`“operably coupled.” Id. Not surprisingly, Ethicon deleted the “such that” claim
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`language in its motion to amend the claims, apparently recognizing that its
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`presence contradicts Ethicon’s desired meaning of the claims. Paper 18, 8, 15-16.
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`Finally, Ethicon’s omission of the term “selectively” from its construction,
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`and thus failure to give meaning to that term, is an admittedly fatal flaw in the
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`proposed construction. See POR, 30-31 (citing NuVasive, Dell, and TMI for the
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`principle that meaning should be given to all of a claim’s terms, which Ethicon’s
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`construction fails to do). Intuitive agrees with Ethicon that every term in a claim is
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`presumed to have a meaning; ignoring a claim term, thereby rendering it
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`superfluous, is improper. See, e.g., Power Mosfet Techs., L.L.C. v. Siemens AG,
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`378 F.3d 1396, 1410 (Fed. Cir. 2004). Consequently, Ethicon’s construction,
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`which renders the term “selectively” superfluous, is flawed and should be rejected.
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`2.
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`Ethicon’s Proposed Constructions Are Not Supported by
`the Specification
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`In support of its argument that the Board should read in a requirement that
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`the claimed motor be attached to the power source, Ethicon also argues “the motor
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`must be configured to receive power independent of whether or not the housing
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`connector is attached to the surgical instrument system. … In other words, the
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`motor has an attached power source even when the housing connector is not
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`attached to the surgical instrument.” Id., 28–29. But the words “independent of
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`whether or not the housing connector is attached to the surgical instrument system”
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`appear nowhere in the claims or specification. In fact, the ’677 patent clearly
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`teaches the opposite, namely, that “attachment” of the power source to the motor
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`(i.e., an electrical connection that allows current to flow there between) is
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`dependent on whether or not the housing connector is attached to the surgical
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`instrument system. IS1030, ¶14.
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`More specifically, when the housing connector is attached to the surgical
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`instrument system, the motor is connected to the power source because the
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`battery’s contacts 528, 530 are in contact with the motor’s contacts 540, 542, 544.
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`In that attached state, the motor is able to receive power from the battery.
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`However, as the ’677 patent explains, “[w]hen retained in [the] ‘pre-use’ or
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`‘disconnected’ position [i.e., when the housing is unattached to the surgical
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`instrument system], the battery contacts 528 and 530 do not contact any of the
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`[motor’s] contacts 540, 542, 544 … to prevent the battery from being drained
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`during non-use.” ’677 patent, 12:20-24 (emphasis added). In other words, when
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`the housing is attached to the surgical instrument system, the motor and battery are
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`connected or attached. But when the housing is disconnected from the surgical
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`instrument system, the motor and battery are purposely unconnected or unattached.
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`Consequently, attachment of the motor and battery vel non is purposely dependent
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`on whether or not the housing is connected to the surgical instrument system,
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`directly contradicting Ethicon’s proposed construction. See, e.g., ’677 patent,
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`12:20-24; IS1030, ¶14. The embodiment shown in Fig. 52 is not materially
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`different in that on/off switch 3024 is configured to move between a contact state
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`(power source and motor connected) and a non-contact state (power source and
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`motor disconnected) depending on whether tool mounting portion 3010 is attached
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`to the robotic system 1000.
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`Thus, Ethicon’s argument that the motor must be configured to receive
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`power independent of whether or not the housing connector is attached to the
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`surgical instrument system has no support in the ’677 patent because there is no
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`disclosure of any means for attaching the motor to the power source apart from
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`attaching the housing to the surgical instrument system. Id.
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`Not surprisingly, Ethicon’s proposed construction, which replaces the phrase
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`“configured to receive power from” with the phrase “attached to,” is inconsistent
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`with other uses of the phrase “configured to receive” in the specification. For
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`example, the specification notes that “tool mounting portion 1300 includes a
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`rotational transmission assembly 2069 that is configured to receive a
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`corresponding rotary output motion from the tool drive assembly 1010 of the
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`robotic system 1000.” ’677 patent, 20:13-16. Applying Ethicon’s proposed
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`construction of “configured to receive” to this example would require that tool
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`mounting portion 1300 include a rotational transmission assembly 2069 “that is
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`attached to” tool drive assembly 1010 of robotic system 1000—even when tool
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`mounting portion 1300 is not attached to robotic system 1000. However, it is clear
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`in the ’677 patent that rotational transmission assembly 2069 is not attached to tool
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`drive assembly 1010 even when tool mounting portion 1300 is not attached to
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`robotic system 1000. Instead, like the claimed motor, which is set up to receive
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`power from the power source only when the housing is attached to the surgical
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`instrument system, rotational transmission assembly 2069 is set up to receive
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`rotary output motion from tool drive assembly 1010 only when tool mounting
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`portion 1300 is attached to tool drive assembly 1010.
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`3.
`
`Ethicon’s Proposed Constructions Improperly Attempt
`to Limit the Claims to a Particular Embodiment when
`the Claims and the Specification are Broader than that
`Particular Embodiment
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`“Though understanding the claim language may be aided by explanations
`
`contained in the written description, it is important not to import … limitations that
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`are not part of the claim. For example, a particular embodiment appearing in the
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`written description may not be read into a claim when the claim language is
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`broader than the embodiment.” Superguide, 358 F.3d at 875.
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`Here, the ’677 patent expressly discloses two embodiments: (i) embodiments
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`where the motor and its power source are in the same housing, and (ii)
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`embodiments where the motor and its power source are not in the same housing.
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`These two embodiments are explained in the specification:
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`The above-described embodiments employ a battery or
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`
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`batteries to power the motors used to drive the end
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`effector components. Activation of the motors is
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`controlled by the robotic system 1000. In alternative
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`Power source is
`inside the same
`housing as the
`motor
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`embodiments, the power supply may comprise
`
`
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`alternating current “AC” that is supplied to the
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`motors by the robotic system 1000. That is, the AC
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`power would be supplied from the system powering
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`the robotic system 1000 through the tool holder and
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`Power source is
`not in the same
`housing as the
`motor
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`adapter.
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`Id., 44:29-36 (emphasis added).
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`More specifically, in the embodiment of Fig. 3, the power source is a
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`moveable battery inside the DLU, which is separated from the motor inside the
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`DLU when the housing is unconnected to the surgical instrument system (i.e., the
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`“pre-use” or “disconnected” position) but which moves when the housing is
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`connected to the surgical instrument system to make contact with the motor. POR,
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`31-32. Another variant of the first type (i.e., motor and power source within same
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`housing) is shown in Fig. 52. Id., 33. It is this first type of embodiment to which
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`Ethicon seeks to limit the claims. 1
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`1 Ethicon’s apparent position is that, because the motor and the battery reside
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`within the same housing, “the motor has an attached power source even when the
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`In the second type of embodiment, the motor and its power source are not in
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`the same housing. Rather, the power for the motor is supplied externally by the
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`robotic system. ’677 patent, 44:32-36.
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`In arguing that its proposed construction is consistent with the specification,
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`Ethicon improperly relies solely on the first type of embodiment. But the patent
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`expressly envisions, and the plain language of the claims clearly covers, both types
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`of embodiments. And there is nothing in the specification or the file history
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`limiting the invention to only the first type of embodiment.
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`Consequently, Ethicon’s proposed construction improperly attempts to limit
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`the scope of this term to a specific embodiment. Tellingly, neither Ethicon, nor its
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`expert, appear to be aware of the ’677 patent’s disclosure of embodiments contrary
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`to Ethicon’s proposed claim construction (POR, 29), which would require that “the
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`motor has an attached power source even when the housing connector is not
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`attached to the surgical instrument.” See also IS1033, 61:2-62:14. Ethicon’s
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`position is plainly wrong because the second embodiment demonstrates that the
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`power source need not be contained within the housing supporting the motor.
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`housing connector is not attached to the surgical instrument system.” POR, 29. As
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`explained in Section II.A.2, however, Ethicon is factually incorrect.
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`Thus, when “the housing connector is not attached to the surgical instrument” the
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`motor does not have “an attached power source.” . POR, 29; IS1033, 70:13-20.
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` Thus, for the reasons explained above, Ethicon’s proposed construction
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`should be rejected because it is inconsistent with the plain meaning, unsupported
`
`by the intrinsic evidence, and overly narrow.
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`B.
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`Ethicon’s Term 1: “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)
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`Ethicon’s construction for Term 1 would achieve a similar effect as the
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`proposed construction for Term 2: it would add a limitation to the claims and
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`would improperly limit the claims to a single type of embodiment described in the
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`specification. The proposed construction would have this effect by (1) replacing
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`the word “operably” with “electrically,” and (2) replacing the phrase “power
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`source” with “attached power source:”
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`These word substitutions are inconsistent with the plain meaning of the
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`claim. First, for the reasons described above, it is inappropriate to read in the
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`limitation that the “power source” must be an “attached power source.” Second,
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`the word “operably” does not mean “electrically.” Indeed, Ethicon’s proposed
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`construction of “operably” is too broad because it is clearly possible for a motor
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`and a power source to have an electrical connection that is not operable. IS1030,
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`¶20. Instead, a POSITA would have understood that the plain meaning of the word
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`“operably” is “fit to use.” See, e.g., IS1029, 4 (defining “operable” as “fit,
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`possible, or desirable to use”); IS1033, 107:2-8, 109:10-110:19, 114:12-19,
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`126:21-127:8; IS1030, ¶19. Third, “operably connected” is similar to “operatively
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`connected,” which “is a general descriptive term frequently used in patent drafting
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`to reflect a functional relationship between claimed components. Generally
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`speaking, and as used in the [patent-at-issue], it means the claimed components
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`must be connected in a way to perform a designated function.” Innova/Pure
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`Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1118 (Fed. Cir.
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`2004). Thus, like the term “operatively,” the term “operably” cannot be used to
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`import a limitation to the claims. See id., 1117-18.
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`Curiously, Ethicon also proposes that “operably connected” be construed as
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`“electrically connected,” while at the same time arguing that “operably
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`disconnected” means “electrically but not physically disconnected.” See POR, 18-
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`20. In addition to finding no support in the specification or claim language, this
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`construction would improperly add the negative limitation “not physically
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`disconnected.”
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`Nonetheless, Ethicon tries to justify this outcome by making the same
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`argument that it did for the first term—that the electric motor must be attached to
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`the power source “independently of the connection between the stapling subsystem
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`housing and the surgical instrument system.” POR, 20. But again, these words are
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`found neither in the claims nor in the specification. The ’677 patent describes both
`
`embodiments where the power source is located in the same housing as the motor,
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`and embodiments where the power source is located outside the housing that
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`contains the motor. Both of which are dependent on whether or not the housing is
`
`connected to the surgical instrument system. And both of which are clearly
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`covered by the challenged claims. Thus, Ethicon’s attempt to inject a negative
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`limitation into the claims should be rejected.
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`Ethicon also incorrectly argues that the word “operably” would be rendered
`
`superfluous, and/or that there would have been no reason to use the modifier
`
`“operably,” if the claims covered “a motor that is physically connected to a power
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`source through the connection between the housing of the stapling sub-system and
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`the surgical instrument system.’” Id., 18-20. On the contrary, the term “operably”
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`has meaning because it is clearly possible for a motor and a power source to be
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`physically connected through the connection between the housing of the stapling
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`sub-system and the surgical instrument system in a way that is not operable.
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`IS1030, ¶¶21-24; IS1033, 126:13-127:8. Thus, the term “operably” makes clear
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`that the motor and the power source must be connected, for example, in a way that
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`that they perform a designated function (i.e., the claimed function of “selectively
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`apply[ing] said rotary motion to said rotary shaft”) when the housing of the
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`stapling sub-system is attached to the surgical instrument system.
`
`III. The ’677 Patent Is Obvious
`
`The Petition established that claims 1-18 are obvious, relying on three
`
`grounds. Claims 1-18 are obvious over Hooven in view of Heinrich; claims 1-5
`
`and 16 are obvious over Hooven in view of Heinrich, in view of Milliman; and
`
`claims 1-5 and 16 are obvious over Hooven in view of Heinrich, in view of Alesi.
`
`Ethicon’s Response does not establish otherwise.
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`A. Hooven in View of Heinrich, in further View of Alesi and
`Milliman, Renders Obvious the Challenged Claims
`
`Ethicon’s sole argument against obviousness is that Hooven/Heinrich
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`purportedly does not disclose the “key inventive power limitations” of the ’677
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`patent. Ethicon does not dispute that Intuitive’s proposed combinations disclose
`
`the other limitations of the ’677 patent, so the other limitations are not addressed
`
`further.
`
`1.
`
`Ethicon’s Arguments for Claims 1 and 16, Based on Its
`Construction for Ethicon’s Term 2, Fail
`
`Ethicon’s argument that Term 2 is not disclosed by Hooven in view of
`
`Heinrich is based primarily on the proposed construction for this term, which, for
`
`the reasons explained above, is incorrect and should not be adopted. There is no
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`separate limitation of an attached power source, and all of Ethicon’s arguments
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`based on that non-existent limitation are unavailing.
`
`
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`Ethicon’s only other argument that the combination of Hooven and Heinrich
`
`does not disclose this limitation is an unexplained and clearly incorrect statement
`
`that “Hooven and Heinrich do not disclose or render obvious any mechanism to
`
`control the delivery of power to the motor such that the motor can only selectively
`
`receive power from the attached power source when the DLU is attached to the
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`surgical instrument.” POR, 62. To the contrary, Hooven in view of Heinrich
`
`discloses a control mechanism (Heinrich’s actuation assembly 612) to limit the
`
`power supply to the motor such that the motor can only selectively receive power
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`when the stapling system (Hooven’s DLU) is attached to the surgical instrument
`
`system (Heinrich’s robotic surgical instrument). Heinrich, ¶¶136-37, Fig. 7;
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`IS1003, ¶¶75-78, 103, 113, 118, 121, 229-30; see IS1033, 152:8-153:19.
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`Notably, Ethicon incorrectly assumes that “Petitioner’s argument is that the
`
`power limitations are rendered obvious by nothing more than a motor that can
`
`receive power when connected to a power source and that cannot receive power
`
`when disconnected from a power source.” POR, 57-58; see also IS2006, ¶153
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`(arguing that “Petitioner’s argument is that Hooven and Heinrich disclose a DLU
`
`that plugs into the power source like a vacuum cleaner plugging into a wall
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`outlet”). That is obviously not the case. In the proposed combination, Heinrich’s
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`16
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`robotic system does much more than supply power. Most importantly, it includes
`
`an actuation assembly 612 “to control the movement and operation of robot 616
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`and disposable loading unit 618.” IS1005, ¶136; IS1033, 152:8-153:19. Thus, the
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`motor in the Hooven/Heinrich loading unit, which is actuated by Heinrich’s
`
`actuation assembly 612, only selectively receives power from the power source in
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`Heinrich’s robotic system when the Hooven/Heinrich loading unit is attached to
`
`the robotic system and is selectively actuated by actuation assembly 612.
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`Relying on its incorrect assumption about Intuitive’s argument, Ethicon
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`incorrectly asserts that “Petitioner would read the limitation to require only:
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`A disposable loading unit configured to be operably attached to a
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`surgical instrument … said disposable loading unit comprising: … a
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`motor … wherein said motor is configured to receive power from a
`
`power source such that said motor can only selectively receives power
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`from said power source when said means for removably attaching said
`
`housing to the surgical instrument is operably coupled to the surgical
`
`instrument”
`
`
`POR, 57-58. Intuitive’s position is that the words should be given their plain and
`
`ordinary meaning, and the Petition explains how Hooven in view of Heinrich
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`discloses this limitation. Petition, 16-17. Thus, it is difficult to comprehend how
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`Intuitive would read any out any aspects of this limitation. To the contrary, it is
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`Ethicon that seeks to improperly alter the meaning of the claims by injecting a
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`limitation that is not present.
`
`2.
`
`Ethicon’s Arguments for Claims 6 and 17, Based on Its
`Construction for Ethicon’s Term 1, Fail
`
`Ethicon’s argument for Term 1 is based entirely on its flawed claim
`
`construction. Ethicon argues that “the claims require that, when the stapling sub-
`
`system is detached from the surgical instrument system, the electric motor is
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`merely operably disconnected (electrically disconnected) and not merely
`
`disconnected.” POR, 52 (emphasis added). The claims cover both alternatives and
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`do not require that the motor be “merely” operably disconnected. Ethicon’s
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`insertion of “merely” echoes its claim construction argument that “operably
`
`disconnected” means “electrically, but not physically disconnected.” For the
`
`reasons explained above, Ethicon’s proposed claim construction should be rejected
`
`and its non-obviousness arguments for this limitation, which are based on its
`
`flawed claim construction proposals, are unavailing.
`
`B. A POSITA would Have Been Motivated to Combine Hooven
`and Heinrich
`
`As explained in the Petition, a POSITA would have been motivated to
`
`combine Hooven and Heinrich with a reasonable expectation of success. Petition,
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`29-32, 38-39; IS1003, ¶¶209-212. Nonetheless, in its Response, Ethicon argues
`
`that: (1) Heinrich discourages a combination with Hooven; (2) the Petition relies
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`on impermissible hindsight; and (3) a POSITA would not have a reasonable
`
`expectation of success. Each of these arguments should be rejected.
`
`1. Heinrich does not discourage a combination with Hooven
`
`Ethicon’s argument that Heinrich discourages a combination with Hooven
`
`misses the mark. Indeed, Ethicon’s argument is based on the assertions that
`
`Heinrich incorporates a reference (Milliman) that explains the advantages of
`
`single-use knifes, and Hooven discloses a reusable knife. POR, 64-65. However,
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`Hooven does not necessarily require a knife, much less a specific type of knife.
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`Hooven, 2:58-63. And Milliman is not part of the proposed combination of
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`Hooven and Heinrich. Thus, Ethicon’s argument that Milliman could somehow
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`discourage the combination of Hooven and Heinrich is irrelevant.
`
`2. The Petition does not rely on hindsight
`
`Ethicon’s argument that the Petition relies on impermissible hindsight
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`because “Petitioner’s sole support for its motivations to combine Hooven with
`
`Heinrich
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