UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`______________________
`
`IPR2018-00933 – U.S. Patent No. 9,084,601
`IPR2018-00934 – U.S. Patent No. 8,998,058
`IPR2018-00935 – U.S. Patent No. 8,991,677
`______________________
`
`SUPPLEMENTAL DECLARATION OF DR. WILLIAM CIMINO
`
`
`Ethicon Exhibit 2014.001
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`______________________
`
`IPR2018-00933 – U.S. Patent No. 9,084,601
`IPR2018-00934 – U.S. Patent No. 8,998,058
`IPR2018-00935 – U.S. Patent No. 8,991,677
`______________________
`
`SUPPLEMENTAL DECLARATION OF DR. WILLIAM CIMINO
`
`
`Ethicon Exhibit 2014.001
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`THE SUBSITUTE CLAIMS FOR THE 601 PATENT DO NOT
`EXPAND THE SCOPE OF THE CLAIMS .................................................... 4
`III. THE SUBSTITUTE CLAIMS FOR THE 601 PATENT ARE NOT
`INDEFINITE ................................................................................................... 6
`IV. THE SUBSITUTE CLAIMS FOR THE POWER PATENTS DO
`NOT INTRODUCE NEW MATTER ............................................................. 8
`V. A POSITA WOULD NOT HAVE BEEN MOTIVATED TO
`COMBINE HEINRICH WITH VIOLA ........................................................ 14
`A. Overview of the Prior Art .................................................................... 15
`1.
`Heinrich ..................................................................................... 15
`2.
`Viola .......................................................................................... 16
`A POSITA Would Have Understood That Petitioner’s Proposed
`Combination Is Inefficient and Costly ................................................ 19
`A POSITA Would Not Have Had a Reasonable Expectation of
`Success Combining Heinrich with Viola ............................................ 22
`VI. NEITHER TONET OR YOUNG CURE THE DEFICIENCIES
`ASSOCIATED WITH PETITIONER’S PROPOSED
`COMBINATION OF HEINRICH AND VIOLA ......................................... 27
`VII. JURAT ........................................................................................................... 29
`
`
`
`
`B.
`
`C.
`
`
`
`i
`
`Ethicon Exhibit 2014.002
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`
`
`I, Dr. William Cimino, hereby declare as follows:
`
`1.
`
`I have personal knowledge of the facts stated in this supplemental
`
`declaration and, if called upon to do so, could and would attest to these facts under
`
`oath.
`
`2.
`
`I make this supplemental declaration at the request of Ethicon LLC
`
`(“Patent Owner”), in connection with the petitions for inter partes review
`
`submitted by Intuitive Surgical, Inc. (“Petitioner”) for U.S. Patent Nos. 9,084,601
`
`(“the 601 Patent), 8,998,058 (“the 058 Patent”) and 8,991,677 (“the 677 Patent”),
`
`which I will refer to collectively as the “Power Patents.” All statements made
`
`herein of my own knowledge are true, and all statements made herein based on
`
`information and belief are believed to be true. Although I am being compensated
`
`for my time in preparing this supplemental declaration, the opinions articulated
`
`herein are my own, and I have no stake in the outcome of this proceeding or any
`
`related litigation or administrative proceedings.
`
`I.
`
`INTRODUCTION
`3.
`In the preparation of this supplemental declaration, I have reviewed
`
`the relevant portions of the following documents:
`
`
`
`1
`
`Ethicon Exhibit 2014.003
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`Ex. 1001 (058
`Patent)1
`Ex. 1001 (677
`Patent)
`Ex. 1001 (601
`Patent)
`Ex. 1003
`
`Ex. 1005
`
`Ex. 1013
`
`Ex. 1014
`
`U.S. Patent No. 8,998,058 to Moore, et al. (“the 058 Patent”)
`
`U.S. Patent No. 8,991,677 to Moore, et al. (“the 677 Patent”)
`
`U.S. Patent No. 9,084,601 to Moore, et al. (“the 601 Patent”)
`
`Declaration of Dr. Gregory S. Fischer
`
`U.S. Patent App. Pub. No. 2005/0131390 to Heinrich et al.
`(“Heinrich”)
`
`U.S. Patent No. 6,783,524 to Anderson et al. (“the 524
`Patent”)
`
`Oliver Tonet et al., “Comparison of Control Modes of a
`Hand-Held Robot for Laparoscopic Surgery”, Lecture Notes
`in Computer Science, vol. 4190, pp. 429-36 (“Tonet”)
`
`Ex. 1027
`
`Ethicon’s Opening Claim Construction Brief, Ethicon LLC v.
`Intuitive Surgical, Inc., C.A. No. 17-871, D.I. 119 (D. Del.)
`
`Ex. 1029
`
`Webster’s Ninth new Collegiate Dictionary (excerpts)
`
`Ex. 1030
`
`Supplemental Declaration of Dr. Gregory S. Fischer
`
`Ex. 1031
`
`U.S. Patent No. 5,954,259 to Viola et al. (“Viola”)
`
`Ex. 1032
`
`U.S. Patent No. 5,653,374 to Young et al. (“Young”)
`
`Ex. 2006
`
`Declaration of Dr. William Cimino
`
`
`1 I understand that the 601, 058, and 677 Patents share a common specification and
`
`figures and have been provided as Exhibit 1001 in IPR2018-00933, -934 and -935.
`
`I will therefore identify which patent’s specification I am referring to whenever I
`
`cite to Exhibit 1001 in my declaration.
`
`
`
`2
`
`Ethicon Exhibit 2014.004
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`Ex. 2015
`
`Excerpts of American Heritage College Dictionary 3d (1993)
`
`Ex. 2016
`
`Deposition Transcript of Dr. Gregory Fischer (July 11, 2019)
`
`Ex. 2017
`
`Excerpts of Dictionary of Mechanical Engineering (1985)
`
`4.
`
`I have also reviewed Patent Owner’s motions to amend and
`
`Petitioner’s oppositions thereto in each (1985 of the IPR proceedings.
`
`5.
`
`The opinions I have formed as explained herein are informed by and
`
`based on my consideration of the documents listed above and those documents
`
`cited herein, as well as my own knowledge and experience based upon my work in
`
`the relevant field of technology, as discussed below.
`
`6.
`
`I have been informed that in connection with the petition for inter
`
`partes review of the Power Patents, Patent Owner has submitted a motion to
`
`amend the claims of the 601 Patent and contingent motions to amend the claims of
`
`the 058 and 677 Patents. I have been asked to provide my opinions on the
`
`arguments made in opposition to the motions to amend by Petitioner and
`
`Petitioner’s expert, Dr. Gregory S. Fischer.
`
`7.
`
`Summaries of my qualifications, my understanding of the law, the
`
`level of ordinary skill in the art at the time of the claimed invention, and the
`
`background of the technologies disclosed in the Power Patents are contained in
`
`Exhibit 2006, which is my initial declaration submitted in connection with
`
`IPR2018-00934 (the 058 Patent) and IPR2018-00935 (the 677 Patent). While I did
`
`
`
`3
`
`Ethicon Exhibit 2014.005
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`not originally submit an initial declaration in connection with IPR2018-00933 (the
`
`601 Patent), I understand that Exhibit 2006 has now also been filed in that IPR
`
`proceeding. All of the challenged patents share a common specification, and so the
`
`above referenced sections apply equally to the 601 Patent.
`
`II. THE SUBSITUTE CLAIMS FOR THE 601 PATENT DO NOT
`EXPAND THE SCOPE OF THE CLAIMS
`8.
`I have been informed by counsel that an amended claim may not
`
`enlarge the scope of the claims of the patent. I understand that Patent Owner has
`
`proposed the following amendments 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;”
`
` “a contact arrangement supported by said housing and configured to permit
`
`power to be supplied from said power source to the motor only when the
`
`housing is operably attached to the actuator arrangement.”
`
`I understand that these are not the only amendments to the 601 Patent that Patent
`
`Owner has proposed in its substitutions but that Petitioner only argues that Patent
`
`Owner’s proposal to remove the claim term “arrangement” expands the claims of
`
`the 601 Patent. See IPR2018-00933, Paper 19 at 1-2; see also Ex. 1030, ¶¶ 27-28.
`
`9.
`
`Petitioner and Dr. Fischer argue that removing the term
`
`“arrangement” expands the claim scope of the 601 Patent because the term
`
`
`
`4
`
`Ethicon Exhibit 2014.006
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`“arrangement” requires that the claimed actuator “be a ‘combination of things
`
`arranged in a particular way.’” See Ex. 1030, ¶ 28. I disagree.
`
`10. This argument appears to be based on a definition of “arrangement”
`
`that Petitioner offers from Webster’s Dictionary, however Petitioner ignores the
`
`first portion of the very same definition it relies on. In addition to being a
`
`“combination of things arranged in a particular way,” Petitioner’s dictionary
`
`evidence also discloses that an arrangement may be “a structure … arranged in a
`
`particular way[.]” Under this interpretation, the term “arrangement” would simply
`
`indicate that the actuator is a structure arranged in a particular way – not that the
`
`structure must necessarily be a combination of elements.
`
`11. Additionally, I have reviewed the specification of the 601 Patent, and
`
`Petitioner’s argument is contrary to the use of both “actuator” and “arrangement”
`
`in the patent.
`
`12. First, the 601 Patent describes examples of actuators that are a
`
`“structure.” For example, in connection with the embodiment in Figure 3, the 601
`
`Patent describes control rod 52, which is used to actuate the battery holder in the
`
`DLU. Ex. 1001 at 13:59-61. This control rod is an actuator that operates to
`
`activate or move the battery holder to operate the surgical instrument. Id.
`
`Furthermore, the control rod is a structure arranged in a particular way, it is not a
`
`combination of things. Id.
`
`
`
`5
`
`Ethicon Exhibit 2014.007
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`13. Second, the 601 Patent discloses “arrangements” that are a structure
`
`arranged for a specific purpose, not a combination of things. For example, in the
`
`embodiment disclosed in Figure 53, a screw nut on a threaded screw rod is
`
`described as a “screw nut arrangement.” Ex. 1001 at 39:58-62. Again, this
`
`“arrangement” is not a combination of things, but is a structure arranged in a
`
`particular way.
`
`14. Thus, removing the term “arrangement” in the substitute claims would
`
`not enlarge the scope of the claims by removing the requirement that the actuator
`
`be a “combination of things,” as Petitioner suggests. This is also consistent with
`
`how a person of ordinary skill in the art (“POSITA”) would understand the term
`
`“arrangement” - i.e., that it would not on its own impose a narrowing limitation
`
`that would result in broader claims if removed from the substitute claims.
`
`III. THE SUBSTITUTE CLAIMS FOR THE 601 PATENT ARE NOT
`INDEFINITE
`15.
`I understand that Petitioner argues the term “actuator in a surgical
`
`instrument system” is indefinite because a POSITA would not have had a
`
`reasonable certainty as to what the patentee intended to be understood as the
`
`actuator. I disagree.
`
`16. As a preliminary matter, I understand that the proposed claim
`
`amendments would add the limitation that the actuator is “in a surgical instrument
`
`
`
`6
`
`Ethicon Exhibit 2014.008
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`system.” IPR2018-00933, Paper 18 at 4. This additional claim language would
`
`inform a POSITA as to the proper scope of the term “actuator.”
`
`17.
`
`I further understand that the Patent Owner has previously argued that
`
`an “actuator” is “[a]n electric, hydraulic, mechanical or pneumatic device, or
`
`combinations of these, to effect some predetermined linear or rotating movement.”
`
`See Ex. 2017, 2 (Dictionary of Mechanical Engineering); see also Ex. 1027 at 22-
`
`23 (Ethicon’s Opening Claim Construction Brief). I also understand that Petitioner
`
`offered a similar definition, arguing that an “actuator arrangement” includes
`
`“mechanisms for controlling and moving (i.e., ‘actuating’).” See IPR2018-00933,
`
`Paper 2 at 28-29. Both of these constructions agree that an actuator is a
`
`mechanism for movement. Applying either construction in this instance would
`
`result in the same conclusions.
`
`18. A POSITA would understand that this term refers to a structure in the
`
`surgical instrument system for actuating the surgical tool, such as (1) the control
`
`rod 52 on the surgical instrument system, or (2) the rotatable bodies 1250 on the
`
`robot arm of the surgical instrument system.
`
`19. As one example, the 601 Patent describes a control rod 52 that
`
`actuates a battery holder and battery when the housing is coupled to the surgical
`
`instrument system’s control rod (i.e., an actuator). Ex. 1001 at 13:59-61. In this
`
`embodiment, the control rod is an actuator in a surgical instrument system.
`
`
`
`7
`
`Ethicon Exhibit 2014.009
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`20. As another example, the 601 Patent describes rotatable bodies 1250
`
`contained on the robot arm of the surgical instrument system that rotate (i.e.,
`
`actuate) the rotatable bodies on tool mounting portion 1300. See also Ex. 1001 at
`
`18:17-22. In this embodiment, the rotatable bodies are an actuator, as they operate
`
`to control the surgical tool, and they are located in the surgical instrument system
`
`(i.e., on the robot arm of the system).
`
`21. Each of these examples are the claimed actuators because the claimed
`
`housing includes engagement members for removably coupling the housing to
`
`these components, and these components are responsible for effecting linear or
`
`rotatable motion (i.e., actuating). In the case of control rod 52, the housing’s
`
`engagement member is battery holder 524. In the case of rotatable bodies 1250,
`
`the housing’s engagement member is the rotatable bodies on tool mountain portion
`
`1300.
`
`22. Thus, the substitute claim term “actuator in a surgical instrument
`
`system” is not indefinite because it would inform a POSITA that the claimed
`
`actuator refers to (1) the control rod 52 of the surgical instrument system, or (2) the
`
`rotatable bodies 1250 on the robot arm of the surgical instrument system.
`
`IV. THE SUBSITUTE CLAIMS FOR THE POWER PATENTS DO NOT
`INTRODUCE NEW MATTER
`23.
`I have been informed by counsel that an amended claim may not
`
`introduce new subject matter. I understand that for the 601 Patent, Patent Owner
`
`
`
`8
`
`Ethicon Exhibit 2014.010
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`has proposed an amendment requiring that the “motor is coupled to a power source
`
`when said housing is not coupled to the surgical instrument system,” and for the
`
`058 and 677 Patents, Patent Owner has proposed an amendment requiring that the
`
`motor is “configured for attachment to a power source independent of said housing
`
`connector attachment to the surgical instrument system[.]” See IPR2018-00933,
`
`Paper 18, at 5; IPR2018-00934, Paper 18 at 7-8; IPR2018-00935, Paper 18 at 8.
`
`24. Petitioner offers the same argument for why these proposed
`
`amendments allegedly introduce new matter. According to Petitioner, the Power
`
`Patents only disclose a motor that can receive power from a power source if the
`
`housing is coupled/attached to the surgical instrument system.
`
`25. Whether or not this is true is irrelevant – none of Patent Owner’s
`
`proposed amendments requires an electrical connection between the motor and
`
`power source as Petitioner suggests. Instead, they require the motor to be
`
`“coupled” (i.e., physically connected or linked) to a power source in the case of the
`
`601 Patent, or for the motor to be configured for attachment to a power source
`
`regardless of whether the housing is “attached” to the surgical instrument system in
`
`the case of the 058 and 677 Patents. Nothing about the terms “coupled” or
`
`“attached” implies that the connection must be an electrical connection, or that a
`
`purely physical connection is outside the scope of the claim language.
`
`
`
`9
`
`Ethicon Exhibit 2014.011
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`26. For example, with respect to the 601 Patent, Petitioner argues that the
`
`“motor is not coupled to the power source when the housing is not coupled to the
`
`surgical instrument system[.]” See IPR2018-00933, Paper 19 at 5 (emphasis in
`
`original). This is incorrect. As Figure 3 illustrates, motor 564 (yellow) is coupled
`
`to power source 526 (red) through battery holder 524 (orange) and the housing
`
`(blue), even though the housing is not coupled to the surgical instrument system
`
`(e.g., control rod 52):
`
`
`
`Ex. 1001, Figure 3 (annotated)
`
`27. Petitioner’s entire argument is based on the assumption that to be
`
`coupled to the motor, the battery must be electrically coupled to the motor. But
`
`this narrow interpretation of the term “coupled” is inconsistent with how the term
`
`is used in the 601 Patent and with how a POSITA would understand the term. It is
`
`also inconsistent with how Dr. Fischer interprets the term. See Depo. Tr. of Dr.
`
`
`
`10
`
`Ethicon Exhibit 2014.012
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`Gregory Fischer, Ex. 2016, 69:8-70:12 (explaining that a “coupling” can include a
`
`“mechanical coupling”).
`
`28. For example, the 601 Patent describes the physical connection
`
`between the surgical instrument and the housing as a coupling, explaining that
`
`“distal end 276 of the control rod 52 has been coupled to the battery holder 524”
`
`after “the disposable loading unit 16 … has been coupled to the elongated body 14
`
`of the surgical cutting and stapling instrument 10.” Ex. 1001 at 13:15-19. A
`
`POSITA would understand that this does not refer to an electrical connection
`
`between the control rod and the battery holder – indeed, there are no electrical
`
`contact points between the control rod and battery holder, as is plainly visible
`
`above in Figure 3. Dr. Fischer concedes as much. Ex. 2016, 72:17-24. This is
`
`also consistent with the plain meaning of the term “coupled,” which is “[t]o link
`
`together; connect.” See Ex. 2015, 5.
`
`29. Dr. Fischer also conceded that this plain meaning of “coupled”
`
`applied to the asserted prior art. See Ex. 2016, 73:9-74:2. Viola discloses “first
`
`and second jaws” that are “operably coupled to the housing.” Id. Dr. Fischer
`
`admitted that “there is no electrical connection between the housing portion and
`
`the jaws in Viola.” Id. Thus, a POSITA would not interpret the term “coupled” to
`
`refer only to an electrical connection, as Petitioner suggests.
`
`
`
`11
`
`Ethicon Exhibit 2014.013
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`30. The 601 Patent discloses precisely this, i.e. that the motor is linked or
`
`connected to (i.e. coupled to) the power source even when the housing is not
`
`coupled to the surgical instrument system.
`
`31. Petitioner and Dr. Fischer argue for a similarly narrow interpretation
`
`of the term “attachment” with respect to the 058 and 677 Patents in order to again
`
`suggest that these patents do not disclose an attachment between the battery and
`
`motor when the housing is not connected to the surgical instrument system.
`
`32. For example, Dr. Fischer states that the 058 and 677 Patents teach
`
`“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.” See Ex. 1030, ¶ 34 (emphasis in original). However, just as
`
`with the 601 Patent, whether or not current can flow between the power source and
`
`the motor is irrelevant to Patent Owner’s proposed amendment.
`
`33. This is consistent with the plain meaning of the terms “attachment,”
`
`and “attach,” which are “[t]he act of attaching or the condition of being attached,”
`
`and “[t]o fasten, secure, or join,” respectively. See Ex. 2015, 3. A POSITA would
`
`therefore understand the term “attachment” to refer to the condition of being
`
`fastened, secured, or joined.
`
`34. Curiously, Dr. Fischer claimed that he had no opinion on the meaning
`
`of the word “attachment. Ex. 2016, 76:13-77:15. Nonetheless, Dr. Fischer
`
`
`
`12
`
`Ethicon Exhibit 2014.014
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`conceded that the use of “attachment” in the same amended claim language, when
`
`referring to the connection between the housing connector and the surgical
`
`instrument system, “could be a mechanical coupling or an electrical coupling or
`
`both.” Id., 78:20-79:8.
`
`35. Thus, a POSITA would not interpret the term “attached” to refer only
`
`to an electrical connection, as Petitioner and Dr. Fischer propose.
`
`36. For the motor to be “configured for attachment to a power source
`
`independent of said housing connector attachment to the surgical instrument
`
`system,” the motor must be attached to the power source regardless of whether the
`
`housing connector is attached to the surgical instrument. As illustrated in Figure 3
`
`(reproduced below), this is disclosed by the 058 and 677 Patents - motor 564
`
`(yellow) is attached to power source 526 (red) through battery holder 524 (orange)
`
`and the housing (blue), independent of whether the housing connector is attached
`
`to the surgical instrument system (e.g., control rod 52):
`
`Ex. 1001, Figure 3 (annotated)
`
`
`
`
`
`13
`
`Ethicon Exhibit 2014.015
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`V. A POSITA WOULD NOT HAVE BEEN MOTIVATED TO COMBINE
`HEINRICH WITH VIOLA
`37.
`I understand that Petitioner argues that the substitute claims of the
`
`Power Patents are invalid in view of the following prior art references:
`
` Viola in view of Heinrich
`o Substitute claims 21-22, 24-31, and 33-40 of the 601 Patent
`o Substitute claims 19-22 and 24-27 of the 058 Patent
`o Substitute claims 19-22 and 24 of the 677 Patent
`
` Viola in view of Heinrich and further in view of Tonet
`o Substitute claims 23 and 32 of the 601 Patent
`
` Viola in view of Heinrich and further in view of Young
`o Substitute claims 23 and 28 of the 058 Patent
`o Substitute claim 23 of the 677 Patent
`
`38. For the reasons I discuss below, a POSITA would not have been
`
`motivated to combine Heinrich with Viola with a reasonable expectation of success
`
`in doing so. Specifically, the proposed combination introduces redundant
`
`components, increases cost and complexity, and is inefficient. Furthermore, a
`
`POSITA would have realized that it would be incredibly technically challenging,
`
`inefficient, and costly to incorporate Viola’s batteries, motor, control circuitry, and
`
`other associated components from Viola’s housing into Heinrich’s disposable
`
`loading unit.
`
`
`
`14
`
`Ethicon Exhibit 2014.016
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`A. Overview of the Prior Art
`1. Heinrich
`I previously provided a summary of U.S. Patent App. Pub. No.
`
`39.
`
`2005/0131390 (“Heinrich”) (Ex. 1005). See Declaration of Dr. William Cimino,
`
`Ex. 2006, ¶¶ 108-124.
`
`40.
`
`In my prior summary I noted that Heinrich discloses that its
`
`disposable loading unit includes “an electro-mechanical assembly 619” in housing
`
`640. See Ex. 2006, ¶ 118; see also Ex. 1005 at [0134]. A POSITA would
`
`understand that Heinrich’s “electro-mechanical assembly 619” refers to a motor
`
`that is contained within the housing of Heinrich’s disposable loading unit. For
`
`example, Heinrich discloses that the disposable loading unit “includes a head
`
`portion 640 for housing an electro-mechanical assembly 619 … for operating
`
`surgical instrument 620[.]” Ex. 1005 at [0134].
`
`41. Heinrich further describes that electric signals are transmitted to the
`
`electro-mechanical assembly 619 “for actuating electro-mechanical assembly 619
`
`which in turn actuates surgical instrument 620,” and explains that the electro-
`
`mechanical assembly 619 “includes mechanisms for moving and operating surgical
`
`tool instrument 620, such as, for example, servo motors[.]” Ex. 1005 at [0137]. At
`
`its simplest, an electrical motor is a machine that converts electrical energy into
`
`mechanical energy. This is exactly how Heinrich describes its electro-mechanical
`
`
`
`15
`
`Ethicon Exhibit 2014.017
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`assembly 619, which receives and converts electrical signals into mechanical
`
`energy for actuating surgical instruments.
`
`42. Petitioner’s expert, Dr. Fischer, also refers to Heinrich’s electro-
`
`mechanical assembly 619 as a motor. For example, Dr. Fischer notes that
`
`“Heinrich’s disposable loading unit is motor-powered” and explains that “the
`
`motor residing in [Heinrich’s] disposable loading unit is disconnected from its
`
`power source when the stapling system’s housing is not attached to the surgical
`
`instrument system.” Ex. 1003, ¶ 78. In support of these statements, Dr. Fischer
`
`cites to the same section from Heinrich’s disclosure that I discuss above, which
`
`states that an electrical connection is provided “in order to provide power to
`
`electro-mechanical assembly 619.” See id.; see also Ex. 1005, [0134]. This
`
`clearly indicates that Dr. Fischer understands that Heinrich discloses a motor
`
`contained within the housing of its disposable loading unit.
`
`2.
`Viola
`43. U.S. Patent No. 5,954,259 (“Viola”) discloses a handheld surgical
`
`stapler for use during laparoscopic surgical procedures. See Ex. 1031 at 4:10-17.
`
`As illustrated below in Figure 2a, Viola’s housing 12 includes batteries 45a and
`
`45b in the handle portion, which provide power to motor 22. See Ex. 1031 at 4:40-
`
`44.
`
`
`
`16
`
`Ethicon Exhibit 2014.018
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`Ex. 1031, Fig. 2a
`
`
`
`44. Viola’s housing also includes a switching assembly 46, which is
`
`connected to trigger 44 by link bar 48. See id. at 4:48-49. According to Viola,
`
`“[w]hen link bar 48 is moved proximally upon squeezing trigger 44, the two
`
`middle terminals T3, T4” of switching assembly 46 “connect to the respective rear
`
`terminals T5, T6,” causing power to be supplied from the batteries to motor 22.
`
`Switching assembly 46 is shown in Figure 2b, below, with red annotations added
`
`to illustrate how link bar 48 (not pictured below) causes middle terminals T3 and
`
`T4 to complete the circuit and allow power to flow from the batteries to the motor:
`
`
`
`17
`
`Ethicon Exhibit 2014.019
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`
`
`Ex. 1031, Fig. 2b (annotations added)
`
`45. Once power is supplied to the motor, Viola describes the numerous
`
`gear assemblies that operate to translate the motor’s power to a driving force. This
`
`includes “a gear set 24 for reducing the rotational speed of the output shaft” of the
`
`motor, “a pinion gear 26 which is directly driven by the output shaft of the motor,”
`
`“a first set of planetary gears 28” driven by the pinion gear 26, a carrier 30 which
`
`supports the planetary gears 28, a “second set of planetary gears 34” driven by
`
`carrier 30 which in turn “drive the hub member 36,” a “ring gear 32” which acts as
`
`“a reaction point for planetary gears 28 and 34,” and a “reception port 38” for
`
`“receiving the proximal end 40 of the elongated drive shaft 42.” See Ex. 1031 at
`
`4:18-32.
`
`
`
`18
`
`Ethicon Exhibit 2014.020
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`B. A POSITA Would Have Understood That Petitioner’s Proposed
`Combination Is Inefficient and Costly
`I understand that Petitioner and Dr. Fischer argue that it would have
`
`46.
`
`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[.]” See Ex.
`
`1030, ¶ 41.
`
`47. Even if a POSITA were somehow able to combine Viola and Heinrich
`
`as Petitioner suggests, a POSITA would have had no reason to do so. Petitioner’s
`
`proposal is both incredibly inefficient and more costly than other simpler solutions,
`
`defying basic logic.
`
`48. First, Petitioner and Dr. Fischer both fail to explain why a POSITA
`
`would have been motivated to incorporate a second, additional motor into
`
`Heinrich’s housing.
`
`49. Actuating a surgical instrument requires a significant amount of
`
`torque from a motor, and a correspondingly significant amount of power from a
`
`power source to power the motor. Heinrich’s disposable loading unit already
`
`contains a motor that is sufficiently sized to actuate a surgical instrument. A
`
`POSITA would have had no reason to incorporate a second motor and power
`
`source into Heinrich’s housing to perform the same task that Heinrich’s motor
`
`could already perform.
`
`
`
`19
`
`Ethicon Exhibit 2014.021
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`50. Nor would a POSITA have been motivated to adapt Heinrich’s motor
`
`to actuate viola’s link bar. Petitioner proposes repurposing Heinrich’s motor to
`
`perform a simple switching function to control power flow from Viola’s batteries
`
`to Viola’s motor. However there is no clear basis for using Heinrich's motor to
`
`perform this functionality. A POSITA would have realized this is a wasteful,
`
`inefficient configuration and would have had no reason to implement it.
`
`51. Moreover, even if a POSITA had been motivated to configure
`
`Heinrich to operate from a localized power source (e.g., from batteries within
`
`Heinrich’s housing), there would have been no need to include an additional motor
`
`with the batteries. While it would still be an incredibly difficult task to incorporate
`
`batteries into Heinrich’s housing (for the reasons I discussed below in Section
`
`V(C)), a POSITA would have had no reason to additionally incorporate a second
`
`motor when Heinrich already discloses a first motor in its housing.
`
`52. Second, Petitioner argues that combining Viola and Heinrich would
`
`result in certain cost savings. This is incorrect. Petitioner’s proposed combination
`
`results in a greater number of components – not fewer –within Heinrich’s
`
`housing. Moreover, power cells such as those used in Viola, and Viola’s motor,
`
`are some of the most expensive components in the surgical instrument. Thus, not
`
`only is the cost increased through the addition of new components, it is
`
`significantly increased by adding redundant copies of the most expensive
`
`
`
`20
`
`Ethicon Exhibit 2014.022
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`components. There is simply no way that the addition of these new, additional
`
`components, would result in a cheaper disposable loading unit.
`
`53. Petitioner’s misconception appears to arise from a misunderstanding
`
`of U.S. Patent No. 6,783,524 (“Anderson”). Petitioner cites to Anderson for the
`
`proposition that “loading units for robotic systems ‘may include OEM parts’ from
`
`handheld instruments, like the parts disclosed in Viola, ‘to reduce costs and for
`
`manufacturing convenience.’” IPR2018-00933, Paper 19 at 10 (citing Ex. 1013 at
`
`7:6-7). However, what Anderson refers to is the substitution of parts from a
`
`handheld instrument with OEM parts – not the inclusion of new, additional
`
`components like Petitioner suggests.
`
`54. For example, the substitution of Viola’s cartridge 16, which does not
`
`include a motor or power cells, could potentially be an OEM part from a handheld
`
`instrument as described by Anderson. In this instance, a POSITA could possibly
`
`be motivated to combine the cartridge of Viola with the motor and DLU of
`
`Heinrich, but that would not read on the amended claim language, as it would not
`
`include the additional motor and batteries.
`
`55. Thus, Anderson’s disclosure in no way indicates that Petitioner’s
`
`proposed combination would be cheaper. Instead, a POSITA would have realized
`
`that Petitioner’s proposed combination would be more expensive and would not
`
`have been motivated to pursue it as a result.
`
`
`
`21
`
`Ethicon Exhibit 2014.023
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`C. A POSITA Would Not Have Had a Reasonable Expectation of
`Success Combining Heinrich with Viola
`In my opinion, a POSITA would not have had a reasonable
`
`56.
`
`expectation of success in incorporating Viola’s components into Heinrich’s
`
`housing, as Petitioner proposes. Instead, a POSITA would have found it incredibly
`
`technically challenging to redesign Heinrich’s housing to functionally incorporate
`
`the necessary components from Viola to produce an operational surgical
`
`instrument.
`
`57. As an initial matter, Petitioner and Dr. Fischer fail to explain how a
`
`POSITA would be able to fit the components from Viola’s handle into Heinrich’s
`
`housing. Instead, Dr. Fischer provides a single illustration with a conclusory
`
`assertion that Viola’s motor and power source would be located in Heinrich’s
`
`housing:
`
`Ex. 1030, ¶ 42 (excerpted)
`
`
`
`
`
`22
`
`Ethicon Exhibit 2014.024
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`58.
`
`It is visually apparent from Petitioner’s illustration that this proposal
`
`is impossible. Laparoscopic devices are specifically intended to operate in small
`
`spaces and are therefore designed to be no larger than neces
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