UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`______________________
`
`IPR2018-00935
`U.S. Patent No. 8,991,677
`______________________
`
`PATENT OWNER ETHICON LLC’S SUR-REPLY
`
`
`
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`______________________
`
`IPR2018-00935
`U.S. Patent No. 8,991,677
`______________________
`
`PATENT OWNER ETHICON LLC’S SUR-REPLY
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`IPR2018-00935
`U.S. Patent No. 8,991,677
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .......................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 2
`
`A.
`
`The “Operably Disconnected” Limitation Does Not Simply
`Mean “Disconnected” ........................................................................... 3
`
`B.
`
`Ethicon Properly Construed The “Selectively Receive” Terms ........... 5
`
`1.
`
`2.
`
`3.
`
`Petitioner’s Interpretation Disregards That The Claims
`Require A DLU That Includes A Motor Configured To
`Receive Power From A Power Source ....................................... 6
`
`The Specification Supports Ethicon’s Construction ................... 9
`
`Ethicon Is Not Limiting The Claims To An Embodiment
`Where The Motor And Power Source Are In The Same
`Housing ..................................................................................... 13
`
`III. THE HOOVEN/HEINRICH COMBINATION DOES NOT
`DISCLOSE THE POWER LIMITATIONS .............................................. 15
`
`A. Hooven/Heinrich Do Not Disclose The “Operably
`Disconnected” Limitation of Claims 6/17 ........................................... 15
`
`B.
`
`Hooven/Heinrich Do Not Disclose The “Selectively Receive”
`Limitation of Claims 1/16 ................................................................... 16
`
`IV. PETITIONER FAILS TO IDENTIFY ANY PERMISSIBLE
`MOTIVATIONS TO COMBINE HOOVEN AND HEINRICH ............. 18
`
`A. Heinrich Teaches Away From Combination With Hooven ................ 19
`
`B.
`
`Petitioner’s Sole Surviving Motivation To Combine Is Based
`On Impermissible Hindsight ............................................................... 22
`
`i
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`PETITIONER OFFERS NO REASONABLE EXPECTATION OF
`SUCCESS IN THE COMBINATION ....................................................... 23
`
`
`V.
`
`VI. DR. FISCHER HAS CONSISTENTLY FAILED TO ADDRESS
`CORE FUNDAMENTAL CONCEPTS .................................................... 24
`
`VII. CONCLUSION .............................................................................................. 26
`
`
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`ii
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) ............................................................................ 23
`PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,
`491 F.3d 1342 (Fed. Cir. 2007) .......................................................................... 25
`
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`iii
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`EXHIBIT LIST FOR IPR2018-00935
`
`Description
`
`U.S. Patent No. 5,964,394 (“Robertson”)
`
`
`
`
`
`Ethicon
` Exhibit #
`Ex. 2001
`
`Ex. 2002
`
`U.S. Patent No. 6,231,565 (“Tovey”)
`
`Ex. 2003
`
`Excerpts from Technology Tutorial filed in Ethicon LLC, et al. v.
`Intuitive Surgical, Inc., et al., C.A. No. 17-871 (LPS)(CJB)
`(District of Delaware).
`
`Ex. 2004
`
`Statutory Disclaimer
`
`Ex. 2005
`
`Excerpts from the File History of U.S. Patent No. 8,991,677
`
`Ex. 2006
`
`Declaration of Dr. William Cimino
`
`Ex. 2007
`
`Ex. 2008
`
`Ex. 2009
`
`Ex. 2010
`
`Deposition of Gregory Fischer, Ph.D., Volume 1 (February 18,
`2019)
`
`Deposition of Gregory Fischer, Ph.D., Volume 2 (February 20,
`2019)
`
`U.S. Pat. Appl. Pub. 2014/0252071 A1 (application publication of
`U.S. Appl. No. 14,283,729) (“the 729 Application”)
`
`U.S. Pat. App. Pub. 2009/0206136 A1 (application publication of
`U.S. Appl. No. 12/031,628) (“the 628 Application”)
`
`Ex. 2011
`
`Reserved
`
`Ex. 2012
`
`Robert Glasgow et al., The Benefits of a Dedicated Minimally
`Invasive Surgery Program to Academic General Surgery
`Practice, Journal of Gastrointestinal Surgery, 869-73 (Nov. 2004)
`
`Ex. 2013
`
`Reserved
`
`Ex. 2014
`
`Supplemental Declaration of Dr. William Cimino
`
`iv
`
`
`
`IPR2018-00935
`U.S. Patent No. 8,991,677
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`Description
`
`Excerpts of American Heritage College Dictionary 3d (1993)
`
`
`
`Ethicon
` Exhibit #
`Ex. 2015
`
`Ex. 2016
`
`Deposition Transcript of Dr. Gregory Fischer (July 11, 2019)
`
`v
`
`
`
`
`I.
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`INTRODUCTION
`Challenged independent claims 6 and 17 of the 677 Patent require a stapling
`
`sub-system that includes a motor that is “operably disconnected” from an attached
`
`power source until the sub-system’s housing is attached to a surgical instrument
`
`system. Further, challenged independent claims 1 and 16 require a disposable
`
`loading unit (“DLU”) that includes a motor that can only “selectively receive”
`
`power from an attached power source when the DLU is operably coupled to a
`
`surgical instrument. As explained in Ethicon’s Patent Owner Response (POR),
`
`when properly construed, neither of these limitations are rendered obvious by the
`
`Hooven/Heinrich prior art combination. In the prior-art combination, the stapling
`
`sub-system/DLU is never attached to a power source until it is attached to the
`
`surgical instrument system/surgical instrument.
`
`Petitioner’s Reply fails to rebut the fact that it has rendered the word
`
`“operably” meaningless with respect to the “operably disconnected” limitation.
`
`Instead, it is clear that Petitioner and its expert have treated this term as simply
`
`meaning “disconnected.” Petitioner’s arguments with respect to the “selectively
`
`receive” power limitations also fail.
`
`In contrast, Ethicon’s constructions give meaning to all claim terms, are
`
`consistent with the relevant specification embodiments, and do not improperly
`
`limit the claims to one embodiment over another. Petitioner’s interpretations, on
`
`1
`
`
`
`
`the other hand, are not read in light of the specification, vitiate the key power
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`limitations, and strip the claims of their inventive aspects by reducing them to
`
`nothing more than a stapling sub-system/DLU with a motor that can receive power
`
`when the motor is plugged into a power source in the surgical instrument
`
`system/surgical instrument—and otherwise cannot receive power at all. Under the
`
`proper interpretation, it is undisputed that the claims are patentable over the
`
`Hooven/Heinrich combination. Moreover, even assuming the Board adopts
`
`Petitioner’s claim interpretations, the combination fails because Heinrich teaches
`
`away from the combination with Hooven’s reusable knife architecture.
`
`II. CLAIM CONSTRUCTION
`The power limitations fall into two categories:
`
`(1) “Operably Disconnected”: independent claims 6 and 17 recite a stapling
`
`sub-system comprising an “electric motor … wherein said electric motor is
`
`operably disconnected from a power source when [the] housing [of the stapling
`
`sub-system] is not attached to [a] 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”; and
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`(2) “Selectively Receive”: independent claims 1 and 16 recite a DLU
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`comprising a “motor … [that] is configured to receive power from a power source
`
`such that said motor can only selectively receive power from said power source
`
`2
`
`
`
`
`when [a] means for removably attaching [the] housing [of the loading unit] to the
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`surgical instrument is operably coupled to the surgical instrument.”
`
`The POR explained how both limitations require that the stapling sub-
`
`system/DLU itself has a motor attached to a power source and configured such that
`
`the transfer of power to the motor is prevented when the stapling sub-system/DLU
`
`is detached from the surgical instrument [system]. POR at 16-35.
`
`A. The “Operably Disconnected” Limitation Does Not Simply Mean
`“Disconnected”
`Petitioner’s Reply fails entirely to rebut the fact that it has rendered the word
`
`“operably” meaningless with respect to “operably disconnected.” Instead, it is
`
`absolutely clear that Petitioner and its expert have treated this term as simply
`
`meaning “disconnected.”
`
`Claims 6 and 17 require that the stapling sub-system’s electric motor is
`
`“operably disconnected from a power source when said housing is not attached to
`
`the surgical instrument system.”1 As Ethicon explained, this means there is a
`
`state where (i) the stapling sub-system has a motor that is attached to a power
`
`source while the sub-system is detached from the surgical instrument system; and,
`
`importantly, (ii) even though the motor and power source are attached, they are
`
`electrically disconnected. POR at 16-26. This is the only claim interpretation that
`
`1 All emphases added unless otherwise noted.
`
`3
`
`
`
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`gives meaning to the word “operably” and is consistent with the relevant
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`embodiments. Id.
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`Ethicon’s POR also clearly pointed out how Petitioner and its expert, Dr.
`
`Fischer, are reading out the term “operably” from the “operably disconnected”
`
`limitation. Id. at 25-26. In both Heinrich and Hooven, when the stapling sub-
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`system is not attached to the surgical instrument system, the motor is simply
`
`disconnected from the power source (because the attachment of the stapling sub-
`
`system to the surgical instrument system is the point of attachment for the power
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`source). There is no basis to conclude that the configuration in Heinrich or
`
`Hooven can be properly characterized as a stapling sub-system having a motor that
`
`is operably disconnected from the power source when the stapling sub-system is
`
`detached from the surgical instrument system.
`
`Petitioner did not substantively respond on this issue. First, Petitioner’s
`
`Reply focuses on the phrase “operably connected,” while neglecting to address
`
`what is meant by “operably disconnected.” Paper 20 at 12-14, 18. Indeed, absent
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`from the Reply is any attempt to explain the difference between (i) a stapling sub-
`
`system having a motor that is operably disconnected from a power source; and (ii)
`
`a stapling sub-system having a motor that is disconnected from a power source.
`
`Petitioner’s silence is confirmation that it has equated “operably disconnected”
`
`with “disconnected,” thereby reading out the term “operably” from the claim.
`
`4
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`
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`Second, Petitioner had no response to the testimony of Dr. Fischer where he
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`unequivocally confirmed that he did not consider the difference between the terms
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`“operably disconnected” and “disconnected.” Nor did he have any meaning in
`
`mind for the term “operably disconnected.” POR at 25 (citing Ex. 2008, 361:15-
`
`19, 368:6-11).
`
`Third, Petitioner’s Reply makes the conclusory statement that Ethicon’s
`
`interpretation “find[s] no support in the specification.” Paper 20 at 13. But
`
`nowhere in the Reply does Petitioner ever address the four pages of analysis in the
`
`POR (POR at 20-25) explaining precisely how the specification supports Ethicon’s
`
`interpretation. Thus, there is no dispute that the specification discloses a stapling
`
`sub-system that has a motor with an attached power source, but that power source
`
`is electrically disconnected from the motor when the stapling sub-system is
`
`detached from the surgical instrument system. See POR at 20-25. As in the
`
`claims, the embodiments disclose a stapling sub-system having a motor that is
`
`operably disconnected from the power source when the stapling sub-system is not
`
`attached to the surgical instrument system.
`
`Ethicon Properly Construed The “Selectively Receive” Terms
`B.
`Petitioner mounts several meritless attacks regarding Ethicon’s construction.
`
`First, Petitioner contends that “configured to receive power from” means “set up
`
`for operation to receive power from,” but argues that this does not require that the
`
`5
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`
`
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`DLU motor be attached to a power source. Paper 20 at 3-6. Second, Petitioner
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`argues that Ethicon’s proposed constructions for the “Selectively Receive” terms
`
`are not supported by any embodiment of the 677 Patent. Id. at 6-9. Third,
`
`Petitioner reverses course and argues that Ethicon is attempting to read an
`
`embodiment into the constructions for the “Selectively Receive” terms. Id. at 9-12.
`
`Petitioner’s arguments fail.
`
`1.
`
`Petitioner’s Interpretation Disregards That The Claims
`Require A DLU That Includes A Motor Configured To
`Receive Power From A Power Source
`As Ethicon’s POR explained, the claims require that the DLU comprises a
`
`motor that is “configured to receive” power from a power source, and separately
`
`require that the DLU can be removably attached to a surgical instrument. POR at
`
`28-31. “Configured to receive” requires that the DLU include a motor attached to
`
`a power source2 so that the motor is “configured to receive power from a power
`
`
`2 As explained in Section II.B.3, the claims are agnostic as to whether the power
`
`source is in the same housing as the motor. The specification discloses
`
`embodiments with a motor and battery in the same housing. Ex. 1001 at Figures 3,
`
`52-54. In addition, the specification discloses that “a power cord or tether may be
`
`attached to the tool mounting portion 3300 to supply the requisite power from a
`
`separate source of alternating or direct current.” Id. at 44:37-40. In either
`
`
`
`6
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`
`
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`source.” See id; Ex. 1001 at Claims 1, 16. This claim structure dictates that,
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`independent of any attachment to a surgical instrument, the DLU must include a
`
`motor attached to a power source.
`
`Petitioner first argues that the claims require only a motor “set up for
`
`operation to receive power from” a power source. This interpretation conflicts
`
`with the claim language and appears to be an attempt to broaden the claims to
`
`cover the configuration of Heinrich, where the DLU itself does not comprise a
`
`motor configured to receive power from a power source independent of its
`
`attachment to a surgical instrument. Ex. 2006, ¶¶ 71-72, 78-79, 158-60, 168-69.
`
`The motor in Heinrich’s DLU receives power when it is plugged in, and otherwise
`
`is incapable of receiving power at all.
`
`This configuration is not what Ethicon claimed. Ethicon’s claims require
`
`“said [disposable] loading unit comprising…a motor…wherein said motor is
`
`configured to receive power from a power source.” Ex. 1001 at Claims 1, 16.
`
`Accordingly, the 677 Patent claims are directed to an invention that prevents power
`
`from being delivered to the motor from an attached power source when the DLU is
`
`not attached to the surgical instrument. Id. at 12:11-24; Ex. 2006, ¶¶ 30-32, 58-59,
`
`
`configuration, the DLU has a motor with an attached power source independent of
`
`any attachment to the surgical instrument system.
`
`7
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`
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`63. This configuration is not needed in Heinrich.
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`Second, Petitioner contends that Ethicon’s construction ignores the phrase
`
`“such that” in the claim. Paper 20 at 5. Petitioner is incorrect. As Ethicon’s POR
`
`explained, the claims include two separate requirements for the DLU: 1) that the
`
`motor be connected to a power source; and 2) the motor only selectively receives
`
`power when the housing is attached to the surgical instrument. POR at 28.
`
`Ethicon fails to see how this interpretation of the power limitations ignores the
`
`“such that” claim language.3
`
`Finally, Petitioner argues that Ethicon’s construction omits the term
`
`“selectively,” and thus fails to give it meaning. Paper 20 at 6. This is incorrect.
`
`Ethicon’s construction expressly addresses the phrase “only selectively.” POR at
`
`29-30. As Ethicon explained, the phrase “only selectively receive[s]” power
`
`describes controlling the connection between the motor and power source. Id.
`
`Ethicon’s construction gives life to this limitation by specifying that the motor can
`
`receive power when the housing is attached to the surgical instrument, and it
`
`
`3 Petitioner’s attempt to use the contingent motion to amend against Ethicon is
`
`baseless. See Paper 20 at 5. If the Board disagrees with Ethicon’s proposed
`
`constructions, the contingent amendments are intended to use more plain language
`
`to achieve the claim scope.
`
`8
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`
`
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`cannot receive power when the housing is detached. Id. Put differently, the motor
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`U.S. Patent No. 8,991,677
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`“only selectively” receives power when the housing is attached.
`
`Petitioner has never provided any meaning for the term “selectively,” nor
`
`has it explained why Ethicon’s construction would read the term out of the claims.
`
`See Paper 20 at 6. Notably, the Reply offers no proposed meaning for
`
`“selectively,” an error that persists from the Petition. Id. Dr. Fischer’s only
`
`proffered explanation for the term is that “selectivity” is simply “plugging in or
`
`unplugging” the cable of Hooven. Ex. 2007, 114:16-115:2. This would read out
`
`the term selectively, and would reduce the claim to merely requiring that the motor
`
`“only receive power” when the housing is attached to the surgical instrument.
`
`POR at 34.
`
`The Specification Supports Ethicon’s Construction
`2.
`Petitioner next argues that Ethicon’s construction is unsupported by the
`
`specification because “there is no disclosure of any means for attaching the motor
`
`to the power source apart from attaching the housing to the surgical instrument
`
`system.” Paper 20 at 8. This argument misrepresents what Ethicon meant by
`
`stating that the motor and power source are “attached,” and further turns on the
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`false premise that in order for the motor and power source to be attached there
`
`must be “an electrical connection that allows current to flow there between.” Id. at
`
`7. This is not a reasonable reading of Ethicon’s argument, the plain meaning of
`
`9
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`
`
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`“attached,” or the use of “attached” in the 677 Patent.
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`Ethicon’s POR could not have been clearer—for the motor and power source
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`to be attached, they merely need to be physically connected. No electrical
`
`connection is required. See POR at 31-33. Specifically, Ethicon stated “[a]lthough
`
`the power source is attached [a battery located in the DLU], the electric motor can
`
`‘only selectively receive power’ when the stapling sub-system is attached to the
`
`surgical instrument.” Id. at 31. Ethicon included the following figure showing the
`
`motor (in blue) attached to the power source (in yellow) through the housing of the
`
`DLU when the DLU and surgical instrument are detached.
`
`
`
`Id. Ethicon further stated that “[o]nly if the DLU is attached to the surgical
`
`instrument system can the control rod position the battery in such a way that the
`
`battery contacts can supply current to the electric motor.” Id. at 32 (citing Ex.
`
`1001 at 12:40-58). Ethicon was crystal clear that, in the DLU, the motor and
`
`power source are “attached” based on a physical coupling—not an electrical
`
`10
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`
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`connection.
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`This understanding that “attached” means a physical connection is consistent
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`with the plain meaning4 and its use in the 677 Patent. The common dictionary
`
`definition for attach is “[t]o fasten, secure, or join.” Ex. 2015, 3. Moreover, the
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`embodiment discussed above supports this plain meaning. The 677 Patent
`
`describes the “control rod 52 [as] attached to the battery holder 524.” Ex. 1001 at
`
`13:8-9; see also id. at 4:32-34 (“disposable loading unit has been attached to the
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`elongated body of the surgical instrument”); 22:17-18 (“knife bar 2200 is attached
`
`to the cutting instrument 2032”); 26:18-19 (“locking collar 2390 is non-movably
`
`attached (e.g., welded, glued, etc.)”).
`
`As illustrated above, and described in detail in the POR, it is beyond dispute
`
`that the specification supports Ethicon’s construction because it discloses a DLU
`
`having a motor attached to a power source when the housing of the DLU is
`
`detached from the surgical instrument (and further that the motor can only
`
`
`4 Dr. Fischer testified that he was not applying “a special definition” for
`
`“attached,” Ex. 2016,74:15-24, but that he did believe that, in context, attached
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`was referring to “battery contacts being pushed up against contacts of a motor.”
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`74:3-14. Notably, Dr. Fischer provided no explanation for why he deviated from
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`the plain meaning of the term and its use in the 677 Patent.
`
`11
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`
`
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`selectively receive power from that attached power source when the DLU is
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`IPR2018-00935
`U.S. Patent No. 8,991,677
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`attached to the surgical instrument). POR at 28-33.
`
`Petitioner also makes a strained argument that Ethicon’s constructions of the
`
`power limitations do not comport with a 677 Patent embodiment that describes a
`
`“tool mounting portion 1300 [that] includes a rotational transmission assembly
`
`2069 that is configured to receive a corresponding rotary output motion from the
`
`tool drive assembly 1010.” Paper 20 at 8-9. This excerpt is irrelevant because it
`
`has nothing to do with a DLU that comprises a motor configured to receive power
`
`from a power source. Rather, this embodiment relates to Figures 22-29, which
`
`disclose a stapling system that lacks a motor and attaches to a robotic system. See
`
`Ex. 1001 at 19:5-24:34. Thus, the embodiment is unrelated to the challenged
`
`claims.5
`
`
`5 In comparison, Figures 52 and 53 (as well as Figure 3 discussed above), illustrate
`
`a stapling system that includes a motor 3011 configured to receive power from an
`
`attached power source 3022. See Ex. 1001 at 39:23-36. This embodiment, unlike
`
`the embodiment of Figures 22-29, utilizes the claimed invention because the motor
`
`3011 is attached to a power source. However, because of the control circuit, power
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`can only be selectively received when the stapling system is attached to robotic
`
`system 1000. Id.
`
`12
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`U.S. Patent No. 8,991,677
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`3.
`
`Ethicon Is Not Limiting The Claims To An Embodiment
`Where The Motor And Power Source Are In The Same
`Housing
`Next, Petitioner argues that Ethicon is attempting to import limitations in
`
`order to limit the claims to an embodiment in which the motor and power source
`
`are in the same housing. Paper 20 at 10-11. Petitioner is again incorrect.
`
`First, it should be understood that the 677 Patent is part of a large patent
`
`family and discloses numerous embodiments, not all of which are covered by the
`
`challenged claims. Specifically, the challenged claims are limited to embodiments
`
`with a DLU that is removably attachable to a surgical instrument and the DLU
`
`comprises a motor configured to receive power (and can only selectively receive
`
`that power when the DLU is attached to the surgical instrument). As explained
`
`above, Figures 3 and 52-54 disclose such a DLU, whereas Figures 22-29 do not.
`
`Second, Petitioner’s argument that Ethicon is attempting to limit the claims
`
`to an embodiment where the power source is in the same housing as the motor is a
`
`red herring. Paper 20 at 11. Nowhere in Ethicon’s construction does it require that
`
`the motor and power source must be in the same housing. Ethicon’s construction
`
`covers those embodiments in the 677 Patent, such as Figures 3 and 52-54,
`
`irrespective of whether the power source and motor are contained in the same
`
`housing. As described in the 677 Patent, while those embodiments are depicted
`
`with a battery in the housing attached to the motor, it is a contemplated alternative
`
`13
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`
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`that “a power cord or tether may be attached to the tool mounting portion 3300 to
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`U.S. Patent No. 8,991,677
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`supply the requisite power from a separate source of alternating or direct current.”
`
`Ex. 1001 at 44:37-40.6 In either case, the DLU comprises a motor with an attached
`
`power source (independent of any attachment to a surgical instrument). Thus,
`
`Ethicon’s construction is consistent with the specification as well as with the
`
`passage that Petitioner cites.
`
`Ethicon’s position, however, is that the plain language of the claims
`
`excludes a configuration where the DLU has a motor that is never configured to
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`receive power from a power source unless the DLU is attached to a surgical
`
`instrument. The reason being that in such a configuration, the motor of the DLU is
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`not itself configured to receive power from a power source independent of an
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`attachment to the surgical instrument. Id. at Claims 1, 16 (“said [disposable]
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`loading unit comprising…a motor…wherein said motor is configured to receive
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`
`6 Notably, Petitioner’s citation to column 44 of the 677 Patent on page 11 of its
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`reply omitted lines 37-40. These lines are relevant because they confirm that
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`Ethicon’s assessment of the claim scope is consistent with the use of either a
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`battery or a power cord, and further, that the invention in the 677 Patent has
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`nothing to do with whether the motor and the power source are located in the same
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`housing.
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`14
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`power from a power source.”). Furthermore, in a configuration where the DLU
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`U.S. Patent No. 8,991,677
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`only has a motor configured to receive power from a power source in the surgical
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`instrument, there would be no need for the control aspect of the invention that
`
`prevents power from being supplied to the motor when the DLU is not attached to
`
`the surgical instrument.
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`III. THE HOOVEN/HEINRICH COMBINATION DOES NOT
`DISCLOSE THE POWER LIMITATIONS
`A. Hooven/Heinrich Do Not Disclose The “Operably Disconnected”
`Limitation of Claims 6 and 17
`As detailed in Ethicon’s POR, Hooven and Heinrich both disclose a stapling
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`sub-system having a motor that is physically disconnected from the power source
`
`when the stapling sub-system is detached from the surgical instrument system.
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`POR at 49-56. There is nothing about the configuration in Hooven and Heinrich
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`that would warrant a finding that the stapling sub-system has a motor that is
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`operably disconnected from the power source when the stapling sub-system / DLU
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`is detached from the surgical instrument system. Id.
`
`Indeed, a basic comparison of the configuration in Hooven and Heinrich
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`versus the configuration of the invention in the 677 Patent illustrates this point. In
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`the 677 Patent, the stapling sub-system has a motor that is attached to a power
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`source independent of any attachment to the surgical instrument system. Ex. 2006,
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`¶¶ 44-67. Thus, even when the stapling sub-system is detached from the surgical
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`15
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`
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`instrument system, there is a power source present. Id. Accordingly, the 677
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`U.S. Patent No. 8,991,677
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`Patent includes a control scheme whereby the attached power source is electrically
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`disconnected from the motor when the stapling sub-system is detached from the
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`surgical instrument system. Id.
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`In contrast, Hooven and Heinrich disclose a stapling sub-system that is only
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`attached to a power source when the stapling sub-system is attached to the surgical
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`instrument system. Thus, in the state where the stapling sub-system is detached
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`from the surgical instrument system, there is no need for a control scheme that
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`electrically disconnects the motor from a power source (since there is no attached
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`power source to begin with). Id., ¶¶ 137-154.
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`Neither the Petition nor the Reply provide an explanation for how the
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`configuration in Hooven and Heinrich discloses a stapling sub-system having a
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`motor that is operably disconnected from a power source when the stapling sub-
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`system is detached from the surgical instrument system. Rather, Petitioner’s entire
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`argument is predicated on treating the phrase “operably disconnected” as equal to
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`“disconnected.” As explained in the POR and above, that is legally improper.
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`B. Hooven/Heinrich Do Not Disclose The “Selectively Receive”
`Limitation of Claims 1 And 16
`Petitioner provides no analysis of the Hooven/Heinrich combination under
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`Ethicon’s claim constructions, thus conceding that the combination does not render
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`obvious the challenged claims when they are properly construed. Paper 20 at 15-
`16
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`
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`18. Instead, Petitioner attempts to re-characterize its original combination as
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`U.S. Patent No. 8,991,677
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`something more nuanced than it is.
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`Because Petitioner offers no analysis of the Hooven/Heinrich combination
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`under Ethicon’s constructions, Petitioner effectively concedes that the combination
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`does not render obvious any of the challenged claims if Ethicon’s constructions are
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`adopted. Id. This is unsurprising, as Hooven/Heinrich simply disclose plugging in
`
`a motor to provide power, consistent with the well-known prior art. See POR at
`
`48. Petitioner offers no explanation of how the Hooven/Heinrich combination
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`discloses a DLU with a motor that has an attached power source that cannot
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`receive power from the source when the DLU’s housing is not attached to the
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`surgical instrument system.
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`Any such argument is foreclosed by the Petition’s arguments regarding the
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`Hooven/Heinrich combination. Specifically, Petitioner argued that in Hooven
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`“motor 45 residing in the instrument 30 is disconnected from its power source,
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`which resides in controller 31, when the instrument 30 is not attached to the
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`controller 31, and is connected to the power source when the instrument 30 is
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`attached to the controller 31.” Paper 2 at 23. The Petition states:
`
`Hooven’s DC motor 45 would be operably disconnected from the
`power source in Heinrich’s surgical instrument system when the
`housing of Hooven’s handle 40 is not attached to Heinrich’s robot
`616. Likewise, Hooven’s DC motor 45 would be operably connected
`17
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`to the power source in Heinrich’s surgical instrument system when the
`housing of Hooven’s handle 40 is attached to Heinrich’s robot 616.
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`Id. at 46 (internal citations omitted); see also id. at 60 (providing no additional
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`support for claim 1). In other words, according to the Petition, the
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`Hooven/Heinrich combination discloses a DLU having a motor that is attached to a
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`power source when attached to the surgical instrument and a motor that is detached
`
`from a power source when detached from the surgical instrument. Thus, there is
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`no possibility that the combination discloses a DLU having a motor that cannot
`
`receive power from an attached power source when the DLU is detached from the
`
`surgical instrument.
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`Ultimately, Petitioner has not—and cannot—offer any explanation of how
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`the Hooven/Heinrich combination renders obvious the challenged claims.
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`Accordingly, the challenged claims should be found patentable.
`
`IV. PETITIONER FAILS TO IDENTIFY ANY PERMISSIBLE
`MOTIVATIONS TO COMBINE HOOVEN AND HEINRICH
`With respect to motivations to combine, Petitioner first argues that Heinrich
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`does not teach away from the combination with Hooven because (1) neither
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`Hooven nor Heinrich requires a knife, and (2) the Petition does not rely on
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`embodiments including a knife. This is simply false. Second, Petitioner argues
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`that the motivations to combine Hooven and Heinrich were not based on
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`impermissible hindsight because Heinrich discloses embodiments of surgical
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`18
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`cutting and stapling devices. Petitioner’s second argument misses the point and
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`U.S. Patent No. 8,991,677
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`directly contradicts its first argument.
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`A. Heinrich Teaches Away From Combination With Hooven
`Ethicon described the reasons why the teachings of Heinrich, incorporating
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`Milliman, would “strongly discourage a combination with Hooven’s reusable knife
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`architecture.” POR at 64-65. Petitioner does not address any of these arguments,
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`but rather makes the bold claim that “Hooven does not
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