IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Frederick E. Shelton, IV, et al.
`In re Patent of:
`9,113,874
`U.S. Patent No.:
`August 25, 2015 Attorney Docket No.: 11030-0049IP6
`Issue Date:
`Appl. Serial No.: 14/312,808
`Filing Date:
`June 24, 2014
`Title:
`SURGICAL INSTRUMENT SYSTEM
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 9,113,874 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`TABLE OF CONTENTS
`
`I. 
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 2 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 2 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 2 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..................... 2 
`D.  Service Information .................................................................................. 3 
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ....................................... 3 
`II. 
`III.  REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 3 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 3 
`B.  Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 3 
`IV.  SUMMARY OF THE ’874 PATENT ............................................................. 5 
`V. 
`SUMMARY OF THE PROSECUTION HISTORY ....................................... 9 
`VI.  CLAIM CONSTRUCTION .......................................................................... 13 
`VII.  THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’874 PATENT IS UNPATENTABLE ............................. 13 
`A.  Ground 1: Hooven Anticipates Claims 1-7, 9-14, 16-17, and 19-21 ..... 13 
`B.  Ground 2: Claims 15 and 18, and, If Necessary, Claims 2-4, 9-14, 16-
`17, and 21, Would Have Been Obvious Under § 103 over Hooven in
`View of Knodel ....................................................................................... 51 
`C.  Ground 3: Claim 8 Would Have Been Obvious Under § 103 over
`Hooven in View of Bays ......................................................................... 67 
`D.  Ground 4: Claims 1-8 and 19 Would Have Been Obvious Under
`§ 103 over Hooven in View of Knodel or Bays and Further in View of
`Wales ....................................................................................................... 70 
`VIII.  CONCLUSION .............................................................................................. 73 
`
`
`
`
`
`i
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`

`

`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`
`EXHIBITS
`
`U.S. Patent No. 9,113,874 to Shelton IV, et al. (“the ’874
`patent”)
`
`Excerpts from the Prosecution History of the ’874 patent (“the
`Prosecution History”)
`
`Declaration of Dr. Bryan Knodel
`
`U.S. Patent No. 5,383,880 to Hooven (“Hooven”)
`
`U.S. Patent No. 5,662,667 to Knodel et al. (“Knodel”)
`
`U.S. Patent No. 5,796,188 to Bays (“Bays”)
`
`IS1001
`
`IS1002
`
`IS1003
`
`IS1004
`
`IS1005
`
`IS1006
`
`IS1007
`
`
`
`U.S. Patent No. 5,702,408 to Wales et al. (“Wales”)
`
`IS1008
`
`IS1009
`
`IS1010
`
`IS1011
`
`IS1012
`
`IS1013
`
`IS1014
`
`U.S. Patent No. 7,845,537 (“the ’537 patent”)
`
`U.S. Patent No. 8,161,977 (“the ’977 patent”)
`
`U.S. Patent No. 8,820,603 (“the ’603 patent”)
`
`U.S. Pat. App. Pub. No. 2002/0165541 (“Whitman”)
`
`Excerpts from the Prosecution History of the ’537 patent (“the
`’537 Prosecution History”)
`
`Excerpts from the Prosecution History of the ’977 patent (“the
`’977 Prosecution History”)
`
`Excerpts from the Prosecution History of the ’603 patent (“the
`’603 Prosecution History”)
`
`
`ii
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`

`

`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`Intuitive Surgical, Inc., (“Petitioner”) petitions for Inter Partes Review
`
`(“IPR”) of claims 1-21 (“the Challenged Claims”) of U.S. Patent No. 9,113,874
`
`(“the ’874 patent”).
`
`The ’874 patent relates to “a surgical instrument system … including a
`
`surgical instrument [such as a surgical stapler] and a remote user-controlled
`
`actuation console for controlling the surgical instrument.” IS1001, Abstract.
`
`According to the Examiner’s Reasons for Allowance, claim 1 of the ’874 patent
`
`was allowed because it allegedly recited subject matter already found allowable in
`
`a parent application. IS1002 at 373 (Dec. 24, 2014, Notice of Allowability)
`
`(“[Claim 1] contain[s] allowable subject matter found in the parent application
`
`13037515, now US Patent No 8,820,603.”); IS1002 at 38 (Apr. 7, 2015, Notice of
`
`Allowability) (same). That statement, however, was incorrect as the parent claim
`
`to which the Examiner was referring in fact had been rejected on prior art grounds.
`
`IS1014 at 392-93 (Jan. 31, 2013, Non-Final Rejection) (rejecting claim 1 as being
`
`anticipated by Whitman). The parent claim was then thrice amended to avoid such
`
`prior art. IS1014 at 314 (Apr. 9, 2013, Response to Office Action) (“Applicants
`
`have now amended the claim to recite the limitation that the end effector includes a
`
`knife and a channel in the frame to receive the knife. Whitman does not disclose
`
`such a feature.”); IS1014 at 250-51 (Aug. 20, 2013, Response to Office Action)
`
`(amending claim 1 to require a “rigid” shaft because “Whitman discloses only a
`
`1
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`

`

`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`flexible shaft”); IS1014 at 223 (Nov. 25, 2013, Response to Office Action)
`
`(amending claim 1 to require that the motor be “located substantially” in the shaft).
`
`As such, the allowance of the ’874 patent was the result of a factual mistake.
`
`Accordingly, as the USPTO correctly recognized in the parent application, the
`
`claimed systems were not new at the time of the alleged priority date of the ’874
`
`patent. As explained below, Hooven, either alone or in combination with Knodel
`
`and/or Bays, disclose all the elements of claims 1-21 of the ’874 patent. Petitioner
`
`therefore requests IPR of the challenged claims on Grounds 1-4 below.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Intuitive Surgical, Inc. is the real party-in-interest. No other party had
`
`
`
`access to the Petition, and no other party had any control over, or contributed to
`
`any funding of, the preparation or filing of the present Petition.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Petitioner is not aware of any disclaimers, reexamination certificates, or
`
`petitions for inter partes review of the ’874 patent. The ’874 patent is the subject
`
`of Civil Action No. 1:17-cv-00871-LPS, filed on June 30, 2017, in the United
`
`States District Court for the District of Delaware.
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Intuitive Surgical provides the following designation of counsel.
`
`2
`
`

`

`LEAD COUNSEL
`Steven R. Katz, Reg. No. 43,706
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 617-542-5070 Fax: 877-769-7945
`Email: IPR11030-0049IP6@fr.com
`
`
`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`BACK-UP COUNSEL
`John C. Phillips, Reg. No. 35,322
`Tel: 858-678-5070
`
`Ryan P. O’Connor, Reg. No. 60,254
`Tel: 858-678-5070
`
`
`D.
`Service Information
`Please address all correspondence and service to the address listed above.
`
`Petitioner consents to electronic service by email at IPR11030-0049IP6@fr.com
`
`(referencing No. 11030-0049IP6) and cc’ing PTABInbound@fr.com,
`
`katz@fr.com, phillips@fr.com, and oconnor@fr.com.
`
`II.
`
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`Petitioner authorizes the Office to charge Deposit Account No. 06-1050 for
`
`the petition fee set in 37 C.F.R. § 42.15(a) and for any other required fees.
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’874 patent is available for IPR, and Petitioner is
`
`not barred or estopped from requesting IPR.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`Petitioner requests IPR of claims 1-21 of the ’874 patent on the grounds
`
`listed below. A declaration from Dr. Bryan Knodel (IS1003) is included in
`
`support.
`
`
`
`3
`
`

`

`
`
`Grounds
`Ground 1
`
`Ground 2
`
`’874 Patent Claims
`1-7, 9-14, 16-17,
`19-21
`2-4, 9-18, 21
`
`Ground 3
`
`8
`
`Ground 4
`
`1-8, 19
`
`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`
`Basis for Rejection
`Anticipated by Hooven (IS1004) under
`35 U.S.C. § 102(b)
`Obvious over Hooven (IS1004) in view
`of Knodel (IS1005) under 35 U.S.C. §
`103
`Obvious over Hooven (IS1004) in view
`of Bays (IS1006) under 35 U.S.C. § 103
`Obvious over Hooven (IS1004) in view
`of Knodel (IS1005) and/or Bays (IS1006)
`and further in view of Wales (IS1007)
`under 35 U.S.C. § 103
`
`
`The ’874 patent issued from U.S. App. No. 14/312,808, filed on June 24,
`
`2012, which is a continuation of U.S. App. No. 13/037,515, filed on March 1,
`
`2011, now U.S. Pat. No. 8,820,603, which is a continuation-in-part of U.S. App.
`
`No. 12/236,277, filed on September 23, 2008, now U.S. Pat. No. 8,161,977, which
`
`is a continuation-in-part of U.S. App. No. 11/343,803, filed on January 31, 2006,
`
`now U.S. Pat. No. 7,845,537. Accordingly, the earliest possible date to which the
`
`’874 patent could claim priority (hereinafter the “earliest effective filing date”) is
`
`January 31, 2006.
`
`Petitioner does not concede that the ’874 patent is entitled to this priority
`
`date, but has elected not to argue the issue in the present Petition because all prior
`
`art references identified in the Grounds presented below pre-date the earliest
`
`possible priority date for the ’874 patent. However, Petitioner reserves the right to
`
`4
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`

`

`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`present such an argument in this proceeding or other proceedings involving the
`
`’874 patent.
`
`Hooven published on January 24, 1995, which is more than one year before
`
`the earliest effective filing date. Therefore, Hooven qualifies as prior art under 35
`
`U.S.C. § 102(b). Hooven was made of record during prosecution of the ’874
`
`patent, but was never discussed by the examiner or the applicant.
`
`Knodel published on Sepember 2, 1997, which is more than one year before
`
`the earliest effective filing date. Therefore, Knodel qualifies as prior art under 35
`
`U.S.C. § 102(b). Knodel was not made of record during prosecution of the ’874
`
`patent.
`
`Bays issued on August 18, 1998, which is more than one year before the
`
`earliest effective filing date. Therefore, Bays qualifies as prior art under 35 U.S.C.
`
`§ 102(b). Bays was made of record during prosecution of the ’874 patent, but was
`
`never discussed by the examiner or the applicant.
`
`Wales issued on December 30, 1997, which is more than one year before the
`
`earliest effective filing date. Therefore, Wales qualifies as prior art under 35
`
`U.S.C. § 102(b). Wales was made of record during prosecution of the ’874 patent,
`
`but was never discussed by the examiner or the applicant.
`
`IV. SUMMARY OF THE ’874 PATENT
`The ’874 patent describes a “surgical instrument system…including a
`
`5
`
`

`

`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`surgical instrument [(e.g., surgical stapler)] and a remote user-controlled actuation
`
`console for controlling the surgical instrument.” IS1001, Abstract. Figure 1 of the
`
`’874 patent (below) shows the surgical instrument in a stand-alone configuration
`
`(without a “user-controlled actuation console”).
`
`There are no figures in the ’874 patent that show a remote user-controlled
`
`
`
`6
`
`

`

`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`actuation console for controlling the surgical instrument.1 IS1003, ¶28. Instead,
`
`the ’874 patent points to consoles in “robotic surgical systems” that were “well
`
`known in the art,” such as those disclosed in Petitioner’s own prior art patents.
`
`IS1001, 30:48-61.2 The claimed surgical instrument is old, and robotic surgical
`
`systems are old. The ’874 patent fails to identify exactly what in the patent is
`
`allegedly novel. As discussed herein, the ’874 patent merely describes prior art
`
`technology.
`
`In the ’874 patent, the surgical instrument includes: “an end effector [12]
`
`comprising an anvil [24] with staple forming features thereon, a housing frame
`
`[22] generally opposed to the anvil to hold a cartridge, a replaceable cartridge
`
`holding staples that can be urged out of the cartridge with a distal actuation of a
`
`deploying wedge, and at least one sensor.” IS1001, 4:10-14, FIG. 3. The surgical
`
`
`1 Although the abstract and claims 1-8, 16-19, and 21 recite a “remote user-con-
`
`trolled actuation console,” claims 9-15 of the ’874 patent recite only a “remotely
`
`user-controlled console,” and claim 20 recites only a “remote user-controlled con-
`
`sole.” The word “actuation” is absent in claims 9-15 and 20.
`
`2 Via the first CIP application, the patent also discloses a “remote computer device
`
`2420” (FIGs. 54, 55), but this device only receives data from the instrument’s con-
`
`trol unit and does not actuate the instrument.
`
`7
`
`

`

`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`instrument includes “an elongated shaft [46] coupled to the housing frame [22].”
`
`IS1001, 4:15-16, FIG. 4. “The elongated shaft compris[es] a rotary drive shaft
`
`[48] operably interfacing with the deploying wedge [33] such that rotation of the
`
`rotary drive shaft…causes the deploying wedge to move longitudinally….”
`
`IS1001, 4:16-18. The drive shaft is powered by motor 65 and rotates drive screw
`
`36, which is configured to apply firing motions to the wedge sled driver 33.
`
`IS1001, 20:22-29. The drive screw 36 is in threaded engagement with the knife
`
`32 such that when drive screw 36 rotates, the wedge sled driver 33 moves linearly.
`
`Helical screw shaft
`
`
`
`8
`
`

`

`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`
`IS1001, FIG. 3.
`
`The instrument also includes “a closure member [42] configured to close the
`
`end effector [12],” which the patent discloses is a “closure tube” such as distal
`
`closure tube 42. IS1001, 4:58-59, FIG. 4:
`
`
`
`V.
`
`SUMMARY OF THE PROSECUTION HISTORY
`The chain of applications to which the ’874 patent claims priority is pro-
`
`vided above. See Section III.B, supra. Notably, as detailed here, claim 1 of the
`
`’874 patent is nearly identical to a claim rejected during prosecution of a parent ap-
`
`plication. In allowing claim 1 of the ’874 patent, the examiner erroneously stated
`
`that it contains allowable subject matter from a parent application. But, to the con-
`
`trary, the examiner had rejected the nearly identical claim during prosecution of the
`
`9
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`

`

`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`
`parent application.3
`
`In addition, the original great-grandparent application to which the ’874 pa-
`
`tent claims priority did not include disclosure that supports the challenged claims.
`
`Specifically, that application had no remote computer or console. The grandparent
`
`’277 continuation-in-part application added new matter relating to a control unit
`
`2400 in the handle 6 of the instrument and a remote computer device 2420 for re-
`
`ceiving data from the surgical instrument. Compare IS1008 (’537 patent) with
`
`IS1009 (’977 patent), FIGs. 54-56, 27:27-29:37. The parent ’515 continuation-in-
`
`part application added descriptions of robotic surgical systems. Compare IS1009
`
`(’977 patent) with IS1010 (’603 patent), 29:37-30:15; IS1014 (’603 Prosecution
`
`History) at 637 (original claim).
`
`The ’515 application was filed with a single claim, which is shown below.
`
`
`3 In the parent application, to gain allowance, the applicant added limitations not
`
`found in the claims of the ’874 patent.
`
`10
`
`

`

`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`
`
`
`IS1014 (’603 Prosecution History) at 637 (original claim). The USPTO rejected
`
`this claim, which is nearly identical to claim 1 challenged in this Petition, as
`
`anticipated by Whitman. IS1014 at 392-93 (Jan. 31, 2013, Non-Final Rejection).
`
`After a first failed attempt to amend the claims and distinguish Whitman, the
`
`applicant amended claim 1 of the ’515 application to require an elongated shaft
`
`that is “rigid,”4 and added three new dependent claims. IS1014 at 249 (Aug. 20,
`
`
`4 Whitman disclosed a “flexible” elongated shaft connecting the motor to the in-
`
`strument. IS1014 at 251 (Aug. 20, 2013, Response to Office Action) (“Whitman
`
`discloses only a flexible shaft 105 connecting a motor and an actuation mecha-
`
`nism.”); IS1011, [0049]-[0051].
`
`11
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`

`

`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`2013, Response to Office Action); see also IS1014 at 309-14 (Apr. 9, 2013,
`
`Response to Office Action) (amending claim 1); IS1014 at 255-56 (May 20, 2013,
`
`Final Rejection) (rejecting claim 1). After further prosecution, the ’603 patent
`
`issued with only one claim that included the “rigid” limitation. IS1014 at 230-31
`
`(Aug. 28, 2013, Non-Final Rejection); IS1014 at 222-24 (Nov. 25, 2013, Response
`
`to Office Action); IS1014 at 212-19 (Dec. 16, 2013, Notice of Allowance); IS1010
`
`at 30:50-31:3.
`
`In the application that issued as the ’874 patent, the applicant re-submitted a
`
`claim nearly identical to the rejected original claim 1 of the parent ’515
`
`application, which, as explained above, did not include the “rigid” limitation added
`
`during prosecution of the parent ’515 application. IS1002 (’874 Prosecution
`
`History) at 476 (original claim). The applicants did not inform the examiner that
`
`they had essentially re-submitted a previously rejected claim. In a preliminary
`
`amendment, the applicants also submitted 18 new claims, including two new
`
`independent claims. IS1002 at 379-83 (Dec. 11, 2014, Preliminary Amendment).
`
`None included the “rigid” limitation that had been added to the parent application’s
`
`claims to gain allowance. Nonetheless, less than two weeks later, the same
`
`examiner who reviewed the ’515 application issued a notice of allowance for all of
`
`the pending claims, stating that the independent claims “each contain[s] allowable
`
`subject matter found in the parent application….” IS1002 at 373 (Dec. 24, 2014,
`
`12
`
`

`

`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`Notice of Allowance). The examiner did not explain the inconsistency between his
`
`original rejection in the parent application and subsequent allowance of claim 1.
`
`The applicants then filed a request for continued examination. IS1002 at
`
`180 (Mar. 24, 2015). In that request, the applicants added three new independent
`
`claims. IS1002 at 189-91 (claims). Again, none of the new claims included the
`
`“rigid” limitation. See IS1002 at 189-191. Nonetheless, less than two weeks later,
`
`the examiner issued a notice of allowance, stating that all the independent claims
`
`“contain allowable subject matter found in the parent application 13037515, now
`
`US Patent No 8,820,603.” IS1002 at 38 (Apr. 7, 2015, Notice of Allowance).
`
`VI. CLAIM CONSTRUCTION
`For the purposes of this IPR only, Petitioner submits that the terms of the
`
`’874 patent are to be given their broadest reasonable interpretation as understood
`
`by a POSITA at the time in view of the specification (“BRI”). 37 C.F.R. §
`
`42.100(b).
`
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’874 PATENT IS UNPATENTABLE
`For the reasons explained below, claims 1-21 of the ’874 patent are invalid.
`
`A. Ground 1: Hooven Anticipates Claims 1-7, 9-14, 16-17, and 19-21
`Because claims 9 and 20 have been asserted in litigation, we begin with
`
`those claims, starting with claim 20.
`
`Claims 20 and 9
`
`13
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`

`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`
`[20.1] A surgical instrument system, comprising:
`If this preamble is deemed to be a limitation, Hooven discloses it. IS1003,
`
`¶38. Hooven discloses a surgical instrument system including an instrument
`
`connected via a cable to a controller:
`
`
`
`IS1004, FIG. 1; 3:21-23. Specifically, “an endoscopic instrument which has a
`
`head portion for carrying out a step in an endoscopic procedure. The step may be
`
`[] stapling, cutting, [] etc. or combinations of these steps.” IS1004, 2:58-63; see
`
`also IS1004, FIGs. 1-9, 4:15-17 (“In [] Figure [1] an endoscopic stapling and
`
`cutting instrument 30 is interconnected with a controller 31 and a video display
`
`monitor 32.”), 4:45-53 (“In the embodiment depicted in FIGS. 2 through 9, the
`
`14
`
`

`

`head portion is a linear stapler and cutter….”).
`
`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`
`
`
`IS1004, FIG. 2.
`
`[20.2] an end effector comprising
`Hooven discloses this limitation. IS1003, ¶39. Hooven’s surgical
`
`instrument has an end effector called the “head or business portion 42 of the
`
`instrument.” IS1004, 4:36-37. Hooven explains: “The head or business portion is
`
`that portion of the instrument which accomplishes a step in a surgical procedure,
`
`whether than be ligating, stapling, cutting, manipulating tissue, or combinations of
`
`such steps.” IS1004, 4:38-42. The exemplary end effector of Hooven is the same
`
`type as the exemplary end effector in the ’874 patent—namely a cutting and
`
`stapling end effector, compare IS1001, 4:9-13 with IS1004, 4:12-20:
`
`15
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`

`

`’874 Patent (FIG. 55)
`
`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`Hooven (FIG. 1)
`
`
`
`
`[20.3] a first jaw`
`Hooven discloses this limitation. IS1003, ¶40. Hooven’s end effector 42
`
`includes “an anvil portion 75,” which is a first jaw. IS1004, 5:38-40, FIG. 6.
`
`[20.4] a second jaw, wherein one of said first and second jaws is movable
`between an open position and a closed position relative to the other of said first
`and second jaws in response to a closing motion
`Hooven discloses this limitation. IS1003, ¶¶41-42.
`
`
`
`16
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`

`

`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`
`“A second jaw”
`
`Hooven’s end effector 42 includes “a staple or staple cartridge portion 74,”
`
`which is a second jaw. IS1004, 5:38-40, FIG. 6; IS1003, ¶41.
`
`
`
`“Wherein one of said first and second jaws is movable between an open
`
`position and a closed position relative to the other of said first and second jaws in
`
`response to a closing motion”
`
`Hooven’s anvil 75 (i.e., the first jaw) is movable between open and closed
`
`positions relative to the staple cartridge portion 74 (i.e., the second jaw). IS1004,
`
`FIGs. 6 (open position), 7 (closed position); IS1003, ¶42.
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`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
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`
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`This movement is in response to distal motion of closure pin 78 (i.e., a closing
`
`motion) applied to the slot 79 in anvil portion 74. IS1003, ¶42; see also IS1004,
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`5:40-55 (describing the closing motion of closure pin 78), FIGs. 6-7 (above). In
`
`the opening motion of closure pin 78, “the closure nut 77[, which includes closure
`
`pin 78,] retract[s] and open[s] the anvil portion 75 of the head of the instrument.”
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`IS1004, 5:40-55, 6:40-44; see also IS1004, FIGs. 6-10. The proximal and distal
`
`motions of closure pin 78 are opening and closing motions, respectively, to move
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`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`the jaws between open and closed positions. IS1003, ¶42.
`
`[20.5] a driver element supported for axial travel through said end effector in
`response to a firing motion;
`“Driver element”
`
`Hooven discloses this limitation. IS1003, ¶¶43-44. Hooven discloses a
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`“firing nut 86” that forcibly propels knife 82 via threads that interact with threaded
`
`rod 71, and it is thus a driver element. Id.; IS1004, 6:30-34 (“[F]iring nut 86 on
`
`which the knife 82 and wedges 83 are disposed … engages the threads of the
`
`smaller diameter portion 73 of the threaded rod to move forward along the rod and
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`drive the staples 81 and cut tissue.”). Hooven’s firing nut is essentially the same as
`
`the driver element disclosed in the ’874 patent, which is a threaded portion of
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`“knife driving member 32,” which is threadedly attached to the drive screw.
`
`IS1003, ¶43.
`
`“Supported for axial travel through said end effector in response to a firing
`
`motion”
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`Hooven’s firing nut 86 and knife 82 are supported on smaller diameter
`
`portion 73 of threaded rod 71 for axial travel through the surgical end effector after
`
`the anvil has been closed. IS1003, ¶44. “As depicted in [FIGs. 6-10], extending
`
`the length of the staple portion [74] of the instrument is the smaller diameter
`
`portion of the threaded rod [73]. Mounted on this rod, to move along the rod as the
`
`rod rotates, is a knife member 82 and a driving wedge member 83 which are inner
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`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`connected [and disposed on firing nut 86]. The wedge member precedes the knife
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`member as they move along the threaded rod.” IS1004, 6:9-16.
`
`
`
`IS1004, FIG. 8; see also IS1004, 6:30-34 (“[T]he firing nut 86 on which the knife
`
`82 and wedges 83 are disposed [] engages the threads of the smaller diameter
`
`portion 73 of the threaded rod to move forward along the rod [as it rotates] and
`
`drive the staples 81 and cut tissue.”). The rotations of the threaded rod 71 are the
`
`firing motions. IS1004, 6:30-34; compare IS1004, FIG. 7 (depicting “the head of
`
`the instrument … in the closed position ready for firing”) with IS1004, FIG. 8
`
`(depicting “the head of the instrument … during the firing action” and showing the
`
`axial travel of firing nut 86 and knife 82); IS1003, ¶44.
`
`[20.6] a motor-powered firing element configured to apply the firing motion to
`said driver element
`Hooven discloses this limitation. IS1003, ¶¶45-47. The smaller diameter
`
`portion 73 of Hooven’s “threaded rod 71” is a motor powered firing element that is
`
`configured to apply firing motions to the knife via the drive nut. IS1003, ¶45. In
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`Attorney Docket No. 11030-0049IP6
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`fact, Hooven’s threaded rod is substantially similar to the ’874 patent’s drive screw
`
`36. Compare IS1001, FIG. 3 with IS1004, FIG. 7.
`
`’874 patent
`“drive screw 36”
`Hooven
`“threaded rod 71”
`
`
`Hooven’s threaded rod 71 is also driven by a DC motor via a flexible drive shaft
`
`
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`61, so it is motor-powered. IS1004, 5:8-35.
`
`
`
`“DC motor 45”
`
`
`“Shaft 61” connecting
`to “threaded rod 71”
`
` Hooven thus discloses a motor powered part used in the process of firing a
`
`stapler by applying firing motions (rotating a threaded rod), which, in turn, causes
`
`wedge member 83 and knife member 82 to travel axially and eject staples. IS1003,
`
`¶47.
`
`[20.7] a remote user-controlled console electrically coupled to said motor.
`Hooven discloses this limitation. IS1003, ¶¶48-49. Hooven discloses a
`
`“controller 31” and a “video display monitor 32,” which together form a “console.”
`
`Id.; IS1004, FIGs. 1, 18; see also IS1004, 4:13-32 (“The controller may also
`
`include a display screen to present the data it has received from the instrument and
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`manipulate it in a desired way.”).
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`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`
`
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`
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`Alternatively, the “controller 31” alone may be considered a “console.” Hooven’s
`
`controller is a “remote” console because it is separate from the instrument.
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`Attorney Docket No. 11030-0049IP6
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`IS1003, ¶48; IS1004, FIGs. 1, 18. It is also user-controlled. IS1003, ¶48. For
`
`example, switches provided on the handle of the instrument allow the user to
`
`control the video display on the console or provide the console with signals to turn
`
`on and off the instrument. IS1003, ¶48; IS1004, 4:60-64; see also IS1004, FIG. 19
`
`(showing “user interface”), 4:22-24 (“The controller may feed appropriate signals
`
`back to the instrument in order to operate the instrument.”). The ’874 Patent
`
`contemplates that “remote” devices need not be completely separated from the
`
`instrument: “That remote computer device 2420 may be external of the instrument
`
`10 (i.e., not part of the instrument 10) . . . .” ’874 Patent, 29:49-51. By stating that
`
`the “remote” device “may be” external of the instrument, the ’874 Patent informs
`
`the reader that it need not be—“may be” means its optional, and not required.
`
`Accordingly, Hooven’s “console” is “remote” even if the switches on the
`
`instrument are considered part of the console (in conjunction with remote
`
`controller 203).
`
`Hooven’s motor is also electrically coupled to the controller. IS1003, ¶49.
`
`“The endoscopic instrument [30] is powered by a DC motor 204 and is connected
`
`to the controller by a cable 205.” IS1004, 8:57-59. Furthermore, the motor may
`
`receive control signals from the controller. IS1004, 4:17-20 (“The controller
`
`includes … motor drive circuits. The instrument is connected to the
`
`controller….”), 4:22-24 (“The controller may feed appropriate signals back to the
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`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`instrument in order to operate the instrument.”). The controller may also “supply
`
`power to the instrument at the appropriate level, frequency, timing, etc.” and
`
`“[w]ithin the controller may be several hardwired logic circuits controlling critical
`
`instrument functions.” IS1004, 4:24-28.
`
`[9.1] A surgical instrument comprising:
`If this preamble is deemed to be a limitation, Hooven discloses it. IS1003,
`
`¶50. Hooven discloses a surgical cutting and fastening instrument. IS1004,
`
`Abstract. Specifically, “an endoscopic instrument which has a head portion for
`
`carrying out a step in an endoscopic procedure. The step may be … stapling,
`
`cutting, [] etc. or combinations of these steps.” IS1004, 2:58-63; see also IS1004,
`
`FIGs. 1-9, 4:15-17 (“Figure [1 shows] an endoscopic stapling and cutting
`
`instrument 30 is interconnected with a controller 31 and a video display monitor
`
`32.”), 4:45-53 (“In the embodiment depicted in FIGS. 2 through 9, the head portion
`
`is a linear stapler and cutter….”).
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`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`
`
`
`IS1004, FIG. 2.
`
`[9.2] a surgical end effector comprising:
`See Ground 1, element [20.2].
`
`[9.3] a first jaw
`See Ground 1, element [20.3].
`
`[9.4] a second jaw
`See Ground 1, elements [20.4].
`
`[9.5] said first and second jaws are supported relative to each other such that one
`of said first and second jaws is movable between open and closed positions
`relative to the other of said first and second jaws in response to opening and
`closing motions applied thereto
`“Said first and second jaw are supported relative to each other”
`
`Hooven discloses this limitation. IS1003, ¶54. “The staple portion [74 (
`
`said second jaw)] and the anvil portion [75 (said first jaw)] are pivotally connected
`
`to each other [(and thus supported relative to each other)] by the anvil pivot pin
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`76.” IS1004, 5:40-41.
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`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`
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`“Such that one of said first and second jaws is movable between open and
`
`closed positions relative to the other of said first and second jaws in response to
`
`opening and closing motions applied thereto”
`
`See Ground 1, element [20.4]. The proximal and distal motions of closure
`
`pin 78 are opening and closing motions, respectively, to move the jaws between
`
`open and closed positions. IS1003, ¶55.
`
`[9.6] a driver element supported for axial travel through the surgical end effector
`in response to firing motions applied thereto and wherein said surgical
`instrument further comprises:
`See Ground 1, element [20.5].
`
`[9.7] a motor powered firing element configured to apply said firing motions to
`said driver element
`See Ground 1, element [20.6].
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`Attorney Docket No. 11030-0049IP6
`IPR of U.S. Patent No. 9,113,874
`[9.8] a remotely user-controlled console electrically coupled to said surgical
`instrument
`See Ground 1, element [20.7]. Element [20.7] recites a “remote user-
`
`controlled console electrically coupled to said motor.” As discussed with regard to
`
`element