Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 10
`Entered: June 11, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`v.
`ETHICON ENDO-SURGERY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-00938
`Patent 9,113,874 B2
`_______________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`DECISION ON REQUEST FOR REHEARING
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
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`IPR2018-00938
`Patent 9,113,874 B2
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`I. BACKGROUND
`
`Intuitive Surgical, Inc., (“Petitioner”) filed a Petition for inter partes
`review of claims 1–21 of U.S. Patent No. 9,113,874 B2 (Ex. 1001, “the ’874
`patent”).1 Paper 2 (“Pet.”). Ethicon Endo-Surgery, Inc., (“Patent Owner”)
`filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On December 4,
`2018, we entered a Decision Denying Institution of Inter Partes Review.
`Paper 8, (“Decision” or “Dec.”).
`On December 20, 2018, Petitioner filed a Request for Rehearing of
`our Decision denying institution of inter partes review of claims 1–15 and
`18–20 of the ’874 patent.2 Paper 9 (“Req. Reh’g.”).
`With respect to Grounds 1–4, Petitioner contends that we erred by
`misapprehending the disclosure of Hooven because we “overlooked th[e]
`part of Hooven which discloses that the closing motion may be applied
`independently of the firing motion,” and thus, erroneously concluded that
`“the two motions cannot be the ‘same’ motion.” Req. Reh’g. 1; see also id.
`at 2–7. Accordingly, Petitioner requests the Board reconsider its findings
`
`
`1 As discussed in the Decision, claims 16, 17, and 21 are disclaimed via
`statutory disclaimer, filed September 5, 2018, under 35 U.S.C. § 253(a) and
`37 C.F.R. § 1.321(a). See Dec. 2, FN 1 (citing Ex. 2002). Accordingly, only
`claims 1–15 and 18–20 were addressed in the Decision. See 37 C.F.R.
`§ 42.107(e).
`2 Petitioner’s Request “specifically addresses the error for Ground 1 in
`Section I (relevant to all claims) and the errors for Ground 4 in Section V
`(claims 1–8, and 19).” Req. Reh’g. 10.
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`IPR2018-00938
`Patent 9,113,874 B2
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`regarding Hooven with respect to Ground 13, as well as Grounds 2–4,4 and
`institute trial on all grounds of the Petition. See id. at 10.
`With respect to Ground 4, Petitioner contends that “the Board
`misapprehended or overlooked the import of Dr. Knodel’s discussion in
`support” of its assertion that “it would have been obvious to replace
`Hooven’s flexible shaft with a stiff shaft and articulation joint,” as taught by
`Wales. Id. at 11–13. Accordingly, Petitioner requests the Board reconsider
`its decision, with respect to Ground 4, and institute trial on all grounds of the
`Petition. Id. at 10.
`For the reasons discussed below, Petitioner has not demonstrated that
`we abused our discretion in denying institution.
`
`II. ANALYSIS
`
`Standard of Review
`A.
`When rehearing a decision on petition, the Board will review the
`decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of
`discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`
`
`3 In the Petition, Petitioner asserts the claims 1–7, 9–14, 19, and 20 are
`anticipated by Hooven. Pet. 13–50 (citing Exs. 1001, 1003, 1004).
`4 In the Petition, Petitioner further asserts that claims 2–4, 9–15, and 18 are
`obvious over Hooven and Knodel (Ground 2 – Pet. 51–67 (citing Exs. 1001,
`1003, 1004, 1005)); claim 8 is obvious over Hooven and Bays (Ground 3 –
`Pet. 67–70 (citing Exs. 1003, 1006)); and claims 1–8 and 19 are obvious
`over Hooven, Knodel and/or Bays, and Wales (Ground 4 – Pet. 70–73
`(citing Exs. 1003, 1007)).
`
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`IPR2018-00938
`Patent 9,113,874 B2
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`relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340
`(Fed. Cir. 2004). A request for rehearing “must specifically identify all
`matters the party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).
`“The burden of showing a decision should be modified lies with the party
`challenging the decision.” Id.
`
`Analysis
`B.
`Alleged Misapprehension/Overlooking of Evidence Regarding Hooven
`Petitioner argues that “[t]he Board overlooked [a] part of Hooven
`which discloses that the closing motion may be applied independently of the
`firing motion, and thus the two motions cannot be the ‘same’ motion, as the
`Board found.” Req. Reh’g. 1. More particularly, Petitioner asserts that the
`Board overlooked column 5, lines 50–65 of Hooven which discloses:
`Tissue to be treated or manipulated is placed between the anvil
`portion and the staple portion of the head of the instrument when
`in the open position. Power is applied to the flexible shaft to
`rotate the shaft and the threaded rod and close the anvil portion.
`As can be appreciated, the amount of torque required to pivot the
`anvil portion about the pivot pin can be sensed and the thickness
`of tissue between the anvil and the staple portion determined. It
`is a simple matter for a controller to manipulate this
`information and inform the surgeon as to whether or not he
`has the appropriate amount of tissue between the anvil
`portion and the staple portion of the head of the instrument
`upon closure or whether he has too much or too little tissue
`and should re-manipulate the instrument.
`Req. Reh’g. 4 (citing Ex. 1004, 5:50–65). Based on this emphasized
`portion, Petitioner contends that “Hooven clearly teaches the ability to close
`and open the anvil without firing the device.” Req. Reh’g. 3.
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`IPR2018-00938
`Patent 9,113,874 B2
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`As an initial matter, we are not persuaded by Petitioner’s contention
`that we misapprehended or overlooked the emphasized potion of Hooven
`(Ex. 1004, 5:59–65), because Petitioner did not rely on the emphasized
`portion of Hooven to address the “closing motion” and “firing motion” in
`the Petition.5 Instead, to address the “closing motion” recited by
`independent claim 20 in the Petition, Petitioner relied on column 5, lines 40–
`55 and column 6, lines 40–44 of Hooven. Pet. 18.6 To address the “firing
`motion,” Petitioner relied on column 6, lines 30–34, while explicitly stating
`that it is “[t]he rotations of the threaded rod 71 are the firing motions.” Pet.
`20.7 And, consistent with this understanding, our Decision summarized
`Petitioner’s mapping of the disputed terms as follows:
`With respect to the “closing motion,” Petitioner asserts
`that “[t]he proximal and distal motions of closure pin 78 are
`opening and closing motions, respectively, to move the jaws
`between open and closed positions.” Pet. 18–19 (citing Ex. 1003
`¶ 42). And, with respect to the “firing motion,” Petitioner asserts
`that that “[t]he 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.”
`Pet. 20 (citing Ex. 1003 ¶¶ 45–47; Ex. 1004, Fig. 7; Ex. 1001;
`Fig. 3, element 36).
`Dec. 16. Based on this mapping, the Decision noted that:
`
`
`5 We acknowledge Petitioner’s points to column 5, lines 40–55 to address
`the “closing motion” of independent claim 20. Pet. 18. However, Petitioner
`did not rely on the remaining, and newly cited lines 56–65 of column 5 to
`address independent claims 9 and 20.
`6 With respect to independent claim 9, Petitioner relies on the same portions
`of Hooven. See Pet. 25–26.
`7 With respect to independent claim 9, Petitioner relies on the same portions
`of Hooven. See Pet. 26.
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`IPR2018-00938
`Patent 9,113,874 B2
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`
`Hooven discloses “[w]hen the flexible shaft is rotated, the
`threaded rod is also rotated and on rotating the closure nut will
`move down the threaded rod and move the closure pin in the
`closure slot to close the anvil portion against the staple portion
`of the head of the instrument.”
`Id. at 17 (quoting Ex. 1004, 5:46–50 (alteration in original)), and determined
`that “both of the ‘motions,’ relied upon to address the ‘closing motion’ and
`‘firing motion’ in the Petition depend on the same motion, i.e., the rotation
`of the threaded rod.” Dec. 16–17 (citing Prelim. Resp. 25–26).
`Nonetheless, we have reconsidered our determination in light of the
`disclosure at column 5, lines 50–65 of Hooven, but are not persuaded that
`the newly relied upon portion of Hooven alters our determination. Although
`we agree with Petitioner that the emphasized portion of Hooven (Ex. 1004,
`5:59–65) establishes that a surgeon may “re-manipulate the instrument”
`(open/close the jaws) based upon whether or not the appropriate amount of
`tissue is present between the anvil portion (i.e., first jaw) and the staple
`portion (i.e., second jaw), this disclosure does change the fact that it is the
`motion of the threaded rod that is responsible for both the “closing motion”
`and “firing motion” required by independent claim 20, and similarly
`required by independent claim 9. See Dec. 16–19.
`As we stated in the Decision, with respect to the “closing motion,”
`Hooven discloses “[w]hen the flexible shaft is rotated, the
`threaded rod is also rotated and on rotating the closure nut will
`move down the threaded rod and move the closure pin in the
`closure slot to close the anvil portion against the staple portion
`of the head of the instrument.”
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`IPR2018-00938
`Patent 9,113,874 B2
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`Id. at 16 (quoting Ex. 1004 5:46–50).8 Thus, Hooven discloses that rotation
`of the threaded rod causes the closure pin to close the anvil portion (i.e., first
`jaw). And, with respect to the “firing motion,” we stated:
`[w]hen the anvil portion 75 is closed as shown in FIG. 7, the
`closure nut 77 moves a stop member 85 forward so that the firing
`nut 86 on which the knife 82 and wedges 83 are disposed is
`moved forward and engages the threads of the smaller diameter
`portion 73 of the threaded rod to move forward along the rod and
`drive the staples 81 and cut tissue.
`Id. (quoting Ex. 1004, 6:28–34 (alteration in original)). Here, Hooven
`similarly discloses that it is the smaller diameter portion of the threaded rod
`that drives the staple portion (i.e., second jaw). See Ex. 1004, 6:28–34;
`Accord Pet. 20 (stating “[t]he rotations of the threaded rod 71 are the firing
`motions.”); Pet. 25–26.
`Petitioner contends that the “closing motion” and “firing motion” in
`Hooven cannot be the same motion because “Hooven clearly teaches the
`ability to close and open the anvil without firing the device.” Req. Reh’g. 3
`(citing Ex. 1004, 5:50–65). The fact that Hooven’s anvil is able to close and
`open, however, is unpersuasive to show error in our determination. In this
`regard, Hooven discloses that “[p]ower is applied to the flexible shaft to
`rotate the shaft and the threaded rod and close the anvil portion.” Ex. 1004,
`5:53–55. Hooven discloses that rotation of the threaded rod is controlled by
`“a suitable on-off switch 48 and a switch 49 to control the power supply
`
`
`8 The fact that independent claim 9 additionally recites a “reciprocatable
`closure element configured to apply said opening and closing motions to
`said one of said first and second jaws” (Ex. 1001, 32:53–55) does not alter
`our determination. In this regard, we note that the “reciprocatable closure
`element” is simply configured to apply the “opening and closing motions.”
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`IPR2018-00938
`Patent 9,113,874 B2
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`being provided by the motor.” Ex. 1004, 4:60–63. A PHOSITA would
`appreciate that simply reversing the rotation of the shaft would cause the
`anvil to open and allow the surgeon to “re-manipulate the instrument.”
`Thus, we maintain that “both of the ‘motions,’ relied upon to address the
`‘closing motion’ and ‘firing motion’ in the Petition depend on the same
`motion, i.e., the rotation of the threaded rod.” Dec. 16–17 (citing Prelim.
`Resp. 25–26).9
`Petitioner attributes the purported “misapprehension concerning
`Hooven occurred because Patent Owner argued that Hooven failed to
`disclose this ability to close without firing, implying that Hooven closes and
`then fires as part of the same ‘motion’.” Req. Reh’g. 2. We are not
`persuaded by Petitioner’s argument. While certainly informed by Patent
`Owner’s arguments, the Decision did not misapprehend the contents of
`Hooven based on Patent Owner’s argument. Instead, the Decision only
`relies on Hooven and the ’874 patent for the relevant findings. See Dec. 10–
`19.
`
`9 Petitioner directs our attention to U.S. Application Serial No. 16/023,523
`related to the ’874 patent, and asserts “that after the Petition was filed, the
`Examiner read Hooven as Petitioner does here—that Hooven discloses
`‘separate and distinct’ closing and firing motions.” Req. Reh’g. 7, fn. 1.
`After reviewing the prosecution for the related application, we note that
`Petitioner’s assertion no longer holds true. Petitioner is correct that the
`Examiner did initially find Hooven to disclose “‘separate and distinct’
`closing and firing motions” (see Non-Final Action, mailed Aug. 24, 2018),
`however, in response to Applicant’s argument that Hooven “fails to provide
`a mechanism for performing a closure motion separately and [sic] from a
`firing motion (see Applicant’s Arguments at 9, filed Nov. 26, 2018), the
`Examiner no longer relied on Hooven to address “‘separate and distinct’
`closing and firing motions.” See Final Action at 2–11, mailed Mar. 28,
`2019.
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`Patent 9,113,874 B2
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`Alleged Misconstruction of the Terms “Closing Motion” and “Firing
`Motion”
`Petitioner argues that “[t]he Board [c]onstrued the ‘[c]losing [m]otion’
`and ‘[f]iring [m]otion’ [t]erms [t]oo [n]arrowly.” Req. Reh’g. 8 (emphases
`omitted). In its Request, Petitioner asserts that “[t]he threaded rod may be a
`‘firing element’ and may also provide rotary motion to the ‘closure
`element.’” Id. at 9. However, Petitioner points to no evidence relied on in
`its Petition in that regard, and also does not indicate where in its Petition it
`initially made this claim construction argument. Per 37 C.F.R. § 42.71(d),
`Petitioner must point out where the matter previously was addressed in its
`Petition. We could not have misapprehended argument or evidence that was
`not presented. A request for rehearing is not an opportunity to supplement a
`petition.
`
`Alleged Misapprehension/Overlooking of Evidence Regarding Dr. Knodel’s
`Declaration
`Petitioner contends that “the Board misapprehended or overlooked the
`import of Dr. Knodel’s discussion in support” of its assertion that “it would
`have been obvious to replace Hooven’s flexible shaft with a stiff shaft and
`articulation joint,” as taught by Wales. Req. Reh’g. 11.
`We are unpersuaded that we misapprehended or overlooked
`Petitioner’s position or cited evidence. Petitioner cites pages 70–73 of the
`Petition, and paragraphs 166–170 of Dr. Knodel’s Declaration, in its
`Request. Req. Reh’g. 11–13. At the outset, we note that our Decision
`expressly addressed Petitioner’s arguments and evidence along with “Dr.
`Knodel’s discussion in support.” See Dec. 31–39. Furthermore, as Patent
`Owner points out in its Preliminary Response, Dr. Knodel’s Declaration
`simply parrots Petitioner’s arguments and provides little if any analysis of
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`IPR2018-00938
`Patent 9,113,874 B2
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`the evidence that he and Petitioner cite in support. See Prelim. Resp. 35–37;
`Compare Ex. 1003 ¶¶ 166–170, with Petition at 70–73.
`Nonetheless, we have reconsidered our determination in light of
`Petitioner’s Request for Rehearing, but are not persuaded that that we
`misapprehended or overlooked Petitioner’s position or cited evidence.
`Instead, we maintain that the Petition and Dr. Knodel’s Declaration lack
`a discussion as to whether the proposed combination modifies
`Hooven’s flexible-elongated shaft 41 to utilize Wales’ rigid-
`elongated second/third links, in conjunction with its fourth link
`in the form of the end effector (see Ex. 1007, 5:11–18, 29–33),
`or if the proposed combination simply modifies Hooven’s
`flexible-elongated shaft 41 by adding an “articulation joint.” Cf.
`Pet. 71 (citing Figs. 1, 4). And, while the Petition and Dr. Knodel
`assert that the proposed combination is simply the use of “a
`known technique to improve similar devices” and “would have
`yielded predictable results without significantly altering or
`hindering the functions performed by Hooven’s device” (Pet.
`72–73 (citing Ex. 1003 ¶¶ 168–170)), neither Petitioner nor Dr.
`Knodel provides any persuasive analysis, fact-based or otherwise
`to establish how the proposed combination discloses or suggests
`the “articulation joint” recited in independent claims 1 and 19.
`Dec. 38–39.
`Disagreement with the Board’s analysis and conclusions is not a
`sufficient basis on which to request rehearing. It is not an abuse of
`discretion to have made an analysis or conclusion with which a party
`disagrees. Accordingly, the Decision did not misapprehend or overlook any
`arguments or evidence presented by Petitioner. We did not abuse our
`discretion in determining that the Petitioner did not adequately establish a
`reasonable likelihood of prevailing on the proposed combination of Hooven,
`Wales, Knodel, and/or Bays.
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`III. CONCLUSION
`
`We are not persuaded by Petitioner of an abuse of discretion.
`Petitioner’s request for rehearing is denied.
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing is denied.
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`IPR2018-00938
`Patent 9,113,874 B2
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`PETITIONER:
`Steven R. Katz
`John C. Phillips
`Ryan P. O’Connor
`FISH & RICHARDSON
`katz@fr.com
`phillips@fr.com
`oconnor@fr.com
`
`PATENT OWNER:
`Anish R. Desai
`Elizabeth Stotland Weiswasser
`Adrian Percer
`Christopher T. Marando
`Christoper M. Pepe
`WEIL, GOTSCHAL & MANGES LLP
`anish.desai@weil.com
`elizabeth.weiswasser@weil.com
`adrian.percer@weil.com
`christopher.marando@weil.com
`christopher.pepe@weil.com
`
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