Trials@uspto.gov
`571.272.7822
`
`Paper No. 8
`Entered: December 4, 2018
`
`
`
`
`
`
`
`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
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`571.272.7822
`
`Paper No. 8
`Entered: December 4, 2018
`
`
`
`
`
`
`
`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
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
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`IPR2018-00938
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`I.
`
`INTRODUCTION
`
`A. OVERVIEW
`Intuitive Surgical, Inc., (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting inter partes review of claims 1–21 of U.S. Patent No. 9,113,874
`B2 (Ex. 1001, “the ’874 patent”).1 Pet. 1. Ethicon Endo-Surgery, Inc.,
`(“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`Section 314(a) of Title 35 of the United States Code provides that an
`inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the
`Petition, Preliminary Response, and the associated evidence, for the reasons
`explained below, we conclude that the information presented in the Petition
`does not establish a reasonable likelihood that Petitioner would prevail with
`respect to any of the challenged claims.
`Accordingly, we decline to institute an inter partes review.
`
`B.
`
`RELATED PROCEEDINGS
`The parties indicate that the ’874 patent is involved in: Ethicon LLC
`et al. v. Intuitive Surgical, Inc. et al., No. 1:17-cv-00871 in the United States
`
`
`1 As discussed below in Section II.A, Patent Owner identifies that 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 Ex. 2002. In light
`of this disclaimer, only claims 1–15 and 18–20 remain under review. The
`remainder of this decision modifies the grounds of unpatentability presented
`by Petitioner to reflect only those claims under review. See 37 C.F.R.
`§ 42.107(e).
`
`2
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`District Court for the District of Delaware (“the Delaware litigation”).2 Pet.
`2; Paper 6, 2.
`
`Petitioner is also challenging related patents in the following
`proceedings before the Board: (1) Case No. IPR2018-00933 (the ’601
`patent); (2) Case No. IPR2018-00934 (the ’058 patent); (3) Case No.
`IPR2018-00935 (the ’677 patent); (4) Case Nos. IPR2018-01248 and
`IPR2018-01254 (the ’969 patent); (5) Case Nos. IPR2018-01247 and
`IPR2018-00936 (the ’658 patent); and (6) Case No. IPR2018-01703 (the
`’431 patent).
`
`C.
`
`THE ’874 PATENT
`The ’874 patent relates generally to endoscopic surgical instruments
`that are suitable for precise placement of a distal end effector at a desired
`surgical site. Ex. 1001, 2:49–60. More particularly, the ’874 patent
`describes a surgical cutting and fastening instrument that in some
`embodiments includes an end effector comprising an anvil with staple
`forming features (see, e.g., Ex. 1001, 3:47–60) and in other embodiments
`includes an end effector comprising a first jaw, second jaw, and a firing
`element. See, e.g., Ex. 1001, 3:61 – 4:8. Reproduced below is Figure 1 of
`the ’874 patent.
`
`
`2 Patent Owner asserts that U.S. Pat. Nos. 9,585,658 (“the ’658 patent”),
`8,616,431 (“the ’431 patent”), 8,479,969 (“the ’969 patent”), 8,998,058 (“the
`’058 patent”), 9,084,601 (“the ’601 patent”), and 8,991,677 (“the ’677
`patent”) are also asserted in the Delaware litigation. Paper 6, 2.
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`FIG. 1 illustrates a perspective view of a surgical cutting
`and fastening instrument.
`Figure 1 depicts surgical cutting and fastening instrument 10
`comprising handle 6, shaft 8, and articulating end effector 12 pivotally
`connected to shaft 8 at articulation pivot 14. Ex. 1001, 6:29–32. The ’874
`patent describes that “[i]n other embodiments, different types of clamping
`members besides the anvil 24 could be used, such as, for example, an
`opposing jaw, etc.” Ex. 1001, 7:7–9. The ’874 patent discloses that “handle
`6 of the instrument 10 may include a closure trigger 18 and a firing trigger
`20 for actuating the end effector 12.” Ex. 1001, 6:44–46. More particularly,
`the’874 patent discloses:
`[t]he handle 6 includes a pistol grip 26 toward which a closure
`trigger 18 is pivotally drawn by the clinician to cause clamping
`or closing of the anvil 24 towards the staple channel 22 of the
`end effector 12 to thereby clamp tissue positioned between the
`anvil 24 and channel 22. The firing trigger 20 is farther outboard
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`of the closure trigger 18. Once the closure trigger 18 is locked
`in the closure position as further described below, the firing
`trigger 20 may rotate slightly toward the pistol grip 26 so that it
`can be reached by the operator using one hand. Then the operator
`may pivotally draw the firing trigger 20 toward the pistol grip 26
`to cause the stapling and severing of clamped tissue in the end
`effector 12.
`Ex. 1001, 6:62–7:7.
`ILLUSTRATIVE CLAIM
`D.
`Petitioner challenges claims 1–15 and 18–20 of the ’874 patent. Each
`of claims 1, 9, 19, and 20 is independent. Independent claims 1 and 9 are
`illustrative of the challenged claims, and are reproduced below:
`
`1. A surgical cutting and fastening instrument comprising:
`an end effector comprising an anvil with staple forming
`features thereon, a housing frame 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;
`an elongated shaft, said shaft having a motor therein that
`is operably coupled to an actuation mechanism, said shaft having
`at least one articulation joint for positioning the cartridge at an
`angle not parallel to a longitudinal axis of said shaft;
`an electrically coupled remote user-controllable actuation
`console; and
`a linear drive motion converter to convert rotary motion
`from said motor to linear motion.
`9. A surgical instrument comprising:
`a surgical end effector comprising:
`a first jaw;
`a second jaw, wherein 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
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`relative to the other of said first and second jaws in response to
`opening and closing motions applied thereto; and
`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:
`a motor powered firing element configured to apply said
`firing motions to said driver element;
`a remotely user-controlled console electrically coupled to
`said surgical instrument; and
`a reciprocatable closure element configured to apply said
`opening and closing motions to said one of said first and second
`jaws.
`EVIDENCE AND ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner challenges the claims on the following grounds:
`
`E.
`
`Basis
`§ 102(b) Hooven3
`
`Reference(s)
`
`Claims
`1–7, 9–14, 19,
`and 20
`2–4, 9–15,
`and 18
`§ 103(a) Hooven and Bays5
`8
`§ 103(a) Hooven, Knodel, and/or Bays, and Wales6
`1–8 and 19
`Pet. 13–73. Petitioner relies upon a Declaration of Dr. Bryan Knodel.
`Ex. 1003.
`
`§ 103(a) Hooven and Knodel4
`
`
`3 U.S. Patent No. 5,383,880, issued Jan. 24, 1995 (Ex. 1004; “Hooven”).
`4 U.S. Patent No. 5,662,667, issued Sept. 2, 1997 (Ex, 1005; “Knodel”).
`5 U.S. Patent No. 5,796,188, issued Aug. 18, 1998 (Ex. 1006; “Bays”).
`6 U.S. Patent No. 5,702,408, issued Dec. 30, 1997 (Ex. 1007; “Wales”).
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`A.
`
`II. ANALYSIS
`PATENT OWNER’S DISCLAIMER OF CLAIMS 16, 17, AND 21
`As noted above, Petitioner seeks, among other things, inter partes
`review of claims 16, 17, and 21 of the ’874 patent. See, e.g., Pet. 1, 4.
`Subsequent to the filing of the Petition, Patent Owner filed a statutory
`disclaimer of claims 16, 17, and 21 of the ’874 patent. See Ex. 2002; see
`also Prelim. Resp. 6. Patent Owner argues “[b]ased on this disclaimer, the
`874 Patent is to be treated as though claims 16, 17, and 21 never existed.”
`Prelim. Resp. 6 (citing Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379,
`1383 (Fed. Cir. 1998)). Patent Owner further argues that “[a]s a result of the
`statutory disclaimer of claims 16, 17, and 21, and pursuant to 37 C.F.R.
`§ 42.107(e), it is respectfully submitted that the institution decision in this
`proceeding should be based only on the remaining challenged claims 1–15
`and 18–20 of the ’874 patent.” Prelim. Resp. 6.
`We are persuaded by Patent Owner’s argument that, based on Federal
`Circuit precedent and our rules, we cannot institute a trial on claims that
`have been disclaimed and no longer exist. “The Federal Circuit has held
`consistently that claims disclaimed under § 253(a) should be treated as
`though they never existed.” Facebook, Inc. v. SKKY, LLC, Case CBM2016-
`00091, slip op. at 8 (PTAB Sept. 28, 2017) (Paper 12) (expanded panel)
`(precedential) (citing Vectra Fitness, Inc., 162 F.3d at 1383 (“This court has
`interpreted the term ‘considered as part of the original patent’ in section 253
`to mean that the patent is treated as though the disclaimed claims never
`existed.”); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996); Genetics
`Inst., LLC v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1299
`(Fed. Cir. 2011). Recognizing that a disclaimed claim is treated as one that
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`never existed, our rules prohibit instituting inter partes review on disclaimed
`claims. 37 C.F.R. § 42.107(e).
`This is also consistent with the statutory scope of an inter partes
`review. Section 311(b), which defines the scope of an inter partes review,
`states that “[a] petitioner in an inter partes review may request to cancel as
`unpatentable 1 or more claims of a patent only on a ground that could be
`raised under section 102 or 103 and only on the basis of prior art consisting
`of patents or printed publications.” 35 U.S.C. § 311(b) (emphasis added).
`Similarly, the final written decision, in the event an inter partes review is
`instituted, “shall [address] the patentability of any patent claim challenged
`by the petitioner.” 35 U.S.C. § 318(a) (emphasis added). In both cases, the
`scope of review is limited to patent claims.
`The decision in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60
`(2018) does not mandate a different result. In SAS, the Supreme Court held
`that a decision to institute under 35 U.S.C. § 314 may not institute on less
`than all claims challenged in the petition. 128 S. Ct. at 1359–60. However,
`as discussed above, claims 16, 17, and 21 are treated as if they never existed.
`Therefore, those claims are no longer claims challenged in the Petition.
`Accordingly, we treat claims 16, 17, and 21 as if they were never part of the
`’874 patent. Because those claims were never part of the ’874 patent,
`Petitioner cannot seek inter partes review of those claims.7
`
`
`7 We note that the remaining grounds of the Petition address claims 1–15 and
`18–20, which constitute all of the claims that have not been disclaimed.
`
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`B.
`
`CLAIM INTERPRETATION
`In this inter partes review, filed May 16, 2018, a claim in an
`unexpired patent shall be given its broadest reasonable construction in light
`of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b)
`(2016); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142
`(2016) (affirming that USPTO has statutory authority to construe claims
`according to 37 C.F.R. § 42.100(b)).8 Under the broadest reasonable
`construction standard, claim terms are generally given their ordinary and
`customary meaning, as would have been understood by one of ordinary skill
`in the art in the context of the entire disclosure. In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim
`term must be set forth in the specification with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). We must be careful not to read a particular embodiment appearing in
`the written description into the claim if the claim language is broader than
`the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`The Petitioner does not identify terms for construction or provide any
`proposed constructions. See Pet. 13. Patent Owner asserts that the claim
`terms “a remote user-controllable console” and “remote user-controllable
`actuation console” require construction (see Prelim. Resp. 17–21).
`However, for the purposes of this Decision, we determine that no claim term
`
`8 The claim construction standard to be employed in an inter partes review
`has changed. See Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340 (Nov. 13, 2018) (to be codified at 37 C.F.R. pt.
`42). That new standard, however, applies only to proceedings in which the
`petition is filed on or after November 13, 2018.
`
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`needs express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy.”).
`
`III. PATENTABILITY
`A. ANTICIPATION BY HOOVEN – GROUND 1
`Petitioner asserts that claims 1–7, 9–14, 19, and 20 are anticipated by
`Hooven. Pet. 13–50 (citing Exs. 1001, 1003, 1004). Patent Owner responds
`to Petitioner’s assertions. Prelim. Resp. 23–42 (citing Exs. 1001, 1003,
`1004; Pet.).
`
`Overview of Hooven
`1.
`Hooven is directed to an endoscopic stapling and cutting instrument
`30 that includes “a sensing means which controls and/or monitors the
`operation of the instrument while conducting the desired step[, e.g., ligating,
`stapling, cutting, manipulation of the tissue,] in the procedure and provides
`feedback information to the surgeon.” Ex. 1004, 2:54–58, 61–63.
`Reproduced below is Figure 1 of Hooven.
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`FIG. 1 illustrates is a schematic view of an endoscopic
`surgical system of the present invention interconnected with a
`microprocessor/controller and a video display screen.
`Figure 1 depicts:
`endoscopic stapling and cutting instrument 30 is interconnected
`with a controller 31 and a video display monitor 32. The
`controller includes a microprocessor, power supply, hardwired
`logic, sensor interface and motor drive circuits. The instrument
`is connected to the controller so that the controller can accept,
`store, manipulate, and present data. The controller may feed
`appropriate signals back to the instrument in order to operate the
`instrument.
`Ex. 1004, 4:15–24; see also id. at 9:15–17. Hooven discloses that “[a]ll
`sensors, switches, and motors are connected to the controller via the
`interface cable 205. This information, fed into the appropriate controller, is
`stored and manipulated and fed to a central processing communication
`system.” Ex. 1004, 9:1–5.
`Reproduced below is Figure 6 of Hooven.
`
`11
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`FIG. 6 depicts an enlarged longitudinal cross-sectional view of the active or
`business head of endoscopic stapling and cutting instrument 30.
`Figure 6 illustrates:
`Hooven discloses that its “head includes a staple or staple cartridge
`portion 74 and an anvil portion 75. The staple portion and the anvil portion
`are pivotally connected [t]o each other by the anvil pivot pin 76.” Ex. 1004,
`5:38–41. Hooven further discloses a knife member 82 and driving wedge
`member 83 which are interconnected. Ex. 1004, 6:9–19.
`
`Independent claim 209
`2.
`Petitioner asserts that Hooven anticipates independent claim 20 of the
`’874 patent. Pet. 14–24 (citing Exs. 1001, 1003, 1004). Patent Owner
`disagrees. Prelim. Resp. 23–31 (citing 1001, 1003, 1004; Pet.). In
`particular, Patent Owner asserts that Petitioner does not adequately establish
`
`
`9 We address the claims in the same order as the parties.
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`that Hooven discloses “an opening/closing motion and a firing motion – that
`are respectively applied to a jaw and a driver element of the surgical
`instrument,” as required by independent claim 20. Prelim. Resp. 23–31; see
`also id. at 7–13. We agree with Patent Owner.
`Independent claim 20 recites in part “an end effector, comprising: a
`first jaw [and] a second jaw.” Petitioner asserts that “[t]he 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.” Pet. 15 (citing Ex.
`1004, 4:12–20, 4:36–42; Ex. 1003 ¶ 39; Ex. 1001, 4:9–13). Petitioner
`asserts that “Hooven’s end effector 42 includes ‘an anvil portion 75,’ which
`is a first jaw” (Pet. 16 (citing Ex. 1004, 5:38–40, Fig. 6)) and “‘a staple or
`staple cartridge portion 74,’ which is a second jaw.” Pet. 17 (citing Ex.
`1004, 5:38–40, Fig. 6; Ex. 1003 ¶ 41).
`Independent claim 20 further recites “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.” Petitioner asserts that “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).” Pet. 17 (citing Ex. 1004, Fig. 6 (open
`position), Fig. 7 (closed position); Ex. 1003 ¶ 42). To support this assertion,
`Petitioner provides the following reproduction of Figures 6 and 7 of Hooven,
`annotated to identify, the “[d]irection of closure nut/pin travel during closing
`motion” and “[d]irection of anvil travel during closing motion.” Pet. 18.
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`FIGS. 6 and 7, annotated, depict an enlarged longitudinal
`cross-sectional view of the active or business head of endoscopic
`stapling and cutting instrument 30. Figure 7 depicts the head in
`the closed position. See Ex. 1004, 3:37–42.
`Petitioner asserts Hooven discloses that the required “closing motion”:
`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, 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.” 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 the jaws
`between open and closed positions.
`Pet. 18–19 (citing Ex. 1003 ¶ 42 (modification in original)).
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`Independent claim 20 additionally recites that the “end effector”
`comprises “a driver element supported for axial travel through said end
`effector in response to a firing motion.” Petitioner asserts that Hooven
`discloses “a ‘firing nut 86’ that forcibly propels knife 82 via threads that
`interact with threaded rod 71, and it is thus a driver element.” Pet. 19 (citing
`Ex. 1004, 6:30-34; Ex. 1003 ¶¶ 43–44). Petitioner further asserts that
`“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.” Pet. 19 (citing Ex. 1003, ¶ 44; Ex.
`1004 ¶ 6:30–34, Figs. 7 and 8).
`Independent claim 20 still further recites “a motor-powered firing
`element configured to apply the firing motion to said driver element.”
`Petitioner asserts 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).
`In response, Patent Owner asserts that Petitioner has not shown
`sufficiently that Hooven discloses two motions, i.e., “a closing motion,”10
`and a “firing motion,”11 as required by independent claim 20. Prelim. Resp.
`23–31 (citing Exs. 1001, 1004; Pet.); cf. Prelim. Resp. 7–13. Patent Owner
`
`
`10 Independent claim 20 recites “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.”
`11 Independent claim 20 recites further “a motor-powered firing element
`configured to apply the firing motion to said driver element.”
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`asserts that “Hooven’s surgical instrument only applies a single motion – the
`rotation of a threaded rod.” Prelim. Resp. 23. We agree with Patent Owner.
`Patent Owner provides (id. at 25) the following copy of Figure 8 of
`Hooven, annotated to identify, among several items, main drive shaft 48,
`secondary drive shaft 38, and helical screw shaft 36.
`
`
`
`FIG. 8 is an enlarged longitudinal cross-sectional view of the
`head of endoscopic stapling and cutting instrument 30 with
`the head in the position of firing staples.
`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). The difficulty,
`however, with Petitioner and their expert witness, Dr. Bryan Knodel’s
`mapping is that both of the “motions,” relied upon to address the “closing
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`motion” and “firing motion” in the Petition depend on the same motion, i.e.,
`the rotation of the threaded rod. See Prelim. Resp. 25–26.
`In taking note of that difficulty, we note that 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.” Ex. 1004, 5:46–50. Similarly,
`Hooven discloses:
`[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.
`Ex. 1004, 6:28–34. Thus, we agree with Patent Owner that in Hooven “the
`rotation of the threaded rod is applied to the jaw to close the anvil portion of
`the end effector” and “also applied to drive the knife member and driving
`wedge member to cut/staple tissue.” Prelim. Resp. 25 (citing Ex. 1004,
`5:46–50, 6:10–15).
`Patent Owner’s position as to the above-noted “motion” described in
`Hooven is consistent with the disclosure of the ’874 patent. In this regard,
`the ’874 patent discloses, with respect to the “closing motion,” that when
`proximate closure tube 40 moves distally it causes distal closure tube 42 to
`also move distally, which causes “anvil 24 to rotate about the pivot pins 25
`into the clamped or closed position.” Ex. 1001, 11:65–12:4; see also Prelim.
`Resp. 8–10. Conversely, when proximate closure tube 40 moves
`proximately, it causes distal closure tube 42 slide proximately, which
`subsequently causes “anvil 24 to pivot about the pivot pins 25 into the open
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`or unclamped position.” Ex. 1001, 12:4–11; see also Prelim. Resp. 8–10.
`Patent Owner provides the following copy of Figure 5 of the ’874 patent,
`annotated to identify, among several items, proximate closure tube, main
`drive shaft, distal closure tube, and end effector.
`
`
`
`FIG. 5 is an exploded view of an end effector and shaft of the
`instrument according to the invention of the ’874 patent.
`Patent Owner’s annotated Figure 5 illustrates that anvil 24, i.e., “a first jaw”
`(see Pet. 16 (citing Ex. 1004, 5:38–40, Fig. 6)) is able to close and open in
`response to the application of the opening/closing motion of the distal
`closure tube 42 in conjunction with pivot pins 25 (shown in Figure 3). See
`Prelim. Resp. 10.
`With respect to the “firing motion,” the ’874 patent discloses that
`motor 65 causes main drive shaft 48 to rotate,
`bevel gear assembly 52a-c causes the secondary drive shaft 50 to
`rotate, which in turn, because of the engagement of the drive
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`gears 54, 56, causes the helical screw shaft 36 to rotate, which
`causes the knife driving member 32 to travel longitudinally along
`the channel 22 to cut any tissue clamped within the end effector
`12.
`Ex. 1001, 8:49–57; see also Prelim. Resp. 10–11. We note that main
`rotational (or proximate) drive shaft 48 communicates with secondary (or
`distal) drive shaft 50 via bevel gear assembly 52, and are disposed ultimately
`inside closure tubes 40, 42. Ex. 1001, 8:27–34. For these reasons, we agree
`with Patent Owner that “[u]nlike the 874 Patent, Hooven’s surgical
`instrument only applies a single motion – the rotation of a threaded rod.”
`Prelim. Resp. 23.
`For the above reasons, we determine that Petitioner fails to show a
`reasonable likelihood that Hooven discloses two motions, i.e., “a closing
`motion” and a “firing motion,” as required by independent claim 20, and
`therefore, has not shown a reasonable likelihood of prevailing on its
`assertion that Hooven anticipates independent claim 20.
`Independent claim 9 and dependent claims 10–14
`3.
`Independent claim 9 contains similar language and requirements as
`independent claim 20, i.e., claim 9 requires “a closing motion” and a “firing
`motion.”12 Petitioner performs a similar analysis for independent claim 9,
`and claims 10–14, which ultimately depend from independent claim 9. Pet.
`24–28. Accordingly, Petitioner’s assertions of anticipation by Hooven with
`
`
`12 Independent claim 9 recites “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” and
`“a motor powered firing element configured to apply said firing motions to
`said driver element.”
`
`19
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`respect to independent claim 9–14 are deficient for the same reasons as for
`independent claim 20.
`
`Independent claim 1
`4.
`Petitioner asserts that Hooven anticipates independent claim 1 of the
`’874 patent. Pet. 28–37 (citing Exs. 1001, 1003, 1004). Patent Owner
`disagrees. Prelim. Resp. 31–35 (citing Exs. 1001, 1003, 1004). In
`particular, Patent Owner asserts that Petitioner does not adequately establish
`that Hooven discloses an elongated shaft with “at least one articulation joint
`for positioning the cartridge at an angle not parallel to a longitudinal axis of
`said shaft,” as recited by independent claim 1. Prelim. Resp. 31–35 (citing
`Exs. 1001, 1003, 1004); see also id. at 14–17. We agree with Patent Owner.
`Independent claim 1 recites-in part “an elongated shaft . . . having a
`motor therein that is operably coupled to an actuation mechanism.”
`Petitioner provides the following copy of Figure 3 of Hooven, annotated to
`identify, among several items, an elongated shaft with a motor.
`
`Figure 3 depicts a longitudinal cross-sectional view of the handle
`portion of one embodiment of Hooven’s endoscopic
`stapling and cutting system.
`
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`20
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`Petitioner asserts that Hooven discloses an elongated shaft that includes
`motor 45 within handle portion 40 of Hooven’s elongated shaft. Pet. 31–32
`(citing Ex. 1004, Figs. 2–3; Ex. 1003 ¶ 67). Petitioner further asserts that
`“Hooven’s motor 45 is operably coupled to the microprocessor, hardwired
`logic, and motor drive circuits in controller 31 via cable 205.” Pet. 32–33
`(citing Ex. 1004, 4:17–20, 8:40–42, 9:1–30, Figs. 1, 2, 18; Ex. 1003 ¶ 68).
`Petitioner still further asserts that “Hooven’s motor 45 is also operably
`coupled to a drive shaft (i.e., shaft 47, shaft 61, and threaded rod 71), which
`is another actuation mechanism.” Pet. 33 (citing Ex. 1004, Figs. 3, 6; Ex.
`1003 ¶ 69).
`Independent claim 1 further recites the “elongated shaft” has “at least
`one articulation joint for positioning the cartridge at an angle not parallel to a
`longitudinal axis of said shaft.” Petitioner provides the following copy of
`Figure 2 of Hooven, annotated to identify, among several items, an
`elongated shaft with a handle portion and flexible portion.
`
`Figure 2, annotated, depicts a perspective view of Hooven’s
`endoscopic stapling and cutting system.
`
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`Petitioner asserts that the ’874 patent discloses a “torsion cable that may be
`employed at the articulation point of the instrument according to various
`embodiments of the present invention” (Pet. 34 (citing Ex. 1001, 5:29–31)),
`and Hooven discloses that “[t]hrough the center of the housing there extends
`the rotating, axially flexible, torsionally stiff shaft 61.” Pet. 34 (citing Ex.
`1004, 5:17; Ex. 1003 ¶ 71; Ex. 1001, 5:29–31).
`In response, Patent Owner asserts that Petitioner has not shown
`sufficiently that Hooven discloses an elongated shaft with “at least one
`articulation joint for positioning the cartridge at an angle not parallel to a
`longitudinal axis of said shaft,” as recited by independent claim 1. Prelim.
`Resp. 31–35 (citing Exs. 1001, 1003, 1004); cf. Prelim. Resp. 14–17.
`Independent claim 19 includes a similar feature. Prelim. Resp. 14–17, 31–
`35. Patent Owner argues that Hooven’s surgical instrument “utilizes a
`flexible shaft without an articulation joint.” Prelim. Resp. 32. More
`particularly, Patent Owner argues that “Petitioner only reaches the
`conclusion that Hooven’s flexible shaft is an articulation joint by mistakenly
`asserting that a torsion cable described in the 874 Patent is an ‘articulation
`joint.’” Prelim. Resp. 33.
`Initially, we agree with Petitioner that the ’874 patent identifies three
`embodiments for providing “articulation point 14.” See Pet. 34 (citing Ex.
`1001. 5:29–31). In this regard, the ’874 patent discloses that “a torsion cable
`197 . . . may be used in lieu of both the bevel gears 52a-c and the u-joint 195
`to realize articulation of the end effector 12.” Ex. 1001, 14:41–51. To
`support their position, Petitioner provides the following side-by-side
`comparison of Figure 24 of the ’874 patent with Figure 5 of Hooven.
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`22
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`Petitioner’s graphic illustrates the “torsion cable” depicted in
`Figure 24 of the ’874 patent next to the “flexible shaft” depicted
`in Figure 5 of Hooven.
`The difficulty with Petitioner’s position, however, is that independent claims
`1 and 19 require an “articulation joint” (see Prelim. Resp. 33) rather than an
`“articulation point.” We do not discern on this record that an “articulation
`point” reasonably is viewed the same as the “articulation point” described in
`the Specification, and relie
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