UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`Intuitive Surgical, Inc.
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`Petitioner,
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`v.
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`Ethicon Endo-Surgery, Inc.
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`Patent Owner
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`____________________
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`IPR Case No. IPR2018-00938
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`U.S. Patent No. 9,113,874
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`____________________
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`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
`
`Intuitive Surgical, Inc.
`
`Petitioner,
`
`v.
`
`Ethicon Endo-Surgery, Inc.
`
`Patent Owner
`
`____________________
`
`IPR Case No. IPR2018-00938
`
`U.S. Patent No. 9,113,874
`
`____________________
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
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`Proceeding No. IPR2018-00938
`Attorney docket No. 11030-0049IP6
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`TABLE OF CONTENTS
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`The Board Misapprehended Hooven Because It Overlooked a Key
`Passage Confirming Hooven Independently Applies Different Closing
`and Firing Motions ....................................................................................... 1
`
`The Board Construed the “Closing Motion” and “Firing Motion”
`Terms Too Narrowly .................................................................................... 8
`
` Legal Standard ............................................................................................ 10
`
` Precise Relief Requested ............................................................................ 10
`
`It Would Have Been Obvious to Modify Hooven to Use an
`Articulation Joint As Provided By Claims 1-8 and 19 ............................... 11
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`
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`i
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`Proceeding No. IPR2018-00938
`Attorney docket No. 11030-0049IP6
`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC,
`825 F.3d 1373 (Fed. Cir. 2016) .................................................................... 12, 13
`Becton, Dickinson & Co. v. Tyco Healthcare Group,
`616 F.3d 1249 (Fed. Cir. 2010) ............................................................................ 9
`In re Etter,
`756 F.2d 852 (Fed. Cir. 1985) (en banc) ............................................................ 13
`Palo Alto Networks, Inc. v. Juniper Networks, Inc.,
`IPR 2013-00369 .................................................................................................. 10
`Powell v. Home Depot U.S.A., Inc.,
`663 F.3d 1221 (Fed. Cir. 2011) ............................................................................ 9
`Other Authorities
`37 C.F.R. § 42.71(c) ........................................................................................... 10, 11
`37 C.F.R. § 42.71(d) .......................................................................................... 10, 11
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`ii
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`Proceeding No. IPR2018-00938
`Attorney docket No. 11030-0049IP6
`The Board Misapprehended Hooven Because It Overlooked a Key
`Passage Confirming Hooven Independently Applies Different Closing
`and Firing Motions
`The Board denied institution based on a misapprehension of Hooven. The
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`Board overlooked that part of Hooven which discloses that the closing motion may
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`be applied independently of the firing motion, and thus the two motions cannot be
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`the “same” motion, as the Board found.
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`The overlooked passage is found at column 5, lines 50-65, and was quoted in
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`part in the Petition at page 59 and the accompanying Knodel declaration at
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`paragraph 142. That passage confirms what Petitioner describes throughout its
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`petition—that the closing motion (provided by closure nut 77 and its closure pin
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`78) is different from the firing motion (provided by the small diameter portion 73
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`of threaded rod 71 when engaged with the firing nut). These two motions are
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`not—as the Board found—merely the motion of the threaded rod.
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` Petitioner respectfully requests that the Board rehear its decision denying
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`institution on all grounds.
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`Claim 9, which is representative, requires a “reciprocatable closure element”
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`which applies “opening and closing motions” to one of the end effector jaws and a
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`“firing element” which applies “firing motions” to a driver element.
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`Patent Owner argued that the ’874 Patent requires that the claimed
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`instrument had to be capable of closing and opening before firing:
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`
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`1
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`Proceeding No. IPR2018-00938
`Attorney docket No. 11030-0049IP6
`The 874 Patent notes as much in the Background section,
`explaining that “[o]ne specific advantage of being able to close
`upon tissue before firing is that the clinician is able to verify via
`an endoscope that the desired location for the cut has been
`achieved[.]” Ex. 1001 at 3:22-25.
`
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`POPR at 3. In other words, Patent Owner asserted that the device of the ’874 Patent
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`could close without firing so that the surgeon could close the jaws, but then open
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`them and reposition the instrument if necessary.
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`The misapprehension concerning Hooven occurred because Patent Owner
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`argued that Hooven failed to disclose this ability to close without firing, implying
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`that Hooven closes and then fires as part of the same “motion”:
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`[T]he device described and claimed in the 874 Patent provides two
`motions for performing the opening/closing and firing functions. . . .
`Conversely, with Hooven the risk of error is always present, since both
`functions are controlled through application of the same motion (the
`rotation of the threaded rod).
`Id. at 2-3.
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`The Board agreed with Patent Owner and held that Hooven could not
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`anticipate (or render obvious) the challenged claims of the ’874 Patent because
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`Hooven allegedly disclosed only a single motion for closing and firing:
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`Patent Owner 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.
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`2
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`Proceeding No. IPR2018-00938
`Attorney docket No. 11030-0049IP6
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`* * *
`[W]e 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).
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`Non-Institution Decision at 15-17.
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`But the Board misapprehended that rotation of the threaded rod is not
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`sufficient to cause either the closing or firing motions, and the closing motion may
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`be applied independently of the firing motions. The “firing motion” is only
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`applied when the “smaller diameter portion 73” of threaded rod 71 is in threaded
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`engagement with firing nut 86. See, e.g., Petition at 20-21, 43, and 45. When the
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`firing nut 86 is not engaged with the threaded rod, no firing motions are applied.
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`Accordingly, Hooven provides for a closing motion before firing so that a surgeon
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`can reposition the instrument, if necessary, before firing the stapler—just as in the
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`’874 patent.
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` The critical passage overlooked by the Board is sandwiched in between the
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`passages cited by Patent Owner above (and quoted by the Board). Specifically,
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`Hooven clearly teaches the ability to close and open the anvil without firing the
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`device. At column 5, lines 50-65, Hooven teaches that the instrument can inform
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`3
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`Proceeding No. IPR2018-00938
`Attorney docket No. 11030-0049IP6
`the surgeon if the surgeon has gripped to little or too much tissue, in which case
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`the surgeon should remanipulate the instrument (in other words, open and close
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`again, before—and without—stapling and cutting):
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`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.
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`’874 Patent at column 5, lines 50-65 (bolded text cited at Petition at 59;
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`Knodel Declaration, ¶142) (emphasis added).
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`The Petition explained how Hooven has a closure element that applies a
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`closing motion and a firing element (different from the closure element) that applies
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`a firing motion (which is likewise different from the closing motion).
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`4
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`Proceeding No. IPR2018-00938
`Attorney docket No. 11030-0049IP6
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`Petition at 26-27.
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`As shown in Fig. 6 of Hooven, the closure nut 77 is in its proximal position
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`and the closure pin 78 is at the proximal location in the closure slot 79. When the
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`closure nut 77 is moved distally, its closure pin 78 also moves distally. Because
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`the closure slot is curved upward, the distal movement of closure pin 78 forces the
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`anvil downward as it moves through the slot in the distal direction:
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`5
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`Proceeding No. IPR2018-00938
`Attorney docket No. 11030-0049IP6
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`Petition at 28.
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`
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`Patent Owner criticized Petitioner’s argument as being in “conflict” with
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`itself. Patent Owner Preliminary Response at 26-27. However, Patent Owner
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`misrepresents what the Petition makes clear: The “closure nut 77” is the closure
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`element which moves proximally and distally, causing its “closure pin 78” to
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`likewise move proximally and distally, which interacts with closure slot 79 on the
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`anvil to open and close the anvil. Petition at 17-19.
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`
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`Thus, the closure nut 77 moves only when the threaded rod is engaged with
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`the closure nut, and the closure pin travels proximally and distally in response to a
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`combination of the movement of threaded rod 71 and the location of closure nut
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`77. Knodel Declaration, ¶32. Simply, the movement of the threaded rod is not the
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`same as, and does not always cause, movement of the closure nut 77 and its
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`closure pin 78. They are not the “same motion.”
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`
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`The “firing motion,” on the other hand can only occur when the closure nut
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`77 is in the distal-most position, as shown in Figure 8 of Hooven, at which point
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`the closure nut is decoupled from the threaded rod 71. At this time, no opening or
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`closing motions are applied to the anvil even though the threaded rod is turning.
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`Firing mode can only occur when closure nut 77 engages and pushes lever 85 from
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`a position shown in Fig 6 to a position shown in Fig 8 thereby causing firing nut 86
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`6
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`Attorney docket No. 11030-0049IP6
`to engage with threaded rod – small diameter portion 73 to travel distally. Petition
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`at 19-21, 26, 36, and 39 (describing the firing mode after the anvil has closed).
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`This structure provides the exact benefit that Patent Owner focused on in its
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`Preliminary Response—the structure allows a surgeon to close before firing so
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`that the surgeon can reposition the instrument, if necessary, before choosing to fire
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`the stapler. See, e.g., Petition at 59-60 (discussing Hooven’s use of sensors to
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`determine if the instrument should be repositioned before firing).1
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`1 We note that after the Petition was filed, the Examiner read Hooven as Petitioner
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`does here—that Hooven discloses “separate and distinct” closing and firing
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`motions, and rejected Patent Owner’s claims in an application related to the ’874
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`Patent. Office Action, August 24, 2018, U.S. Application Serial No. 16/023,523
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`(filed June 29, 2018), pp. 4-5.
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`7
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`Proceeding No. IPR2018-00938
`Attorney docket No. 11030-0049IP6
`The Board Construed the “Closing Motion” and “Firing Motion”
`Terms Too Narrowly
`As discussed in Section I, above, Hooven does indeed teach two
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`independently applied motions, and thus invalidates under the Board’s claim
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`construction.
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`Even though Hooven teaches two independently applied motions, this
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`requirement, urged by the Patent Owner and adopted by the Board, is not explicitly
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`or implicitly in these apparatus claims.
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`For anticipation, each limitation must be found in the prior art arranged in
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`the manner claimed. Beyond that, there is no requirement that each limitation be
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`found in components that are unrelated or disconnected.
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`In accordance with representative claim 9, Hooven discloses a structure
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`having a “reciprocatable closure element” (“closure nut 77”), which is a
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`component “configured to apply said opening and closing motions to said one of
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`said first and second jaws.” and a “motor powered firing element” (“small diameter
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`portion 73” of the threaded rod), which is a component “configured to apply said
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`firing motions to said driver element.” Knodel, ¶¶45, 59. Nothing more is
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`required. That the threaded rod provides the rotary power to the closure nut 77 is
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`immaterial. Even if the threaded rod necessarily turned both the closure nut and
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`firing nut in a single motion (it does not) or if Hooven were silent in that regard (it
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`8
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`Proceeding No. IPR2018-00938
`Attorney docket No. 11030-0049IP6
`is not), such a structure would still meet the claims. The threaded rod may be a
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`“firing element” and may also provide rotary motion to the “closure element.”
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`The Federal Circuit has confirmed that a single component can meet
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`separate claim limitations, unless the structure of the claims or the specification
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`compels a different result. See Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221,
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`1231 (Fed. Cir. 2011) (holding that a claim separately reciting a “cutting box” and
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`a “dust collection structure” did not require separate components, and was met by a
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`single structure: a cutting box with integrated dust collection).2
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`2 In Powell, the Federal Circuit distinguished Becton, Dickinson & Co. v. Tyco
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`Healthcare Group, 616 F.3d 1249 (Fed. Cir. 2010) and a review of that case is
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`instructive. In Becton, Dickinson & Co., the claim required a spring means to be
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`“connected to” a hinged arm. The Patent Owner argued that an accused product
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`with a springy hinged arm met the claims. The Federal Circuit disagreed, holding
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`that because the claim recited a hinged arm “connected to” a spring means, the
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`“hinged arm” could not serve double duty as the “spring means.” A component
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`cannot be “connected to” itself. See Becton, Dickinson & Co., 616 F.3d at 1255.
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`Here, the claims specify no relationship between the “closing motion” and the
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`“firing motion”.
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`9
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`Proceeding No. IPR2018-00938
`Attorney docket No. 11030-0049IP6
`
` Legal Standard
`“When rehearing a decision on petition, a panel will review the decision for
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`an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of discretion may be
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`indicated if a decision is based on an erroneous interpretation of law, if a factual
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`finding is not supported by substantial evidence, or if the decision represents an
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`unreasonable judgment in weighing relevant factors.” Palo Alto Networks, Inc. v.
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`Juniper Networks, Inc., IPR 2013-00369, Paper 30 at 2-3 (citing Star Fruits S.N.C.
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`v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005)). The request for rehearing
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`must “specifically identify all matters the party believes the Board misapprehended
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`or overlooked.” 37 C.F.R. § 42.71(d).
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`As explained herein, the Board misapprehended and overlooked the
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`teachings of Hooven. That error led the Board to deny institution on Ground 1,
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`and also carried over to the Board’s analysis for Grounds 2-4 as well.
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` Precise Relief Requested
`Petitioner respectfully requests that the Board institute on all grounds of the
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`Petition.3 This Motion specifically addresses the error for Ground 1 in Section I
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`(relevant to all claims) and the errors for Ground 4 in Section V (claims 1-8, and
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`19).
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`3 Originally challenged claims 16, 17, and 21 have been disclaimed.
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`10
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`Proceeding No. IPR2018-00938
`Attorney docket No. 11030-0049IP6
`Petitioner has set forth the detailed basis for this Motion, as well as “the
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`place where each matter was previously addressed in a motion, an opposition, or a
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`reply,” as required by 37 C.F.R. § 42.71(d). This Motion is timely filed. This
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`Motion is authorized under 37 C.F.R. § 42.71(c) and prior authorization of the
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`Board is not required prior to filing. 37 C.F.R. § 42.71(d).
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`
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`It Would Have Been Obvious to Modify Hooven to Use an Articulation
`Joint As Provided By Claims 1-8 and 19
`Claims 9 and 20 do not require an “articulation joint” and therefore those
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`claims and their dependent claims should be instituted solely based on the previous
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`discussion.
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`The remaining independent claims (claims 1 and 19) recite an “articulation
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`joint.” In Ground 4, Petitioner argued it would have been obvious to replace
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`Hooven’s flexible shaft with a stiff shaft and articulation joint. Petition at 70-73.
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`Petitioner submits that the Board misapprehended or overlooked the import of Dr.
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`Knodel’s discussion in support. Indeed, the pervasiveness of articulation joints in
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`endoscopic surgical instruments in the prior art confirms the obviousness of adding
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`an articulation joint to any such instrument. Knodel Declaration, ¶169.
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`Articulation joints were commonplace.
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`11
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`
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`Proceeding No. IPR2018-00938
`Attorney docket No. 11030-0049IP6
`Dr. Knodel explains why a POSITA would be motivated to add Wales
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`pivoting linkage to Hooven. Knodel Declaration, ¶167.4 Dr. Knodel further
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`explains how the combination would be made. Specifically, Dr. Knodel stated that
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`a POSITA would “replace Hooven’s flexible articulation shaft with Wales’s
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`particular ‘articulation joint’ [shown in] Wales, Figs. 1, 4,” Knodel Declaration,
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`¶166, and use Wales’ pivoting linkage “for manipulating Hooven’s end effector.”
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`Knodel Declaration, ¶169. See also id., ¶170.
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`The following composite figure depicts what Dr. Knodel states in words:
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`
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`Handle to move
`linkage
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`This figure combines Wales, Fig. 4 (in yellow) with Hooven, Fig. 2 (with shaft
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`straightened).
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`Moreover, even though Dr. Knodel described how Wales could be
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`physically combined with Hooven, such a description was not necessary. “It is not
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`4 This paragraph discusses four motivations, none of which are mere “design
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`choice” as argued by Patent Owner.
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`12
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`Proceeding No. IPR2018-00938
`Attorney docket No. 11030-0049IP6
`necessary that [the references] be physically combinable to render [a claim]
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`obvious.” Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825
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`F.3d 1373, 1381 (Fed. Cir. 2016) (quoting In re Sneed, 710 F.2d 1544, 1550 (Fed.
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`Cir. 1983)). That is so because “‘[t]he test for obviousness is not whether the
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`features of a secondary reference may be bodily incorporated into the structure of
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`the primary reference,’ but rather whether ‘a skilled artisan would have been
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`motivated to combine the teachings of the prior art references to achieve the
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`claimed invention.’” Id. (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981),
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`and Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). Whether
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`the Wales articulation joint can be physically combined with the Hooven device is
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`thus “basically irrelevant.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en
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`banc). What is relevant is the teachings of Wales—and Wales teaches that adding
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`a proximally-controlled articulation joint to a device like Hooven would be
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`beneficial. Id. See Knodel, ¶166-169.
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`Dated
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`December 20, 2018
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`/Steven R. Katz/
`Steven R. Katz, Reg. No. 43,706
`John C. Phillips, Reg. No. 35,322
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 858-678-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`13
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`Proceeding No. IPR2018-00938
`Attorney docket No. 11030-0049IP6
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on December 20, 2018, a complete and entire copy of this Petitioner’s
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`Request for Rehearing was provided via email to the Patent Owner by serving the
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`email correspondence addresses of record as follows:
`
`Anish R. Desai
`Elizabeth Stotland Weiswasser
`Adrian Percer
`Christopher T. Marando
`Christopher M. Pepe
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
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`Email:
`
` Ethicon.IPR.Service@weil.com
`
`
`
`
`
`/Diana Bradley/
`
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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