UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`INTUITIVE SURGICAL, INC.,
`Petitioner,
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`v.
`
`ETHICON LLC,
`Patent Owner.
`______________________
`
`IPR2019-00880
`U.S. Patent No. 7,490,749
`______________________
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`PATENT OWNER ETHICON LLC’S RESPONSE
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`PUBLIC VERSION
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`TABLE OF CONTENTS
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`IPR2019-00880
`U.S. Patent No. 7,490,749
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`Page
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`THE 749 PATENT .......................................................................................... 6
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`A.
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`B.
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`C.
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`Overview ............................................................................................... 6
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`The 749 Patent’s Novel Retraction Assembly ...................................... 9
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`The Challenged Claims ....................................................................... 14
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`III. CLAIM CONSTRUCTION .......................................................................... 15
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`A.
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`B.
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`C.
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`D.
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`E.
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`“firing member” .................................................................................. 16
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`“retraction assembly” .......................................................................... 16
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`“firing drive” ....................................................................................... 21
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`“sole retraction motion” ...................................................................... 23
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`“closure drive” ..................................................................................... 24
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`IV.
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`LEVEL OF ORDINARY SKILL .................................................................. 24
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`VI.
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`THE PRIOR ART .......................................................................................... 41
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`A.
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`B.
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`Shelton II ............................................................................................. 42
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`Swayze ................................................................................................. 46
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`C.
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`Shelton I .............................................................................................. 47
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`VII. GROUND 1: SHELTON II DOES NOT ANTICIPATE THE
`CLAIMS OF THE 749 PATENT .................................................................. 47
`
`A.
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`B.
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`C.
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`Shelton II Does Not Disclose a “Retraction Assembly” As
`Required By Claims 1 and 3 of the 749 Patent ................................... 48
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`Shelton II Does Not Anticipate Claims 1 and 3 if the Retraction
`Spring Becomes Disconnected ............................................................ 52
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`A POSITA Would Not Immediately Envision the Claimed
`Retraction Assembly ........................................................................... 56
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`VIII. GROUND 1: SHELTON II DOES NOT RENDER OBVIOUS THE
`CLAIMS OF THE 749 PATENT .................................................................. 63
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`A.
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`B.
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`Shelton II Cannot Be Used Under 35 U.S.C. § 103 ............................ 64
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`Shelton II Does Not Render Obvious the Claims of the 749
`Patent ................................................................................................... 67
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`1.
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`2.
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`3.
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`4.
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`Petitioner Has Failed to Demonstrate a Motivation to
`Remove Shelton II’s Retraction Spring .................................... 67
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`Removing the Retraction Spring in Shelton II Changes its
`Principal of Operation ............................................................... 70
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`Removing the Retraction Spring of Shelton II Would be
`Inconsistent with the Conventional Wisdom in the Art............ 72
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`Shelton II Would Be Ineffective at Retracting the Firing
`Member if the Spring Were Removed ...................................... 72
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`IX. GROUND 2: SWAYZE DOES NOT ANTICIPATE THE CLAIMS
`OF THE 749 PATENT .................................................................................. 73
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`A.
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`B.
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`Swayze Does Not Disclose the Claimed Retraction Assembly .......... 73
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`Swayze Does Not Disclose the Claimed Retraction Assembly
`Based on Patent Owner’s Infringement Contentions .......................... 74
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`X.
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`GROUND 2: SWAYZE ALONE OR IN COMBINATION WITH
`SHELTON II DOES NOT RENDER OBVIOUS THE CLAIMS OF
`THE 749 PATENT ........................................................................................ 76
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`A.
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`B.
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`A POSITA Would Not Have Been Motivated to Remove
`Swayze’s Retraction Spring ................................................................ 77
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`Petitioner’s Purported Motivations
`to Remove Swayze’s
`Retraction Spring Fail to Demonstrate a Motivation to Combine ...... 78
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`XI. GROUND 3: SHELTON I IS NOT PRIOR ART TO THE 749
`PATENT ........................................................................................................ 81
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`XII. CONCLUSION .............................................................................................. 82
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`PATENT OWNER’S EXHIBIT LIST
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`Exhibit #
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`Description
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`Ex. 2010 U.S. Patent No. 5,465,895 (1995)
`Ex. 2011 U.S. Patent No. 5,632,432 (1997)
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`Ex. 2016
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`In the Matter of Certain Reload Cartridges for Laparoscopic
`Surgical Staplers, Inv. No. 337-TA-1167, Order 15: Construing the
`Terms of the Asserted Claims of the Patents at Issue (January 7,
`2020).
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`Description
`Exhibit #
`Ex. 2018 Deposition Transcript of Dr. Bryan Knodel (December 13, 2019)
`Ex. 2019 Declaration of Shorya Awtar
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`U.S. Patent No. 7,490,749
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`I.
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`INTRODUCTION
`U.S. Patent No. 7,490,749 (“the 749 Patent”) is one of a family of patents
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`awarded to Ethicon for innovations relating to surgical stapling technology. The
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`749 Patent describes a surgical instrument comprising, inter alia, a firing drive that
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`advances a firing member from a retracted position to a fired position through an
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`end effector. The 749 Patent further discloses multiple embodiments of a manually
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`actuatable retraction assembly for retracting the firing member, which does not
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`include the use of additional springs or other force generating members that place a
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`drag on the firing drive. This novel configuration is not disclosed in or rendered
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`obvious by the prior art cited in the Petition.
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`IS-1001 at Figures 5 and 6
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`IS1001 at Fig. 12 (annotations in red)
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`In contrast to the 749 Patent, the prior art references identified in the
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`Petition—Shelton II (IS1004) and Swayze (IS1005)—disclose retraction systems
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`that incorporate a spring to assist in retracting the firing member, as shown below.
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`See e.g., IS1004 at [0131] (“A linked transmission 1150 is initially retracted and
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`is urged to remain in this position by the tension/compression spring
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`1184….”).
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`IS-1004 at Figure 7
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`The inventors of the 749 Patent recognized that although a spring can be used to
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`effectively retract a firing member, it placed excessive drag on the firing drive in
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`an articulating surgical instrument. IS-1001 at 2:57-60 (“[T]he use of the
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`retraction spring requires additional firing force…. This problem can be
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`exacerbated when using articulating end effectors.”). Accordingly, the 749 Patent
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`describes and claims an instrument comprising a retraction assembly that does not
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`include springs or other force generating members that must be overcome when
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`advancing the firing member. Id. at 2:66-3:4 (“[A] significant need exists for a
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`surgical instrument…with a manually actuatable retraction mechanism and does
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`not employ…a spring or the like that generates forces that must be overcome
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`during the firing stroke.”).
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`Trial was instituted on three grounds–anticipation and/or obviousness based
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`on Shelton II (Ground 1); anticipation and/or obviousness based on Swayze alone
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`or in combination with Shelton II (Ground 2); and anticipation based on Shelton I
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`(Ground 3). For the reasons set forth below, Petitioner’s grounds fail to
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`demonstrate that claims 1 and 3 of the 749 Patent are invalid.
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`First, Shelton II does not anticipate the claims of the 749 Patent. The
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`claimed “retraction assembly” in the 749 Patent does not include a spring or other
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`force generating member that acts to place a drag on the firing drive. Every
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`embodiment in Shelton II, however, includes a retraction system that incorporates
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`such a spring. Accordingly, Shelton II falls outside the scope of the challenged
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`claims.
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`Nonetheless, Petitioner asserts that Shelton II anticipates claims 1 and 3
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`under two separate theories, neither of which has merit. Petitioner first contends
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`that Shelton II anticipates based on infringement allegations purportedly made by
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`Patent Owner in a co-pending litigation between the parties. Petition at 38-39. As
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`explained in more detail below, Petitioner’s argument mischaracterizes Patent
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`Owner’s allegations, and therefore do not support Patent Owner’s anticipation
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`argument.
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`In addition, Petitioner alleges that a POSITA would have immediately
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`envisioned removing Shelton II’s retraction spring to arrive at the claimed
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`invention, and therefore, Shelton II anticipates. This is incorrect for several
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`reasons. As explained by Dr. Awtar, a POSITA would not have immediately
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`envisioned such a modification to Shelton II because it would significantly alter
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`how the user operates the device. Moreover, removing Shelton II’s retraction
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`spring would cause the firing drive to bind during retraction in certain conditions,
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`thus preventing full retraction of the firing member. Finally, such a modification
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`would have defied the conventional wisdom in the art, which was to include a
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`spring to retract the firing member.
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`As to the issue of obviousness, Shelton II is not available for obviousness
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`pursuant to 35 U.S.C. § 103(c)(1). Moreover, even if Shelton II is available for
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`obviousness, the same facts above also demonstrate that it would not have been
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`obvious to remove Shelton II’s retraction spring and Petitioner has failed to
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`identify a sufficient motivation for doing so. As explained by Dr. Awtar, a
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`POSITA would have recognized that Shelton II incorporates a retraction spring,
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`and its associated advantages, and does not disclose any problem with firing force
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`that would motivate a POSITA to modify its retraction system. See e.g., IS-1004
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`at (“The invention overcomes the above-noted and other deficiencies of the prior
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`art by providing a surgical stapling and severing instrument…that actuates a long
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`end effector without undue manual force required by a surgeon.”).
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`Accordingly, Shelton II provides no motivation to eliminate its retraction spring.
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`Second, Ground 2 based on Swayze also fails to demonstrate that the
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`challenged claims of the 749 Patent are invalid. Swayze discloses an identical
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`surgical instrument as Shelton II, including a system for retracting a firing member
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`that incorporates a retraction spring. Thus, Swayze fails to anticipate and/or render
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`obvious claims 1 and 3 of the 749 Patent for the same reasons as Shelton II.
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`Third, Ground 3 relies on a publication, Shelton I, that does not qualify as
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`prior art. Shelton I was filed on June 26, 2006 and published on December 27,
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`2007. While the 749 Patent was filed on March 28, 2007,
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`. Accordingly, Shelton I cannot anticipate the claims of the 749
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`Patent, as Petitioner contends.
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`For these reasons, and the additional reasons explained in detail below,
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`Patent Owner respectfully requests that the Board find that Petitioner has failed to
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`show that any claims of the 749 Patent are unpatentable.
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`U.S. Patent No. 7,490,749
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`II.
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`THE 749 PATENT
`A.
`Overview
`The 749 Patent relates to an endoscopic surgical stapling system for cutting
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`and stapling tissue, which is commonly called a linear cutter or endocutter. IS1001
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`at 1:17:24; Ex. 2019 [Awtar Decl.] at ¶¶ 17-28. Surgical staplers can include an
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`end effector coupled to a handle assembly via an elongate shaft. IS1001 at 5:38-
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`43.
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`IS1001 at Fig. 1 (annotations in red)
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`The end effector is configured to secure tissue between a pair of jaws.
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`IS1001 at 1:41-64. One of the jaws is configured to hold a staple cartridge with a
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`plurality of staples, while the other jaw defines an anvil with staple-forming
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`pockets aligned with the rows of staples. IS1001 at 1:47-50. A clinician is able to
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`close the jaws, thereby securing the tissue. Id. at 1:59-64. A firing member can
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`advance through the end effector, causing staples to deform against the anvil to
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`fasten the tissue. IS1001 at 4:39-56. The firing member can also advance a cutting
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`instrument that severs the tissue after it is fastened. IS1001 at 7:56-58. An
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`exemplary end effector disclosed in the 749 Patent is illustrated below, including
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`the staple cartridge, channel, anvil, and firing member.
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`IS1001 at Fig. 2 (annotations in red)
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`As shown below, the firing member 80 can advance through the jaws of the
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`end effector from a retracted position to a fired position. IS-1001 at 7:39-58. The
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`firing member can include a top pin, middle pin, and lower pin to affirmatively
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`space the jaws during firing. IS-1001 at 8:8-18.
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`IS-1001 at Figures 5 and 6
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`The 749 Patent describes that the firing member can advance through the
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`end effector in response to a longitudinal firing motion applied by a firing drive.
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`IS-1001 at 3:29-32. A side view of an exemplary instrument disclosed in the 749
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`Patent is shown below, including a firing trigger actuated by the user, and a firing
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`drive that can include a linked rack and firing rod:
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`IS-1001 at Figure 9 (annotations in red)
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`Upon actuation of the firing trigger, the firing drive advances distally toward the
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`end effector, which causes the firing member to advance through the end effector.
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`See IS-1001 at 3:32-36, 7:39-42, 10:24-42. As described above, the advancement
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`of the firing member through the end effector causes the ejection of staples and
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`cutting of tissue. See IS-1001 at 7:39-58.
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`B.
`The 749 Patent’s Novel Retraction Assembly
`The 749 Patent is directed to a surgical stapling instrument that includes a
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`manually actuatable retraction assembly that allows the clinician to retract the
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`firing member without the assistance of any springs or other force generating
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`members. See IS1001 at 2:66-3:4. As described above, the firing member
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`disclosed in the 749 Patent can include pins that engage the jaws during firing.
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`Accordingly, the firing member must be fully retracted before the jaws can re-
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`open. This necessitates a reliable system for ensuring that the firing member can
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`be retracted. Ex. 2019 [Awtar Decl.] at ¶ 24.
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`The 749 Patent describes that prior are surgical instruments employed “a
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`relatively strong spring to automatically retract the cutting member after the end
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`effector had been fired.” IS1001 at 2:53-56. The 749 Patent explains that these
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`designs were “extremely effective,” but “the use of the retraction spring requires
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`additional firing force to be generated to overcome the opposing spring force
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`during firing.” IS1001 at 2:56-65. The inventors of the 749 Patent thus recognized
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`a need in the art for “a surgical stapling instrument having…a manually actuatable
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`retraction mechanism and does not employ an additional retraction means such as a
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`spring or the like that generates forces that must be overcome during the firing
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`stroke.” IS-1001 at 2:66-3:4.
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`The 749 Patent accordingly discloses and claims a manually actuatable
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`“retraction assembly,” which “is configured to enable the surgeon to manually
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`retract the firing bar 32 without any other assistance from springs or other
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`retraction arrangements that serve to place a drag on the firing system and which
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`ultimately require the generation of higher firing forces to actuate the firing
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`mechanism.” IS-1001 at 12:8-15; see also IS-1001 at 5:53-59. The 749 Patent
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`describes the claimed retraction assembly as generating a “sole retraction motion,”
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`which means that the “retraction motions/forces are generated by manipulation of
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`the various retraction members by the clinician without any assistance from
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`additional springs or force generating members.” Id. at 16:23-28. This novel
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`configuration is reflected in claim 1 of the 749 Patent, which requires that “manual
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`actuation of said retraction assembly causes said firing drive to generate a sole
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`retraction motion which is communicated to said firing member.”
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`The specification of the 749 Patent discloses several exemplary
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`embodiments of the claimed retraction assembly. In one embodiment, the 749
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`Patent describes that the retraction assembly can comprise, inter alia, a retraction
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`lever and a gear. See e.g., IS-1001 at 14:31-15:24; see also id. at Figure 24. In this
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`embodiment, the user can manually actuate a retraction handle in one direction to
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`retract the firing member from a fired position to a retracted position in a single
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`stroke. IS-1001 at 15:13-17 (“To retract the firing rod 32, the clinician simply
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`pushes the retraction handle in the “H” direction….”).
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`IS-1001 at Figure 24
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`IS-1001 at Figure 27
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`An alternative embodiment includes a retraction lever and a plurality of
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`gears, as shown in Figure 12 reproduced below. See also IS-1001 at 12:59-13:6.
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`IS1001 at Fig. 12 (annotations in red)
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`The specification also describes other configurations of a retraction assembly,
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`which can include a lever and a gear(s). See 749 Patent at 3:43-46 (“[A]ctuation of
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`the retraction lever applies the sole retraction motion or force to the first gear
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`which thereby transfers the sole retraction motion to the linked rack.”).
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`IPR2019-00880
`U.S. Patent No. 7,490,749
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`The Challenged Claims
`C.
`The Petition challenges claims 1 and 3. Claim 1 is directed to a surgical
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`instrument comprising, inter alia, a manually actuatable retraction assembly that
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`causes the firing drive to generate a sole retraction motion:
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`1. A surgical instrument, comprising:
`a handle assembly;
`an end effector for performing a Surgical operation, said end effector
`operably coupled to said handle assembly and operably supporting a
`firing member that is movable from a retracted position to a fired position
`in response to a longitudinal firing motion applied thereto;
`a firing drive supported by said handle assembly and configured to
`selectively generate said longitudinal firing motion upon actuation of a
`firing trigger operably coupled to said handle assembly; and
`a retraction assembly supported by said handle assembly and
`interfacing with said firing drive such that manual actuation of said
`retraction assembly causes said firing drive to generate a sole
`retraction motion which is communicated to said firing member to
`cause said firing member to move from said fired position to said
`retracted position.
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`IS-1001 at Claim 1.
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`Claim 3 depends from claim 1, and further requires, inter alia, a “closure
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`drive” that “generate[s] a closing motion and an opening motion[.] IS-1001 at
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`Claim 3.
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`III. CLAIM CONSTRUCTION
`In an IPR filed after November 13, 2018, claim terms “shall be construed
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`using the same claim construction standard that would be used to construe the
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`claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in
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`accordance with the ordinary and customary meaning of such claim as understood
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`by one of ordinary skill in the art and the prosecution history pertaining to the
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`patent.” 37 C.F.R. § 42.100(b).
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`A claim element “may be expressed as a means or step for performing a
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`specified function without the recital of structure…, and such claim shall be
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`construed to cover the corresponding structure….” 35 U.S.C. § 112(6). When a
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`claim element does not include the word “means,” there is a presumption that it is
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`not a means-plus-function limitation, and § 112(6) does not apply. See Williamson
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`v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). To overcome that
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`presumption, Petitioner has the burden to demonstrate by a preponderance of the
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`evidence that the “claim term fails to recite sufficiently definite structure or else
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`recites function without reciting sufficient structure for performing that function.”
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`Zeroclick, LLC v. Apple, Inc., 891 F.3d 1003, 1007 (Fed. Cir. June 1, 2018)
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`(citations omitted).
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`Petitioner has failed to meet its burden with respect to any of the terms that it
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`
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`has identified as means plus function limitations in the Petition. Patent Owner
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`addresses each of those terms below, as well as the term “sole retraction motion.”
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`A.
`“firing member”
`Claim 1 of the 749 Patent requires a “firing member” that “is movable from
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`
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`a retracted position to a fired position in response to a longitudinal firing motion
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`applied thereto.” Claim 1 does not use the term means, so “firing member” is
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`presumptively not subject to § 112(6). Although Petitioner disputes that “firing
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`member” should be subject to § 112(6), the construction of this term is not
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`germane to the grounds raised in the Petition. Accordingly, Patent Owner has
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`applied Petitioner’s construction solely for the purposes of this submission.
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`B.
`“retraction assembly”
`Claim 1 requires a “a retraction assembly supported by said handle assembly
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`and interfacing with said firing drive such that manual actuation of said retraction
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`assembly causes said firing drive to generate a sole retraction motion which is
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`communicated to said firing member.” Petitioner has not overcome the
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`presumption that § 112(6) does not apply to this term.
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`Contrary to Petitioner’s assertion, a “retraction assembly” in the context of
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`the 749 Patent is not a nonce term. Instead, the specification describes a retraction
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`assembly as an assembly configured to allow a user to manually retract the firing
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`member, which does not include any springs or other retraction arrangements that
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`serve to place a drag on the firing system. IS-1001 at 16:15-23 (“[A] unique and
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`novel retraction assembly that enables the clinician to manually retract the firing
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`rod and thus, the end effector firing bar, without the assistance of springs or other
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`force generating members….”). The specification thus sets forth several structural
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`characteristics of a retraction assembly—it is an assembly that a user manually
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`actuates to retract a firing member, which does not include springs or other force
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`generating members.
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`In addition, the surrounding language in claim 1 of the ’749 Patent sets forth
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`additional structural characteristics of the retraction assembly, which constitute
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`sufficiently definite structure. First, claim 1 requires that the “retraction assembly
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`is supported by said handle assembly,” which provides the structural location of
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`the retraction assembly. Ex. 2019 [Awtar Decl.] at ¶ 36. Second, claim 1 requires
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`that the retraction assembly “interfac[es] with [the] firing drive,” which provides
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`further structure by specifying its physical relationship to another mechanism in
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`the instrument. Id. Third, claim 1 requires “manual actuation of said retraction
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`assembly,” which informs a POSITA that the retraction assembly includes a
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`manual mechanism (e.g., a lever or knob) that a user can actuate to generate force
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`for retracting the firing drive. Id. The 749 Patent provides sufficiently definite
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`structure for the retraction assembly by describing its location, its relationship to
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`other mechanisms in the instrument, and that it must include a mechanism that the
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`user can actuate to generate sufficient force to retract the firing member. Id.
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`Accordingly, § 112(6) does not apply.
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`Even if § 112(6) applies, Petitioner’s proposed construction identifies the
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`incorrect function and corresponding structure. First, Petitioner’s proposed
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`function includes the phrase “interfacing with said firing drive.” This language is
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`not functional, and instead describes a physical relationship between the retraction
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`assembly and the firing drive. Id. at ¶ 37.
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`Second, Petitioner’s construction includes structure from a preferred
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`embodiment that is unnecessary for performing the claimed function of retracting.
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`Petition at 19. For example, Respondents’ proposed structure requires a “toothed
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`surface 222 of linked rack 200.” The linked rack, however, is part of an exemplary
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`firing drive (see IS-1004 at 10:30-11:24), and therefore cannot be required
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`structure of a retraction assembly. Similarly, Petitioner’s construction requires a
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`“locking pawl 516 mounted within hub 516 and biased by L-shaped spring tab
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`522.” But the specification does not describe the pawl or spring tab as performing
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`a retracting function. IS-1001 at 12:48-64. Respondents’ proposed structure
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`includes many components that are unnecessary to the functions of retracting and
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`interfacing with the firing drive, and should be rejected.1 Chiuminatta Concrete
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`IPR2019-00880
`U.S. Patent No. 7,490,749
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`Concepts, Inc. v. Cardinal Industries, Inc., 145 F.3d 1303, 1308 (Fed. Cir. 1998)
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`(“The specification of the ’499 patent elaborates on the details of the preferred skid
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`plate, more particularly defining the structure in ways unrelated to the recited
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`function. These additional structural aspects are not what the statute contemplates
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`as structure corresponding to the recited function…and accordingly are not to be
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`read as limiting the scope of the means clause.”).
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`If the Board determines that retraction assembly is subject to § 112(6), the
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`proper corresponding structure is a gear(s) and lever, excluding a spring or other
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`force generating member.2 Ex. 2019 [Awtar Decl.] at ¶¶ 37-38. This is clear from
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`1 Petitioner’s construction requires a multi-stroke retraction lever. Petition at 19.
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`The 749 Patent, however, also discloses a single stroke lever. See Section II.B
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`supra.
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`2 The specification clearly precludes the claimed retraction assembly from
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`including a retraction spring or other force generating member. IS-1001 at 16:14-
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`19 (“In addition, various embodiments employ a unique and novel retraction
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`assembly that enables the clinician to manually retract the firing rod and thus, the
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`the specification, which describes that a first gear and a lever retract (and also
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`U.S. Patent No. 7,490,749
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`interface with) the firing drive. See IS-1001 at 3:40-46 (“A first gear may be in
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`meshing engagement with the linked rack…such that actuation of the retraction
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`lever applies the sole retraction motion or force to the first gear which thereby
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`transfers the sole retraction motion to the linked rack.”). In another embodiment,
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`the specification describes that a first gear, second gear, and a lever perform the
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`function of retracting.3 See id. at 14:15-22 (“As the retraction lever 642 is rotated
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`in that direction, it causes the second gear 630 to also rotate…. Because the second
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`gear 630 is in meshing engagement with the first gear 620, the first gear 620
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`rotates … which draws the linked rack in the proximal direction until it reaches it
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`starting-unfired position.”) (emphasis added).
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`end effector firing bar, without the assistance of springs or other force generating
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`members….”).
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`3 In a co-pending litigation between the parties, the Chief ALJ has construed
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`“retraction assembly” as subject to § 112(6), but rejected Petitioner’s proposed
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`function and structure. Instead, the Chief ALJ construed the term as follows:
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`Function: retracting and causing said firing drive to generate a sole retraction
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`motion; Structure: a lever 42, a first gear 220, and a second gear 230. Ex.
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`2016.024-.030.
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`U.S. Patent No. 7,490,749
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`“firing drive”
`C.
`Claim 1 requires “a firing drive supported by said handle assembly and
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`configured to selectively generate said longitudinal firing motion upon actuation of
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`a firing trigger operably coupled to said handle assembly.” Petitioner has not
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`overcome the presumption that “firing drive” is not subject to § 112(6). Indeed, in
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`a co-pending litigation between the parties, the Chief ALJ held that “firing drive”
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`was not a means plus function limitation. Ex. 2016.020-.024.
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`Contrary to Petitioner’s assertion, the term “drive” is not a nonce word that
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`serves as a substitute for “means.” See Zeroclick, LLC, 891 F.3d at 1008 (“[T]he
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`district court effectively treated ‘program’ and ‘user interface code’ as nonce
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`words, which can operate as substitutes for “means” and presumptively bring the
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`disputed claims limitations within the ambit of § 112, ¶ 6. That is erroneous….”);
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`see also Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir.
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`1996) (“[T]he fact that a particular mechanism—here ‘detent mechanism’—is
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`defined in functional terms is not sufficient to convert a claim element containing
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`that term into a ‘means for performing a specified function’ within the meaning of
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`section 112(6).”). As explained by Dr. Awtar, a POSITA would have understood
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`that the term “drive” has a well-known meaning in the art, and refers to a
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`mechanism that transfers power from one part of an apparatus to another. See Ex.
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`2019 [Awtar Decl.] at ¶¶ 40-41. Thus, a POSITA would have understand that a
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`“firing drive” is a mechanism that transmits power to the firing member to extend
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`U.S. Patent No. 7,490,749
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`or retract the firing member. See IS-1001 at 3:11-19 (“The instrument may also
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`include a firing drive…configured to selectively generate the longitudinal firing
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`motion upon actuation of a firing trigger….”). This interpretation was adopted by
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`the Chief ALJ in a co-pending litigation between the parties. See Ex. 2016.020-
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`.024.
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`A POSITA would have likewise understood that a “drive” refers to a class of
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`structures, which can include gears, racks, cables, and shafts, or combinations
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`thereof. Ex. 2019 [Awtar Decl.] at ¶ 41; see also IS-1012.005 (“drive…The
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`means by which a machine is given motion or power…or by which power is
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`transferred from one part of a machine to another (as in gear drive, belt drive)”).
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`Accordingly, the term “drive” connotes structure to a person of ordinary skill, such
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`that § 112(6) does not apply. See MTD Products Inc. v. Iancu, 933 F.3d 1336,
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`1341 (Fed. Cir. 2019) (“[A] critical question is whether ‘the claim term is used in
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`common parlance or by persons of skill in the pertinent art to designate structure,’
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`including either a particular structure or a class of structures.”) (citations omitted);
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`see also Blackbird Tech LLC v. ELB Elecs., No. 15-cv-56 (RGA), 2016 WL
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`7451622, at *5 (D. Del. Dec. 28, 2016), vacated on other grounds, 895 F.3d 1374
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`(Fed. Cir. 2018) (“Fasteners are a generally understood class of physical structures.
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`‘Fastening mechanism’ is sufficient structure even though it invokes a class of
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`structures, rather than a specific structure.”).
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`Finally, the surrounding language in claim 1 sets forth ad