UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
`
`Before The Honorable Charles E. Bullock
`Chief Administrative Law Judge
`
`In the Matter of
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`CERTAIN RELOAD CARTRIDGES FOR
`LAPAROSCOPIC SURGICAL STAPLERS
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`Inv. No. 337-TA-1167
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`ETHICON COMPLAINANTS’ OPENING CLAIM CONSTRUCTION BRIEF
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`1
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`IS 1028
`Intuitive Surgical v. Ethicon
`IPR2019-00880
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`

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`TABLE OF CONTENTS
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`
`
`I.
`II.
`
`INTRODUCTION ...............................................................................................................1
`SUMMARY OF THE CLAIMED INVENTIONS..............................................................2
`A.
`The ’749 Patent ....................................................................................................... 2
`B.
`The ’969 Patent ....................................................................................................... 2
`C.
`The ’874 Patent ....................................................................................................... 3
`D.
`The ’369 Patent ....................................................................................................... 4
`E.
`The ’379 Patent ....................................................................................................... 4
`LEGAL STANDARDS .......................................................................................................5
`A.
`General Claim Construction Principles .................................................................. 5
`B.
`Claim Construction Standard Under 35 U.S.C. § 112(6) ....................................... 6
`AGREED TERMS ...............................................................................................................7
`THE ’749 PATENT .............................................................................................................8
`A.
`“manual actuation of said retraction assembly causes said firing drive to generate
`a sole retraction motion…” and “sole retraction motion” (claim 1 of the ’749
`Patent) ..................................................................................................................... 8
`“handle assembly” (claim 1 of the ’749 Patent) ................................................... 10
`“firing motion” (claim 1 of the ’749 Patent) ......................................................... 12
`“firing drive” (claim 1 of the ’749 Patent) ............................................................ 13
`“retraction assembly” (claim 1 of the ’749 Patent) ............................................... 16
`1.
`Retraction Assembly is Not Subject to § 112(6) ...................................... 17
`2.
`Respondents Have Identified the Incorrect Function and Structure ......... 18
`THE ’969 PATENT ...........................................................................................................20
`A.
`“tool mounting portion operably coupled to a proximal end of said proximal spine
`portion” (claim 24 of the ’969 Patent) .................................................................. 20
`VII. THE ’874 PATENT ...........................................................................................................22
`A.
`“driver element” (claim 9 of the ’874 Patent) ....................................................... 22
`B.
`“motion converter configured to convert a rotary drive motion produced by said
`motor to a linear drive motion” (claim 19 of the ’874 Patent) .............................. 26
`VIII. THE ’369 PATENT ...........................................................................................................28
`A.
`“first position” (claim 22 of the ’369 Patent) ........................................................ 28
`B.
`“firing motion” (claim 22 of the ’369 Patent) ....................................................... 30
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`B.
`C.
`D.
`E.
`
`III.
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`IV.
`V.
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`VI.
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`i
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`2
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`

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`C.
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`“means for guiding the at least one lower foot on the firing element out of the
`proximal channel opening and into the internal passage [upon initial application
`of a firing motion to the firing element]” (claim 22 of the ’369 Patent) .............. 33
`THE ’379 PATENT ...........................................................................................................36
`A.
`“unengaged with” / “not engaged with” (claims 1 and 3 of the ’379 Patent) ....... 36
`B.
`“said first jaw is not held to said second jaw” (claim 2 of the ’379 Patent) ......... 38
`CONCLUSION ..................................................................................................................41
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`IX.
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`X.
`
`ii
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`3
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Acumed LLC v. Stryker Corp.,
`483 F.3d 800 (Fed. Cir. 2007)..................................................................................................35
`
`Biagro Western Sales, Inc. v. Grow More, Inc.,
`423 F.3d 1296 (Fed Cir. 2005)...................................................................................................6
`
`Blackbird Tech LLC v. ELB Elecs.,
`No. 15-cv-56 (RGA), 2016 WL 7451622 (D. Del. Dec. 28, 2016), vacated on
`other grounds, 895 F.3d 1374 (Fed. Cir. 2018) .......................................................................15
`
`Cent. Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Sols., P.C.,
`482 F.3d 1347 (Fed. Cir. 2007)................................................................................................21
`
`Certain Gas Spring Nailer Products and Components Thereof,
`Inv. No. 337-TA-1082, Order 9 at 35-36 (May 3, 2018) .........................................................15
`
`Certain Network Devices, Related Software & Components Thereof
`(II), Inv. No. 337-TA-945 Comm’n Opinion, 2017 WL 3614521 (June 1,
`2017) ........................................................................................................................................25
`
`Certain Video Game Systems and Wireless Controllers and Components Thereof,
`Inv. No. 337-TA-770, Initial Determination, 2012 WL 4480570 (Aug. 31,
`2012) ..........................................................................................................................................8
`
`Certain Wiper Blades,
`Inv. No. 337-TA-816, Order No. 45, 2012 WL 4174874 (Aug. 31, 2012) .......................38, 39
`
`Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc.,
`145 F.3d 1303 (Fed. Cir. 1998)................................................................................................18
`
`GE Lighting Solutions, LLC v. AgiLight, Inc.,
`750 F.3d 1304 (Fed. Cir. 2014)..........................................................................................11, 30
`
`Greenberg v. Ethicon Endo-Surgery, Inc.,
`91 F.3d 1580 (Fed. Cir. 1996)..................................................................................................14
`
`Helmsderfer v. Bobrick Washroom Equipment, Inc.,
`527 F.3d 1379 ..........................................................................................................................40
`
`Interactive Gift Express, Inc. v. CompuServe Inc.,
`256 F.3d 1323 (Fed. Cir. 2001)................................................................................................22
`
`iii
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`4
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`

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`JVW Enters., Inc. v. Interact Acc., Inc.,
`424 F.3d 1324 (Fed. Cir. 2005)..................................................................................................6
`
`K–2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999)................................................................................................40
`
`MTD Products Inc. v. Iancu,
`933 F.3d 1336 (Fed. Cir. 2019)................................................................................................14
`
`New Hampshire v. Maine,
`532 U.S. 742 (2001) .................................................................................................................22
`
`Northrop Grumman Corp. v. Intel Corp.,
`325 F.3d 1346 (Fed. Cir. 2003)..........................................................................................18, 25
`
`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003)..................................................................................................9
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..............................................................................5, 6
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012)......................................................................................6, 29, 30
`
`Trustees in Bankr. of N. Am. Rubber Thread Co. v. U.S.,
`593 F.3d 1346 (Fed. Cir. 2010)................................................................................................21
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)..................................................................................................40
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015)............................................................................................6, 36
`
`Zeroclick LLC v. Apple, Inc.,
`891 F.3d 1003 (Fed. Cir. June 1, 2018) ...............................................................................7, 14
`
`Statutes
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`35 U.S.C. § 112(6) ................................................................................................................. passim
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`iv
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`5
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`Exhibit 1
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`Exhibit 2
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`Exhibit 3
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`Exhibit 4
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`Exhibit 5
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`Exhibit 6
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`Exhibit 7
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`Exhibit 8
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`Exhibit 9
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`Exhibit 10
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`Exhibit 11
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`Exhibit 12
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`Exhibit 13
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`Exhibit 14
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`Exhibit 15
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`Exhibit 16
`Exhibit 17
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`Exhibit 18
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`Exhibit 19
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`TABLE OF EXHIBITS
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`Declaration of Dr. Shorya Awtar
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`U.S. Patent No. 7,490,749
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`U.S. Patent No. 8,479,969
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`U.S. Patent No. 9,113,874
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`U.S. Patent No. 9,844,369
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`U.S. Patent No. 9,844,379
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`Excerpts from Merriam Webster’s Collegiate Dictionary (11th Ed. 2003)
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`Excerpts from Webster’s II New College Dictionary (3d. Ed. 2005)
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`Excerpts from Oxford Dictionary of Mechanical Engineering (1st Ed. 2013)
`
`Certain Gas Spring Nailer Products and Components Thereof, Inv. No. 337-
`TA-1082, Order 9 (May 3, 2018)
`
`D.I. 292 (C.A. 17-871) (D. Del.) (Order Invalidating the January 2018
`Certificate of Correction Relating to U.S. Patent No. 8,479,969)
`
`D.I. 311 (C.A. 17-871) (D. Del.) (Plaintiffs’ Notice of Waiver of Appeal
`Regarding the Court’s Order Invalidating the January 2018 Certificate of
`Correction Relating to U.S. Patent No. 8,479,969)
`
`D.I. 116 (C.A. 17-871) (D. Del.) (Respondents’ Opening Markman Brief)
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`D.I. 127 (C.A. 17-871) (D. Del.) (Respondents’ Responsive Markman Brief)
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`D.I. 175 (C.A. 17-871) (D. Del.) (Markman Hearing Transcript)
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`Excerpts from file history of U.S. Patent No. 9,844,369
`D.I. 254 at 6 (C.A. 17-871) (D. Del.) (Memorandum Opinion on Claim
`Construction)
`
`Excerpts from McGraw Hill Dictionary of Mechanical and Design
`Engineering (1984)
`
`Bhandari, Design of Machine Elements (3d. Ed.)
`
`
`v
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`6
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`I.
`
`INTRODUCTION
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`The asserted Ethicon patents—U.S. Patent No. 7,490,749 (the ’749 Patent), U.S. Patent
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`No. 8,479,969 (the ’969 Patent), U.S. Patent No. 9,113,874 (the ’874 Patent), U.S. Patent No.
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`9,844,369 (the ’369 Patent), and U.S. Patent No. 9,844,379 (the ’379 Patent)—are directed to
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`various aspects of laparoscopic surgical staplers.1 Ethicon has asserted that Respondents’
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`SureForm and EndoWrist surgical staplers for the da Vinci X/Xi surgical systems infringe
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`various claims of the asserted patents, and further that Ethicon’s commercial and prototype
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`staplers practice various claims of these patents.
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`As described herein, the parties have diverging views as to how the claims in the asserted
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`patents should be construed. Ethicon submits that the vast majority of terms at issue are
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`understandable on their face, and require no construction at all. Furthermore, where
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`constructions are needed to understand the claim language, Ethicon’s constructions are consistent
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`with the intrinsic record. In contrast, Respondents are attempting to re-write the plain language
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`of the claims, and are doing so in a manner that is not supported by the specification. This is
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`contrary to the law.
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`Respondents have also requested that the Chief ALJ construe several terms as means-
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`plus-function limitations under 35 U.S.C. § 112(6), despite the presumption that these claim
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`terms are not subject to § 112(6) and the fact that the claims provide sufficient structure for these
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`terms. Moreover, even if the terms identified by Respondents are subject to § 112(6),
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`Respondents’ constructions identify the incorrect function and corresponding structure, including
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`structure that is unnecessary to perform the claimed function.
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`1 In this context, stapler refers to a device that simultaneously cuts and staples tissue. This type
`of device can also be referred to as a linear cutter or an endocutter.
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`7
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`For the reasons set forth below, Ethicon respectfully requests that the Chief ALJ adopt its
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`proposed constructions of the disputed terms.
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`II.
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`SUMMARY OF THE CLAIMED INVENTIONS
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`As explained above, the asserted patents describe and claim various aspects of
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`laparoscopic surgical instrument technology, with application to laparoscopic surgical stapling:
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`A.
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`The ’749 Patent
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`The ’749 Patent describes and claims a surgical instrument including a retraction
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`assembly that enables a user to manually retract a firing member after the surgical instrument is
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`fired. The claimed retraction assembly does not include any springs or other force generating
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`members, such that manual actuation of the retraction assembly causes the firing drive to
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`generate a “sole retraction motion” that is applied to the firing member.
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`
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`B.
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`The ’969 Patent
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`
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`The ’969 Patent describes and claims a surgical tool for use with a robotic surgical
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`system. The tool comprises spine portions within an elongated shaft that are coupled at an
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`articulation joint to facilitate articulation of the tool. The claimed surgical tool also includes a
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`tool mounting portion having a transmission that meshes with a gear driven portion of the tool to
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`apply a control motion to the end effector (such as closing the jaws or firing the knife).
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`2
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`C.
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`The ’874 Patent
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`Claim 19 of the ’874 Patent describes and claims a motor-powered surgical stapler that
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`includes a sensor in the end effector and is coupled to a remote user-controlled actuation console.
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`The sensor, for example, can be used to detect the presence of a staple cartridge. The claimed
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`stapler includes an articulation joint and a drive screw that converts rotary motion from the
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`motor to distally move a firing member in order to eject staples from a cartridge.
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`Claim 9 of the ’874 Patent describes and claims a surgical stapler that is coupled to a
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`
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`remote user-controlled console. ’874 Patent, claim 9. The claimed stapler applies separate
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`motions for firing the stapler, and for opening and closing the jaws of the end effector. Id.
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`3
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`9
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`D.
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`The ’369 Patent
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`The ’369 Patent describes and claims a surgical end effector comprising an elongate
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`channel configured to support a staple cartridge, and a firing element that translates between the
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`proximal and distal end of the elongate channel. An internal passage extends within the elongate
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`channel and receives a lower foot of the firing element. The elongate channel also includes a
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`proximal channel opening that facilitates viewing of the firing element, and means for guiding
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`the lower foot out of the proximal channel opening and into the internal passage.
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`E.
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`The ’379 Patent
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`
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`The ’379 Patent describes and claims a surgical stapling device configured such that a
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`firing member cannot be advanced when a staple cartridge is not attached to the device. The
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`claimed stapling device includes a pair of jaws, one of which is configured to support a
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`4
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`10
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`

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`detachable cartridge containing staples. The device includes a firing member with first and
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`second cams that engage the jaws when the firing member is advanced from an initial position,
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`and a lockout configured to block advancement of the staple firing member when the detachable
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`cartridge is not attached to the stapling assembly.
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`III. LEGAL STANDARDS
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`A.
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`General Claim Construction Principles
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`“It is the bedrock principle of patent law that the claims of a patent define the invention
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`to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303,
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`1312 (Fed. Cir. 2005) (en banc) (quotes omitted). “[T]he words of a claim are generally given
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`their ordinary and customary meaning,” which is “the meaning that a term would have to a
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`person of ordinary skill in the art in question at the time of the invention.” Id. at 1312-1313
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`(quotes omitted). To construe claims, “the court looks to those sources available to the public
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`that show what a person of skill in the art would have understood disputed claim language to
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`mean. Those sources include the words of the claims themselves, the remainder of the
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`5
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`11
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`specification, the prosecution history, and extrinsic evidence concerning relevant scientific
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`principles, the meaning of technical terms and the state of the art.” Id. at 1314 (quotes and
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`citations omitted). Nevertheless, the process of “claim construction begins with, and remains
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`focused on, the language of the claims.” Biagro Western Sales, Inc. v. Grow More, Inc., 423 F.3d
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`1296, 1302 (Fed Cir. 2005) (citation omitted); see also Phillips, 415 F.3d at 1314 (“[Q]uite apart
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`from the written description and the prosecution history, the claims themselves provide
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`substantial guidance as to the meaning of particular terms.”).
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`Although the claims are the focus, the patent specification is also highly relevant to the
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`analysis. Phillips, 415 F.3d at 1315. Absent a clear and unambiguous disclaimer, however,
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`courts “do not import limitations into claims from examples or embodiments appearing only in a
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`patent’s written description, even when a specification describes very specific embodiments of
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`the invention or even describes only a single embodiment.” JVW Enters., Inc. v. Interact Acc.,
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`Inc., 424 F.3d 1324, 1335 (Fed. Cir. 2005). See also Thorner v. Sony Computer Entm’t Am.
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`LLC, 669 F.3d 1362, 1366-67 (Fed. Cir. 2012) (“It is likewise not enough that the only
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`embodiments, or all of the embodiments, contain a particular limitation. We do not read
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`limitations from the specification into claims; we do not redefine words. Only the patentee can
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`do that. To constitute disclaimer, there must be a clear and unmistakable disclaimer.”).
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`B.
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`Claim Construction Standard Under 35 U.S.C. § 112(6)
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`
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`Under § 112(6), 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 construed to cover
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`the corresponding structure….” 35 U.S.C. § 112(6). When a claim element does not include the
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`word “means,” there is a presumption that it is not a means-plus-function limitation, and §
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`112(6) does not apply. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir.
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`2015). To overcome that presumption, Respondents have the burden to demonstrate by a
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`6
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`12
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`preponderance of the evidence that the “claim term fails to recite sufficiently definite structure or
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`else recites function without reciting sufficient structure for performing that function.” Zeroclick
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`LLC v. Apple, Inc., 891 F.3d 1003, 1007 (Fed. Cir. June 1, 2018) (citations omitted).
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`Respondents cannot meet that burden for any of the disputed terms that it contends are subject to
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`§ 112(6).
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`IV. AGREED TERMS
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`The parties have agreed to constructions for the following terms. Ethicon requests that
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`the Chief ALJ adopt these constructions for the purpose of this proceeding:
`
`Patent
`’969 Patent,
`Claim 24
`
`’969 Patent,
`Claim 24
`
`’969 Patent,
`Claim 24
`
`’874 Patent,
`Claim 19
`
`’874 Patent,
`Claim 9
`’874 Patent,
`Claim 9
`
`Agreed Construction
`The preamble is limiting.
`
`Term
`A surgical tool for use with a robotic
`system that has a tool drive assembly that is
`operatively coupled to a control unit of the
`robotic system that is operable by inputs
`from an operator and is configured to
`provide at least one rotary output motion to
`at least one rotatable body portion
`supported on the tool drive assembly, said
`surgical tool comprising
`Distal spine portion
`
`Proximal spine portion
`
`Structural member within distal
`portion of elongated shaft
`assembly
`Structural member within
`proximal portion of elongated
`shaft assembly
`Remote user-controllable actuation console Console that allows a user to
`control and actuate the surgical
`instrument
`Console that allows a user to
`control a surgical instrument
`Subject to § 112(6).
`
`Function: to apply opening and
`closing motions to one of said
`first and second jaws.
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`Structure: distal closure tube 42
`and proximate closure tube 40
`(Fig. 4)
`
`Remotely user-controlled console
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`Reciprocatable closure element configured
`to apply said opening and closing motions
`to said one of said first and second jaws
`
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`7
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`13
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`V.
`
`THE ’749 PATENT
`
`A.
`
`“manual actuation of said retraction assembly causes said firing drive to
`generate a sole retraction motion…” and “sole retraction motion” (claim 1 of
`the ’749 Patent)
`
`Respondents’ Proposed Construction
`“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”:
`
`manual actuation of said retraction assembly
`is the only mechanism in the instrument that
`can generate a retraction motion.
`
`Ethicon’s Proposed Construction
`“sole retraction motion”:
`
` a
`
` retraction motion generated by manipulation
`of the retraction assembly by the clinician
`without any assistance from additional
`springs or other force generating members.
`
`Ethicon’s construction of “sole retraction motion” adopts the explicit definition in the
`
`
`
`
`specification (’749 Patent at 16:23-28). In contrast, Respondents have proposed a construction
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`that essentially rewrites the entire phrase containing the term “sole retraction motion,” and does
`
`so without regard for the explicit definition in the specification. Respondents have no basis for
`
`ignoring the definition in the specification of “sole retraction motion,” and there is also no reason
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`for construing the claim language surrounding the term “sole retraction motion.” See Certain
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`Video Game Systems and Wireless Controllers and Components Thereof, Inv. No. 337-TA-770,
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`Initial Determination at 27-28 n.6, 2012 WL 4480570, at *24 n.6 (Aug. 31, 2012) (“The
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`undersigned finds that construing this lengthy phrase as a whole would not clarify its meaning
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`and thus, will construe individual portions of the phrase….”).
`
`
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`It should be undisputed that the ’749 Patent provides an explicit definition for “sole
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`retraction motion”:
`
`Thus, the various retraction systems disclosed herein are said to generate
`the ‘sole’ retraction motion or force. This means that the retraction
`motions/forces are generated by manipulation of the various
`
`8
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`14
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`retraction members by the clinician without any assistance from
`additional springs or force generating members.”
`
`’749 Patent at 16:23-28. Ethicon’s construction adopts this explicit definition while Respondents
`
`ignore it. Indeed, Respondents’ construction defines the retraction assembly as being one that
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`“is the only mechanism in the instrument that can generate a retraction motion.” This
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`construction, however, bears no relationship to the definition of “sole retraction motion” in the
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`specification. When the definition from the specification is applied to the claim, it is clear that
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`the claim simply requires that manual actuation of the retraction assembly by the clinician causes
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`the firing drive to generate a retraction motion without any assistance from springs or other force
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`generating members.
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`
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`Nowhere does the claim or the specification require, as Respondents propose, that the
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`retraction assembly be the only portion of the instrument that is capable of generating a
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`retraction motion. All that is required by the claim is that an instrument have a manual retraction
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`assembly that causes a firing drive to generate a retraction motion without any assistance from
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`additional springs or force generating members (i.e., a sole retraction motion). There is no
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`exclusion of other retraction assemblies that work independently from the claimed manual
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`retraction assembly. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1322 (Fed. Cir. 2003)
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`(“[N]either the district court nor Raytek has identified any express disclaimer or independent
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`lexicography in the written description that would justify adding that negative limitation….
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`Accordingly, we must conclude that there is no basis in the patent specification for adding the
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`negative limitation.”).
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`
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`Respondents’ construction is also incorrect because it alters the plain language of the
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`claim. The claim requires that “manual actuation of said retraction assembly causes said firing
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`drive to generate a sole retraction motion.” Respondents’ construction eliminates the firing
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`9
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`15
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`drive from the phrase, and instead requires that the “retraction assembly is the only mechanism
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`in the instrument that can generate a retraction motion.” There is no simply basis for rewriting
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`the claim as proposed by Respondents.
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`B.
`
`“handle assembly” (claim 1 of the ’749 Patent)
`
`Ethicon’s Proposed Construction
`No construction needed. Alternatively,
`“unit consisting of components that have
`been fitted together and is designed to be
`held or operated by the hand.”
`
`
`Respondents’ Proposed Construction
` “a unit consisting of components that have been
`fitted together and is designed especially to be
`grasped by hand to perform the firing operation”
`
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`Ethicon contends that the term “handle assembly” does not require construction.
`
`
`
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`Nonetheless, Ethicon does not dispute that a handle assembly is a unit consisting of components
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`that have been fitted together and is designed to be held or operated by the hand. However,
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`Respondents’ proposed construction reads in the additional requirement that handle assembly is
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`grasped by the hand to perform the firing operation. It is clear, however, that the plain meaning
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`of a “handle assembly” does not require something to be grasped by hand to perform the firing
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`operation. See e.g., Ex. 7, Merriam Webster’s Collegiate Dictionary at 565 (“handle…a part
`
`that is designed esp. to be grasped by hand”); Ex. 8, Webster’s II New College Dictionary at 514
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`(“handle…a part designed to be held or operated with the hand”). In addition, Respondents’
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`attempt to narrow the plain meaning of a “handle assembly” is not supported by the claim
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`language or the specification, and therefore, it should be rejected.
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`First, the plain language of claim 1 of the ’749 Patent does not require that the user grasp
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`the handle assembly to perform the firing operation—the word firing operation appears nowhere
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`in the claim.2 Claim 1 requires that the claimed retraction assembly is designed to be manually
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`2 The specification only uses the term “firing operation” once. See ’749 Patent at 5:53-59.
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`10
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`16
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`actuated when retracting the firing member from a fired position to a retracted position. See
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`’749 Patent, claim 1 (requiring “manual actuation of said retraction assembly…to cause said
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`firing member to move from said fired position to said retracted position.”). In contrast, with
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`respect to firing, the claim requires only that (1) the handle assembly support a firing drive; and
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`(2) the firing drive generates a longitudinal firing motion upon actuation of a firing trigger
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`operably coupled to the handle assembly. Thus, it is clear from claim 1 that the inventors were
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`explicit in identifying which components of the claimed surgical instrument are to be grasped
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`(i.e., the manually actuated retraction assembly) to perform a particular operation (i.e., retracting
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`the firing member). Accordingly, the handle assembly of claim 1 should not be limited as
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`proposed by Respondents.
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`Second, the specification does not warrant limiting a “handle assembly” to a structure
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`that must be held during a firing operation because there is no lexicography or disavowal in the
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`’749 Patent, which is required to depart from the plain meaning. See GE Lighting Solutions,
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`LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“[T]he specification and
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`prosecution history only compel departure from the plain meaning in two instances: lexicography
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`and disavowal.”). Although the specification describes an exemplary embodiment (illustrated in
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`Figure 1) in which the user grasps the handle assembly to control the instrument (see ’749 Patent
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`at 5:42-48), the ’749 Patent never states or suggests that the disclosed instrument is limited to
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`one that must be grasped by hand to perform a firing operation. Instead, the specification
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`explains that the disclosed embodiments are merely exemplary of an instrument that is capable of
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`practicing the claimed invention. ’749 Patent at 5:34-38 (“FIGS. 1 and 2 depict a surgical
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`stapling and severing instrument 10 that is capable of practicing the unique benefits of the
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`present invention.”); see also id. at 6:66-7:2 (“The advantages of a handle assembly 20, which is
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`11
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`17
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`capable of providing a multiple-stroke firing motion, has application to a number of instruments,
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`with one such end effector 12 being depicted in FIGS. 2-6.”).
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`
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`It is clear that the plain meaning of a handle assembly does not require that it be grasped
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`by hand during the firing operation, as proposed by Respondents. Nor does the specification
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`warrant departing from the plain meaning of that term. Accordingly, the Chief ALJ should reject
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`Respondents’ construction and accord “handle assembly” its plain meaning.
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`C.
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`“firing motion” (claim 1 of the ’749 Patent)
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`Ethicon’s Proposed Construction
`Plain and ordinary meaning.
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`Respondents’ Proposed Construction
`motion applied during the firing operation
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`The meaning of the term “firing motion” in the context of claim 1 of the ’749 Patent is
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`clear. The plain language indicates that the firing motion applied to the firing member is a
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`motion that is generated by the firing drive to move the firing member from a retracted position
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`to a fired position. ’749 Patent, claim 1 (“a firing member that is movable from a retracted
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`position to a fired position in response to a longitudinal firing motion applied thereto; a firing
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`drive supported by said handle assembly and configured to selectively generate said longitudinal
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`firing motion….”). “Firing motion” therefore requires no construction.
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`Respondents’ construction defines the “firing motion” as a “motion applied during the
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`firing operation.” It is unclear, however, what Respondents mean by “firing operation.” During
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`the parties meet and confer, Ethicon asked Respondents to clarify what was meant by firing
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`operation, but Respondents declined to provide any clarification. If by “firing operation,”
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`Defendants mean a mode of operation involving movement of the firing member, then addition
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`of “firing operation” is redundant because the claim already specifies that a firing motion is one
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`that moves the firing member from a retracted position to a fired position.
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`12
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`18
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`Alternatively, if, by the addition of “firing operation,” Respondents are attempting to
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`limit firing motion to mean only that movement of the firing member that causes ejection of
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`staples, that would also be improper. As already noted above, the claim language confirms that a
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`firing motion is one that moves a firing member from a retracted position to a fired position.
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`Furthermore, the specification confirms that a “firing motion” is not limited to just ejecting
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`staples and can involve the operation where movement of the firing element closes the device
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`(i.e., clamps the jaws) as w