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.
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`ETHICON LLC,
`Patent Owner.
`______________________
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`IPR2019-00880
`U.S. Patent No. 7,490,749
`______________________
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`PATENT OWNER ETHICON LLC’S SUR-REPLY
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`PUBLIC VERSION
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`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`______________________
`
`IPR2019-00880
`U.S. Patent No. 7,490,749
`______________________
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`PATENT OWNER ETHICON LLC’S SUR-REPLY
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`PUBLIC VERSION
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`
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`IPR2019-00880
`U.S. Patent No. 7,490,749
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION .......................................................................................... 1
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`ETHICON’S § 112(6) CONSTRUCTION OF RETRACTION
`ASSEMBLY SHOULD BE ADOPTED ......................................................... 3
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`I.
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`II.
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`III. THE CLAIMS OF THE 749 PATENT ARE NOT ANTICIPATED ............. 6
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`A. A POSITA Would Not Immediately Envision Removal of
`Shelton II’s Retraction Spring ............................................................... 6
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`1.
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`Paragraph [0154] Does Not Describe Removing Shelton
`II’s Retraction Spring .................................................................. 6
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`B.
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`C.
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`Shelton II Does Not Disclose That the Retraction Spring is
`Optional ................................................................................................. 9
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`Shelton II/Swayze Do Not Anticipate if the Retraction Spring
`Becomes Disconnected ....................................................................... 11
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`1.
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`2.
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`Ethicon’s Litigation Position Does Not Support
`Petitioner’s Argument ............................................................... 12
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`Shelton II/Swayze Do Not Disclose Using the Instrument
`if the Spring Disconnects .......................................................... 13
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`D. Ground 3 Based on Shelton I is Moot ................................................. 14
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`IV. SHELTON II/SWAYZE DO NOT RENDER CLAIMS 1 AND 3
`OBVIOUS ...................................................................................................... 15
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`A.
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`B.
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`Force to Fire Would Not Have Motivated a POSITA to Remove
`the Retraction Spring ........................................................................... 15
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`Parts Count and Cost Would Not Have Motivated a POSITA to
`Remove the Retraction Spring ............................................................ 18
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`US. Patent No. 7,490,749
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`C.
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`Conventional Wisdom Confirms that
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`the Claims are Non-
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`Obvious ............................................................................................... 1 0
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`VI.
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`CONCLUSION .............................................................................................. 28
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`Exhibit List FOR IPR2019-00880
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` Exhibit #
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`Description
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`Ex. 2010 U.S. Patent No. 5,465,895 (1995)
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`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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`iii
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`US. Patent No. 7,490,749
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`Exhibit #
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`Description
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`Deposition Transcript of Dr. Bryan Knodel (December 13, 2019) Ex. 2019C Declaration of Shorya Awtar
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`Ex. 2018
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`Ex. 2020 Deposition Transcript of Dr. Bryan Knodel (May 14, 2020)
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`I.
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`INTRODUCTION
`Claims 1 and 3 of the 749 Patent are directed to a surgical instrument
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`comprising a retraction assembly that does not include a retraction spring or other
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`force generating member that serves to place a drag on the firing system. The full
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`evidentiary record confirms the patentability of these claims.
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`Shelton II and Swayze disclose an instrument comprising a retraction spring,
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`and therefore fall outside the scope of the claims. Petitioner presents multiple
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`anticipation theories in an attempt to overcome this, but each falls short. First, a
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`POSITA would not immediately envision removing the retraction spring from
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`Shelton II. Petitioner’s argument is based on an incorrect interpretation of
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`Paragraph [0154] that its own expert does not support. Second, neither Shelton II
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`nor Swayze anticipate claims 1 and 3 if the retraction spring disconnects.
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`Petitioner’s anticipation argument in this respect is based solely on a
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`mischaracterization of Patent Owner’s litigation position. Moreover, Petitioner has
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`failed to set forth any evidence to support its assertion that a clinician would
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`continue operating the instrument after it malfunctions in this situation.
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`Petitioner has also failed to support its obviousness challenge with a
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`sufficient motivation to remove the retraction spring from Shelton II and Swayze.
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`It is undisputed that a POSITA would not have recognized that Shelton II or
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`Swayze had a problem with force to fire that would have prompted removal of its
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`retraction spring. Moreover, Petitioner’s expert agrees that the use of a retraction
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`springs was “deeply rooted in the conventional wisdom of endoscopic surgical
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`staplers.” IS-1029, ¶ 15. These facts are fatal to Petitioner’s argument.
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`For the reasons set forth in the POR and herein, Patent Owner respectfully
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`requests that the Board confirm the patentability of claims 1 and 3.
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`II. ETHICON’S § 112(6) CONSTRUCTION OF RETRACTION
`ASSEMBLY SHOULD BE ADOPTED
`To narrow the issues, Ethicon agrees that “retraction assembly” should be
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`construed under § 112(6).1 As explained in the POR, however, Petitioner’s
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`proposed structure is overly narrow. POR at 18. Ethicon, in contrast, has
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`identified the necessary structure for performing the claimed retraction function,
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`which should be adopted:
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`Structure: a gear(s) and lever, excluding a spring or other force
`generating member.
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`See also POR at 19-20.2
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`As explained in the POR, the claimed instrument excludes a retraction
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`spring or other force generator that serves to place a drag on the firing system.
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`POR at 16-20, 48-49. Although Petitioner agrees that the claimed instrument
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`excludes a retraction spring (Petition at 26; IS-1003, ¶ 56), Petitioner disputes
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`Ethicon’s construction to the extent it excludes a retraction spring that serves to
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`1 Retraction assembly has been construed under § 112(6) in the co-pending ITC
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`Investigation. POR at 20.
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`2 Ethicon disputes Petitioner’s proposed function to the extent it requires
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`“interfacing with the firing drive.” POR at 19.
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`place a drag on the firing system. Reply at 8-10. Petitioner’s assertion that the
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`specification does not mandate this limitation is incorrect.
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`An inventor can limit a claim to include or exclude a particular feature based
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`on clear and unequivocal evidence in the specification. Poly-America, L.P. v. API
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`Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016). Although the evidence “must
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`be clear and unequivocal, it need not be explicit.” Id. An inventor can disavow
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`claims lacking a feature when the specification describes the present invention as
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`having that feature, or by distinguishing and disparaging prior art based on the
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`presence or absence of that feature. Id.
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`The 749 Patent specification includes the requisite clear and unequivocal
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`evidence. First, the specification distinguishes and disparages instruments having
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`a retraction spring that places a drag on the firing system:
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`Use of such larger spring further increases the amount of firing
`forces that must be generated to overcome the spring force….
`Consequently, a significant need exists for a surgical stapling
`instrument…equipped with a manually actuatable retraction
`mechanism and does not employ an additional retraction means
`such as a spring or the like that generates forces that must be
`overcome….
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`IS-1001 at 2:60-3:4. Second, the specification unequivocally states that the
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`“unique and novel retraction assembly” lacks a spring or other force generator that
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`places a drag on the firing system:
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`In addition, various embodiments employ a unique and novel
`retraction assembly that enables the clinician to manually retract the
`firing rod and thus, the end effector firing bar, without the assistance
`of springs or other force generating members…. Such additional
`force generating devices…require the instrument to generate firing
`forces that must also overcome the forces generated by such
`additional retraction force generating members….
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`IS-1001 at 16:14-28; see also id. at 5:53-59. Third, the specification explicitly
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`describes that every embodiment includes a “retraction assembly” that lacks a
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`retraction spring or other force generation member that places a drag on the firing
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`system. IS-1001 at 12:9-15, 15:21-24; see also Poly-America, L.P., 839 F.3d at
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`1137 (“Every embodiment described in the specification has inwardly extended
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`short seals and every section of the specification indicates the importance…. These
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`two facts provide together a proper reason to limit the claims….”).
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`The 749 Patent specification is clear and unequivocal that the claimed
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`instrument excludes a retraction spring or other force generator that serves to place
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`a drag on the firing system. Accordingly, Ethicon’s construction should be
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`adopted. Poly-America, L.P., 839 F.3d at 1137 (limiting claims to short seals that
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`“extend inwardly” where claim language referred only to “short seals”).
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`III. THE CLAIMS OF THE 749 PATENT ARE NOT ANTICIPATED
`A. A POSITA Would Not Immediately Envision Removal of Shelton
`II’s Retraction Spring
`Petitioner concedes that the embodiments in Shelton II include a retraction
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`spring, and therefore fall outside the scope of claims 1 and 3. Petition at 26
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`(“[T]he preferred embodiment of Shelton II differs from the ’749 Patent’s claimed
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`embodiment in that the ’749 Patent’s claimed embodiment eliminates the retraction
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`spring….”). Nonetheless, Petitioner contends that Shelton II anticipates because a
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`POSITA would have immediately envisioned removing the spring based on
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`Paragraph [0154]. Petitioner’s interpretation of Paragraph [0154] is incorrect.
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`1.
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`Paragraph [0154] Does Not Describe Removing Shelton II’s
`Retraction Spring
`Shelton II provides a detailed disclosure of its embodiments, which spans
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`147 paragraphs and includes 54 corresponding figures. Petitioner disregards the
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`entirety of this disclosure, and instead relies on a single sentence in Paragraph
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`[0154]:
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`As yet another example, a manual retraction mechanism consistent
`with aspects of the invention may be utilized without the assistance of
`a retraction spring.
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`IS-1004 at [0154]; see also Reply at 1-2. The plain language of Paragraph [0154]
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`does not describe removal of the retraction spring, as Petitioner contends. Instead,
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`it states only that the manual retraction mechanism can be used without assistance
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`of the spring. As Dr. Awtar explained, Paragraph [0154] corresponds to Paragraph
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`[0144], which describes that the manual retraction mechanism can be used if the
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`retraction spring disconnects (i.e., without assistance of the spring). Ex. 2019C, ¶
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`92. Indeed, Dr. Knodel admitted in his deposition that Paragraph [0154] does not
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`describe removal of the retraction spring, but instead refers to Paragraph [0144]:
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`Q. Okay. So paragraph 154 is susceptible to multiple interpretations;
`is that what you’re saying?
`…
`THE WITNESS: What I’m saying is that 154 does not tell you to
`take out the spring. It tells you that the spring – that a retraction
`spring would not be utilized in the manual retraction. That’s what I’m
`saying.
`…
`Q. And so what’s described in paragraph 144 is one situation in
`which the manual retraction mechanism may be utilized without the
`assistance of a retraction spring, correct?
`A. That is correct.
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`Ex. 2020 at 40:14-41:17; see also id. at 40:9-10 (“I’m just saying it does not say
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`completely remove the retraction spring.”). Thus, Petitioner’s own expert does
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`not agree with the interpretation of Paragraph [0154] that Petitioner has advanced.
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`Petitioner’s argument that Paragraph [0154] cannot reiterate Paragraph
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`[0144] is also flawed. Specifically, Petitioner argues that Paragraph [0154] must
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`refer to new subject matter because Paragraphs [0148]-[0153] only describe
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`modifications to Shelton II’s device. Reply at 2-3. This is incorrect because
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`Paragraph [0148] indicates that the subsequent paragraphs can describe advantages
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`and modifications to Shelton II’s instrument. IS-1004 at [0148] (“Additional
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`advantages and modifications may readily appear….”). An advantage described
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`in Shelton II is use of the manual retraction mechanism without the assistance of a
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`spring, as described in Paragraph [0144]. See Ex. 2019C, ¶ 92.
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`In addition, Paragraphs [0149]-[0153] are not limited to new subject matter.
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`Reply at 2. Paragraph [0151] describes using a straight rack instead of a linked
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`rack, which merely reiterates the use of a solid (i.e., straight) rack described in
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`Paragraph [0066]. IS-1004 at [0066] (“A surgical stapling and severing
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`instrument, whether with a conventional solid or linked rack…incorporates a
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`multiple firing stroke capability….”); Ex. 2020 at 34:12-35:7 (Dr. Knodel agreeing
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`that a straight rack is a solid rack). Similarly, Paragraph [0153] describes the use
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`of single-stroke firing, which is discussed extensively earlier in Shelton II. See
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`1004 at [0007], [0009], [0107]. Thus, Paragraphs [0149]-[0153] can, and do,
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`reiterate content previously described in Shelton II. Paragraph [0154] is no
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`different, and reiterates an advantage described in Paragraph [0144].
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`Kennemetal is thus inapplicable to Shelton II. Reply at 1-7. There, a single
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`reference clearly disclosed all claim limitations; the only dispute was whether a
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`POSITA would have immediately envisioned combining the elements.
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`Kennametal, Inc., v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1382 (Fed. Cir.
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`2015); see also Polaris Indus. Inc. v. Arctic Cat Inc., IPR2016-01713, Paper 29 at
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`50. Here, Petitioner has failed to demonstrate that Paragraph [0154] of Shelton II
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`clearly discloses a surgical instrument that excludes a retraction spring. Thus, a
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`POSITA could not have immediately envisioned its removal.
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`B.
`Shelton II Does Not Disclose That the Retraction Spring is Optional
`In Reply, Petitioner relies on entirely differently disclosures in Shelton II—
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`Paragraph [0152] and the claims— that allegedly disclose that the retraction spring
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`is optional. Reply at 3-4. Petitioner’s reliance on previously unidentified
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`disclosures in Shelton II is improper, and should not be considered. Ariosa
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`Diagnostics Inc. v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015)
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`(“We see no error in the Board's rejection of Ariosa's reliance, in its Reply
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`submissions, on previously unidentified portions of a prior-art reference….”); see
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`also July 2019 Trial Practice Guide Update at 40; 37 C.F.R. § 42.104(b)(5).
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`Even if the Board allows Petitioner to introduce new disclosures in its Reply,
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`neither Paragraph [0152] nor the claims of Shelton II teach that the retraction
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`spring is optional. Paragraph [0152] states only that automatic retraction is not
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`required. IS-1004 at [0152] (“[W]hile automatic retraction at the end of firing
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`travel may be desirable, a manual retraction may be incorporated without this
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`feature.”). As Dr. Knodel explained, Paragraph [0152] thus describes an
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`instrument that includes a retraction spring to provide assistance to a manual
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`retraction mechanism:3
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`Q. Okay. So paragraph 152, when it says, Manual retraction may be
`incorporated without this feature,” in your mind, that could
`encompass manual retraction that has a device with a retraction
`spring, right?
`A. Yes, it did. Yes, that is correct. Because that would make sense
`why he further clarifies it in 154. I plainly read 152 to mean that it’s
`manual retraction that has some assistance from a retraction
`spring….
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`Ex. 2020 at 49:9-19.
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`3 Dr. Knodel also agreed that IS-1016, which is referenced in Shelton II, does not
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`teach that a retraction spring is optional. Ex. 2020 at 8:7-21; see Reply at 3 (citing
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`IS-1016).
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`Nor do claims 1 and 18 teach that the retraction spring is optional in Shelton
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`II. Petitioner’s argument regarding claims 1 and 18 confuses claim scope with
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`teaching. It is well-settled that a patentee is not required to incorporate every
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`significant feature into each claim. Golight, Inc. v. Wal–Mart Stores, Inc., 355
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`F.3d 1327, 1331 (Fed.Cir.2004) (“[P]atentees [are] not required to include within
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`each of their claims all of [the] advantages or features described as significant or
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`important in the written description.”). Thus, the fact that claims 1 and 18 do not
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`recite a limitation for a retraction spring does not mean that a POSITA would have
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`considered the retraction spring to be optional in the devices disclosed in Shelton
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`II.4 Furthermore, Dr. Knodel admitted that he did not consider the claims when
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`interpreting Shelton II. Ex. 2020 at 49:20-50:6. Thus, Petitioner’s contention that
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`a POSITA would view claims 1 and 18 of Shelton II as describing that a retraction
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`spring is optional, is pure attorney argument.
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`C.
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`Shelton II/Swayze Do Not Anticipate if the Retraction Spring
`Becomes Disconnected
`Petitioner alternatively argues that Shelton II/Swayze anticipate claims 1 and
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`3 if the retraction spring disconnects during use. Reply at 8-12. Petitioner’s
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`4 Independent claim 12 of Shelton II is explicitly directed to the retraction spring
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`feature.
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`argument here is based on a mischaracterization of Ethicon’s litigation position and
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`speculation that a clinician would continue operating the instrument after it
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`malfunctions.
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`1.
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`Ethicon’s Litigation Position Does Not Support Petitioner’s
`Argument
`Petitioner continues to draw a false analogy between Ethicon’s infringement
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`allegations and the disclosure in Shelton II/Swayze. Reply at 8-10. Ethicon’s
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`infringement allegations are not based on the presence of both automatic and
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`manual retraction mechanisms in Petitioner’s instruments, and are thus irrelevant
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`to Petitioner’s invalidity theory. Id. Indeed, the PTAB has repeatedly rejected
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`attempts by parties to make invalidity arguments based on infringement
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`contentions from co-pending litigation. See IPR2017-00135, Paper No. 7 at 7
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`(P.T.A.B. May 16, 2017) (“[Patent Owner’s litigation position] does not shed
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`useful light on the legally operative meaning of the claim language, we therefore
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`accord it little weight.”); see also IPR2017-00946, Paper No. 38 at 12 (P.T.A.B.
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`July 10, 2018). The Board should likewise reject Petitioner’s argument here.
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`Ethicon’s ITC claim construction briefing also fails to support Petitioner’s
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`position for several reasons. Reply at 10-11. First, the particular statements cited
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`by Petitioner are irrelevant because they relate to the meaning of the term “sole
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`retraction motion,” which is not at issue here.5 Second, Ethicon’s position is not
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`inconsistent, as Petitioner contends. Reply at 10. Although claim 1 does not
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`exclude an instrument that has multiple independent retraction assemblies, it does
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`exclude an instrument that comprises a retraction system that includes a retraction
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`spring or other force generating member that places a drag on the firing system.
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`See Section II supra. Shelton II/Swayze discloses the type of retraction system
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`that falls outside the scope of the claims.
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`2.
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`Shelton II/Swayze Do Not Disclose Using the Instrument if
`the Spring Disconnects
`Shelton II/Swayze describes that the retraction spring may disconnect after
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`the firing member is fully advanced. See, e.g., IS-1004 at [0144] (“In use, as
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`depicted in FIGS. 44-45, the combination tension/compression spring 1184 may
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`become disconnected with the linked rack distally positioned.”). It is undisputed
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`that in this situation, the retraction spring would have placed a drag on the firing
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`system before disconnecting. See Ex. 2019C, ¶ 89. This disclosure is thus outside
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`the scope of claim 1. Id.
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`5 Both parties agree that “sole retraction motion” is explicitly defined in the
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`specification. See Petition at 37.
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`Petitioner, however, contends that this disclosure satisfies claims 1 and 3
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`because a clinician would purportedly continue to fire the instrument in Shelton
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`II/Swayze with the spring detached. Reply at 10-12. But Shelton II/Swayze does
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`not describe this scenario. Instead, Petitioner and Dr. Knodel refer to a different
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`reference (IS-1023) to support their “multi-fire” argument. Reply at 11 (citing IS-
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`1023). Dr. Knodel admitted, however, that IS-1023 discloses a “significantly
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`different” instrument architecture than Shelton II. Ex. 2020 at 13:21-14:13.
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`Moreover, IS-1023 does not teach that the user could or would continue firing the
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`instrument after a retraction spring disconnects. As Dr. Awtar explained,
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`disconnection of the spring would clearly be a malfunction, and would cause the
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`user to cease using the instrument immediately. IS-1015 at 69:8-70:17.
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`Broadcom therefore does not support Petitioner’s anticipation argument.
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`Reply at 11-12. The device at issue there infringed because it met the claim
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`limitations in some situations. Broadcom Corp. v. Emulex Corp., 732 F.3d 1325,
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`1333 (Fed. Cir. 2013). In contrast, Shelton II/Swayze does not meet the claim
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`limitations sometimes because there is no teaching that the user would continue
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`operating the instrument without the retraction spring placing a drag on the firing
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`system. The speculation of Petitioner’s expert on this issue is insufficient to
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`demonstrate anticipation.
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`D. Ground 3 Based on Shelton I is Moot
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`Petitioner asserted that Shelton I anticipates based only on a non-§ 112(6)
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`construction of retraction assembly. Petition at 57; Reply at 12; IS-1003, ¶ 131.
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`Because Ethicon agrees that retraction assembly should be construed under §
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`112(6), Ground 3 based on Shelton I is now moot.
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`IV. SHELTON II/SWAYZE DO NOT RENDER CLAIMS 1 AND 3
`OBVIOUS
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` Moreover, Petitioner has failed to demonstrate
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`that a POSITA would have been motivated to remove the retraction spring from
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`Shelton II/Swayze. As explained above, Paragraphs [0152] and [0154] of Shelton
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`II do not describe or otherwise suggest removal of the retraction spring.
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`Petitioner’s remaining obviousness rationales also fall short.
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`A.
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`Force to Fire Would Not Have Motivated a POSITA to Remove
`the Retraction Spring
`Petitioner has failed to remedy the evidentiary deficiencies in its “firing
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`force” argument. Reply at 13-14. Shelton II/Swayze describes that its instrument
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`includes a retraction spring without requiring significant force to fire. See, e.g., IS-
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`1004 at [0010], [0066]; IS-1005 at [0013]. Accordingly, a POSITA would not
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`have recognized a problem with force to fire in Shelton II/Swayze’s instrument, a
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`fact that Petitioner does not dispute. Reply at 13-14. This is fatal to Petitioner’s
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`obviousness argument. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
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`F.3d 1314, 1326 (Fed.Cir.2009) (“An inference of nonobviousness is especially
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`strong where the prior art’s teachings undermine the very reason being proffered as
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`to why a person of ordinary skill would have combined the known elements.”).
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`Petitioner has at most demonstrated that there is some unquantified
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`correlation between the use of a retraction spring and increased force to fire. Ex.
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`2018 at 61:7-10 (Dr. Knodel admitting that he does not know how much a
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`retraction spring would increase force to fire). But this correlation alone is
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`insufficient to demonstrate that one would have been motivated to remove the
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`retraction spring in light of the evidence to the contrary. As described above,
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`Shelton II/Swayze explicitly states that the disclosed instrument has no force to fire
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`problem. Further, Dr. Knodel has admitted that the use of retraction springs was
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`“deeply rooted in the conventional wisdom of endoscopic surgical staplers.” IS-
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`1029, ¶ 15; Ex. 2018 at 9:6-22, 14:3-21, 17:11-18:5, 55:13-57:1. The evidence of
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`record thus demonstrates that although a retraction spring would increase force to
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`fire by some amount, a POSITA would not have viewed this correlation as a
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`deterrent to incorporating a spring, let alone a basis for removing a retraction
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`spring from Shelton II/Swayze’s device.
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`6 Dr. Knodel cites IS-1024 and IS-1025 as describing that force to fire was a
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`known design consideration. IS-1029, ¶¶ 26-27. Dr. Knodel admitted that these
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`references describe powering the instrument to reduce force to fire. Ex. 2020 at
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`14:16-16:20, 23:17-24:17. Thus, they do not demonstrate that force to fire would
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`have motivated a POSITA to remove a retraction spring.
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`B.
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`Parts Count and Cost Would Not Have Motivated a POSITA to
`Remove the Retraction Spring
`Petitioner maintains that a POSITA would have viewed the retraction spring
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`as an optional component that could be removed to reduce parts and cost because it
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`does not automatically retract the firing member every time. Reply at 14-16. This
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`purported motivation is clearly inconsistent with the teachings of Shelton
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`II/Swayze, which describes the retraction spring as a significant feature of the
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`invention. See, e.g., IS-1004 at [0014] (“In one aspect of the invention…[a]
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`retraction spring biases the firing member proximally away from the shaft to assist
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`in retraction.”).
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`Indeed, Petitioner’s argument misapprehends the purpose of the retraction
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`spring. Shelton II/Swayze explicitly describes that the spring is significant because
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`it assists in retraction. See, e.g., Ex. 1004 at [0014] (“In one aspect of the
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`invention…[a] retraction spring biases the firing member proximally away from
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`the shaft to assist in retraction”). Both experts agree that this assistance includes
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`(1) automatic retraction and/or (2) assisting with manual retraction. Ex. 2019C, ¶
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`52; Ex. 1029, ¶ 29. Shelton II/Swayze accordingly teaches that the retraction
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`spring is significant even though it does not automatically retract the firing
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`member every time. A POSITA would not interpret Shelton II/Swayze otherwise.
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`Ex. 2019C, ¶¶ 52-53.
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`There is also no factual basis to support Petitioner’s assertion that a POSITA
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`would have viewed the retraction spring and a manual retraction assembly as
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`redundant.8 Reply at 16. It is undisputed that the retraction spring automatically
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`retracts the firing member and/or provides force to assist in manual retraction. Ex.
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`2019C, ¶¶ 107-108. This functionality would clearly be lost if the spring were
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`removed. Id.
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`It cannot reasonably be disputed that Shelton II/Swayze describes that the
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`retraction spring is a significant feature that provides unique functionality. Ex.
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`2019C, ¶¶ 106-108. Accordingly, a POSITA would not have been motivated to
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`remove the spring to reduce parts count and cost. Id.
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`C. Conventional Wisdom Confirms that the Claims are Non-Obvious
`Petitioner asserts that conventional wisdom would have led a POSITA
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`toward the removal of the spring. Reply at 18. This is incorrect. Numerous prior
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`art references utilized a spring to retract an I-beam firing member, including
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`Shelton II and Swayze. See also IS-1023; Ex. 2020 at 12:19-13:6. Moreover, Dr.
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`8 Petitioner’s assertion that a POSITA “would have viewed automatic retraction as
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`optional and manual retraction as mandatory” is unsupported. Reply at 16. Dr.
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`Knodel confirmed that there were prior art instruments with no manual retraction
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`mechanism at all. Ex. 2020 at 22:19-23:16, 27:7-11.
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`Knodel agreed that the use of automatic retraction springs in surgical staplers was
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`“deeply rooted in the conventional wisdom.” Ex. 1029, 11 15. The clear import of
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`Dr. Knodel’s admission is that a POSITA would have considered any increase in
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`firing force associated with a retraction spring to be acceptable. Accordingly, there
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`would have been no motivation to remove a retraction spring that was already
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`included in an instrument (e.g., Shelton II/Swayze). Ex. 2019C, 11 104. The
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`conventional wisdom confirms the non—obviousncss of the 749 Patent.
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`testimony.”). But NTP does not support Petitioner’s argument. There, the Federal
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`Circuit held only that the inventors could not rely on a document created after the
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`critical date to corroborate testimony regarding reduction to practice that allegedly
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`took place before the critical date. In re NTP, Inc., 654 F.3d 1279, 1292 (Fed. Cir.
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`2011). NTP does not prohibit reliance on documents created by the inventors,
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`which would clearly conflict with longstanding Federal Circuit precedent. Cooper
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`v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998) (“[T]o corroborate a reduction
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`to practice, it is not necessary to produce an actual over-the-shoulder observer.”).
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`Indeed, “all pertinent evidence” must be evaluated under a “rule of reason”
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`analysis to determine whether the inventor’s story regarding reduction to practice
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`is credible. Id. at 1331 (“[T]he law does not impose an impossible standard of
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`‘independence’ on corroborative evidence by requiring that every point of a
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`reduction to practice be corroborated by evidence having a source totally
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`independent of the inventor”)(citation omitted). This includes documentary and
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`physical evidence made contemporaneously with the inventive process, as well as
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`oral testimony of someone other than the named inventors. Sandt Tech., Ltd. v.
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`Resco Metal and Plastics Corp., 264 F.3d 1344, 1351 (Fed. Cir. 2003). Moreover,
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`corroboration may be based solely on circumstantial evidence. Cooper, 154 F.3d
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`at 1330 (“Although no direct evidence supported Goldfarb’s testimony…we agree
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`with the Board that circumstantial evidence provided sufficient corroboration.”).
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