Trials@uspto.gov
`571-272-7822
`
`Paper 45
`Date: October 1, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`v.
`ETHICON LLC,
`Patent Owner.
`
`IPR2019-00880
`Patent 7,490,749 B2
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Dismissing Petitioner’s Motion to Exclude
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 45
`Date: October 1, 2020
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`v.
`ETHICON LLC,
`Patent Owner.
`
`IPR2019-00880
`Patent 7,490,749 B2
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Dismissing Petitioner’s Motion to Exclude
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`IPR2019-00880
`Patent 7,490,749 B2
`
`I.
`INTRODUCTION
`A. Background and Summary
`Intuitive Surgical, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting inter partes review of claims 1 and 3 of U.S. Patent No.
`7,490,749 B2 (Ex. 1001, “the ’749 patent”). Ethicon LLC (“Patent Owner”)
`did not file a Preliminary Response. We instituted an inter partes review on
`all claims and all grounds asserted in the Petition. See Paper 7 (“Dec. on
`Inst.”).
`After institution of trial, Patent Owner filed a Patent Owner Response.
`Paper 15 (“PO Resp.”).1 Petitioner filed a Reply. Paper 27 (“Pet. Reply”).2
`Patent Owner filed a Sur-Reply. Paper 32 (“Sur-Reply”).3 Petitioner filed a
`Motion to Exclude (Paper 364), to which Patent Owner filed an Opposition
`(Paper 395), and to which Petitioner filed a Reply (Paper 426).
`
`
`
`
`1 A confidential, unredacted version of the Patent Owner Response was filed
`as Paper 16.
`2 A confidential, unredacted version of the Petitioner’s Reply was filed as
`Paper 26.
`3 A confidential, unredacted version of the Patent Owner’s Sur-Reply was
`filed as Paper 31.
`4 A confidential, unredacted version of the Petitioner’s Motion to Exclude
`was filed as Paper 35.
`5 A confidential, unredacted version of the Patent Owner’s Opposition was
`filed as Paper 38.
`6 A confidential, unredacted version of the Petitioner’s Reply was filed as
`Paper 41.
`
`2
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`IPR2019-00880
`Patent 7,490,749 B2
`Both parties also seek to have portions of the record maintained under
`seal. Papers 17, 25, 34, 37, 40. Those Motions to Seal will be decided in
`due course via a separate Order or Orders.
`A hearing was held on July 9, 2020, and a transcript of the hearing is
`included in the record. See Paper 44 (“Tr.”).
`We have authority under 35 U.S.C. § 6. Petitioner bears the burden of
`proving unpatentability of the challenged claims, and the burden of
`persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner
`must prove unpatentability by a preponderance of the evidence. See
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This Final Written Decision is
`issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, we determine that Petitioner has
`shown by a preponderance of the evidence that claims 1 and 3 of the ’749
`patent are unpatentable.
`B. Real Parties in Interest
`Petitioner identifies itself as the only real party in interest. Pet. 1.
`Patent Owner identifies itself as a real party in interest. Paper 5, 2. Patent
`Owner indicates that it is “an indirect subsidiary of Johnson & Johnson.” Id.
`C. Related Matters
`The parties state that the ’749 patent is the subject of Civil Action No.
`1:18-cv-01325 filed August 27, 2018 in the U.S. District Court for the
`District of Delaware. Pet. 1; Paper 5, 2. Petitioner also states that it has
`filed other petitions for inter partes review of patents owned by Patent
`Owner and asserted against Petitioner in the District of Delaware. Id.
`
`3
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`IPR2019-00880
`Patent 7,490,749 B2
`D. The ’749 Patent
`The ’749 patent issued February 17, 2009 from an application filed
`March 28, 2007, and is titled “SURGICAL STAPLING AND CUTTING
`INSTRUMENT WITH MANUALLY RETRACTABLE FIRING
`MEMBER.” Ex. 1001, codes (45), (22), (54). The ’749 patent describes a
`surgical stapler that applies lines of staples to tissue and cuts the tissue
`between the staple lines, and that has manual retraction capabilities. Id. at
`1:17–24. Figure 1, reproduced below, depicts a surgical stapler according to
`the ’749 patent:
`
`
`Figure 1, reproduced above, depicts surgical stapling and severing
`instrument 10 comprising end effector 12 coupled to elongate shaft assembly
`18, which in turn is coupled to handle 20. Id. at 5:36–43. End effector 12
`comprises anvil 14 pivotally attached to elongate channel 16 to form
`opposing jaws for clamping tissue. Id. at 5:39–41. Closure tube 24 of shaft
`assembly 18 is coupled between closure trigger 26 and anvil 14. Id. at 5:60–
`
`4
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`IPR2019-00880
`Patent 7,490,749 B2
`61. Firing rod 327 is positioned for longitudinal movement and coupled
`between anvil 14 and multiple-stroke firing trigger 34. Id. at 6:6–9.
`In an endoscopic operation, a surgeon first inserts end effector 12 and
`shaft assembly 18 in the surgical site and positions the end effector around
`the tissue to be stapled and severed. The surgeon then depresses closure
`trigger 26 fully toward pistol grip 36 to move closure tube 24 distally to
`push anvil 14 pivotally toward elongate channel 16, thereby clamping the
`tissue between the anvil and elongate channel. Id. at 6:19–22, 7:20–23.
`The surgeon then fires the instrument. Id. at 6:26–30. Figures 7 and
`9, reproduced below, depict portions of the instrument’s firing mechanism:
`
`
`
`Figures 7 and 9, reproduced above, provide left and right views,
`respectively, of portions of linked transmission firing drive 150. Upper
`portion 204 of firing trigger 34 engages each of links 196a-d of linked rack
`200 (shown more clearly in Figures 8 and 10) during each firing stroke
`depression, incrementally advancing linked rack 200 distally. Id. at 10:19–
`43. Because firing rod 32 is attached to linked rack 200, it also advances
`
`
`7 The ’749 patent also refers to this structure as “firing bar 32.” See, e.g.,
`Ex. 1001, 12:11, 56–57.
`
`5
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`IPR2019-00880
`Patent 7,490,749 B2
`distally, causing a wedge-shaped sled and cutting blade to simultaneously
`staple and cut the tissue. Id. at 6:26–35, 7:24–8:18.
`Instrument 10 also comprises a manual retraction system that allows
`the surgeon to retract firing rod 32 after the firing operation. The manual
`retraction system is depicted in Figures 16 and 17, reproduced below:
`
`
`Figures 16 and 17, reproduced above, depict retraction assembly 500.
`Id. at 12:9–10. First gear 220 meshes with toothed upper surface 222 of
`linked rack 200. Id. at 12:16–18. First gear 220 also engages second gear
`230, which is attached to smaller right-side ratchet gear 231. Ratchet gear
`231 fits into handle 42 and engages with pawl 516, which is fitted into upper
`recess 512 of the handle. Id. at 12:37–45.
`After the firing sequence has been completed, the surgeon can retract
`firing rod 32 by sequentially depressing and releasing manual retraction
`lever 42. Id. at 12:55–59. When handle 42 is depressed, pawl 516 drives
`ratchet gear 231, and thus second gear 230, clockwise when viewed from the
`left. Id. at 12:59–64. This drives first gear 220 counterclockwise, which
`moves linked rack 200 and firing rod 32 longitudinally in the proximal
`direction until it is fully retracted. Id. at 12:64–13:6. Retraction assembly
`500 generates a “sole” retraction motion because it is “configured to enable
`the surgeon to manually retract the firing bar 32 without any other assistance
`
`6
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`IPR2019-00880
`Patent 7,490,749 B2
`from springs or other retraction arrangements that serve to place a drag on
`the firing system and which ultimately require the generation of higher firing
`forces to actuate the firing mechanism.” Id. at 12:9–15, 16:23–28.
`E. Illustrative Claim
`Petitioner challenges claims 1 and 3 of the ’749 patent. Claim 1 is
`independent and claim 3 depends from claim 1. Claim 1 is illustrative of the
`challenged claims and is reproduced below:
`1. A surgical instrument, comprising:
`a handle assembly;
`an end effector for performing a surgical operation, said
`end effector operably coupled to said handle assembly and
`operably supporting a firing member that is movable from a
`retracted position to a fired position in response to a longitudinal
`firing motion applied thereto;
`a firing drive supported by said handle assembly and
`configured to selectively generate said longitudinal firing motion
`upon actuation of a firing trigger operably coupled to said handle
`assembly; and
`a retraction assembly supported by said handle assembly
`and interfacing with said firing drive such that manual actuation
`of said retraction assembly causes said firing drive to generate a
`sole retraction motion which is communicated to said firing
`member to cause said firing member to move from said fired
`position to said retracted position.
`Ex. 1001, 17:27–44.
`F. Prior Art References and Testimonial Evidence
`Petitioner relies on the following references for its challenges:
`Name
`Description
`Date
`Exhibit
`Shelton
`U.S. Patent App. Pub. No. 2006/0175375
`Aug. 10,
`II
`A1
`2006
`Swayze U.S. Patent App. Pub. No. 2005/0178813
`Aug. 18,
`A1
`2005
`
`1004
`
`1005
`
`7
`
`
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`IPR2019-00880
`Patent 7,490,749 B2
`
`Name
`
`Description
`
`Exhibit
`
`1006
`
`Date
`Dec. 4,
`2012
`The parties have also provided witness testimony. The table below
`lists the witnesses, their roles in this proceeding, and the exhibits in which
`their testimony is presented:
`
`Shelton I U.S. Patent No. 8,322,455 B2
`
`Witness
`Dr. Bryan
`Knodel
`
`Role
`Petitioner’s
`technical expert8
`
`Mr.
`Christopher
`Schall
`
`Patent Owner’s
`fact witness9
`
`Mr. Chad
`Boudreaux
`
`Patent Owner’s
`fact witness10
`
`Exhibits
`Ex. 1003 (declaration of Mar. 25, 2019)
`Ex. 2018 (transcript of deposition of Dec.
`13, 2019)
`Ex. 1029 (supplemental declaration of
`Apr. 16, 2020)
`Ex. 2020 (transcript of deposition of May
`14, 2020)
`
`Ex. 2008 (declaration of Jan. 10, 2020)
`
`Ex. 2009 (declaration of Jan. 14, 2020)
`
`
`8 See Ex. 1003 ¶ 1 (“I have been engaged as an expert . . . on behalf of
`Intuitive Surgical, Inc. . . .”).
`9 See, e.g., Ex. 2008 ¶ 1 (“I am currently employed by and being
`compensated by Ethicon Endo-Surgery Inc. (an affiliate of Patent Owner).”);
`id. ¶ 2 (“I am currently a Research and Development Project Director at
`Ethicon. . . .”).
`10 See, e.g., Ex. 2009 ¶ 1 (“I am currently employed by and being
`compensated by Ethicon Endo-Surgery Inc. (an affiliate of Patent Owner).”);
`id. ¶ 2 (“I am currently a Staff Design Engineer at Ethicon.”).
`
`8
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`IPR2019-00880
`Patent 7,490,749 B2
`
`Witness
`Mr. Dean
`Garner
`
`Mr.
`Geoffrey
`Hueil
`
`Dr. Shorya
`Awtar.
`
`Role
`Patent Owner’s
`fact witness11
`
`Patent Owner’s
`fact witness12
`
`Exhibits
`Ex. 2012 (declaration of Jan. 13, 2020)
`
`Ex. 2017 (declaration of Jan. 9, 2020)
`
`Patent Owner’s
`technical
`expert13
`
`Ex. 2019 (declaration of Jan. 13, 2020)14
`Ex. 1015 (transcript of deposition of Apr.
`7, 2020)
`
`Reference(s)/Basis
`Shelton II
`
`G. Instituted Grounds of Unpatentability
`Petitioner asserts that claims 1 and 3 are unpatentable on the
`following grounds:15
`Claim(s) Challenged 35 U.S.C. §
`1, 3
`102/10316
`
`11 See, e.g., Ex. 2012 ¶ 1 (“I am currently employed by and being
`compensated by Johnson & Johnson Services, Inc. (an affiliate of Patent
`Owner).”); id. ¶ 2 (“I am currently the Assistant General Counsel – Patents
`at Johnson & Johnson.”).
`12 See, e.g., Ex. 2017 ¶ 1 (“I am currently employed by and being
`compensated by Ethicon Endo-Surgery Inc. (an affiliate of Patent Owner).”);
`id. ¶ 2 (“I am currently an Engineering Fellow at Ethicon.”).
`13 See Ex. 2019 ¶ 1 (“I have been retained by . . . Patent Owner Ethicon LLC
`(‘Ethicon’) . . . to . . . prepare expert declarations.”).
`14 A public, redacted version of Dr. Awtar’s declaration was also filed as
`Exhibit 2019.
`15 Because the ’749 patent issued from an application that claims priority to
`a date before the effective dates of the amendments to the Patent Statute
`enacted by the Leahy-Smith America Invents Act (AIA), we apply the pre-
`AIA version of the statute. See Leahy-Smith America Invents Act (AIA),
`Pub. L. No. 112–29, §§ 3(n)(1), 4(e), 125 Stat. 284, 293, 297 (2011).
`16 Patent Owner asserts that Shelton II is only prior art under 35 U.S.C.
`§ 102(e), and as such, it “is not available for obviousness pursuant to 35
`U.S.C. § 103(c)(1).” PO Resp. 4, 64. We need not resolve this issue
`
`9
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`IPR2019-00880
`Patent 7,490,749 B2
`Claim(s) Challenged 35 U.S.C. §
`1, 3
`102/103
`1, 3
`10218
`See Pet. 3.
`
`Reference(s)/Basis
`Swayze17
`Shelton I
`
`II. LEVEL OF ORDINARY SKILL IN THE ART
`In our Decision on Institution, we adopted Petitioner’s proposal that
`an ordinarily skilled artisan at the time of the invention of the ’749 patent
`“would have had the equivalent of a Bachelor’s degree or higher in
`mechanical engineering, or a related field directed towards medical
`mechanical systems, and at least 3 years working experience in research and
`development for surgical instruments.” Dec. on Inst. 7 (quoting Pet. 23).
`Patent Owner has not proposed a definition of a person of ordinary
`skill in the art, but instead “adopts and applies” Petitioner’s definition. PO
`Resp. 25 (citing Ex. 2019 ¶ 6).
`Accordingly, we adopt Petitioner’s definition, which is consistent with
`the level of skill reflected in the ’749 patent and the prior art. See Okajima
`v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can
`reflect appropriate level of ordinary skill in art).
`
`
`because, as discussed infra, we find that Shelton II anticipates the challenged
`claims.
`17 According to Patent Owner, “Swayze discloses an identical surgical
`instrument as Shelton II.” PO Resp. 5.
`18 Patent Owner asserts that Shelton I does not qualify as prior art because
`“Shelton I was filed June 27, 2006 ([Ex.] 1006 at 1), while the named
`inventors of the 749 Patent reduced to practice the claimed invention by the
`end of May 2006.” PO Resp. 5, 81. We need not resolve whether Shelton I
`qualifies as prior art because, as discussed infra, we find that Shelton II
`anticipates the challenged claims.
`
`10
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`IPR2019-00880
`Patent 7,490,749 B2
`
`III. CLAIM CONSTRUCTION
`We construe the claims “using the same claim construction standard
`that would be used to construe the claim in a civil action under 35 U.S.C.
`[§] 282(b), including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of ordinary skill
`in the art and the prosecution history pertaining to the patent.” 37 C.F.R.
`§ 42.100(b) (2018); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
`(Fed. Cir. 2005). Any special definitions for claim terms must be set forth in
`the Specification with reasonable clarity, deliberateness, and precision. See
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner asserts that claim terms “should generally be given their
`plain and ordinary meaning consistent with the ’749 Patent’s
`[S]pecification.” Pet. 15. Petitioner proposes construction for the term “sole
`retraction motion,” and further asserts that four claim terms require
`construction under 35 U.S.C. § 112, paragraph 619: “firing member,”
`“retraction assembly,” “firing drive,” and “closure drive.” Id. at 15–24.
`Patent Owner disagrees with Petitioner’s proposed constructions and
`proposes its own constructions for each of the terms. PO Resp. 15–24.20
`In our Decision on Institution, “we determine[d] that no express
`construction [was] required for any claim term.” Dec. on Inst. 8–9 (citing
`
`
`19 Because the ’749 patent issued from an application that claims priority to
`a date before the effective dates of the amendments to the Patent Statute
`enacted by the Leahy-Smith America Invents Act (AIA), we apply the pre-
`AIA version of the statute. See Leahy-Smith America Invents Act (AIA),
`Pub. L. No. 112–29, §§ 3(n)(1), 4(e), 125 Stat. 284, 293, 297 (2011).
`20 In its Sur-Reply, Patent Owner “agrees that ‘retraction assembly’ should
`be construed under § 112(6),” but argues that “Petitioner’s proposed
`structure is overly narrow.” PO Sur-Reply 3.
`
`11
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`IPR2019-00880
`Patent 7,490,749 B2
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999)). On the full record now before us, we also determine it is not
`necessary to construe any claim term expressly to resolve the parties’
`dispute. See id. (“only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”);
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes
`review).
`
`IV. GROUNDS OF UNPATENTABILITY
`A. Ground 1: Claims 1 and 3 – Anticipated by Shelton II
`Petitioner asserts that claims 1 and 3 are anticipated by Shelton II.
`Pet. 24–50 (citing Exs. 1001, 1003, 1004).
`1. Overview of Shelton II
`Shelton II describes a surgical stapling and cutting instrument that
`may be equipped with a manual retraction mechanism. Ex. 1004 ¶¶ 2, 14.
`Figure 31 is reproduced below:
`
`
`Figure 31, reproduced above, depicts surgical stapling and severing
`instrument 1010 comprising staple applying apparatus 1012 coupled to
`
`12
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`IPR2019-00880
`Patent 7,490,749 B2
`elongate shaft 1018, which in turn is attached to handle 1020. Id. ¶ 125.
`Staple applying apparatus 1012 comprises anvil 1014 pivotally attached to
`elongate (staple) channel 1016. Id. Closure tube 1024 is coupled between
`closure trigger 1026 and anvil 1014. Id. ¶ 1027. Closure trigger 1026 may
`be depressed against pistol grip 1036 to move closure tube 1024 distally to
`push anvil 1014 pivotally toward elongate channel 1016. Id. ¶¶ 1026–1027.
`Multiple stroke firing trigger 1034 can then be depressed against the pistol
`grip, which moves linked rack 1200 distally to transfer a firing force to the
`staple applying apparatus via firing rod 1032. Id. ¶¶ 130, 132, Figs. 33–37.
`Figure 31 also depicts manual firing release lever 1042, which is part
`of a manual retraction mechanism. Figures 42 and 44, reproduced below,
`depict this mechanism:
`
`
`
`Figures 42 and 44, reproduced above, depict manual retraction
`mechanism 1500. Id. ¶ 142. Front idler gear 1220 engages a toothed upper,
`left surface 1222 of linked rack 1200 (shown in Figure 33). Id. Front idler
`gear 1220 also engages aft transmission gear 1230 having a smaller right-
`side ratchet gear 1231. Id. The smaller right-side ratchet gear 1231 extends
`into hub 1506 of manual retraction lever 1024. Id. ¶ 143. Locking pawl
`1516, located in upper recess 1512, is urged downward into engagement
`
`13
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`IPR2019-00880
`Patent 7,490,749 B2
`with ratchet gear 1231 by L-shaped spring tab 1522. Id.; see also id.,
`Fig. 43. As manual retraction lever 1042 is sequentially raised and lowered,
`locking pawl 1516 rotates clockwise and engages ratcheting gear 1231,
`rotating aft transmission gear 1230 clockwise. Id. ¶ 144. This causes
`forward idler gear 1220 to rotate counterclockwise, which retracts linked
`rack 1200. Id. Combination tension/compression spring 1184 also provides
`a retraction force. Id. ¶ 133. Manual retraction mechanism may operate
`without the assistance of a retraction spring, however. Id. ¶¶ 144, 154.
`2. Principles of Law
`a)
`Anticipation
`A prior art reference can only anticipate a claim if it discloses all the
`claimed limitations “arranged or combined in the same way as in the claim.”
`Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361
`(Fed. Cir. 2012) (quoting Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
`1359, 1370 (Fed. Cir. 2008)). “However, a reference can anticipate a claim
`even if it ‘d[oes] not expressly spell out’ all the limitations arranged or
`combined as in the claim, if a person of skill in the art, reading the reference,
`would ‘at once envisage’ the claimed arrangement or combination.”
`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
`Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)); see
`also Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1343 (Fed. Cir.
`2016) (distinguishing Net MoneyIN when the reference in question explicitly
`contemplated the combination of the disclosed functionalities).
`3. Petitioner’s Contentions
`In support of its contention that Shelton II anticipates claims 1 and 3
`of the ’749 patent, Petitioner discusses the teachings of Shelton II. See Pet.
`24–50. Petitioner provides a detailed assessment of the content of the prior
`
`14
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`IPR2019-00880
`Patent 7,490,749 B2
`art in advocating that all the features of claims 1 and 3 are shown therein.
`Id. Petitioner also supports that assessment with citation to the Declaration
`testimony of Dr. Knodel. Ex. 1003.
`For example, with respect to claim 1, Petitioner asserts that Shelton II
`discloses: (1) a handle assembly (Pet. 27–28 (citing Ex. 1004 ¶¶ 125–126,
`Figs. 31–37; Ex. 1003 ¶ 91)); (2) an end effector (Pet. 28–29 (citing Ex.
`1004 ¶¶ 76–82, 125–126, Figs. 2–6, 31–33; Ex. 1003 ¶¶ 92–94)); (3) the end
`effector supporting a firing member (Pet. 29–31 (citing Ex. 1004 ¶¶ 77–80,
`Figs. 2, 5, 6; Ex. 1003 ¶¶ 95–98)); (4) a firing drive (Pet. 31–35 (citing Ex.
`1004 ¶¶ 126, 128, 130–132, 138–142, Figs. 31–37, 39, 40; Ex. 1003 ¶¶ 99–
`104)); and (5) a manual retraction assembly that causes the firing drive to
`“generate a sole retraction motion” (Pet. 35–44 (citing Ex. 1004 ¶¶ 142–144,
`154, Figs. 33, 35, 40, 42–45; Ex. 1003 ¶¶ 105–112)). Petitioner similarly
`shows where it believes the subject matter of claim 3 resides in Shelton II.
`Pet. 44–50 (citing Ex. 1003 ¶¶ 113–122; Ex. 1004 ¶¶ 76–78, 84, 125–129,
`Figs. 2, 4, 6–8, 31–35).
`4. Patent Owner’s Contentions
`Patent Owner contends that Petitioner’s anticipation ground of
`unpatentability based on Shelton II is deficient. PO Resp. 3–4, 47–63; PO
`Sur-Reply 1–2, 6–14. Initially, Patent Owner asserts that Shelton II cannot
`anticipate the challenged claims because every embodiment in Shelton II
`includes a retraction system that incorporates “a spring or other force
`generating member that acts to place a drag on the firing drive.” PO Resp.
`3, 48–52. Patent Owner further argues that Petitioner’s theory that one of
`ordinary skill in the art “would have immediately envisioned removing
`Shelton II’s retraction spring” is incorrect because
`
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`Patent 7,490,749 B2
`it would significantly alter how the user operates the device.
`Moreover, removing Shelton II’s retraction spring would cause
`the firing drive to bind during retraction in certain conditions,
`thus preventing full retraction of the firing member. Finally,
`such a modification would have defied the conventional wisdom
`in the art, which was to include a spring to retract the firing
`member.
`PO Resp. 4, 47–52, 56–63; PO Sur-Reply 6–11.
`5. Discussion
`We have reviewed the Petition, Patent Owner Response, Petitioner
`Reply, Patent Owner Sur-Reply, as well as the relevant evidence discussed
`in those papers and other record papers, and as discussed in greater detail
`below, we determine that Petitioner has made the requisite showing
`regarding claims 1 and 3.
`Patent Owner argues that Shelton II does not anticipate independent
`claim 1 because a person of ordinary skill “would not immediately envision
`removing the retraction spring from Shelton II.” PO Sur-Reply 1; see also
`id. at 6–9 (citing Ex. 1004 ¶¶ 7, 9, 66, 107, 149–154; Ex. 2019C ¶ 92; Ex.
`2020, 40:14–41:17, 40:9–10). According to Patent Owner, paragraph 154 of
`Shelton II does not describe removing Shelton II’s retraction spring (PO Sur-
`Reply 6 (citing Ex. 1004 ¶ 154)), but instead, “states only that the manual
`retraction mechanism can be used without assistance of the spring.” Id. at 7.
`We are not persuaded by Patent Owner’s argument.
`Instead, we agree with Petitioner that “Shelton II invites removal of
`the retraction spring from the surgical instrument of its illustrated
`embodiments” (Pet. Reply 1–2 (citing Pet. 37; Ex. 1003 ¶¶ 57–52; Ex. 1004
`¶ 154)), and as such, “a POSITA would have immediately envisioned a
`configuration of Shelton II’s surgical instrument 1010 lacking the
`tension/compression spring 1184 and relying solely on the manual retraction
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`assembly.” Pet. Reply 2 (citing Pet. 37–38). Here, we credit Dr. Knodel’s
`testimony that,
`a person of ordinary skill would have interpreted Shelton II’s
`reference at ¶0154 to “a manual retraction mechanism . . . [that]
`may be utilized without the assistance of a retraction spring” as
`indicating complete removal of tension/compression spring 1184
`from the surgical instrument design. Otherwise, this discussion
`of additional embodiments at the end of Shelton II would have
`been redundant to the earlier description at ¶0144 where
`tension/compression spring 1184 is installed but “disconnected.”
`Further still, Shelton II makes clear at ¶0154 that other aspects
`of the previously-described retraction mechanism would remain
`the same (i.e., “consistent”), meaning that tension/compression
`spring 1184 would not be replaced by a different type of force
`generating component.
`Ex. 1003 ¶ 60. That is, Dr. Knodel understands paragraph 154 of Shelton II
`“as indicating complete removal of tension/compression spring 1184 from
`the surgical instrument design” (id.), as opposed to simply allowing manual
`retraction to be performed without its assistance. And, given the overall
`disclosure of Shelton II, we credit Dr. Knodel’s testimony that one of
`ordinary skill in the art would have appreciated that “configuration of
`Shelton II’s surgical instrument 1010—without tension/compression spring
`1184 (and all of its associated components) and relying solely upon the
`above-discussed manual retraction assembly components to retract the E-
`beam firing member—would have been readily visualized by the ordinarily
`skilled person.” Id. ¶ 62.
`Relying on its expert Dr. Awtar, Patent Owner argues that “Paragraph
`[0154] corresponds to Paragraph [0144], which describes that the manual
`retraction mechanism can be used if the retraction spring disconnects (i.e.,
`without assistance of the spring).” PO Sur-Reply 7 (citing Ex. 2019C ¶ 92).
`According to Patent Owner, Petitioner’s expert, “Dr. Knodel[,] admitted in
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`Patent 7,490,749 B2
`his deposition that Paragraph [0154] does not describe removal of the
`retraction spring, but instead refers to Paragraph [0144].” PO Sur-Reply 7–8
`(quoting Ex. 2020, 40:14–41:17, 40:9–10). We do not agree.
`Initially, we disagree with Patent Owner and Dr. Awtar that paragraph
`154 of Shelton II simply corresponds to the disclosure in paragraph 144 of
`Shelton II, which discloses manual retraction in a scenario where
`tension/compression spring 1184 becomes disconnected. PO Sur-Reply 7–9;
`Ex. 1004 ¶¶ 144, 154. Instead, we agree with Petitioner that one of ordinary
`skill in the art would have understood paragraph 154 of Shelton II as
`“identifying a modification of Shelton II’s prior illustrated embodiments.”
`Pet. Reply 3 (citing Ex. 1029 ¶ 7). And, given the overall disclosure of
`Shelton II, we credit Dr. Knodel’s testimony that one of ordinary skill in the
`art would have appreciated that
`when Paragraph [0154] says “a manual retraction mechanism
`consistent with aspects of the invention may be utilized without
`the assistance of a retraction spring,” the logical way to interpret
`this is that the same devices shown and discussed throughout the
`specification can be provided “without” the retraction spring.
`Again, it would not make sense to read this statement as
`referencing a scenario where the retraction spring becomes
`disconnected, as this was already described at Paragraph [0144]
`and illustrated at Figure 44.
`Ex. 1029 ¶ 8; see also id. ¶ 7 (“Each paragraph following Paragraph [0148]
`describes something additional—an embodiment modified from those
`illustrated in Shelton II’s figures and described in the preceding sections of
`the [S]pecification.”). Consequently, we are not persuaded by Patent
`Owner’s assertion that Shelton II cannot anticipate the challenged claims
`because every embodiment in Shelton II includes a retraction system that
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`IPR2019-00880
`Patent 7,490,749 B2
`incorporates “a spring or other force generating member that acts to place a
`drag on the firing drive.” PO Resp. 3, 48–52.
`We also disagree with Patent Owner that “Dr. Knodel admitted in his
`deposition that Paragraph [0154] does not describe removal of the retraction
`spring, but instead refers to Paragraph [0144].” Instead, we find Patent
`Owner’s argument mischaracterizes and improperly paraphrases Dr.
`Knodel’s deposition testimony. See, e.g., Ex. 2020, 39:3–41:17. Here, the
`portion of Dr. Knodel’s deposition testimony relied on by Patent Owner is in
`response to Patent Owner’s counsel asking Dr. Knodel if he “believe[s] that
`paragraph 154 is teaching a person of ordinary skill to remove the retraction
`spring from the embodiments disclosed in Shelton II.” Ex. 2020, 39:3–6.
`However, under anticipation the issue is not whether paragraph 154 of
`Shelton II would teach or suggest one “of ordinary skill in the art to remove
`the retraction spring from the embodiments disclosed in Shelton II”; but
`rather, whether
`a POSITA would have immediately envisioned a configuration
`of Shelton
`II’s surgical
`instrument 1010
`lacking
`the
`tension/compression spring 1184 and relying solely on the
`manual retraction assembly. Pet., 37-38; Kennametal, Inc. v.
`Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381-83 (Fed. Cir.
`2015) (“[A] reference can anticipate a claim . . . if a person of
`skill in the art, reading the reference, would at once envisage the
`claimed arrangement or combination.”).
`Pet. Reply 2. Consistent with this understanding, Dr. Knodel states that
`paragraph “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.” Ex. 2020, 40:17–22. Thus, we credit Dr. Knodel’s deposition
`testimony for the proposition that Shelton II discloses “manual retraction
`with or without the assistance of a retraction spring” (id. at 38:18–21), but
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`“[i]n the case of without the assistance of a retraction spring, then the
`retraction spring is not there.” Id. at 38:21–39:1; see also id. at 54:1–6
`(“[W]hat I’m saying in this deposition right now and what I said in my
`previous declaration is that the instrument could work without the tension
`compression spring 184 for performing the manual retraction function.”).
`We also are not persuaded by Patent Owner’s argument that “there are
`numerous reasons why [a] POSITA would not have interpreted Paragraph
`[0154] in the manner proposed by Dr. Knodel” (PO Resp. 58 (citing Ex.
`2019 ¶¶ 91–102)), and as such, one of ordinary skill would not immediately
`envision removing the retraction spring from Shelton II.
`Patent Owner first argues that one of ordinary skill in the art would
`not “immediately envision” removing Shelton II’s retraction spring because
`“Shelton II repeatedly describes advantages of including the spring and
`accordingly incorporates it into each embodiment.” PO Resp. 58 (citing Ex.
`1004 ¶ 14; Ex. 2019 ¶ 93). However, we agree with Petitioner that Shelton
`II teaches that automatic retraction is optional. Pet. Reply 3 (citing Ex. 1004
`¶ 152; Ex. 1029 ¶ 9).21 Here, we credit Dr. Knodel’s testimony that
`[p]aragraph [0152] of Shelton II makes clear that the retraction
`spring
`is “desirable” but “a manual retraction may be
`incorporated without this feature.” From the perspective of an
`ordinarily skilled person, this means the retraction spring is
`optional. When paired with Paragraph [0154]’s further statement
`
`21 Patent Owner argues that Petitioner’s reliance on previously unrelied upon
`paragraph 152 of Shelton II “is improper, and should not be considered.”
`PO Sur-Reply 9 (citing Ariosa Diagnostics Inc. v. Verinata Health, Inc., 805
`F.3d 1359,
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