UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of
`
`
`
`
`CERTAIN RELOAD CARTRIDGES FOR
`LAPAROSCOPIC SURGICAL STAPLERS
`
`
`Inv. No. 337-TA-1167
`
`ORDER15: CONSTRUING THE TERMSOF THE ASSERTED CLAIMS OF
`THE PATENTSAT ISSUE
`
`(January 7, 2020)
`
`Ethicon Exhibit 2016.001
`Intuitive v. Ethicon
`IPR2019-00880
`
`Ethicon Exhibit 2016.001
`Intuitive v. Ethicon
`IPR2019-00880
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`I.
`
`INTRODUCTION. 0... cccscccesscseessseceeeecsseceeececeseseseceaeeasenenesenanacessaceseaesaesaseneeseeesseaaeeteens -1-
`
`IN GENERAL... eecceceseeceseseessecesensesensessoeecenesesesaeseeaeeeesassacacseeneseessreseessaneeressessaesereriees -l-
`
`
`
`TT.=«=9§RELEVANT LAWooo. ceeceeececceeseceecacesececencaceneedacesesacscneceeseeeenessesessacseseesevsseseseeseea -1-
`
`TV.
`
`Vv.
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`LEVEL OF ORDINARYSKILL IN THE ART ooo. eeeessecesseseneesesetseeeeeeeserseseeenenee -4-
`
`THE ASSERTED PATENTS.......cccsscsssssoseseseeseceneesseeseearsecsncevonssersasrecsasesesseveeeserseeenses -5-
`
`The 749 Patent ..00.......cccccccccccecsesscsseeeceseeeeeenseesacesceceeseseeeeneseneeseseeesecesesasssaseeseneesassaveeaees -5-
`
`The 969 Patent ..0......c.ccccccccssssseesesseseceseeseeeeneaesasaeeaeseessaeesoaasssessesassnsenoaeensessnonsonseseeseeones -6-
`
`The 7874 Patent ..........ececccscsesssreesecccesecseseceneeteesssseceeeesseeseessessesessasssseesessscnssssssecseraeeeees -7-
`
`The 7369 Patent ..........ccccsccsssssensesessesecececeeenessesassenesseneasaseasnecaceaussssesasaeaesassassusssensanoaeas -7-
`
`The 7379 Patent ........cc.ccsssscsesssssssesecsscsseessescssassavneeessessasseoneeseensenssesessneussrssreneusenseeenrasees -8-
`
`VI.
`
`CLAIM CONSTRUCTION..... ce ccccececssececeeeececenseeeecesseacseeseesessssesersesesiseeesnasessaseasaeeaes - 10-
`
`A. Agreed-Upon Constructions.0....ccccccccscessssssessesscsecsssectecarsersesesnsseereneneeseseessssesereenans - 10-
`B. Disputed Constructions... .ccecccceeceseeecssesececeesseesersesearsssereusacsssesessesessasseesssesensnesere -10-
`
`1. The °749 Patent 0.0.0... ccccsceseseeceseceeceneeeeeeeceseeeeedesesensssassseausesansesaesessusnenseansasnaeaseneane -10-
`
`a.
`
`b.
`c.
`d.
`e.
`
`“manual actuation of said retraction assembly causes said firing drive to
`generate a sole retraction motion ...” and “sole retraction motion”’............00+ -10-
`“handle assembly” oo... cece cece eeceseeseceeeceneseeesessesseseeseeassessnensaseneaeaasaeeeseesaneees -14-
`“FITING MOTION”«0... ee eeeceteteeseteeeeeeeeecnseeceeeeeesssenscassssesseeesseseseneessaseseaseeessteesnness - 16-
`“Firing Arive”’ oe ceeceesceecesseneereessceseesessessacsneesensscsecsuceeeeessenessseeseeseneeneseetensenee es -17-
`“retraction aSSEMD]y” 0.0... cece eeceseeseeeecnectseeeeessvesesassseesusessessneesesesesesssestaneanee se -21 -
`i,
`FUNCTION 0.00... eceeceseececenceseesetsecenenerenerseessones“eceneecesetsesceteaceceseeserecsecsaeeeeats -24-
`
`ii.
`
`SUIUCHUIe oo. eee cee cesceeeceseeeececesnsecensessensueessassesasesseneasosessensonsesassessseaeoesees - 25 -
`
`2. The °969 Patent ..........ccescceccssscstecsereesseeersececeseseeencereecnscesssesesnsassssasessesseeeessnesentarsagens -27-
`
`a.
`
`“tool mounting portion operably coupled to a proximal end of said proximal
`SPINE POTION”... eeeeeeescesecseeseeerseeetsecaceeceeesessssassassnsessesessusecansecesesesaeeeesteneses -27-
`3. The 874 Patent .0.......ccccccsessssesesenesenereeserecenecseceserenceseerencerdsonsessessssnsensesnesassessnseseeenes - 28 -
`
`a.
`
`“motion converter configured to convert a rotary drive motion produced by
`said motor to a linear drive MOtION” 0... tees eseeeereeeeeeeresecsenseseensteseneseoseees - 28 -
`
`4. The °369 Patent ..... cc eessssessestscesevsensssensessreecsssssressecssrssrecsrsentesssessenstsnsensscsssenssenaeees - 30-
`
`a.
`b.
`
`“First POSITION” ..........ccccceceesecctseecencsceneeseseetsesseetsseseceessererensessassssessesessnsesseesescnaeaes - 30-
`“firing MOTION”........c.ceecsseessesessesseseeeesesseseseesessecsesseeneereseeceeaseeneeaneesseeesseseeenesesey - 34-
`
`Ethicon Exhibit 2016.002
`Intuitive v. Ethicon
`IPR2019-00880
`
`Ethicon Exhibit 2016.002
`Intuitive v. Ethicon
`IPR2019-00880
`
`

`

`c.
`
`“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 ofa firing motion to the firing element”...eee eeeeeeeeee - 38-
`5. The °379 Patent ...........ccceccesssceseecesceeenceesececaaeessacesscesesoeeesacessasesseeeseeesnaeecaenseeeessaeessace - 43 -
`
`a.
`
`“unengaged with” / “not engaged with? 0... seecseseeseessseeeseeeseresetsesesasenensens - 43 -
`
`b.=“said first jaw is not held to said second jaw”...........ccccsseesesseccsessersteesreeseesseeeees - 46 -
`
`il
`
`Ethicon Exhibit 2016.003
`Intuitive v. Ethicon
`IPR2019-00880
`
`Ethicon Exhibit 2016.003
`Intuitive v. Ethicon
`IPR2019-00880
`
`

`

`I.
`
`INTRODUCTION
`
`This Investigation wasinstituted on July 5, 2019 to determine whether the importation into
`
`the United States, the sale for importation, and the sale within the United States after importation
`
`ofcertain reload cartridges for laparoscopic surgical staplers violates section 337 of the Tariff Act
`
`of 1930, as amended, dueto the infringement of U.S. Patent Nos. 7,490,749 (“the ’749 patent”);
`
`8,479,969 (“the ’969 patent”); 9,113,874 (“the °874 patent”)!; 9,844,369 (“the ’369 patent”); and
`
`9,844,379 (“the °379 patent”) (collectively, the “Asserted Patents”). See 84 Fed. Reg. 32,220-221.
`
`A Markmanhearing was held on October 29, 2019. After the hearing and pursuant to Order
`No.8, the parties submitted an updated Joint Claim Construction Chart.’
`
`I.
`
`IN GENERAL
`
`The claim terms construed in this Order are done so for the purposes of this section 337
`
`Investigation. Those terms not
`
`in dispute need not be construed. See Vanderlande Indus.
`
`Nederland BV v. Int’l] Trade Comm’n, 366 F.3d 1311, 1323 (Fed. Cir. 2004) (noting that the
`
`administrative law judge need only construe disputed claim terms).
`
`i.
`
`RELEVANT LAW
`
`“An infringement analysis entails two steps. The first step is determining the meaning and
`
`scope of the patent claims asserted to be infringed. The second step is comparing the properly
`
`' Ethicon and Intuitive have identified terms from claim 9 of the ’874 patent as requiring construction. See JC at 2, 4.
`However, the Notice of Investigation and the Amended Complaintboth list claim 19 as the sole asserted claim for the
`°874 patent. See 84 Fed. Reg. 32,221-222 (July 5, 2019); Am. Compl. at J 2. As the parties are well aware, the Notice
`of Investigation defines the scope ofthe investigation. See 19 C.F.R. § 210.10(b). To date, Ethicon has not moved to
`amend its Complaint or the Notice of Investigation to bring claim 9 within the scope of this Investigation. Forthis
`reason, the undersigned declines to consider any arguments related to claim 9.
`2 For convenience,the briefs and chart submitted by the parties are referred to hereafteras:
`
`CMIB
`Ethicon’s Initial Markman Brief
`CMRB
`Ethicon’s Reply Markman Brief
`RMIB
`Intuitive’s Initial Markman Brief
`RMRB
`Intuitive’s Reply Markman Brief
`JC
`Updated Joint Proposed Claim Construction Chart
`
`
`
`
`
`Ethicon Exhibit 2016.004
`Intuitive v. Ethicon
`IPR2019-00880
`
`Ethicon Exhibit 2016.004
`Intuitive v. Ethicon
`IPR2019-00880
`
`

`

`construed claims to the device accused ofinfringing.” Markman v. Westview Instruments, Inc., 52
`
`F.3d 967, 976 (Fed. Cir. 1995) (en banc) (internal citations omitted), aff'd, 517 U.S. 370 (1996).
`
`Claim construction is a “matter of law exclusively for the court.” Jd. at 970-71. “The construction
`
`of claimsis simply a way of elaborating the normally terse claim language in order to understand
`
`and explain, but not to change, the scope of the claims.” Embrex, Inc. v. Serv. Eng’g Corp., 216
`
`F.3d 1343, 1347 (Fed. Cir. 2000).
`
`Claim construction focuses on the intrinsic evidence, which consists of the claims
`
`themselves, the specification, and the prosecution history. See Phillips v. AWH Corp., 415 F.3d
`
`1303, 1314 (Fed. Cir. 2005) (en banc); see also Markman, 52 F.3d at 979. As the Federal Circuit
`
`in Phillips explained, courts must analyze each of these components to determine the “ordinary
`
`and customary meaning ofa claim term”as understood by a person of ordinary skill in the art at
`
`the time ofthe invention. 415 F.3d at 1313. “Such intrinsic evidenceis the most significant source
`
`of the legally operative meaning of disputed claim language.” Bell Atl. Network Servs., Inc. v.
`
`Covad Commce’ns Grp., Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001).
`
`“Tt is a ‘bedrock principle’ of patent law that ‘the claimsofa patent define the invention to
`
`which the patentee is entitled the right
`
`to exclude.” Phillips, 415 F.3d at 1312 (quoting
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
`
`2004)). “Quite apart from the written description and the prosecution history,
`
`the claims
`
`themselves provide substantial guidance as to the meaningofparticular claims terms.” /d. at 1314;
`
`see also Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001)
`
`(“In construing claims, the analytical focus must begin and remain centered on the language of the
`
`claims themselves,for it is that language that the patentee choseto use to ‘particularly point[ ] out
`
`‘and distinctly claim{ ] the subject matter which the patentee regards as his invention.’”). The
`
`context in which a term is used in an asserted claim can be “highly instructive.” Phillips, 415 F.3d
`
`-2-
`
`Ethicon Exhibit 2016.005
`Intuitive v. Ethicon
`IPR2019-00880
`
`Ethicon Exhibit 2016.005
`Intuitive v. Ethicon
`IPR2019-00880
`
`

`

`at 1314. Additionally, other claims in the same patent, asserted or unasserted, may also provide
`
`guidance as to the meaning of a claim term.
`
`/d.
`
`The specification “is always highly relevant to the claim construction analysis. Usually,it
`
`is dispositive; it is the single best guide to the meaning of a disputed term.” Jd. at 1315 (quoting
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “[T]he specification
`
`may reveal a special definition given to a claim term by the patentee that differs from the meaning
`
`it would otherwise possess.
`
`In such cases, the inventor’s lexicography governs.” Jd. at 1316. “In
`
`other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope
`
`’ by the inventor.” /d. Asa general rule, however, the particular examples or embodiments discussed
`
`in the specification are not to be read into the claimsas limitations. Jd. at 1323. In the end, “[t]he
`
`construction that stays true to the claim language and most naturally aligns with the patent’s
`
`description of the invention will be .
`
`.
`
`. the correct construction.” Jd. at 1316 (quoting Renishaw
`
`PLC v. Marposs Societa’per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
`
`In addition to the claims and the specification, the prosecution history should be examined,
`
`if in evidence. Jd. at 1317; see also Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed.
`
`Cir. 2004). The prosecution history can “often inform the meaning of the claim language by
`
`demonstrating how the inventor understood the invention: and whether the inventor limited the
`
`invention in the course of prosecution, making the claim scope narrower than it would otherwise
`
`be.” Phillips, 415 F.3d at 1317; see also Chimie v. PPG Indus. Inc., 402 F.3d 1371, 1384 (Fed.
`Cir. 2005) (“The purpose ofconsulting the prosecution history in construing a claim is to “exclude
`
`any interpretation that was disclaimed during prosecution.””).
`
`Whenthe intrinsic evidence does not establish the meaning of a claim, then extrinsic
`
`evidence (ie., all evidence external
`
`to the patent and the prosecution history,
`
`including
`
`dictionaries, inventor testimony, expert testimony, and learned treatises) may be considered.
`
`-3-
`
`Ethicon Exhibit 2016.006
`Intuitive v. Ethicon
`IPR2019-00880
`
`Ethicon Exhibit 2016.006
`Intuitive v. Ethicon
`IPR2019-00880
`
`

`

`Phillips, 415 F.3d at 1317. Extrinsic evidence is generally viewed as less reliable than the patent
`
`itself and its prosecution history in determining how to define claim terms./d. at 1317. “The court
`mayreceive extrinsic evidence to educateitself about the invention andthe relevant technology,
`
`but the court may not use extrinsic evidenceto arrive at a claim constructionthatis clearly at odds
`
`with the construction mandated by the intrinsic evidence.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192
`
`F.3d 973, 977 (Fed. Cir. 1999).
`
`If, after a review of the intrinsic and extrinsic evidence, a claim term remains ambiguous,
`
`the claim should be construed so as to maintain its validity. Phillips, 415 F.3d at 1327. Claims,
`
`however, cannot be judicially rewritten in order to fulfill the axiom of preserving their validity.
`
`See Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999). Thus, “if the only claim
`construction that is consistent with the claim’s language and the written description renders the
`
`claim invalid, then the axiom does not apply and the claim is simply invalid.” Jd.
`
`IV.
`
`LEVEL OF ORDINARYSKILL IN THE ART
`
`Ethicon did not propose a level of ordinary skill in the art in its briefs. Its expert, Shorya
`
`Awtar, however, did opine on the issue as to the ’369, °749, and ’874 patents in his expert report,
`
`submitted as an exhibit. According to Mr. Awtar, a person of ordinary skill in the art with respect
`
`to these patents “would include someone whohas a Bachelor’s degree in Mechanical Engineering,
`
`as well as 3 years of experience in the design of minimally invasive surgical instruments.” Ethicon
`
`Ex. 1 at 47.
`
`Intuitive also did not propose a level of ordinary skill in the art in its briefs. Their experts,
`
`Drs. Jeffrey Vaitekunas and Robert D. Howe, however, did opine on the issue in their expert
`
`reports, submitted as exhibits. It is Dr. Vaitekunas’ opinion that “a person of ordinary skill in the
`
`art related to the °874 and °969 Patents would have had the equivalent of a bachelor’s degree or
`
`higher in mechanical engineeringwith at least 3 years of work experience in the design of surgical
`
`-4-
`
`Ethicon Exhibit 2016.007
`Intuitive v. Ethicon
`IPR2019-00880
`
`Ethicon Exhibit 2016.007
`Intuitive v. Ethicon
`IPR2019-00880
`
`

`

`devices.” Intuitive Ex. 12 at { 14. Dr. Howe submits that a person of ordinary skill in the art “at
`
`the time of each ofthe alleged inventions of the ’749, ’369, and °379 patents would have had the
`
`equivalent of a Bachelor’s degree or higher in mechanical engineering with at least 3 years working
`
`experience in the design of comparable surgical devices.” Intuitive Ex. 6 at J 14.
`
`The undersigned finds Intuitive’s proposals best reflect the level of skill in the art at the
`
`time of the Asserted Patents. Accordingly, the undersigned finds: (1) a person of ordinary skill in
`
`the art with respect to the ’874 and °969 patents would have at least (a) a bachelor’s degree or
`
`higher in mechanical engineering and (b) at least 3 years of work experience in the design of
`
`surgical devices; and (2) that a person of skill in the art with respect to the °749, °369, and °379
`
`patents would haveat least (a) a Bachelor’s degree or higher in mechanical engineering and(b) at
`
`least 3 years working experience in the design of comparable surgical devices. The undersigned
`
`also finds that, with respect to the Asserted Patents, additional graduate education could substitute
`
`for professional experience and significant work experience couldsubstitute for formal education.
`
`V.
`
`THE ASSERTED PATENTS
`
`A. The ’749 Patent
`
`The ’749 patent, entitled “Surgical Stapling and Cutting Instrument with Manually
`
`Retractable Firing Member,” issued on February 17, 2009 to Christopher J. Schall and Chad P.
`
`Boudreaux. The ’749 patent is assigned on its face to Ethicon Endo-Surgery, Inc. and was
`
`subsequently assigned to Ethicon LLC. Am. Compl. at ¢ 35. The ’749 patent generally relates to
`
`“endoscopic surgical instrumentsincluding, but not limited to, surgical stapler instruments that are
`
`capable of applying lines of staples to tissue while cutting the tissue between those staple lines
`
`and, moreparticularly, to improvementsrelating to surgical stapler instruments and improvements
`
`in processes for forming various componentsof such surgical stapler instruments that have manual
`
`retraction capabilities.” ’749 patent at 1:17-24.
`
`-5-
`
`Ethicon Exhibit 2016.008
`Intuitive v. Ethicon
`IPR2019-00880
`
`Ethicon Exhibit 2016.008
`Intuitive v. Ethicon
`IPR2019-00880
`
`

`

`The ’749 patent has 19 claims. Only claim 1 is asserted in this Investigation. The asserted
`
`claim reads as follows (with the first instance of the disputed terms in bold):
`
`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 memberthat 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.
`
`B. The ’969 Patent
`
`The 969 patent, entitled “Drive Interface for Operably Coupling a Manipulatable Surgical.
`
`Tool to a Robot,” issued on July 9, 2013 to Frederick E. Shelton, IV. The *969 patent is assigned
`
`on its face to Ethicon Endo-Surgery, Inc. and was subsequently assigned to Ethicon LLC. Am.
`
`Compl. at 7 40. The 969 patent generally relates to “a drive interface for coupling an articulating
`
`surgical tool to a robotic system.” /d. at J 43.
`
`The 969 patent has 28 claims. Only claim 24 is asserted in this Investigation. The asserted
`
`claim reads as follows (with the first instance of the agreed-upon termshighlighted initalics):
`
`24. A surgical tool for use with a robotic system that has a tool drive assembly that is
`operatively coupled to a control unit ofthe robotic system that is operable by inputsfrom
`an operator and is configured to provide at least one rotary output motion to at least one
`rotatable bodyportion supported onthe tool drive assembly, said surgical tool comprising:
`a surgical end effector comprising at least one component portion that is selectively
`movable betweenfirst and second positionsrelative to at least one other componentportion
`thereof in response to control motions applied to said selectively movable component
`portion; an elongated shaft assembly defining a longitudinal tool axis and comprising: a
`distal spine portion operably coupled to said end effector; and a proximal spine portion
`pivotally coupled to said distal spine portionat an articulation joint to facilitate articulation
`of said surgical end effector about an articulation axis that is substantially transverse to
`said longitudinal
`tool axis; and at
`least one gear-driven portion that is in operable
`communication with said at least one selectively movable component portion of said
`surgical end effector and wherein said surgical tool further comprises: a tool mounting
`portion operably coupled to a distal end ofsaidproximal spine portion, said tool mounting
`portion being configured to operably interface with the tool drive assembly when coupled
`
`-6-
`
`Ethicon Exhibit 2016.009
`Intuitive v. Ethicon
`IPR2019-00880
`
`Ethicon Exhibit 2016.009
`Intuitive v. Ethicon
`IPR2019-00880
`
`

`

`thereto, said tool mounting portion comprising: a driven element rotatably supported on
`said tool mounting portion and configured for driving engagement with a corresponding
`one of the at least one rotatable body portions of the tool drive assembly to receive
`corresponding rotary output motions therefrom; and a transmission assembly in operable
`engagement with said driven element and in meshing engagement with a corresponding
`one of said at least one gear-driven portions to apply actuation motions thereto to cause
`said corresponding oneofsaid at least one gear driven portionsto apply at least one control
`motion to said selectively movable component.
`
`C. The ’874 Patent
`
`The °874 patent, entitled “Surgical Instrument System,” issued on August 25, 2015 to
`
`Frederick E. Shelton, IV, James R. Giordano, and Jeffrey S. Swayze. The ’874 patent is assigned
`
`on its face to Ethicon Endo-Surgery, Inc. and was subsequently assigned to Ethicon LLC. Am.
`
`Compl. at § 45. The 874 patent generally relates to “surgical instruments, and more particularly
`
`to minimally invasive surgical
`
`instruments capable of recording various conditions of the
`
`instrument.” 874 patent at 2:45-48.
`
`The ’874 patent has 21 claims. Only claim 19 is asserted in this Investigation. The asserted
`
`claim reads as follows (with the first instance of the agreed-upon term highlighted in italics and
`
`the disputed term highlighted in bold):
`
`instrument system, comprising: an end effector, comprising: an anvil; a
`19. A surgical
`cartridge including staples that can be ejected out of said cartridge with a distal actuation
`of a firing member; and at least one sensor; an assembly, comprising: an elongate shaft
`including a longitudinal axis; a motor; and an articulation joint for positioning said
`cartridge at an angle to said longitudinal axis of said elongate shaft; a remote user-
`controllable actuation console electrically coupled to said motor; and a motion converter
`configured to convert a rotary drive motion produced by said motorto a linear drive
`motion.
`
`D. The ’369 Patent
`
`The °*369 patent, entitled “Surgical End Effectors with Firing Element Monitoring
`
`Arrangements,” issued on December 19, 2017 to Thomas W. Huitema, Charles J. Scheib, Cortney
`
`E. Henderson, Frederick E. Shelton, IV, and Jason L. Harris. The ’369 patent is assigned on its
`
`face to Ethicon LLC. Am. Compl. at § 30. The ’369 patent generally relates to “stapling
`
`-7-
`
`Ethicon Exhibit 2016.010
`Intuitive v. Ethicon
`IPR2019-00880
`
`Ethicon Exhibit 2016.010
`Intuitive v. Ethicon
`IPR2019-00880
`
`

`

`instruments and, in various embodiments, to a surgical stapling instrument for producing one or
`
`more rowsofstaplers.” °369 patent at 1:16-18.
`
`The °369 patent has 23 claims. Claims 22 and 23 are asserted in this Investigation. The
`
`asserted claims read as follows (with the first instance of disputed terms highlighted in bold):
`
`22. A surgical end effector, comprising: an elongate channel including a bottom including a
`proximal end anda distal end, the elongate channel being configured to operably support
`a staple cartridge therein; a firing element configured to translate betweenafirst position
`adjacent the proximal end of the bottom of the elongate channel and an ending position
`adjacent the distal end of the bottom of the elongate channel, the firing element including
`a vertical portion and at least one laterally extending lower foot; an internal passage
`extending within the elongate channel and configured to receive the at least one laterally
`extending lower foot whenthe firing element moves betweenthefirst position and ending
`position; a proximal channel opening through the proximal end of the bottom of the
`elongate channel to facilitate viewing of the firing element therethrough whenthe firing
`elementis in the first position, the proximal channel opening sized to receive therein the at
`least one laterally extending lowerfoot on the firing element; and meansfor guiding the
`at least one lowerfoot on the firing element out of the proximal channel opening into
`the internal passage uponinitial application of a firing motion to the firing element.
`
`23. The surgical end effector of claim 22, wherein said means for guiding comprises atleast
`one rampedsurface provided onatleast one of the at least one lower foot and a portion of
`the elongate channel defining the proximal channel opening.
`
`E. The ’379 Patent
`
`The 7379 patent, entitled “Surgical Stapling Instrument Having a Clearanced Opening,”
`
`issued on December 19, 2017 to Frederick E. Shelton, [V, Michael E. Setser, and William B.
`
`Weisenburgh II. The °379 patent is assigned on its face to Ethicon Endo-Surgery LLC and was
`
`subsequently assigned to Ethicon LLC. Am. Compl. at § 25. The °379 patent generally relates to
`
`“surgical instruments that are suitable for endoscopically inserting an end effector that is actuated
`
`by a longitudinally driven firing member, and more particularly a surgical stapling and severing
`
`instrumentthat has an articulating shaft.” °379 patent at 1:51-55.
`
`The °379 patent has 3 claims. All three claims are asserted in this Investigation. The
`
`asserted claims read as follows (with the first instance of the disputed terms highlighted in bold):
`
`-8-
`
`Ethicon Exhibit 2016.011
`Intuitive v. Ethicon
`IPR2019-00880
`
`Ethicon Exhibit 2016.011
`Intuitive v. Ethicon
`IPR2019-00880
`
`

`

`A stapling assembly, comprising: a frame; a distal end; a first jaw comprising a channel; a
`channel retainer, wherein said channel is slidably attachable to said channel retainer; a
`second jaw extending from said frame; a plurality of staples; a staple firing member
`comprising a first cam configured to engage said first jaw and a second cam configured to
`engage said second jaw whensaid staple firing memberis advanced from an unadvanced
`position towardsaid distal end, wherein one ofsaidfirst jaw and said second jaw comprises
`a clearanced opening configured to permit said firing member to be unengaged with one
`of said first jaw and said second jaw whensaid firing member is in said unadvanced
`position; and a lockout configured to block the advancementofsaid staple firing member
`whensaid channelis not attached to said channel retainer.
`
`A stapling assembly, comprising: a frame;a distal end;a first jaw comprising a channel; a
`channel retainer, wherein said channel is slidably attachable to said channel retainer; a
`second jaw extending from said frame; a plurality of staples; a staple firing member
`comprising a first cam configured to engagesaid first jaw and a second cam configured to
`engage said second jaw whensaid staple firing member is advanced from an unadvanced
`position toward said distal end, wherein said first cam and said second cam are configured
`to co-operatively hold said first jaw and said second jaw relative to one another when said
`staple firing member is advanced toward said distal end, and wherein oneofsaid first jaw
`and said second jaw comprises a clearanced opening configured to receive one ofsaid first
`cam and said second cam suchthat said first jaw is not held to said second jaw when
`said staple firing memberis in said unadvancedposition; and a lockout configured to block
`the advancementof said staple firing member when said channel is.not attached to said
`channelretainer.
`
`A stapling assembly, comprising: a first jaw; a second jaw, wherein said first jaw is
`rotatable relative to said second jaw; a detachable cartridge portion comprising a plurality
`of staples; an anvil configured to deform said staples; and a staple firing member
`comprising a first cam configured to engage said first jaw and a second cam configured to
`engage said second jaw whensaid staple firing member is advanced from an initial
`position, and whereinsaidfirst jaw comprises a clearanced opening configured to receive
`said first cam whensaid staple firing memberis in saidinitial position such that said first
`cam is not engaged with said first jaw when said staple firing memberis in said initial
`position; and a lockout configured to block the advancementof said staple firing member
`whensaid detachable cartridge portion is not attached to said stapling assembly.
`
`Ethicon Exhibit 2016.012
`Intuitive v. Ethicon
`IPR2019-00880
`
`Ethicon Exhibit 2016.012
`Intuitive v. Ethicon
`IPR2019-00880
`
`

`

`VI.
`
`CLAIM CONSTRUCTION
`
`A. Agreed-Upon Constructions
`
`The parties have agreed to the following constructions:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`AGREED-UPON CONSTRUCTION
`TERM
`
`The preamble is limiting.
`“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 operatorand is
`configured to provide at least one
`rotary output motionto at least
`one rotatable body portion
`supported on the tool drive
`assembly, said surgical tool
`comprising”
`“Distal spine portion”
`
`
`
`
`
`
`
`
`
`“Proximal spine portion”
`
`“Remote user-controllable
`actuation console”
`
`Structural member within distal
`portion of elongated shaft assembly
`Structural member within proximal
`portion of elongated shaft assembly
`Console that allows a user to control
`and actuate the surgical instrument
`
`JC at 1-2. The undersigned hereby adopts the parties’ proposed constructions and shall construe
`
`the terms set forth above according to their agreed-to definitions.
`
`B. Disputed Constructions
`
`1. The ’749 Patent
`
`a. “manual actuation ofsaid retraction assembly causessaid firing drive
`to generate a sole retraction motion ...” and “sole retraction motion”
`
`The terms “manualactuationofsaid retraction assembly causessaidfiring drive to generate
`
`a sole retraction motion” and “sole retraction motion” appear in claim 1 of the ’749 patent. The
`
`parties disagree on which terms require construction and have proposed the following terms and
`
`corresponding constructions:
`
`-10-
`
`Ethicon Exhibit 2016.013
`Intuitive v. Ethicon
`IPR2019-00880
`
`Ethicon Exhibit 2016.013
`Intuitive v. Ethicon
`IPR2019-00880
`
`

`

`
`
`
`
`INTUITIVE
`ETHICON
`
`
`“manual actuation ofsaid retraction assembly
`“sole retraction motion”:
`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 retractedposition”:
`
`
`
`from the fired
`the firing element moves
`position to-the retracted position in response to
`a retraction motion generated by the firing
`drive only through manual actuation of the
`retraction assembly and without assistance
`from other retraction means
`
`Plain meaning of “sole retraction motion” is
`“only retraction motion” but
`it must be
`construed in the context of the longer claim
`term.
`
`
`
`
`C at 2.
`
`Ethicon seeks to construe “sole retraction motion,” arguing that the term’s explicit
`
`specification definition is determinative. CMIB at 8-9. Ethicon argues that there is no need to
`
`construe the claim language surrounding “sole retraction motion.” /d. It criticizes Intuitive for
`
`attempting to improperly limit the claim such that the “retraction assembly be the only portion of
`
`the instrumentthat is capable of generating a retraction motion.”Jd. (emphasis omitted).
`
`In contrast, Intuitive proposes that a broader excerpt of claim 1 be construed to “giv[e]
`
`meaning to the word “sole” in the claim and account[t] for the purpose of the alleged invention
`
`and the prior art distinguished by the ’749 patent.” RMIB at 10. Intuitive challenges Ethicon’s
`
`“sole retraction motion” proposal as an improper attempt to construe the term “in isolation”
`
`without the essential context of the surrounding claim language./d. at 13-14. Intuitive asserts that
`
`the plain language of the claim dictates that the retraction motion is generated only via manual
`
`actuation ofthe retraction assembly, and thatthe plain language of“sole” excludes any alternative
`
`retraction motion generated bythe firing drive. /d. at 10-11. Intuitive further emphasizes that the
`
`-ll-
`
`Ethicon Exhibit 2016.014
`Intuitive v. Ethicon
`IPR2019-00880
`
`a retraction motion generated by manipulation
`of the retraction assembly by the clinician
`without any assistance from additional
`springs or other force generating members.
`
`
`
` | J
`
`Ethicon Exhibit 2016.014
`Intuitive v. Ethicon
`IPR2019-00880
`
`

`

`749 patent distinguishes itself from the prior art staplers found in U.S. Pat. No. 7,083,075
`
`(“Swayze”), which includes a stapler with “two retraction mechanisms (automatic spring and
`
`manual retraction assembly) that can cause the firing drive to generate a retraction motion.” Jd. at
`
`12-13.? Intuitive contendsthat, in contrast to Swayze, the ’749 patentdiscloses only oneretraction
`
`motion, which requires manualactuation ofthe retraction assembly./d. at 13.
`
`The undersignedfindsthat Intuitive fails to articulate an actual dispute regardingthe claim
`
`language surrounding“sole retraction motion.” Indeed, Intuitive admits that much ofthis language
`
`has a readily discernable plain and ordinary meaning. See RMIB at 10 (arg