Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 43
`Date: November 25, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`v.
`ETHICON LLC,
`Patent Owner.
`
`IPR2019-00991
`Patent 8,602,287 B2
`
`Before JOSIAH C. COCKS, ZHENYU YANG, and
`JOHN E. SCHNEIDER, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`571-272-7822
`
`
`
`Paper 43
`Date: November 25, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`v.
`ETHICON LLC,
`Patent Owner.
`
`IPR2019-00991
`Patent 8,602,287 B2
`
`Before JOSIAH C. COCKS, ZHENYU YANG, and
`JOHN E. SCHNEIDER, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`IPR2019-00991
`Patent 8,602,287 B2
`
`JUDGMENT
`
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`Granting-in-Part, Dismissing-in-Part, and Denying-in-Part
`Patent Owner’s Motion to Exclude (Paper 37)
`37 C.F.R. § 42.64(c)
`
`Granting-in-Part, Denying-in-Part without Prejudice
`Patent Owner’s Motion to Seal (Paper 15)
`37 C.F.R. § 42.55
`
`Granting-in-Part, Denying-in-Part without Prejudice to Patent Owner
`Petitioner’s Motion to Seal (Paper 24)
`37 C.F.R. § 42.55
`
`Granting Patent Owner’s Motion to Seal (Paper 34)
`37 C.F.R. § 42.55
`
`
`
`
`
`2
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`IPR2019-00991
`Patent 8,602,287 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Intuitive Surgical, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`seeking an inter partes review of claims 13–15, 17, and 18 of U.S. Patent
`No. 8,602,287 B2 (Ex. 1001, “the ’287 patent”). We instituted trial to review
`the challenged claims. Paper 6 (“Dec.”). Thereafter, Ethicon LLC (“Patent
`Owner”) filed a Response to the Petition (Paper 16, “PO Resp.”), Petitioner
`filed a Reply (Paper 25), and Patent Owner filed a Sur-Reply (Paper 34).
`The parties also filed Patent Owner’s Identification of Allegedly New
`Arguments in Petitioner’s Reply and Petitioner’s Response Thereto
`(Paper 32), and briefed the issue whether we should exclude certain
`arguments in Petitioner’s Reply and evidence in support thereof (Papers 37,
`39, 40). An oral hearing for this proceeding was held on September 10,
`2020, and a transcript of that hearing is of record. See Paper 42 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6 and issues this final
`written decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`the reasons provided below, and based on the evidence and arguments
`presented in this proceeding, we conclude Petitioner has established by a
`preponderance of the evidence that claims 13–15, 17, and 18 of the ’287
`patent are unpatentable.
`
`B. Related Matters
`According to the parties, Patent Owner asserted the ’287 patent
`against Petitioner in Ethicon LLC v. Intuitive Surgical, Inc., Case 1:18-cv-
`1325 (D. Del.). Pet. 2; Paper 5, 2.
`C. The ’287 Patent
`The ’287 patent is directed to a motor-driven surgical cutting and
`fastening instrument that comprises an end effector, an electric motor, and a
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`Patent 8,602,287 B2
`motor control circuit. Ex. 1001, Abstract. Figure 1, reproduced below,
`depicts a surgical instrument according to the ’287 patent:
`
`
`Figure 1 of the ’287 patent depicts a motor-driven surgical cutting and
`fastening instrument 10. Ex. 1001, 3:6–7. Surgical instrument 10 comprises
`handle 6, shaft 8, and articulating end effector 12 pivotally connected to
`shaft 8. Id. at 3:16–18.
`Figure 3 of the ’287 patent is reproduced below:
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`
`Figure 3 is an exploded view of end effector 12. Id. at 4:22. End effector 12
`includes channel 22, anvil 24, cutting instrument 32, sled 33, staple cartridge
`34 that is removably seated in channel 22, and helical screw shaft 36. Id. at
`4:24–27. Cutting instrument 32 may be, for example, a knife. Id. at 4:28.
`According to the ’287 patent, in operational use, closure trigger 18
`may be actuated first. Id. at 4:8–9.
`When the closure trigger 18 is actuated, that is, drawn in by a
`user of the instrument 10 toward the pistol grip portion 26, the
`anvil 24 may pivot about the pivot point 25 into the clamped or
`closed position. If clamping of the end effector 12 is satisfactory,
`the operator may actuate the firing trigger 20, which causes the
`knife 32 and sled 33 to travel longitudinally along the channel
`22, thereby cutting tissue clamped within the end effector 12. The
`movement of the sled 33 along the channel 22 causes the staples
`of the staple cartridge 34 to be driven through the severed tissue
`and against the closed anvil 24, which turns the staples to fasten
`the severed tissue.
`Id. at 4:34–45.
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`Patent 8,602,287 B2
`The ’287 patent acknowledges that surgical staplers existed in the art.
`Id. at 1:12–43. Specifically, the ’287 patent incorporates by reference U.S.
`Patent No. 6,978,921 (“Shelton,” Ex. 1015), because it “provides more
`details about such two-stroke cutting and fastening instrument.” Id. at
`4:47–51.
`The ’287 patent also discloses an electric motor disposed in the handle
`for actuating the cutting instrument. Id. at 1:63–64, 6:13–14. According to
`the ’287 patent, in operation, when an operator of instrument 10 pulls back
`firing trigger 20, the motor “forward rotate[s] at, for example, a rate
`proportional to how hard the operator pulls back the firing trigger 20.” Id. at
`7:45–47. The forward rotation of the motor causes a series of movements of
`various components, and ultimately, “the knife 32 and sled 33 are caused to
`traverse the channel 22 longitudinally, thereby cutting tissue clamped in the
`end effector 12.” Id. at 7:47–57.
`The ’287 patent acknowledges that motor-driven endocutters were
`known in the art. Id. at 1:44–52. “In such devices, a motor powers the
`cutting and fastening action of the instrument.” Id. at 1:44–46.
`According to the ’287 patent, the rotation of the motor is controlled by
`a motor control circuit, which comprises a power source connected to the
`motor, and a current control circuit connected to the power source. Id. at
`1:65–2:1, 7:44–45, 7:60–65. The ’287 patent discloses that
`The current control circuit may vary the current supplied to the
`motor, and consequently, the output torque supplied by the
`motor, such that the motor has at least (i) a first, low power
`operational mode for a first portion of a cutting stroke cycle of
`the cutting instrument, and (ii) a second, high power operational
`mode for a second portion the cutting stroke cycle of the cutting
`instrument.
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`That way . . . the motor can start out at a low power mode at the
`beginning of the cutting stroke to provide a soft start quality.
`After the initial soft start, the motor can ramp up to full power
`for the majority of the cutting stroke, but then transition to a
`lower power mode before and shortly after the cutting reverses
`direction. In addition, the motor may transition from a high
`power mode to a low power mode before the cutting instrument
`reaches its final, or home, position when it is being retracted.
`Id. at 2:2–19.
`Figure 11 of the ’287 patent is reproduced below:
`
`
`Figure 11 is a schematic diagram of the motor control circuit according to
`the ’287 patent. Id. at 9:6–7. The circuit includes resistive element 144 and
`switch 146 connected in parallel, with the paralleled elements connected in
`series with single pole, double throw relay 132. Id. at 9:24–26. Switch 146 is
`controlled by a control circuit that is responsive to cutting instrument
`position sensor 150. Id. at 9:28–30. The control circuit “may open the switch
`146 when the cutting instrument 32 is (i) very near to the beginning of its
`stroke and (ii) very near to the end of its stroke.” Id. at 9:31–34.
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`Patent 8,602,287 B2
`With the switch 146 open, current flows through the resistive
`element 144, and then through the relay 132, the relay 138, the
`run motor sensor switch 110, to the motor 65. Current flowing
`through the resistive element 144 reduces the magnitude of the
`current delivered to the motor 65, thereby reducing the power
`delivered by the motor 65. Thus, when the cutting instrument 32
`is (i) very near to the beginning of its stroke or (ii) very near to
`the end of its stroke, the power delivered by the motor 65 is
`reduced. Conversely, once the cutting instrument 32 moves
`sufficiently far from its beginning point or end of stroke point,
`the control circuit 148 may close the switch 146, thereby shorting
`the resistive element 144, thereby increasing the current to the
`motor 65, thereby increasing the power delivered by the motor.
`Id. at 9:38–51.
`The ’287 patent states that this “soft” start quality (1) limits the
`sudden jerking start; (2) reduces the likelihood of the motor overpowering
`the cartridge lockout mechanism; and (3) eases reversal of the motor
`direction. Id. at 12:33–41.
`
`D. Illustrative Claims
`Among the challenged claims, claims 13 and 17 are independent.
`Claim 13 is illustrative of the subject matter and is reproduced below:
`13. A surgical instrument, comprising:
`an end effector comprising a firing element, wherein the firing
`element is configured to move along a firing path, and wherein
`the firing path comprises:
`an initial position; and
`an end-of-stroke position;
`an electric motor, wherein the electric motor drives the firing
`element in a first direction along the firing path when the electric
`motor is rotated in a first rotational direction; and
`a control circuit for controlling the electric motor, wherein the
`control circuit is configured to switch between a plurality of
`operational modes during rotation of the electric motor in the first
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`Patent 8,602,287 B2
`rotational direction, and wherein the plurality of operational
`modes comprises:
`a first operational mode, wherein the control circuit operates in
`the first operational mode when the firing element is positioned
`within a first range of positions along the firing path, wherein the
`first range of positions is positioned between the initial position
`and a second range of positions, and wherein a first amount of
`current is supplied to the electric motor during the first
`operational mode; and
`a second operational mode, wherein the control circuit operates
`in the second operational mode when the firing element is
`positioned within the second range of positions along the firing
`path, wherein the second range of positions is positioned between
`the first range of positions and the end-of-stroke position,
`wherein a second amount of current is supplied to the electric
`motor during the second operational mode, and wherein the
`second amount of current is greater than the first amount of
`current.
`Claim 17 is similar to claim 13, but further requires the surgical
`instrument to comprise “a sensor that detects a condition of the firing
`element indicative of the position of the firing element along the firing
`path.”
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`Patent 8,602,287 B2
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`E.
`
`Instituted Grounds of Unpatentability
`
`We instituted trial to determine whether claims 13—15, 17, and 18 of
`
`the ’287 patent are unpatentable based on the following grounds:
`
`Claims Challenged
`
`35 U.S.C. §l
`
`References
`
`Zemlok, Milliman,7 Whitman
`
`13—15, 17, 18
`
`13—15, 17, 18
`
`13—15, 17, 18
`
`103
`
`103
`
`103
`
`13—15, 17, 1 8
`
`103
`
`Swayze,2 Smith3
`
`Swayze, McInnis4
`
`Zemlok,5 Whitman6
`
`In support of its patentability challenge, Petitioner relies on the
`
`Declarations of Gregory S. Fischer, Ph.D. (Exs. 1003, 1023). Patent Owner
`
`relies on the Declaration of William Cimino, Ph.D. (Ex. 2005).
`
`l The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287—88 (2011), amended 35 U.S-C. §§ 102, 103, and 112,
`effective March 16, 2013. Because the application from which the ’287
`patent issued was filed before this date, the pre-AIA version of §§ 102, 103,
`and 112 applies.
`2 Swayze et al., US. Pat. App. Pub. No. 2007/0175956 A1, published
`August 2, 2007 (Ex- 1005).
`3 Smith et al-, US. Pat. App. Pub. No- 2007/0270790 A1, published
`November 22, 2007 (Ex. 1004).
`4 McInnis, US. Pat. No. 4,346,335, issued August 24, 1982 (Ex. 1006).
`5 Zemlok et al., US. Pat. App. Pub. No. 2009/0090763 A1, published
`April 9, 2009 (Ex. 1007).
`6 Whitman et al., US. Pat. No. 6,793,652 B1, issued September 21, 2004
`(Ex. 1009).
`7 Milliman et al., US. Pat. No. 6,953,139 B2, issued October 11, 2005
`
`(Ex. 1008).
`
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`II. ANALYSIS
`A. Principles of Law
`To prevail in this inter partes review, Petitioner “shall have the
`burden of proving a proposition of unpatentability by a preponderance of the
`evidence.” 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2018).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); KSR, 550 U.S. at 406.
`In an obviousness analysis, “it can be important to identify a reason
`that would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does.” KSR, 550
`U.S. at 418, see also id. (“[T]here must be some articulated reasoning with
`some rational underpinning to support the legal conclusion of obviousness.”)
`We analyze the instituted grounds of unpatentability in accordance
`with these principles.
`
`B. Claim Construction
`In an inter partes review, a claim term “shall be construed 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
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`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” 37 C.F.R. § 42.100(b); see also Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (holding that the
`words of a claim “are generally given their ordinary and customary
`meaning,” which is “the meaning that the term would have to a person of
`ordinary skill in the art in question at the time of the invention, i.e., as of the
`effective filing date of the patent application”) (citations omitted). Any
`special definitions for claim terms must be set forth with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`Cir. 1994).
`Petitioner proposes that we construe the term “firing element.”
`Pet. 9–10. According to Petitioner, “[t]his term invokes pre-AIA 35 U.S.C.
`§ 112, ¶ 6 because it claims a function without disclosing sufficient structure
`for performing that function.” Id. at 9. Petitioner argues that “[t]he functions
`recited in the claims are firing and moving along a firing path,” and “[t]he
`corresponding structure is cutting instrument/knife 32.” Id. at 10.
`For purposes of the Decision to Institute, we adopted Petitioner’s
`proposed construction, because it was supported by the ’287 patent and the
`Declaration of Dr. Fischer. Dec. 9. In its Response, Patent Owner states that
`it “does not agree that these constructions are proper, but applies them
`[t]herein.” PO Resp. 14.
`In its Reply, Petitioner reiterates that “[t]he term ‘firing element’ in
`each challenged claim is a means-plus-function limitation and the
`corresponding structure is cutting instrument 32.” Reply 3. Petitioner,
`however, further argues that the cutting instrument 32 must include a
`“threaded opening.” Id. at 5 (citing Ex. 1001, 5:35–39).
`
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`Patent Owner contends that Petitioner’s addition of “threaded
`opening” is an improper, new argument that is outside of the scope of the
`Reply. Paper 28, 2; Paper 32. According to Patent Owner, Petitioner did not
`assert in the Petition that a threaded opening is a necessary feature of the
`firing element; in fact, the phrase “threaded opening” appears nowhere in the
`Petition. Sur-reply 1–2. Patent Owner asks us to reject this “untimely claim
`construction argument.” Id. at 2. We do not need to resolve this dispute
`because, even if we consider Petitioner’s allegedly new argument, we are not
`persuaded that the cutting instrument requires the additional feature of a
`“threaded opening.”
`Under the statute, a means-plus-function claim “shall be construed to
`cover the corresponding structure, materials, or acts described in the
`specification and equivalents thereof.” 35 U.S.C. § 112 ¶ 6. The challenged
`claims require, and the parties do not dispute, that the function of the “firing
`element” is “to move along a firing path.” Ex. 1001, 18:60, 19:42; Pet. 10;
`Sur-reply 3. We must, therefore, identify “the structure in the written
`description necessary to perform that function.” Micro Chem., Inc. v. Great
`Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999). The parties do not
`dispute, and we agree, that the structure necessary to perform the recited
`function is cutting instrument/knife 32. Pet. 10; PO Resp. 14. The parties,
`however, dispute whether the knife must include a “threaded opening:”
`Petitioner says yes, whereas Patent Owner says no. Reply 5; Sur-reply 6. We
`find Patent Owner’s argument more persuasive.
`Petitioner relies on the embodiment of Figure 3, in which a “helical
`screw shaft 36 may interface a threaded opening (not shown) of the knife 32
`such that rotation of the shaft 36 causes the knife 32 to translate distally or
`proximately (depending on the direction of the rotation) through the staple
`
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`channel 22.” Ex. 1001, 5:35–39; Reply 5 (emphasizing that cutting
`instrument 32 “includes a ‘threaded opening’ that interfaces with a rotatable
`helical screw shaft 36 to generate the claimed movement”); Tr. 8:24–25
`(arguing that “for this embodiment, the only way item 32 moves forward is
`through the threaded opening”).
`The ’287 patent states that helical screw shaft 36 may interface a
`threaded opening of knife 32. Ex. 1001, 5:35–36. We agree with Patent
`Owner this language suggests that “a threaded opening is [an] optional
`structure.” See Sur-reply 3.
`More importantly, the ’287 patent includes other embodiments of the
`knife with no threaded opening. See Ex. 1001, Figs. 20, 23; see also
`Sur-reply 3–5 (arguing that in each alternative embodiment shown in
`Figures 20 and 23, the knife has no threaded opening and the effector has no
`helical screw shaft).8 Petitioner does not dispute this. See Tr. 8:23
`(acknowledging “there are other embodiments”), 9:1–3 (“They do have
`other embodiments with other -- with the knife bar, but that’s a different
`embodiment.”).
`“When multiple embodiments in the specification correspond to the
`claimed function, proper application of § 112, ¶ 6 generally reads the claim
`element to embrace each of those embodiments.” Micro Chem., 194 F.3d at
`1258. Because the ’287 patent discloses alternative embodiments of cutting
`
`8 The ’287 patent states that “U.S. Pat. No. 6,978,921 [‘Shelton,’ Ex. 1015],
`entitled ‘Surgical stapling instrument incorporating an E-beam firing
`mechanism,’ which is incorporated herein by reference in its entirety,
`provides more details about such two-stroke cutting and fastening
`instruments.” Ex. 1001, 4:47–51. In discussing the embodiments of Figures
`20 and 23 of the ’287 patent, Patent Owner relies on the teachings in
`Shelton. Sur-reply 5 & n.3.
`
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`instrument/knife, we decline to limit the cutting instrument/knife to require a
`threaded opening. See id. at 1259 (“Because alternative structures
`corresponding to the claimed function were described, the district court
`incorrectly limited ‘weighing means’ to the specific structures of the
`preferred embodiment.”); see also Callicrate v. Wadsworth Mfg., Inc., 427
`F.3d 1361, 1369 (Fed. Cir. 2005) (concluding that the district court erred in
`construing the term “cutting means” because it did not account for additional
`embodiments, and instructing that a proper construction must “[a]ccount[]
`for all structure[s] in the specification corresponding to the claimed function
`. . . and, of course, equivalents of these structures”). At the hearing, counsel
`for Petitioner concedes this point. See Tr. 13 (“I’m not saying threaded
`opening is required in the claim construction.”).
`In sum, for the term “firing element,” we reiterate that the recited
`function is “to move along a firing path,” and the corresponding structure is
`cutting instrument/knife 32. Because a threaded opening is not necessary for
`the knife to move along a firing path, we decline to restrict the cutting
`instrument/knife 32 to require a threaded opening. See Micro Chem., 194
`F.3d at 1258 (instructing that the statute does not permit “incorporation of
`structure from the written description beyond that necessary to perform the
`claimed function”); see also Sur-reply 3 (arguing that “the claim is directed
`to the structure that moves—not the structure that causes it to move”).
`C. Prior-Art Status of Smith and Zemlok
`Petitioner points out that the earliest priority of the ’287 patent is
`September 23, 2008. Pet. 4; see also Ex. 1001, code (63). Smith, a U.S.
`patent application publication, was published on November 22, 2007.
`Ex. 1004, code (43). Zemlok, also a U.S. patent application publication,
`claims priority to a provisional application filed on October 5, 2007.
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`Ex. 1007, code (60). Thus, Petitioner alleges that Smith qualifies as prior art
`under 35 U.S.C. § 102(a),9 and Zemlok qualifies as prior art under § 102(e).
`Pet. 4.
`With newly executed declarations from two co-inventors,
`corroborating contemporaneous records of the invention, and other
`supporting evidence, Patent Owner argues that the inventors of the ’287
`patent “conceived of the claimed invention prior to the effective dates of
`Smith and Zemlok and diligently thereafter worked towards reduction to
`practice.” PO Resp. 20. As a result, Patent Owner contends that neither
`Smith nor Zemlok qualifies as prior art. Id. at 20–21. We find Patent
`Owner’s argument persuasive.
`An inventor may antedate a § 102(a) or § 102(e) reference by showing
`that the invention was conceived before the effective date of the reference,
`followed by reasonably continuous diligence until the constructive reduction
`to practice. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d
`1359, 1365 (Fed. Cir. 2001). Issues of diligence concern the period just
`preceding the effective date of the adverse reference, to the constructive
`reduction to practice. In re Steed, 802 F.3d 1311, 1317 (Fed. Cir. 2015). In
`this case, Patent Owner must show conception before October 5, 2007, the
`earlier effective date of the two prior-art references, and reasonably
`continuous diligence from just before that date to September 23, 2008, the
`earliest priority date of the ’287 patent.
`
`
`9 Smith published from an application filed in February, 2007. Ex. 1004,
`code (22). It claims priority to several provisional applications filed in 2006.
`Id., code (60). Petitioner, however, does not argue that Smith qualifies as
`prior art under § 102(e). thus, the effective date of Smith is November 22,
`2007.
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`1. Prior Conception
` “[T]he test for conception is whether the inventor had an idea that
`was definite and permanent enough that one skilled in the art could
`understand the invention.” Burroughs Wellcome Co. v. Barr Labs., Inc.,
`40 F.3d 1223, 1228 (Fed. Cir. 1994). Conception must include every feature
`of claimed invention. Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985).
`An inventor must prove conception by corroborating evidence, preferably by
`showing a contemporaneous disclosure. Burroughs Wellcome, 40 F.3d at
`1228.
`
`Patent Owner asserts that the inventors of the ’287 patent “conceived
`of the claimed invention no later than
`, as demonstrated by a
`series of invention disclosures and a design specification created by the
`inventors.” PO Resp. 24 (citing Ex. 2003 ¶¶ 15–26; Ex. 2004 ¶¶ 9–19;
`Exs. 2011, 2014–2016, 2166). As support, Patent Owner provides a detailed
`claim chart, mapping each claim limitation to its evidence of conception. Id.
`at 26–35. Petitioner does not dispute, and after reviewing the record, we
`agree with, Patent Owner’s accounting of all but one claim limitation. Thus,
`we focus our discussion only on the disputed limitation “firing element,” and
`adopt Patent Owner’s claim chart (and the supporting evidence cited by
`Patent Owner) regarding those other limitations as our own findings.
`In addressing the limitation “firing element,” Patent Owner points to
`Innovation Disclosure 13847, dated
` (Ex. 2011), Innovation
`Disclosure 14068, dated
` (Ex. 2016), and Shelton, a patent
`issued to Patent Owner in 2005, and incorporated into the challenged ’287
`patent (Ex. 1015). Below, we reproduce a portion of the table provided by
`Patent Owner in its briefing, outlining in one column the relevant claim
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`language related to the “firing element” and, in the other column, Patent
`
`Owner’s alleged conception evidence.
`
`Claim (287 Patent) Evidence of Conception
`
`Ethicon‘s endocutters comprised a firing element that
`13.2/ 17.2
`comprising a firing mbves along a firing path as of—. Disclosures
`element. wherein
`from— make clear that a firing element‘ in
`the firing element is
`some embodiments a knife. configured to move along a
`configured to move
`firing path was conceived as of—md included
`along a firing path,
`in the endocutters referenced in the innovation disclosures
`describing the claimed features:
`
`Ex.2016—
`
`_—
`
`14...").
`
`P E
`
`x. 2011.001
`
`See Ex. 1015. 5:26—29 and Fig. 1 (2006 patent assigned to
`Ethicon describing a “surgical stapling and severing
`instrument IO [that] incorporates an end effector 12
`having an E—beam firing mechanism (“firing bar“)
`
`PO Resp. 28 (table (partial) indicating evidence allegedly corroborating
`
`prior invention related to the “firing element” limitations).
`
`Petitioner contends that such evidence does not demonstrate prior
`
`conception because the corresponding structure of the means-plus-function
`
`18
`
`
`
`IPR2019-00991
`
`Patent 8,602,287 B2
`
`term “firing element” is cutting instrument 32, which includes a “threaded
`
`opening.” Reply 3—7. We are not persuaded by Petitioner’s argument.
`
`Exhibit 2011, one of the Innovation Disclosures Patent Owner relies
`
`on to establish prior conception, discloses:
`
`
`
`Ex. 2011, 1.
`
`In our View, the knife in Exhibit 2011 is the corresponding structure
`
`of the limitation “firing element,” because it performs the recited function
`
`“to move along a firing path.” We recognize this disclosure does not
`
`mention a threaded opening. But, as discussed above in the claim-
`
`construction section, we decline to restrict the cutting instrument/knife to
`
`require a threaded opening. As a result, we are persuaded that Patent Owner
`
`has produced sufficient evidence to show prior conception of the claimed
`
`invention, with an embodiment with a “firing element” that does not include
`
`a threaded opening.
`
`Petitioner contends that “[w]hen a claim contains ‘means plus
`
`function’ limitations, the conceived invention must not only include the
`
`claimed function, but it must also include the various ‘means’ for
`
`performing the functions disclosed in the patent—in-suit.” Reply 3 (citing
`
`Ethicon, Inc. v. US. Surgical Corp, 135 F.3d 1456, 1460 (Fed. Cir. 1998);
`
`Diasom'cs, Inc. v. Acuson C0111, 1993 WL 248654, at *16 (N.D. Cal. June
`
`24, 1993)). The cases Petitioner relies on do not support its contention here.
`
`19
`
`
`
`IPR2019-00991
`Patent 8,602,287 B2
`Indeed, the page of Ethicon that Petitioner cites does not even mention
`“means plus function,” and thus, could not support Petitioner’s contention.
`See Ethicon, 135 F.3d at 1460. Elsewhere, Ethicon addressed a means-plus-
`function limitation and stated that “[t]he contributor of any disclosed means
`of a means-plus-function claim element is a joint inventor as to that claim.”
`Id. at 1463. Petitioner has not sufficiently explained how Ethicon provides
`guidance on the issue of conception here.
`Diasonics10 states that “in order to establish a prior invention date,
`there must be a permanent idea of the complete invention—including means
`plus function—in the mind of the inventor on that date.” 1993 WL 248654,
`at *16. There is no dispute that conception must include every claimed
`limitation, including the means-plus-function limitation. Here, Patent Owner
`has produced documents showing the prior conception of the claimed
`invention, with a knife that does not have a threaded opening as the
`corresponding structure of the limitation “firing element.”
`According to Petitioner, the district court in Diasonics held that a
`document the patent owner there relied on failed to show conception because
`“the claims contained means-plus-function limitations and the means
`disclosed in the patent did not appear” therein. Reply 3 (citing Diasonics,
`1993 WL 248654, at *1611). Petitioner’s characterization of Diasonics is not
`incorrect; but it is incomplete.
`In Diasonics, the patent owner argued that a memorandum of
`Dr. Beaver, a co-inventor, demonstrated conception. 1993 WL 248654,
`
`10 Diasonics is an opinion of a district court, and thus, not a binding
`authority in this proceeding.
`11 Although Petitioner cites page 16 of Diasonics here, in fact, the discussion
`appears somewhere else in the opinion.
`
`20
`
`
`
`IPR2019-00991
`Patent 8,602,287 B2
`at *18. On a means-plus-function limitation, the court found “Beaver’s
`approach was to reduce the B-mode line density, not the frame rate. The
`patented approach, on the other hand, reduces the frame rate.” Id. at *19. It
`is within this context that the court stated that:
`The patentees specifically chose to reduce the frame rate, not to
`reduce the line density, as their patented method of
`embodiment. Thus, this means or structure of the operative
`method of the invention is an essential part of the protected
`invention, and therefore must have been pictured in the minds
`of the inventors to prove a prior invention.
`Id. (emphasis added).
`In contrast, the inventors in this case did not choose a knife with a
`threaded opening to the exclusion of one without. Instead, the ’287 patent
`discloses both embodiments. See Ex. 1001, Figs. 3, 20, 23. Petitioner
`recognizes so. See Tr. 8:23 (acknowledging “there are other embodiments”),
`9:1–3 (“They do have other embodiments with other -- with the knife bar,
`but that’s a different embodiment.”). Thus, Diasonics is inapposite here.
`At the hearing, counsel for Petitioner argued that “[p]riority date can
`only go back to when you show all the corresponding structures, and that is
`actually described well in the Automotive Technologies International v.
`Delphi case, which for some reason, it’s not a West Law cite in our
`briefing.”12 Tr. 13:21–23. We, again, are not persuaded by Petitioner’s
`argument.
`First, Automotive Technologies International is an opinion of a district
`court, and thus, not a binding authority in this proceeding.
`
`
`12 Petitioner cites the Automotive Technologies International case only in its
`Opposition to Patent Owner’s Motion to Exclude, and not in any merits
`briefing. Paper 39, 9.
`
`21
`
`
`
`IPR2019-00991
`Patent 8,602,287 B2
`Second, that case addresses whether claims issued from a
`continuation-in-part application are entitled to the priority date of a parent
`application. Auto. Techs. Int’l, Inc. v. Delphi Corp., 776 F.Supp.2d 469, 487
`(E.D. Mich. 2011). Specifically, the district court discussed the written
`description and enablement requirements for a means-plus-function claim.
`Id. at 490. The issue in this inter partes review, however, is prior
`conception, which is not addressed in Automotive Technologies
`International. Petitioner has not sufficiently explained the relationship
`between the law on conception, and the law on written description and
`enablement requirements. Thus, it is unclear whether the holding i
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