Case: 21-1601 Document: 57 Page: 1 Filed: 05/19/2022
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`
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`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`ETHICON LLC, CILAG GMBH INTERNATIONAL,
`Appellants
`
`v.
`
`INTUITIVE SURGICAL, INC.,
`Appellee
`______________________
`
`2021-1601
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2019-
`00991.
`
`______________________
`
`Decided: May 19, 2022
`______________________
`
`ADAM BANKS, Weil, Gotshal & Manges LLP, New York,
`NY, argued for appellants. Also represented by ANISH R.
`DESAI, ELIZABETH WEISWASSER; STEPHANIE NICOLE
`ADAMAKOS, PRIYATA PATEL, CHRISTOPHER PEPE, AUDRA
`SAWYER, Washington, DC.
`
` STEVEN KATZ, Fish & Richardson, P.C., Boston, MA, ar-
`gued for appellee. Also represented by RYAN PATRICK
`O'CONNOR, JOHN C. PHILLIPS, San Diego, CA.
` ______________________
`
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`ETHICON LLC v. INTUITIVE SURGICAL, INC.
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`
`Before NEWMAN, CLEVENGER, and STOLL, Circuit Judges.
`Opinion for the court filed by Circuit Judge STOLL.
`Circuit Judge NEWMAN dissents without opinion.
`STOLL, Circuit Judge.
`This is a patent validity case. Ethicon LLC and Cilag
`GmbH International (collectively, “Ethicon”) appeal from
`the Patent Trial and Appeal Board’s final written decision
`holding claims 13–15 and 17–18 of U.S. Patent
`No. 8,602,287 unpatentable as obvious. Ethicon challenges
`the Board’s fact findings regarding analogous art and mo-
`tivation to combine prior art references. Because substan-
`tial evidence supports the Board’s findings, we affirm.
`BACKGROUND
`I
`Ethicon is the assignee of the ’287 patent which is di-
`rected to a motor-driven surgical cutting instrument. Spe-
`cifically, the ’287 patent is directed to a motor-driven
`“endocutter,” which is a tool that simultaneously cuts and
`staples tissue along the edges of the cut.
`
`
`’287 patent, Figs. 2–3; see also id. at col. 1 l. 56–col. 2 l. 9.
`Claim 13 of the ’287 patent is representative of the
`claims on appeal:
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`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 mo-
`tor drives the firing element in a first direc-
`tion along the firing path when the electric
`motor is rotated in a first rotational direc-
`tion; and
`a control circuit for controlling the electric
`motor, wherein the control circuit is config-
`ured to switch between a plurality of oper-
`ational modes during rotation of the
`electric motor in the first rotational direc-
`tion, and wherein the plurality of opera-
`tional modes comprises:
`a first operational mode, wherein the con-
`trol 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 posi-
`tions is positioned between the initial posi-
`tion and a second range of positions, and
`wherein a first amount of current is sup-
`plied to the electric motor during the first
`operational mode; and
`a second operational mode, wherein the
`control circuit operates in the second oper-
`ational mode when the firing element is po-
`sitioned within the second range of
`positions along the firing path, wherein the
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`ETHICON LLC v. INTUITIVE SURGICAL, INC.
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`second range of positions is positioned be-
`tween 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.
`Id. at col. 18 l. 58–col. 19 l. 24.
`The purportedly inventive feature of claim 13 is that
`the motor for driving the endocutter uses two “operational
`modes,” which apply two different amounts of current to
`the motor based on the positioning of the firing element in
`the firing path. In describing how this two-mode operation
`works, Ethicon repeatedly cites a specific portion of col-
`umn 12. There, the ’287 patent describes a “‘soft’ start
`quality by limiting the motor’s ability to exert full load im-
`mediately.” Id. at col. 12 ll. 33–41. This is accomplished
`by initially having “resistive element 144” in series with
`the motor on startup “from time T0 to time T1.” Id.
`at col. 12 ll. 5–11.
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`Appellants’ Br. 14 (annotating ’287 patent, Fig. 11). At
`time T1, the “switch 146” is closed, “thereby shorting the
`resistive element 144 and supplying increased power to the
`motor 65.” ’287 patent col. 12 ll. 11–14. The patent ex-
`plains that this “limit[s] the sudden jerking start.” Id.
`at col. 12 ll. 35–37. “In addition, by starting the soft start
`mode, the likelihood of the motor overpowering the car-
`tridge lockout mechanism is reduced.” Id. at col. 12
`ll. 37–39. The section finishes by referencing an additional
`feature of “reducing the power prior to the knife reaching
`its end-of-stroke (or distal) position [in order to] ease[] re-
`versal of the motor direction.” Id. at col. 12 ll. 39–41.
`II
`Intuitive Surgical, Inc. challenged certain claims of the
`’287 patent based on four obviousness combinations.
`J.A. 112–113. The obviousness combination accepted by
`the Board and at issue on appeal is U.S. Patent Application
`Publication No. 2007/0175956 A1 (Swayze) in view of U.S.
`Patent No. 4,346,335 (McInnis). We describe each refer-
`ence below.
`Swayze discloses a similar endocutter to the one de-
`scribed in the ’287 patent, lacking only the soft start circuit
`(boxed in red below):
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`Appellee’s Br. 5.
`Instead of using a resistor in series with the motor that
`controls the amount of current flowing into the motor for a
`certain period of time (e.g., when the motor is starting),
`which is then short circuited when the motor gets up and
`running (i.e., the ’287 patent, “soft start” approach),
`Swayze describes a “sensor 110” that can either be (1) an
`“on-off” type sensor or a (2) rheostat / variable resistor that
`allows more voltage to go to the motor based on how far the
`user pulls the endocutter trigger. J.A. 1522–23 (Swayze
`¶ 55).
`McInnis is a 1982 patent directed to the “Speed Control
`of a D.C. Electric Motor.” J.A. 1532. McInnis explains that
`its motor circuitry is “particularly advantageous when the
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`motor is used to drive an electric vehicle,” J.A. 1535 (McIn-
`nis col. 2 ll. 51–53), but it also teaches that its “motor con-
`troller may be suitably modified for other appropriate
`motor control applications,” J.A. 1537 (McInnis col. 5
`ll. 34–37). Notably, McInnis discloses a “starting resis-
`tor 60” that is “connected in series” with its motor in a way
`that is “conventional in the art,” and then this resistor is
`short circuited “shortly after the motor is started.”
`J.A. 1537 (McInnis col. 5 ll. 56–62).
`After a standard briefing schedule and oral hearing,
`the Board held the claims unpatentable as obvious over
`Swayze in view of McInnis. J.A. 46. The Board found that
`McInnis was analogous prior art, J.A. 34–37, and found
`that a person of ordinary skill in the art would have been
`motivated to combine Swayze with McInnis, J.A. 37–38.
`The Board rejected Intuitive’s three other obviousness
`grounds because it determined that Ethicon had success-
`fully antedated the references involved in those combina-
`tions.
`Ethicon appeals. We have jurisdiction under 28 U.S.C.
`§ 1295(a)(4)(A).
`
`DISCUSSION
`Ethicon challenges the Board’s findings as to analogous
`art and motivation to combine. Both are fact findings that
`we review for substantial evidence. Airbus S.A.S. v. Fire-
`pass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019) (analogous
`art); Arthrex, Inc. v. Smith & Nephew, Inc., 935 F.3d 1319,
`1328 (Fed. Cir. 2019) (motivation to combine). The sub-
`stantial evidence standard does not ask us to reweigh the
`facts and evidence, but instead asks whether there is “evi-
`dence that a reasonable mind might accept as adequate to
`support a conclusion.” Cleo Inc. v. United States, 501 F.3d
`1291, 1296 (Fed. Cir. 2007). “Although a reviewing court
`must take into account contradictory evidence or any evi-
`dence in the record that undermines the agency’s finding,
`the substantial evidence test does not require that there be
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`ETHICON LLC v. INTUITIVE SURGICAL, INC.
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`an absence of evidence detracting from the agency’s conclu-
`sion, nor is there an absence of substantial evidence simply
`because the reviewing court would have reached a different
`conclusion based on the same record.” Id.
`The Board adequately supported its findings on both
`issues with evidence in the record, including expert testi-
`mony. We address each finding in turn.
`I
`We begin with the Board’s finding that McInnis is anal-
`ogous art. Prior art is analogous when the reference
`is: (1) “within the field of the inventor’s endeavor” or
`(2) “reasonably pertinent to the particular problem with
`which the inventor was involved.” In re Wood, 599 F.2d
`1032, 1036 (C.C.P.A. 1979); see also In re Clay, 966 F.2d
`656, 658–59 (Fed. Cir. 1992); In re Bigio, 381 F.3d 1320,
`1325 (Fed. Cir. 2004). Here, the Board found that McInnis
`is analogous art because it “address[ed] at least one prob-
`lem faced by the inventors of the ’287 patent.” J.A. 36. Spe-
`cifically, the Board found McInnis addressed a problem in
`electric motor control that the inventors of the ’287 patent
`also faced—an in rush of current potentially leading to a
`jerking start. J.A. 35–36. This fact finding is supported by
`substantial evidence.
`First, the Board considered the problems facing the in-
`ventors of the ’287 patent as part of the “reasonably perti-
`nent” inquiry. See Clay, 966 F.2d at 659 (“[T]he purposes
`of both the invention and the prior art are important in de-
`termining whether the reference is reasonably pertinent to
`the problem the invention attempts to solve.”). The Board
`noted that the ’287 patent “describes more than one prob-
`lem,” one of which being a “sudden jerking start.” J.A. 35
`(quoting ’287 patent col. 12 ll. 33–37). In addition to citing
`the ’287 patent specification, the Board pointed to an in-
`vention disclosure submitted by Ethicon, written by a
`named inventor on the ’287 patent. The disclosure de-
`scribed the invention as “limit[ing] the sudden jerking
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`start” and described one of the “problem[s] to be solved” as
`limiting “gyroscopic effects on the handle due to rotating
`masses.” J.A. 35 (quoting J.A. 2951). The Board explained
`that evidence of record suggests that a second “problem
`faced by the inventors of the ’287 patent” involved “limiting
`the motor’s ability to exert full load immediately.”
`J.A. 35–36 (quotations omitted). For this proposition, the
`Board pointed to a different invention disclosure by an-
`other named inventor on the ’287 patent. There, the inven-
`tor listed the “[p]roblem to be [s]olved” as the ability “to
`limit a powered endocutter start-off and end power capa-
`bilities.” J.A. 36 (quoting J.A. 2949).
`The Board then examined McInnis to determine
`whether, under the second prong of the analogous art in-
`quiry, it was “reasonably pertinent” to those problems ad-
`dressed by the ’287 patent. The Board noted that McInnis
`is directed to controlling the speed of an electric motor.
`J.A. 36 (citing J.A. 1532 (McInnis, Abstract)). McInnis ac-
`complishes speed control by “changing the field strength of
`the motor, by changing the armature voltage, or by insert-
`ing a resistance in the armature circuit.” J.A. 1535 (McIn-
`nis col. 1 ll. 9–12); J.A. 36. In particular, McInnis teaches
`an embodiment in which a resistor “is connected in series
`with the armature circuit . . . to prevent a high in rush of
`current when the motor is started, as is conventional in the
`art.” J.A. 1537 (McInnis col. 5 ll. 56–59); J.A. 36.
`The Board then credited Intuitive’s expert’s testimony
`that “an in rush of current,” addressed by McInnis, “can
`‘lead to a jerking start or introduction of backlash, and re-
`duce the user’s ability to control the device.’” J.A. 36 (quot-
`ing J.A. 2567 (Fischer Suppl. Decl. ¶ 58)). Accordingly, the
`Board concluded that McInnis is analogous art because it
`“addresses at least one problem faced by the inventors of
`the ’287 patent”—the sudden jerking start. J.A. 36. Based
`on the excerpts described above, we conclude that this find-
`ing was supported by substantial evidence.
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`On appeal, Ethicon makes two principal arguments in
`challenging the Board’s analogous art finding. Neither is
`persuasive. First, Ethicon points to a different problem ad-
`dressed in the ’287 patent—motor overpowering the car-
`tridge lockout mechanism, ’287 patent col. 12 ll. 37–39—
`which it calls the “core problem.” E.g., Appellants’ Br. 34.
`Ethicon contends that because McInnis is not directed to
`that specific alternative problem, it is not analogous art.
`The ’287 patent does mention that “[i]n addition” to ad-
`dressing a sudden jerking start, the soft start feature re-
`duces “the likelihood of the motor overpowering the
`cartridge lockout mechanism.” ’287 patent col. 12 ll. 37–39.
`Indeed, the written description (as well as the invention
`disclosure statements from the named inventors) makes
`clear that the inventors were considering multiple prob-
`lems that would be addressed through improved motor con-
`trol, one of which being the jerking start that is caused by
`a high in rush of current. And, as explained above, the
`Board’s finding that McInnis is reasonably pertinent to the
`problem of sudden in rush of current upon starting the mo-
`tor is supported by substantial evidence. Ethicon’s identi-
`fication of an additional problem faced by the ’287 patent
`inventors and unaddressed by the Board in finding that
`McInnis is analogous art is thus irrelevant.
`To the extent Ethicon argues that there is a disconnect
`between a sudden jerking start and a sudden in rush of
`current when the motor is started, the Board expressly
`credited Intuitive’s expert’s testimony that a high in rush
`of current can “lead to a jerking start, or introduction of
`backlash, and reduce the user’s ability to control the de-
`vice.” J.A. 36 (quoting J.A. 2567 (Fisher Suppl. Decl. ¶ 58)).
`We see no reason to disturb the Board’s crediting of this
`testimony. See ESIP Series 2, LLC v. Puzhen Life USA,
`LLC, 958 F.3d 1378, 1384 (Fed. Cir. 2020) (“We find no er-
`ror in the Board’s decision to credit the opinion of one ex-
`pert over another, and we do not reweigh evidence on
`appeal.”). Moreover, the analogous art test does not
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`require that the references use the exact same words to de-
`scribe the problem that they seek to solve. Cf. Donner
`Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359
`(Fed. Cir. 2020) (“Although the dividing line between rea-
`sonable pertinence and less-than-reasonable pertinence is
`context dependent, it ultimately rests on the extent to
`which the reference of interest and the claimed invention
`relate to a similar problem or purpose.”). Rather, it re-
`quires that the prior art reference be “reasonably pertinent
`to the problem with which the inventor was involved.”
`Clay, 966 F.2d at 659. Even if we might have made a dif-
`ferent fact finding were we the fact finder, we cannot say
`that the Board’s affirmative finding on this point was un-
`reasonable.
`Second, Ethicon attempts to create an additional hur-
`dle, as a legal matter, to the “reasonably pertinent” inquiry.
`Ethicon argues that “[e]ven if the Board had correctly con-
`cluded that the [’]287 [p]atent and McInnis addressed the
`same problem, McInnis is still not ‘analogous prior art’” be-
`cause McInnis would not have logically commended itself
`to an inventor’s attention. Appellants’ Br. 39–40; see also
`Appellants’ Reply Br. 13 (describing this as a “second
`prong”). Phrased differently, Ethicon argues that in addi-
`tion to being directed to the same problem as the chal-
`lenged patent, the prior art must also be such that “a POSA
`reasonably would have consulted that reference to solve
`the problem.” Appellants’ Br. 41.
`This is not a separate legal test, but instead two sides
`of the same coin. As we have explained, “[t]o be deemed
`‘analogous art,’ a reference outside an inventor’s field of en-
`deavor must be ‘reasonably pertinent’ to the particular
`problem with which the inventor is involved, such that a
`person of ordinary skill would reasonably have sought a so-
`lution to the problem in that outside field.” Sci. Plastic
`Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1358 (Fed. Cir.
`2014) (emphasis added). In other words, it is the fact that
`the reference is “reasonably pertinent” to a problem the
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`patent is trying to solve that makes it a reference that
`would have logically commended itself to the inventor’s at-
`tention, even though that reference was outside the field of
`endeavor of the patent.
`It is clear from Ethicon’s application of this supposed
`“second prong” that Ethicon is impermissibly “collaps[ing]
`the field-of-endeavor and reasonable-pertinence inquiries.”
`Donner, 979 F.3d at 1360. For instance, Ethicon attempts
`to draw a distinction between “large motors used in electric
`vehicles” and “small motor[s] for use in a minimally inva-
`sive surgical tool.” Appellants’ Br. 39–40. It suggests that
`a skilled artisan would not have “bypassed the specific field
`of endocutters, or even surgical instruments more broadly”
`and “leaped all the way to motor vehicle motors at the other
`end of the spectrum.” Appellants’ Br. 46. But that is the
`point of the “reasonably pertinent” inquiry, rendering prior
`art “analogous” when it is directed to solving the same
`problem, even when it is in a different field of endeavor.
`See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
`(“When a work is available in one field, design incentives
`and other market forces can prompt variations of it, either
`in the same field or a different one.”); see also Donner,
`979 F.3d at 1361 (noting that “there will frequently be sig-
`nificant differences between a patent and a reference from
`a different field of endeavor” but “it does not follow that
`such a reference is, for that reason alone, not reasonably
`pertinent to one or more problems to which the claimed in-
`vention relates”).1
`
`
`1 Even if Ethicon’s proposed legal test were correct
`(it is not), Ethicon incorrectly asserts as a factual matter
`that McInnis is restricted to “large motors used in electric
`vehicles.” This does not appear to be the case. As the
`Board found, McInnis “relates generally to D.C. electric
`motors, and particularly to the speed control of separately
`excited or shunt wound D.C. electric motors,” listing
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`For at least these reasons we conclude that substantial
`evidence supports the Board’s finding that McInnis is anal-
`ogous art to the ’287 patent.
`II
`We turn next to motivation to combine. The Board
`found that a person of ordinary skill in the art would have
`been motivated to implement the soft start circuit taught
`in McInnis in Swayze’s endocutter system because “a soft
`start is beneficial to, and thus, would improve an endocut-
`ter.” J.A. 37. In particular, the Board relied on a specific
`prior art reference, U.S. Patent Application Publication
`No. 2008/0298784 (Kastner), that taught “[s]oft-starting
`can also be useful in hand-held power tools, such as drills”
`to “minimize fatigue and potential injury, while allowing
`greater control of the tool,” as supplying a motivation to
`combine McInnis and Swayze. J.A. 1821 (Kastner ¶ 30);
`J.A. 37–38; J.A. 2567–72 (Fischer Suppl. Decl. ¶¶ 57–64).
`In its final written decision, the Board noted that Ethicon
`failed to address Kastner, as well as the expert testimony
`describing Kastner. J.A. 37–38. The Board’s reliance on
`Kastner and the expert testimony describing Kastner as
`supplying a motivation to combine was not unreasonable.
`On appeal, Ethicon contests the Board’s determination
`that Ethicon failed to address Kastner, addresses the mer-
`its of Kastner (for the first time), and argues that the
`Board’s analysis was conclusory. Appellants’ Br. 51–56.
`We address each argument in turn.
`First, regarding Ethicon’s failure to address Kastner,
`Ethicon cites certain pages of its briefing before the Board
`that it asserts shows it responded to this argument. Ap-
`pellants’ Br. 53–55 (citing J.A. 369–70 (Patent Owner’s
`
`“electric vehicle[s]” as an exemplary environment in which
`its motor control is “particularly advantageous.” J.A. 1535
`(McInnis col. 1 ll. 6–8, col. 2 ll. 51–53); J.A. 34.
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`Response (citing J.A. 2865–70 (Cimino Decl. ¶¶ 101–04,
`107–10))); J.A. 529–30 (Sur-Reply (citing J.A. 2872–74 (Ci-
`mino Decl. ¶¶ 113–14))). None of these cited portions, how-
`ever, reference Kastner. We see no error in the Board’s
`conclusion that Ethicon failed to address Kastner and the
`expert testimony describing Kastner. Indeed, a simple re-
`view of the record supports this determination. Ethicon’s
`Patent Owner’s Response challenged whether a skilled ar-
`tisan would have been motivated to combine Swayze and
`McInnis but did not address Kastner. J.A. 365–70. The
`cited portions of Ethicon’s expert’s declaration likewise
`failed to address Kastner. J.A. 2864–70 (Cimino Decl.
`¶¶ 98–110). And in its Sur-Reply, the section regarding
`motivation to combine once again failed to address Kast-
`ner. J.A. 527–30.
`Second, Ethicon argues that Kastner’s teachings are
`limited to “drills,” which use more powerful motors than
`endocutters, and therefore its teachings do not apply to en-
`docutters. Appellants’ Br. 55 (quoting J.A. 1821 (Kastner
`¶ 30)). Ethicon does not point to where it made this argu-
`ment before the Board. Instead, it cites a portion of its ex-
`pert’s declaration that was not cited in its papers to the
`Board. Appellants’ Br. 55–56 (citing J.A. 2876–77 (Cimino
`Decl. ¶ 119)). This argument is therefore waived. See Red-
`line Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435,
`450 (Fed. Cir. 2015) (holding arguments waived where they
`were not presented to the Board).
`Third, Ethicon criticizes the Board’s motivation finding
`(relying on Kastner) as conclusory and without reasoned
`explanation. Because Ethicon never rebutted Kastner be-
`fore the Board and did not point to the portions of its ex-
`pert’s testimony discussing Kastner, we cannot fault the
`Board for its arguably limited treatment of this issue. See
`Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1328
`(Fed. Cir. 2017) (“[W]e are not persuaded that Novartis
`presented its arguments against the use of mannitol in
`such a way that it would be appropriate to find fault in the
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`Board’s arguably limited treatment of those arguments in
`the Final Written Decision.”).2
`The Board’s motivation to combine finding is supported
`by substantial evidence in the form of an unrebutted refer-
`ence (Kastner) and Intuitive’s expert’s declaration describ-
`ing Kastner.
`
`CONCLUSION
`We have considered the remainder of Ethicon’s argu-
`ments on appeal and conclude that they are without merit.
`Accordingly, because the Board’s findings on analogous art
`and motivation to combine are supported by substantial ev-
`idence, we affirm.
`
`AFFIRMED
`
`
`
`2 Because substantial evidence supports the Board’s
`finding that Kastner provides a different motivation to im-
`plement a soft start circuit in Swayze’s endocutter, we need
`not consider Ethicon’s argument that Swayze already
`solves the high inrush of current problem with its variable
`resistor connected in series with the motor. See J.A. 37–38
`(Board determining that they “do not need to resolve these
`issues” due to Kastner).
`
`