Case: 20-1528 Document: 51 Page: 1 Filed: 08/23/2021
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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`NOTE: This disposition is nonprecedential.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.,
`Cross-Appellant
`______________________
`
`2020-1528, 2020-1546
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2018-
`01703.
`
`______________________
`
`Decided: August 23, 2021
`______________________
`
`BRIAN E. FERGUSON, Weil, Gotshal & Manges LLP,
`Washington, DC, argued for appellant Ethicon LLC. Ap-
`pellants Ethicon LLC and Cilag GmbH International also
`represented by CHRISTOPHER MARANDO, PRIYATA PATEL,
`CHRISTOPHER PEPE, AUDRA SAWYER; ANISH R. DESAI,
`ELIZABETH WEISWASSER, New York, NY.
`
` STEVEN KATZ, Fish & Richardson, P.C., Boston, MA, ar-
`gued for cross-appellant. 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 O’MALLEY, CLEVENGER, and STOLL, Circuit Judges.
`STOLL, Circuit Judge.
`This is an appeal and cross-appeal from the final writ-
`ten decision of the Patent Trial and Appeal Board in an in-
`ter partes review of U.S. Patent No. 8,616,431, where the
`Board held certain claims anticipated, and other claims ob-
`vious. Ethicon LLC, the patent owner, asks this court to
`consider two claim construction disputes. Petitioner Intu-
`itive Surgical, Inc. cross-appeals, seeking review of a fac-
`tual issue regarding motivation to combine. We adopt the
`Board’s construction of the disputed terms “robotic system”
`and “tool mounting portion” and thus affirm the Board’s
`anticipation findings. We also determine that the Board’s
`finding of no motivation to combine is not supported by sub-
`stantial evidence, and reverse the Board’s decision as to ob-
`viousness.
`
`BACKGROUND
`I
`The ’431 patent relates to a tool mounting device for
`coupling a surgical tool to a robotic system. One disclosed
`tool is a surgical stapler, such as an endocutter, which in-
`cludes two jaw members to deploy staples into soft tissue
`and a cutting member to cut the tissue as it is stapled. The
`specification discloses that the robotic system may include
`a controller and a robotic arm (also referred to as a “manip-
`ulator”). The robotic system controls the surgical tool by
`operably coupling the surgical tool to the robotic arm. Spe-
`cifically, the “surgical tool 1200 is operably coupled to the
`manipulator by a tool mounting portion [1300].” ’431 pa-
`tent col. 28 ll. 11–13. Figure 38 illustrates tool mounting
`portion 1300:
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`ETHICON LLC v. INTUITIVE SURGICAL, INC.
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`Id. Fig. 38. Figure 38 also shows “interface 1230[,]” which
`“mechanically and electrically couples the tool mounting
`portion 1300 to the manipulator.” Id. at col. 28 ll. 13–16.
`The ’431 patent specification also discloses a “unique
`and novel transmission arrangement” that enables the sur-
`gical tool “to be operably coupled to a . . . robotic system
`that only has four rotary output bodies, yet obtain[s] the
`rotary output motions” to control five motions. Id. at col. 88
`ll. 22–35. The five control motions contemplated include:
`(1) articulating the end effector about a first articulation
`axis; (2) articulating the end effector about a second artic-
`ulation axis; (3) rotating the end effector; (4) closing the an-
`vil; and (5) firing the cutting instrument.
` In this
`embodiment, a single rotary output body drives the two dif-
`ferent articulation movements (1) and (2).
`Independent claim 1 is illustrative and includes the
`two disputed claim terms at issue in this appeal:
`1. A tool mounting device for coupling a surgical
`end effector configured to selectively perform at
`least two actions in response to control motions ap-
`plied thereto to a tool drive assembly of a robotic
`system that is operatively coupled to a control unit
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`ETHICON LLC v. INTUITIVE SURGICAL, INC.
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`of the robotic system, said tool mounting device
`comprising:
`a tool mounting portion configured for operable at-
`tachment to the tool drive assembly of the robotic
`system;
`an elongated shaft assembly having a proximal end
`portion operably supported on said tool mounting
`portion and a distal end portion operably interfac-
`ing with said surgical end effector to apply said con-
`trol motions thereto; and
`a transmission arrangement operably supported on
`said tool mounting portion such that when said tool
`mounting portion is attached to the tool drive as-
`sembly, said transmission arrangement is config-
`ured to operably interface with a rotatable driven
`element of the tool drive assembly to receive a ro-
`tary output motion therefrom, said transmission
`arrangement communicating with the control unit
`of the robotic system and being responsive to actu-
`ation motions therefrom to move between first and
`second positions such that when said transmission
`arrangement is in said first position, an application
`of said rotary output motion thereto by said rotat-
`able driven element of the tool drive assembly
`causes a first one of said control motions to be ap-
`plied to a portion of said surgical end effector
`through said elongated shaft assembly and when
`said transmission arrangement is in said second
`position, said application of said rotary output mo-
`tion thereto by said rotatable driven element of the
`tool drive assembly causes a second one of said con-
`trol motions to be applied to another portion of said
`surgical end effector through said elongated shaft
`assembly.
`Id. at col. 91 ll. 2–35 (emphases added to disputed limita-
`tions).
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`II
`Tierney1 is the primary prior art reference in the IPR.
`Like the challenged patent, Tierney is directed to a robotic
`surgical system where a number of different tool types can
`be coupled to a robotic manipulator. As illustrated by Fig-
`ure 6 below, however, Tierney comprises four rotary drive
`elements 118 that control only four motions of an end effec-
`tor:
`
`
`Tierney Fig. 6. Particularly, Tierney discloses control of
`the following movements: (1) articulation about a first
`axis; (2) articulation about a second axis; (3) actuation of
`the two-element end effector; and (4) rotation about an
`axis. Id. at col. 9 ll. 24–32.
`Whitman2 and Timm3 are secondary prior art refer-
`ences asserted in the IPR. Whitman discloses a powered
`surgical stapler with drivers to drive the movement of the
`surgical device, but adds a “function selector module,” or a
`shifter, that
`is actuatable “between
`four different
`
`
`1 U.S. Patent No. 7,542,320.
`2 U.S. Pat. App. Pub. No. 2009/0101692.
`3 U.S. Pat. App. Pub. No. 2008/0308601.
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`ETHICON LLC v. INTUITIVE SURGICAL, INC.
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`functional positions.” Whitman ¶ 76. In other words,
`Whitman discloses a shifter that allows a single rotary out-
`put body to control more than one motion. Whitman dis-
`closes using this shifter to help control the following
`motions with just two driving bodies: (1) rotation about an
`axis; (2) articulation about a single axis; (3) opening and
`closing of the jaws of the device; and (4) cutting and sta-
`pling. Id. ¶¶ 79–82.
`Timm discloses a surgical stapling and cutting instru-
`ment with at least the following motion controls: (1) artic-
`ulation about a first axis; (2) articulation about a second
`axis; (3) rotation about an axis, id.; (4) clamping; and
`(5) stapling. Timm ¶¶ 135–37. Timm, however, does not
`disclose a robotic surgical system.
`III
`Intuitive filed an IPR petition challenging claims 1–7,
`10–14, 16–20, and 23–26 of the ’431 patent on four grounds.
`Intuitive Surgical, Inc. v. Ethicon LLC, No. IPR2018-
`01703, Paper 2, at 9 (P.T.A.B. Sept. 11, 2018) (Petition).
`Ground 1 asserted that claims 1–6 and 10–13 would have
`been obvious over Tierney in view of Whitman. Ground 2
`asserted that claims 7, 14, 16–20, and 23–26 would have
`been obvious over Tierney in view of Whitman and further
`in view of Zemlok.4 Ground 3 asserted that claims 1, 2, 6,
`and 10–13 are anticipated by Whitman. Ground 4 asserted
`that claim 11 would have been obvious over Tierney in view
`of Whitman and further in view of Timm. The Board insti-
`tuted review on all grounds. Intuitive Surgical, Inc. v. Eth-
`icon LLC, No. IPR2018-01703, 2019 WL 764067, at *1
`(Feb. 19, 2019) (Institution Decision).
`The Board ultimately determined that Intuitive had
`proven by a preponderance of the evidence that claims 1, 2,
`6, and 10–13 of the ’431 patent were anticipated by
`
`4 U.S. Pat. App. Pub. No. 2008/0251568.
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`Whitman (ground 3), but that Intuitive had failed to prove
`that the remainder of the claims would have been obvious
`over any of the proposed combinations. Intuitive Surgical,
`Inc. v. Ethicon LLC, No. IPR2018-01703, 2020 WL 813856,
`at *1 (Feb. 18, 2020) (Final Decision).
`Ethicon appeals and Intuitive cross-appeals. We have
`jurisdiction under 28 U.S.C.§ 1295(a)(4)(A).
`DISCUSSION
`I
`On appeal, Ethicon asserts that the Board erred in
`finding that Whitman anticipates claims 1, 2, 6, and 10–13
`because it erred in its construction of either of two claim
`terms: (1) “tool mounting portion”; and (2) “robotic sys-
`tem.” We address each argument in turn below.
`Claim construction is ultimately a question of law that
`this court reviews de novo. Knowles Elecs. LLC v. Cirrus
`Logic, Inc., 883 F.3d 1358, 1361–62 (Fed. Cir. 2018). While
`we review constructions based on the claim language, the
`specification, and the prosecution history de novo, we re-
`view the Board’s subsidiary factual findings regarding ex-
`trinsic evidence for substantial evidence. Personalized
`Media Commc’ns, LLC v. Apple Inc., 952 F.3d 1336,
`1339–40 (Fed. Cir. 2020). The Board applied the broadest
`reasonable interpretation standard, under which a claim
`construction “must be reasonable in light of the specifica-
`tion, prosecution history, and the understanding of one
`skilled in the art.” Personalized Media, 952 F.3d at 1340
`(citing Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
`1298 (Fed. Cir. 2015), overruled on other grounds by Aqua
`Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en
`banc)).
`
`A
`We begin with the Board’s construction of “tool mount-
`ing portion.” The Board construed this term to mean a
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`“structure for operable attachment to the tool drive assem-
`bly of a robotic system, and that operably supports an elon-
`gated shaft assembly and a transmission arrangement.”
`Final Decision, 2020 WL 813856, at *7. Ethicon asserts
`that the Board erred in its construction by failing to give
`any meaning to the term “mounting.” According to Ethi-
`con, the tool mounting portion is the “portion of the tool
`mounting device that mounts to the robotic system.” Ap-
`pellant’s Br. 36. Because Ethicon’s proposed construction
`lacks support in the intrinsic evidence, we decline its re-
`quest to change the Board’s claim construction.
`Looking to the claim term itself, the logical reading of
`the term “tool mounting portion” requires a mounting por-
`tion for a tool. The term “tool” modifies “mounting portion.”
`The full claim phrase—“a tool mounting portion configured
`for operable attachment to the tool drive assembly of the
`robotic system,” ’431 patent col. 91 ll. 8–9—supports this
`reading. Indeed, the claimed “configured for” language is
`directed only to supporting the tool drive assembly; it says
`nothing about mounting to the robotic system. Other limi-
`tations in the claim further support this construction.
`First, claim 1 recites “an elongated shaft assembly having
`a proximal end portion operably supported on said tool
`mounting portion . . . .” Id. at col. 91 ll. 10–11. Next,
`claim 1 recites “a transmission arrangement operably sup-
`ported on said tool mounting portion . . . .” Id. at col. 91
`ll. 14–15. Both limitations describe a tool that is supported
`on the tool mounting portion.
`Turning to the specification, Ethicon asserts that it
`“consistently describes that the tool mounting portion is
`the portion of the surgical tool that mounts to the robotic
`system . . . .” Appellant’s Br. 39. For example, Ethicon
`points to the disclosure in the specification that states that
`“[t]he surgical tool 1200 is operably coupled to the manip-
`ulator by a tool mounting portion . . . .” ’431 patent col. 28
`ll. 11–13; see also Oral Arg. at 4:38–5:10,
`http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20-
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`1528_03032021.mp3. We disagree. We discern no clear
`disclaimer or lexicography in the specification that would
`limit the “tool mounting portion” to require mounting to the
`robotic system. The portion of the specification identified
`by Ethicon is no different than the claim language where
`the “tool mounting portion” is “configured for operable at-
`tachment to the tool drive assembly of the robotic system.”
`In neither instance is the tool mounting portion described
`as mounted to the robotic system.
`Referring to Figures 35 and 37–48, Ethicon asserts
`that every embodiment in the specification shows that the
`tool mounting portion is mounted to and supported by the
`manipulator of the robotic system. As we have repeatedly
`held, however, the fact that embodiments (or even every
`embodiment) in the specification depict a particular ar-
`rangement or structure does not require reading that ar-
`rangement or structure into the claims. See Aventis
`Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330
`(Fed. Cir. 2012) (“‘[I]t is . . . not enough that the only em-
`bodiments, or all of the embodiments, contain a particular
`limitation’ to limit a claim term beyond its ordinary mean-
`ing.” (second alteration in original) (quoting Teleflex, Inc.
`v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir.
`2002))); Innova/Pure Water, Inc. v. Safari Water Filtration
`Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004) (“[P]articu-
`lar embodiments appearing in the written description will
`not be used to limit claim language that has broader effect.”
`(first citing Electro Sci. Indus., Inc. v. Dynamic Details,
`Inc., 307 F.3d 1343, 1349 (Fed. Cir. 2002); and then citing
`Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347–48
`(Fed. Cir. 1998))); Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898, 906 (Fed. Cir. 2004) (“[T]his court has ex-
`pressly rejected the contention that if a patent describes
`only a single embodiment, the claims of the patent must be
`construed as being limited to that embodiment.” (collecting
`cases)).
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`Our review of the claim language and specification re-
`veals no support for limiting the “tool mounting portion”
`claim language to require mounting to the robotic system.
`Accordingly, we adopt the Board’s construction of “tool
`mounting portion.”
`
`B
`We next turn to the Board’s construction of “robotic sys-
`tem.” The Board construed the term to mean “a system
`that comprises, inter alia, a tool drive assembly and a con-
`trol unit, and that [] is a self-powered, computer-controlled
`device that can be programmed to aid in the positioning
`and manipulation of surgical instruments, enabling the
`surgeon to carry out more complex tasks.” Final Decision,
`2020 WL 813856, at *6. Ethicon challenges this construc-
`tion, asserting that the Board should have construed this
`term to mean a “system comprising a master controller and
`a robotic arm slave cart (i.e., a telesurgical system).” Ap-
`pellant’s Br. 51. Relying on both the plain claim language
`and extrinsic evidence cited by both parties, we again agree
`with the Board’s construction.
`We turn first to the claim language, which recites “a
`tool drive assembly of a robotic system that is operably cou-
`pled to a control unit of the robotic system . . . .” ’431 pa-
`tent col. 91 ll. 4–6. The Board properly found that the
`claim language makes clear that the robotic system in-
`cludes at least a tool drive assembly and a control unit, but
`does not require a “master controller” or a “robotic slave
`arm cart.” Thus, the added language in Ethicon’s proposed
`construction finds no support in the claims themselves.
`The specification also supports the Board’s broader
`construction. While Ethicon is correct that the specifica-
`tion discloses numerous embodiments in which the robotic
`system includes a master controller and a robotic slave arm
`cart, the specification also indicates that the robotic system
`is not limited to such systems. As the Board aptly noted,
`the specification teaches that other robotic systems may be
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`used in connection with the invention. For example, the
`specification states that “a variety of different forms of the
`tool systems disclosed and claimed herein [may be] effec-
`tively employed in connection with other types and forms
`of robotic systems that supply programmed rotary or other
`output motions.” Id. at col. 35 ll. 1–5. Similarly, the spec-
`ification states that “[t]hose of ordinary skill in the art will
`appreciate that various embodiments of the present inven-
`tion may incorporate a wide variety of alternative robotic
`structures . . . .” Id. at col. 27 ll. 49–52.
`Finally, the extrinsic evidence presented in this case
`supports the Board’s construction. We review the Board’s
`subsidiary factual findings regarding extrinsic evidence for
`substantial evidence.
` Personalized Media, 952 F.3d
`at 1339 (citation omitted). The Board relied on an article
`by Bishoy Morris titled “Robotic Surgery: Applications,
`Limitations, and Impact on Surgical Education” in constru-
`ing this term. Ethicon asserts that the Board “erred by re-
`lying on extrinsic evidence to impermissibly broaden the
`scope of the claims.” Appellant’s Br. 59. We disagree. The
`Board was entitled to look to extrinsic evidence “to assist
`in the proper understanding of the disputed limitation[,]”
`Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc.,
`262 F.3d 1258, 1269 (Fed. Cir. 2001) (citation omitted),
`particularly where both parties presented the Morris arti-
`cle to construe the “robotic system” term.
`Moreover, substantial evidence supports the Board’s
`reading of the Morris article to supply a definition of robotic
`systems broader than that sought by Ethicon. The Board
`pointed to the following description of robotic surgical sys-
`tems in the Morris article:
`A surgical robot is a self-powered, computer-con-
`trolled device that can be programmed to aid in the
`positioning and manipulation of surgical instru-
`ments, enabling the surgeon to carry out more com-
`plex surgical tasks. Systems currently in use are
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`not intended to act independently from human sur-
`geons or to replace them.
`Final Decision, 2020 WL 813856, at *6 (quoting J.A. 1900).
`Though the Morris article does mention that components
`of a robotic system may include a master console and a ro-
`botic manipulator, it does so only with regard to two spe-
`cific robotic surgical systems. We see no error in the
`Board’s finding that the broader definition recited above
`more accurately characterizes the definition of a robotic
`system as understood by the Morris article. We therefore
`adopt the Board’s construction of “robotic system.”
`C
`Ethicon does not challenge the Board’s anticipation
`findings under the Board’s constructions. Because we
`adopt the Board’s constructions for both terms, we affirm
`the Board’s anticipation findings.
`II
`Turning to Intuitive’s cross-appeal, Intuitive chal-
`lenges the Board’s holding that Intuitive failed to demon-
`strate that claims 1–7, 10–14, 16–20, and 23–26 would
`have been obvious under 35 U.S.C. § 103. It is undisputed
`that the combination of Whitman and Tierney teach all the
`limitations of claim 1 of the ’431 patent. Further, Ethicon
`has not challenged—either before the Board or on appeal—
`Intuitive’s assertion that the prior art teaches each and
`every limitation of all of the challenged claims. Ethicon’s
`sole argument before the Board was that a person of ordi-
`nary skill in the art would not have been motivated to com-
`bine the prior art references to arrive at the claimed
`invention. The Board agreed with Ethicon. On appeal, In-
`tuitive asserts that substantial evidence does not support
`the Board’s finding that one of ordinary skill would not
`have been motivated to combine Whitman and Tierney in
`a way that would have satisfied all of the limitations of
`claim 1.
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`A claim is invalid for obviousness “if the differences be-
`tween the subject matter sought to be patented 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.” 35 U.S.C. § 103(a)
`(2006). Obviousness is a question of law based on underly-
`ing factual determinations, including “whether a [person of
`ordinary skill in the art] would have been motivated to
`combine the prior art to achieve the claimed invention and
`whether there would have been a reasonable expectation of
`success in doing so.” TQ Delta, LLC v. Cisco Sys., Inc.,
`942 F.3d 1352, 1357 (Fed. Cir. 2019) (alteration in original)
`(quoting In re Warsaw Orthopedic, Inc., 832 F.3d 1327,
`1333 (Fed. Cir. 2016)). We review the Board’s obviousness
`determination de novo and its underlying factual findings
`for substantial evidence. Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing Randall Mfg.
`v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013)).
`The substantial evidence standard asks “whether a
`reasonable fact finder could have arrived at the agency’s
`decision,” and “involves examination of the record as a
`whole, taking into account evidence that both justifies and
`detracts from an agency’s decision.” In re Gartside,
`203 F.3d 1305, 1312 (Fed. Cir. 2000) (first citing Consol.
`Edison Co. v. NLRB, 305 U.S. 197, 229 (1938); and then
`citing Universal Camera Corp. v. NLRB, 340 U.S. 474,
`487–88 (1951)). We determine that a reasonable fact finder
`could not have arrived at the Board’s decision in light of the
`prior art and expert testimony in the record.
`The Board first found that a person of ordinary skill
`would not have been motivated to combine Whitman and
`Tierney to increase the total number of functions that can
`be performed on the end effector. Although the Board rec-
`ognized that the combination of Whitman and Tierney
`would be able to perform more than the four functions dis-
`closed in Tierney, the Board explained that it was unper-
`suaded that one of ordinary skill would have been
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`motivated to combine the references because Intuitive
`failed to identify a surgical instrument known in the art at
`the time of the invention that performed more than four
`functions, and thus there would be no need “to obtain a
`functionality for which there was no use.” Final Decision,
`2020 WL 813856, at *10 (citation omitted).
`As an initial matter, the Board’s finding that Intuitive
`failed to identify a surgical instrument that performs more
`than four functions is not supported by substantial evi-
`dence. Indeed, the Board’s finding is contrary to prior art
`of record, Timm, which was presented by Intuitive in its
`petition and discloses at least five different functions. Spe-
`cifically, Timm discloses a surgical device that (1) articu-
`lates about a Y-axis; (2) articulates about a Z-axis;
`(3) rotates;
`(4) clamps; and
`(5) staples.
` J.A. 2024
`¶¶ 135–36. Although Intuitive did not directly assert be-
`fore the Board that Timm discloses these five functions, In-
`tuitive’s explanation of Timm’s two-axis articulation—both
`in its petition and in Dr. Knodel’s declaration—at least
`suggested that Timm disclosed a surgical device with five
`functions. For example, Dr. Knodel explained that Timm
`discloses the same two-axis articulation joint as the
`’431 patent, indicative of two functions—articulating the
`end effector about a first and second articulation axis.
`J.A. 1456 ¶ 203. Dr. Knodel continued by explaining that
`this two-axis joint was preferred because it was desirable
`for surgical tools to employ a roll-pitch-yaw mechanism, in-
`dicative of a third function—rotation. Id. ¶ 204. Finally,
`Dr. Knodel explained that Timm and Whitman are both in
`the same field of surgical stapling systems, that Timm dis-
`closes an end effector, and that Timm discloses a surgical
`instrument that supports a staple cartridge, suggesting the
`fourth and fifth functions—clamping and stapling.
`Regardless, even without Timm, Intuitive presented
`evidence that the combination of Tierney and Whitman dis-
`closes more than four functions, showing in and of itself
`that a surgical device with more than four functions is at
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`least possible. The Board went too far by requiring Intui-
`tive to specifically identify a preexisting surgical device
`with more than four functions. Indeed, the Board itself rec-
`ognized—and Intuitive asserted in its petition—that one
`factor of a successful minimally invasive robotic system is
`increasing surgical dexterity, a factor that would be aided
`by increased end effector functionality.
`We also determine that substantial evidence does not
`support the Board’s finding that even though Intuitive
`identified at least six functions disclosed between Whitman
`and Tierney, it did not provide “evidence that one of ordi-
`nary skill in the art would have interpreted the references
`in the same manner (e.g., that one of ordinary skill in the
`art would have considered cutting and stapling performed
`in the same instrument to be two separate functions as op-
`posed to a single ‘firing’ function) . . . .” Final Decision,
`2020 WL 813856, at *10. As Intuitive explained to the
`Board, Whitman and Tierney do not disclose the same four
`functions, and thus there are more than four total func-
`tions between the two references regardless of whether cut-
`ting and stapling are interpreted as one or two functions.
`See Intuitive Surgical, Inc. v. Ethicon LLC, No. IPR2018-
`01703, Paper 14, at 10 (P.T.A.B. Jul. 9, 2019) (Petitioner’s
`Reply). In particular, Intuitive pointed to using Tierney’s
`disclosure of a dual-axis articulation in place of Whitman’s
`single-axis articulation, resulting at least in the following
`functions: “roll; clamp; horizontal articulation; vertical ar-
`ticulation; cut; and staple.” Id. at 12. Thus, even if a
`skilled artisan were to read cut and staple as a single func-
`tion, Intuitive still identified five functions to the Board.
`Additionally, the Board failed to address other undis-
`puted evidence regarding purported motivations for com-
`bining Whitman’s shifter with Tierney. Of particular
`relevance here, Intuitive presented expert evidence to the
`Board that a skilled artisan would have been motivated to
`include Whitman’s shifter in Tierney’s device even if fewer
`functions were in play. Dr. Knodel explained that it “may
`
`

`

`Case: 20-1528 Document: 51 Page: 16 Filed: 08/23/2021
`
`16
`
`ETHICON LLC v. INTUITIVE SURGICAL, INC.
`
`be advantageous to provide a shifter to switch between ar-
`ticulation and stapling” in that using a shifter would pre-
`vent one from accidently changing the articulation during
`stapling because the articulation function would not be se-
`lected during stapling. J.A. 1378 ¶ 54. In other words,
`“you might still want a shifter because you may want to
`isolate the functions” and “make sure [that] you cannot fire
`at the same time you’re articulating . . . .” Intuitive Surgi-
`cal, Inc. v. Ethicon LLC, No. IPR2018-01703, Paper 21,
`at 18–19 (P.T.A.B. Nov. 12, 2019) (Oral Hearing). As there
`was no evidence disputing this expert testimony, the Board
`erred by not addressing it.
`We thus agree with Intuitive that the Board erred in
`finding that a person of ordinary skill would not have been
`motivated to use Whitman’s shifter in Tierney because it
`was unnecessary. Because substantial evidence does not
`support the Board’s finding that there was no motivation
`to combine, and because there is no dispute that the com-
`bined prior art discloses all of the claim limitations, we re-
`verse the Board’s finding that claims 1–7, 10–14, 16–20,
`and 23–26 are not unpatentable under 35 U.S.C. § 103.
`CONCLUSION
`We have considered the parties’ remaining arguments,
`but we do not find them persuasive. For the foregoing rea-
`sons, we affirm the Board’s anticipation findings and re-
`verse the Board’s determination of non-obviousness.
`AFFIRMED-IN-PART AND REVERSED-IN-PART
`COSTS
`
`No costs.
`
`
`