Ethicon LLC

Patent Trials and Appeals Board

Oct 1, 2020

IPR2019-00880 (P.T.A.B. Oct. 1, 2020)

Trials@uspto.gov Paper 45
571-272-7822 Date: October 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

INTUITIVE SURGICAL, INC.,
Petitioner,
v.
ETHICON LLC,
Patent Owner.

IPR2019-00880
Patent 7,490,749 B2

Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Dismissing Petitioner’s Motion to Exclude
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background and Summary
Intuitive Surgical, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
requesting inter partes review of claims 1 and 3 of U.S. Patent No.
7,490,749 B2 (Ex. 1001, “the ’749 patent”). Ethicon LLC (“Patent Owner”)
did not file a Preliminary Response. We instituted an inter partes review on
all claims and all grounds asserted in the Petition. See Paper 7 (“Dec. on
Inst.”).
After institution of trial, Patent Owner filed a Patent Owner Response.
Paper 15 (“PO Resp.”).1 Petitioner filed a Reply. Paper 27 (“Pet. Reply”).2
Patent Owner filed a Sur-Reply. Paper 32 (“Sur-Reply”).3 Petitioner filed a
Motion to Exclude (Paper 364), to which Patent Owner filed an Opposition
(Paper 395), and to which Petitioner filed a Reply (Paper 426).

1 A confidential, unredacted version of the Patent Owner Response was filed
as Paper 16.
2 A confidential, unredacted version of the Petitioner’s Reply was filed as
Paper 26.
3 A confidential, unredacted version of the Patent Owner’s Sur-Reply was
filed as Paper 31.
4 A confidential, unredacted version of the Petitioner’s Motion to Exclude
was filed as Paper 35.
5 A confidential, unredacted version of the Patent Owner’s Opposition was
filed as Paper 38.
6 A confidential, unredacted version of the Petitioner’s Reply was filed as
Paper 41.
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Both parties also seek to have portions of the record maintained under
seal. Papers 17, 25, 34, 37, 40. Those Motions to Seal will be decided in
due course via a separate Order or Orders.
A hearing was held on July 9, 2020, and a transcript of the hearing is
included in the record. See Paper 44 (“Tr.”).
We have authority under 35 U.S.C. § 6. Petitioner bears the burden of
proving unpatentability of the challenged claims, and the burden of
persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner
must prove unpatentability by a preponderance of the evidence. See
35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This Final Written Decision is
issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons discussed below, we determine that Petitioner has
shown by a preponderance of the evidence that claims 1 and 3 of the ’749
patent are unpatentable.
B. Real Parties in Interest
Petitioner identifies itself as the only real party in interest. Pet. 1.
Patent Owner identifies itself as a real party in interest. Paper 5, 2. Patent
Owner indicates that it is “an indirect subsidiary of Johnson & Johnson.” Id.
C. Related Matters
The parties state that the ’749 patent is the subject of Civil Action No.
1:18-cv-01325 filed August 27, 2018 in the U.S. District Court for the
District of Delaware. Pet. 1; Paper 5, 2. Petitioner also states that it has
filed other petitions for inter partes review of patents owned by Patent
Owner and asserted against Petitioner in the District of Delaware. Id.
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D. The ’749 Patent
The ’749 patent issued February 17, 2009 from an application filed
March 28, 2007, and is titled “SURGICAL STAPLING AND CUTTING
INSTRUMENT WITH MANUALLY RETRACTABLE FIRING
MEMBER.” Ex. 1001, codes (45), (22), (54). The ’749 patent describes a
surgical stapler that applies lines of staples to tissue and cuts the tissue
between the staple lines, and that has manual retraction capabilities. Id. at
1:17–24. Figure 1, reproduced below, depicts a surgical stapler according to
the ’749 patent:

Figure 1, reproduced above, depicts surgical stapling and severing
instrument 10 comprising end effector 12 coupled to elongate shaft assembly
18, which in turn is coupled to handle 20. Id. at 5:36–43. End effector 12
comprises anvil 14 pivotally attached to elongate channel 16 to form
opposing jaws for clamping tissue. Id. at 5:39–41. Closure tube 24 of shaft
assembly 18 is coupled between closure trigger 26 and anvil 14. Id. at 5:60–
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61. Firing rod 327 is positioned for longitudinal movement and coupled
between anvil 14 and multiple-stroke firing trigger 34. Id. at 6:6–9.
In an endoscopic operation, a surgeon first inserts end effector 12 and
shaft assembly 18 in the surgical site and positions the end effector around
the tissue to be stapled and severed. The surgeon then depresses closure
trigger 26 fully toward pistol grip 36 to move closure tube 24 distally to
push anvil 14 pivotally toward elongate channel 16, thereby clamping the
tissue between the anvil and elongate channel. Id. at 6:19–22, 7:20–23.
The surgeon then fires the instrument. Id. at 6:26–30. Figures 7 and
9, reproduced below, depict portions of the instrument’s firing mechanism:

Figures 7 and 9, reproduced above, provide left and right views,
respectively, of portions of linked transmission firing drive 150. Upper
portion 204 of firing trigger 34 engages each of links 196a-d of linked rack
200 (shown more clearly in Figures 8 and 10) during each firing stroke
depression, incrementally advancing linked rack 200 distally. Id. at 10:19–
43. Because firing rod 32 is attached to linked rack 200, it also advances

7 The ’749 patent also refers to this structure as “firing bar 32.” See, e.g.,
Ex. 1001, 12:11, 56–57.
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distally, causing a wedge-shaped sled and cutting blade to simultaneously
staple and cut the tissue. Id. at 6:26–35, 7:24–8:18.
Instrument 10 also comprises a manual retraction system that allows
the surgeon to retract firing rod 32 after the firing operation. The manual
retraction system is depicted in Figures 16 and 17, reproduced below:

Figures 16 and 17, reproduced above, depict retraction assembly 500.
Id. at 12:9–10. First gear 220 meshes with toothed upper surface 222 of
linked rack 200. Id. at 12:16–18. First gear 220 also engages second gear
230, which is attached to smaller right-side ratchet gear 231. Ratchet gear
231 fits into handle 42 and engages with pawl 516, which is fitted into upper
recess 512 of the handle. Id. at 12:37–45.
After the firing sequence has been completed, the surgeon can retract
firing rod 32 by sequentially depressing and releasing manual retraction
lever 42. Id. at 12:55–59. When handle 42 is depressed, pawl 516 drives
ratchet gear 231, and thus second gear 230, clockwise when viewed from the
left. Id. at 12:59–64. This drives first gear 220 counterclockwise, which
moves linked rack 200 and firing rod 32 longitudinally in the proximal
direction until it is fully retracted. Id. at 12:64–13:6. Retraction assembly
500 generates a “sole” retraction motion because it is “configured to enable
the surgeon to manually retract the firing bar 32 without any other assistance
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from springs or other retraction arrangements that serve to place a drag on
the firing system and which ultimately require the generation of higher firing
forces to actuate the firing mechanism.” Id. at 12:9–15, 16:23–28.
E. Illustrative Claim
Petitioner challenges claims 1 and 3 of the ’749 patent. Claim 1 is
independent and claim 3 depends from claim 1. Claim 1 is illustrative of the
challenged claims and is reproduced below:
1. A surgical instrument, comprising:
a handle assembly;
an end effector for performing a surgical operation, said
end effector operably coupled to said handle assembly and
operably supporting a firing member that is movable from a
retracted position to a fired position in response to a longitudinal
firing motion applied thereto;
a firing drive supported by said handle assembly and
configured to selectively generate said longitudinal firing motion
upon actuation of a firing trigger operably coupled to said handle
assembly; and
a retraction assembly supported by said handle assembly
and interfacing with said firing drive such that manual actuation
of said retraction assembly causes said firing drive to generate a
sole retraction motion which is communicated to said firing
member to cause said firing member to move from said fired
position to said retracted position.
Ex. 1001, 17:27–44.
F. Prior Art References and Testimonial Evidence
Petitioner relies on the following references for its challenges:
Name Description Date Exhibit
Shelton
II
U.S. Patent App. Pub. No. 2006/0175375
A1
Aug. 10,
2006 1004
Swayze U.S. Patent App. Pub. No. 2005/0178813 A1
Aug. 18,
2005 1005
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Name Description Date Exhibit
Shelton I U.S. Patent No. 8,322,455 B2 Dec. 4, 2012 1006
The parties have also provided witness testimony. The table below
lists the witnesses, their roles in this proceeding, and the exhibits in which
their testimony is presented:
Witness Role Exhibits
Dr. Bryan
Knodel
Petitioner’s
technical expert8
Ex. 1003 (declaration of Mar. 25, 2019)
Ex. 2018 (transcript of deposition of Dec.
13, 2019)
Ex. 1029 (supplemental declaration of
Apr. 16, 2020)
Ex. 2020 (transcript of deposition of May
14, 2020)
Mr.
Christopher
Schall
Patent Owner’s
fact witness9
Ex. 2008 (declaration of Jan. 10, 2020)
Mr. Chad
Boudreaux
Patent Owner’s
fact witness10
Ex. 2009 (declaration of Jan. 14, 2020)

8 See Ex. 1003 ¶ 1 (“I have been engaged as an expert . . . on behalf of
Intuitive Surgical, Inc. . . .”).
9 See, e.g., Ex. 2008 ¶ 1 (“I am currently employed by and being
compensated by Ethicon Endo-Surgery Inc. (an affiliate of Patent Owner).”);
id. ¶ 2 (“I am currently a Research and Development Project Director at
Ethicon. . . .”).
10 See, e.g., Ex. 2009 ¶ 1 (“I am currently employed by and being
compensated by Ethicon Endo-Surgery Inc. (an affiliate of Patent Owner).”);
id. ¶ 2 (“I am currently a Staff Design Engineer at Ethicon.”).
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Witness Role Exhibits
Mr. Dean
Garner
Patent Owner’s
fact witness11
Ex. 2012 (declaration of Jan. 13, 2020)
Mr.
Geoffrey
Hueil
Patent Owner’s
fact witness12
Ex. 2017 (declaration of Jan. 9, 2020)
Dr. Shorya
Awtar.
Patent Owner’s
technical
expert13
Ex. 2019 (declaration of Jan. 13, 2020)14
Ex. 1015 (transcript of deposition of Apr.
7, 2020)
G. Instituted Grounds of Unpatentability
Petitioner asserts that claims 1 and 3 are unpatentable on the
following grounds:15
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 3 102/10316 Shelton II

11 See, e.g., Ex. 2012 ¶ 1 (“I am currently employed by and being
compensated by Johnson & Johnson Services, Inc. (an affiliate of Patent
Owner).”); id. ¶ 2 (“I am currently the Assistant General Counsel – Patents
at Johnson & Johnson.”).
12 See, e.g., Ex. 2017 ¶ 1 (“I am currently employed by and being
compensated by Ethicon Endo-Surgery Inc. (an affiliate of Patent Owner).”);
id. ¶ 2 (“I am currently an Engineering Fellow at Ethicon.”).
13 See Ex. 2019 ¶ 1 (“I have been retained by . . . Patent Owner Ethicon LLC
(‘Ethicon’) . . . to . . . prepare expert declarations.”).
14 A public, redacted version of Dr. Awtar’s declaration was also filed as
Exhibit 2019.
15 Because the ’749 patent issued from an application that claims priority to
a date before the effective dates of the amendments to the Patent Statute
enacted by the Leahy-Smith America Invents Act (AIA), we apply the pre-
AIA version of the statute. See Leahy-Smith America Invents Act (AIA),
Pub. L. No. 112–29, §§ 3(n)(1), 4(e), 125 Stat. 284, 293, 297 (2011).
16 Patent Owner asserts that Shelton II is only prior art under 35 U.S.C.
§ 102(e), and as such, it “is not available for obviousness pursuant to 35
U.S.C. § 103(c)(1).” PO Resp. 4, 64. We need not resolve this issue
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Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 3 102/103 Swayze17
1, 3 10218 Shelton I
See Pet. 3.
II. LEVEL OF ORDINARY SKILL IN THE ART
In our Decision on Institution, we adopted Petitioner’s proposal that
an ordinarily skilled artisan at the time of the invention of the ’749 patent
“would have had the equivalent of a Bachelor’s degree or higher in
mechanical engineering, or a related field directed towards medical
mechanical systems, and at least 3 years working experience in research and
development for surgical instruments.” Dec. on Inst. 7 (quoting Pet. 23).
Patent Owner has not proposed a definition of a person of ordinary
skill in the art, but instead “adopts and applies” Petitioner’s definition. PO
Resp. 25 (citing Ex. 2019 ¶ 6).
Accordingly, we adopt Petitioner’s definition, which is consistent with
the level of skill reflected in the ’749 patent and the prior art. See Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can
reflect appropriate level of ordinary skill in art).

because, as discussed infra, we find that Shelton II anticipates the challenged
claims.
17 According to Patent Owner, “Swayze discloses an identical surgical
instrument as Shelton II.” PO Resp. 5.
18 Patent Owner asserts that Shelton I does not qualify as prior art because
“Shelton I was filed June 27, 2006 ([Ex.] 1006 at 1), while the named
inventors of the 749 Patent reduced to practice the claimed invention by the
end of May 2006.” PO Resp. 5, 81. We need not resolve whether Shelton I
qualifies as prior art because, as discussed infra, we find that Shelton II
anticipates the challenged claims.
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III. CLAIM CONSTRUCTION
We construe the claims “using the same claim construction standard
that would be used to construe the claim in a civil action under 35 U.S.C.
[§] 282(b), including construing the claim in accordance with the ordinary
and customary meaning of such claim as understood by one of ordinary skill
in the art and the prosecution history pertaining to the patent.” 37 C.F.R.
§ 42.100(b) (2018); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
(Fed. Cir. 2005). Any special definitions for claim terms must be set forth in
the Specification with reasonable clarity, deliberateness, and precision. See
In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
Petitioner asserts that claim terms “should generally be given their
plain and ordinary meaning consistent with the ’749 Patent’s
[S]pecification.” Pet. 15. Petitioner proposes construction for the term “sole
retraction motion,” and further asserts that four claim terms require
construction under 35 U.S.C. § 112, paragraph 619: “firing member,”
“retraction assembly,” “firing drive,” and “closure drive.” Id. at 15–24.
Patent Owner disagrees with Petitioner’s proposed constructions and
proposes its own constructions for each of the terms. PO Resp. 15–24.20
In our Decision on Institution, “we determine[d] that no express
construction [was] required for any claim term.” Dec. on Inst. 8–9 (citing

19 Because the ’749 patent issued from an application that claims priority to
a date before the effective dates of the amendments to the Patent Statute
enacted by the Leahy-Smith America Invents Act (AIA), we apply the pre-
AIA version of the statute. See Leahy-Smith America Invents Act (AIA),
Pub. L. No. 112–29, §§ 3(n)(1), 4(e), 125 Stat. 284, 293, 297 (2011).
20 In its Sur-Reply, Patent Owner “agrees that ‘retraction assembly’ should
be construed under § 112(6),” but argues that “Petitioner’s proposed
structure is overly narrow.” PO Sur-Reply 3.
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Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999)). On the full record now before us, we also determine it is not
necessary to construe any claim term expressly to resolve the parties’
dispute. See id. (“only those terms need be construed that are in
controversy, and only to the extent necessary to resolve the controversy”);
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes
review).
IV. GROUNDS OF UNPATENTABILITY
A. Ground 1: Claims 1 and 3 – Anticipated by Shelton II
Petitioner asserts that claims 1 and 3 are anticipated by Shelton II.
Pet. 24–50 (citing Exs. 1001, 1003, 1004).
1. Overview of Shelton II
Shelton II describes a surgical stapling and cutting instrument that
may be equipped with a manual retraction mechanism. Ex. 1004 ¶¶ 2, 14.
Figure 31 is reproduced below:

Figure 31, reproduced above, depicts surgical stapling and severing
instrument 1010 comprising staple applying apparatus 1012 coupled to
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elongate shaft 1018, which in turn is attached to handle 1020. Id. ¶ 125.
Staple applying apparatus 1012 comprises anvil 1014 pivotally attached to
elongate (staple) channel 1016. Id. Closure tube 1024 is coupled between
closure trigger 1026 and anvil 1014. Id. ¶ 1027. Closure trigger 1026 may
be depressed against pistol grip 1036 to move closure tube 1024 distally to
push anvil 1014 pivotally toward elongate channel 1016. Id. ¶¶ 1026–1027.
Multiple stroke firing trigger 1034 can then be depressed against the pistol
grip, which moves linked rack 1200 distally to transfer a firing force to the
staple applying apparatus via firing rod 1032. Id. ¶¶ 130, 132, Figs. 33–37.
Figure 31 also depicts manual firing release lever 1042, which is part
of a manual retraction mechanism. Figures 42 and 44, reproduced below,
depict this mechanism:

Figures 42 and 44, reproduced above, depict manual retraction
mechanism 1500. Id. ¶ 142. Front idler gear 1220 engages a toothed upper,
left surface 1222 of linked rack 1200 (shown in Figure 33). Id. Front idler
gear 1220 also engages aft transmission gear 1230 having a smaller right-
side ratchet gear 1231. Id. The smaller right-side ratchet gear 1231 extends
into hub 1506 of manual retraction lever 1024. Id. ¶ 143. Locking pawl
1516, located in upper recess 1512, is urged downward into engagement
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with ratchet gear 1231 by L-shaped spring tab 1522. Id.; see also id.,
Fig. 43. As manual retraction lever 1042 is sequentially raised and lowered,
locking pawl 1516 rotates clockwise and engages ratcheting gear 1231,
rotating aft transmission gear 1230 clockwise. Id. ¶ 144. This causes
forward idler gear 1220 to rotate counterclockwise, which retracts linked
rack 1200. Id. Combination tension/compression spring 1184 also provides
a retraction force. Id. ¶ 133. Manual retraction mechanism may operate
without the assistance of a retraction spring, however. Id. ¶¶ 144, 154.
2. Principles of Law
a) Anticipation
A prior art reference can only anticipate a claim if it discloses all the
claimed limitations “arranged or combined in the same way as in the claim.”
Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361
(Fed. Cir. 2012) (quoting Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1370 (Fed. Cir. 2008)). “However, a reference can anticipate a claim
even if it ‘d[oes] not expressly spell out’ all the limitations arranged or
combined as in the claim, if a person of skill in the art, reading the reference,
would ‘at once envisage’ the claimed arrangement or combination.”
Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)); see
also Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1343 (Fed. Cir.
2016) (distinguishing Net MoneyIN when the reference in question explicitly
contemplated the combination of the disclosed functionalities).
3. Petitioner’s Contentions
In support of its contention that Shelton II anticipates claims 1 and 3
of the ’749 patent, Petitioner discusses the teachings of Shelton II. See Pet.
24–50. Petitioner provides a detailed assessment of the content of the prior
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art in advocating that all the features of claims 1 and 3 are shown therein.
Id. Petitioner also supports that assessment with citation to the Declaration
testimony of Dr. Knodel. Ex. 1003.
For example, with respect to claim 1, Petitioner asserts that Shelton II
discloses: (1) a handle assembly (Pet. 27–28 (citing Ex. 1004 ¶¶ 125–126,
Figs. 31–37; Ex. 1003 ¶ 91)); (2) an end effector (Pet. 28–29 (citing Ex.
1004 ¶¶ 76–82, 125–126, Figs. 2–6, 31–33; Ex. 1003 ¶¶ 92–94)); (3) the end
effector supporting a firing member (Pet. 29–31 (citing Ex. 1004 ¶¶ 77–80,
Figs. 2, 5, 6; Ex. 1003 ¶¶ 95–98)); (4) a firing drive (Pet. 31–35 (citing Ex.
1004 ¶¶ 126, 128, 130–132, 138–142, Figs. 31–37, 39, 40; Ex. 1003 ¶¶ 99–
104)); and (5) a manual retraction assembly that causes the firing drive to
“generate a sole retraction motion” (Pet. 35–44 (citing Ex. 1004 ¶¶ 142–144,
154, Figs. 33, 35, 40, 42–45; Ex. 1003 ¶¶ 105–112)). Petitioner similarly
shows where it believes the subject matter of claim 3 resides in Shelton II.
Pet. 44–50 (citing Ex. 1003 ¶¶ 113–122; Ex. 1004 ¶¶ 76–78, 84, 125–129,
Figs. 2, 4, 6–8, 31–35).
4. Patent Owner’s Contentions
Patent Owner contends that Petitioner’s anticipation ground of
unpatentability based on Shelton II is deficient. PO Resp. 3–4, 47–63; PO
Sur-Reply 1–2, 6–14. Initially, Patent Owner asserts that Shelton II cannot
anticipate the challenged claims because every embodiment in Shelton II
includes a retraction system that incorporates “a spring or other force
generating member that acts to place a drag on the firing drive.” PO Resp.
3, 48–52. Patent Owner further argues that Petitioner’s theory that one of
ordinary skill in the art “would have immediately envisioned removing
Shelton II’s retraction spring” is incorrect because
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it would significantly alter how the user operates the device.
Moreover, removing Shelton II’s retraction spring would cause
the firing drive to bind during retraction in certain conditions,
thus preventing full retraction of the firing member. Finally,
such a modification would have defied the conventional wisdom
in the art, which was to include a spring to retract the firing
member.
PO Resp. 4, 47–52, 56–63; PO Sur-Reply 6–11.
5. Discussion
We have reviewed the Petition, Patent Owner Response, Petitioner
Reply, Patent Owner Sur-Reply, as well as the relevant evidence discussed
in those papers and other record papers, and as discussed in greater detail
below, we determine that Petitioner has made the requisite showing
regarding claims 1 and 3.
Patent Owner argues that Shelton II does not anticipate independent
claim 1 because a person of ordinary skill “would not immediately envision
removing the retraction spring from Shelton II.” PO Sur-Reply 1; see also
id. at 6–9 (citing Ex. 1004 ¶¶ 7, 9, 66, 107, 149–154; Ex. 2019C ¶ 92; Ex.
2020, 40:14–41:17, 40:9–10). According to Patent Owner, paragraph 154 of
Shelton II does not describe removing Shelton II’s retraction spring (PO Sur-
Reply 6 (citing Ex. 1004 ¶ 154)), but instead, “states only that the manual
retraction mechanism can be used without assistance of the spring.” Id. at 7.
We are not persuaded by Patent Owner’s argument.
Instead, we agree with Petitioner that “Shelton II invites removal of
the retraction spring from the surgical instrument of its illustrated
embodiments” (Pet. Reply 1–2 (citing Pet. 37; Ex. 1003 ¶¶ 57–52; Ex. 1004
¶ 154)), and as such, “a POSITA would have immediately envisioned a
configuration of Shelton II’s surgical instrument 1010 lacking the
tension/compression spring 1184 and relying solely on the manual retraction
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assembly.” Pet. Reply 2 (citing Pet. 37–38). Here, we credit Dr. Knodel’s
testimony that,
a person of ordinary skill would have interpreted Shelton II’s
reference at ¶0154 to “a manual retraction mechanism . . . [that]
may be utilized without the assistance of a retraction spring” as
indicating complete removal of tension/compression spring 1184
from the surgical instrument design. Otherwise, this discussion
of additional embodiments at the end of Shelton II would have
been redundant to the earlier description at ¶0144 where
tension/compression spring 1184 is installed but “disconnected.”
Further still, Shelton II makes clear at ¶0154 that other aspects
of the previously-described retraction mechanism would remain
the same (i.e., “consistent”), meaning that tension/compression
spring 1184 would not be replaced by a different type of force
generating component.
Ex. 1003 ¶ 60. That is, Dr. Knodel understands paragraph 154 of Shelton II
“as indicating complete removal of tension/compression spring 1184 from
the surgical instrument design” (id.), as opposed to simply allowing manual
retraction to be performed without its assistance. And, given the overall
disclosure of Shelton II, we credit Dr. Knodel’s testimony that one of
ordinary skill in the art would have appreciated that “configuration of
Shelton II’s surgical instrument 1010—without tension/compression spring
1184 (and all of its associated components) and relying solely upon the
above-discussed manual retraction assembly components to retract the E-
beam firing member—would have been readily visualized by the ordinarily
skilled person.” Id. ¶ 62.
Relying on its expert Dr. Awtar, Patent Owner argues that “Paragraph
[0154] corresponds to Paragraph [0144], which describes that the manual
retraction mechanism can be used if the retraction spring disconnects (i.e.,
without assistance of the spring).” PO Sur-Reply 7 (citing Ex. 2019C ¶ 92).
According to Patent Owner, Petitioner’s expert, “Dr. Knodel[,] admitted in
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his deposition that Paragraph [0154] does not describe removal of the
retraction spring, but instead refers to Paragraph [0144].” PO Sur-Reply 7–8
(quoting Ex. 2020, 40:14–41:17, 40:9–10). We do not agree.
Initially, we disagree with Patent Owner and Dr. Awtar that paragraph
154 of Shelton II simply corresponds to the disclosure in paragraph 144 of
Shelton II, which discloses manual retraction in a scenario where
tension/compression spring 1184 becomes disconnected. PO Sur-Reply 7–9;
Ex. 1004 ¶¶ 144, 154. Instead, we agree with Petitioner that one of ordinary
skill in the art would have understood paragraph 154 of Shelton II as
“identifying a modification of Shelton II’s prior illustrated embodiments.”
Pet. Reply 3 (citing Ex. 1029 ¶ 7). And, given the overall disclosure of
Shelton II, we credit Dr. Knodel’s testimony that one of ordinary skill in the
art would have appreciated that
when Paragraph [0154] says “a manual retraction mechanism
consistent with aspects of the invention may be utilized without
the assistance of a retraction spring,” the logical way to interpret
this is that the same devices shown and discussed throughout the
specification can be provided “without” the retraction spring.
Again, it would not make sense to read this statement as
referencing a scenario where the retraction spring becomes
disconnected, as this was already described at Paragraph [0144]
and illustrated at Figure 44.
Ex. 1029 ¶ 8; see also id. ¶ 7 (“Each paragraph following Paragraph [0148]
describes something additional—an embodiment modified from those
illustrated in Shelton II’s figures and described in the preceding sections of
the [S]pecification.”). Consequently, we are not persuaded by Patent
Owner’s assertion that Shelton II cannot anticipate the challenged claims
because every embodiment in Shelton II includes a retraction system that
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incorporates “a spring or other force generating member that acts to place a
drag on the firing drive.” PO Resp. 3, 48–52.
We also disagree with Patent Owner that “Dr. Knodel admitted in his
deposition that Paragraph [0154] does not describe removal of the retraction
spring, but instead refers to Paragraph [0144].” Instead, we find Patent
Owner’s argument mischaracterizes and improperly paraphrases Dr.
Knodel’s deposition testimony. See, e.g., Ex. 2020, 39:3–41:17. Here, the
portion of Dr. Knodel’s deposition testimony relied on by Patent Owner is in
response to Patent Owner’s counsel asking Dr. Knodel if he “believe[s] that
paragraph 154 is teaching a person of ordinary skill to remove the retraction
spring from the embodiments disclosed in Shelton II.” Ex. 2020, 39:3–6.
However, under anticipation the issue is not whether paragraph 154 of
Shelton II would teach or suggest one “of ordinary skill in the art to remove
the retraction spring from the embodiments disclosed in Shelton II”; but
rather, whether
a POSITA would have immediately envisioned a configuration
of Shelton II’s surgical instrument 1010 lacking the
tension/compression spring 1184 and relying solely on the
manual retraction assembly. Pet., 37-38; Kennametal, Inc. v.
Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381-83 (Fed. Cir.
2015) (“[A] reference can anticipate a claim . . . if a person of
skill in the art, reading the reference, would at once envisage the
claimed arrangement or combination.”).
Pet. Reply 2. Consistent with this understanding, Dr. Knodel states that
paragraph “154 does not tell you to take out the spring. It tells you that the
spring -- that a retraction spring would not be utilized in the manual
retraction.” Ex. 2020, 40:17–22. Thus, we credit Dr. Knodel’s deposition
testimony for the proposition that Shelton II discloses “manual retraction
with or without the assistance of a retraction spring” (id. at 38:18–21), but
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Patent 7,490,749 B2
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“[i]n the case of without the assistance of a retraction spring, then the
retraction spring is not there.” Id. at 38:21–39:1; see also id. at 54:1–6
(“[W]hat I’m saying in this deposition right now and what I said in my
previous declaration is that the instrument could work without the tension
compression spring 184 for performing the manual retraction function.”).
We also are not persuaded by Patent Owner’s argument that “there are
numerous reasons why [a] POSITA would not have interpreted Paragraph
[0154] in the manner proposed by Dr. Knodel” (PO Resp. 58 (citing Ex.
2019 ¶¶ 91–102)), and as such, one of ordinary skill would not immediately
envision removing the retraction spring from Shelton II.
Patent Owner first argues that one of ordinary skill in the art would
not “immediately envision” removing Shelton II’s retraction spring because
“Shelton II repeatedly describes advantages of including the spring and
accordingly incorporates it into each embodiment.” PO Resp. 58 (citing Ex.
1004 ¶ 14; Ex. 2019 ¶ 93). However, we agree with Petitioner that Shelton
II teaches that automatic retraction is optional. Pet. Reply 3 (citing Ex. 1004
¶ 152; Ex. 1029 ¶ 9).21 Here, we credit Dr. Knodel’s testimony that
[p]aragraph [0152] of Shelton II makes clear that the retraction
spring is “desirable” but “a manual retraction may be
incorporated without this feature.” From the perspective of an
ordinarily skilled person, this means the retraction spring is
optional. When paired with Paragraph [0154]’s further statement

21 Patent Owner argues that Petitioner’s reliance on previously unrelied upon
paragraph 152 of Shelton II “is improper, and should not be considered.”
PO Sur-Reply 9 (citing Ariosa Diagnostics Inc. v. Verinata Health, Inc., 805
F.3d 1359, 1367 (Fed. Cir. 2015)). We conclude, however, that Dr.
Knodel’s testimony and the related discussion regarding paragraph 152 of
Shelton II in the Petitioner Reply is responsive to arguments made by Patent
Owner in its Response and opinions expressed by Dr. Awtar in his
declaration. See, e.g., PO Resp. 58 (citing Ex. 2019 ¶¶ 91–102).
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that “a manual retraction mechanism . . . may be utilized without
the assistance of a retraction spring,” it is clear that Shelton II is
encouraging a person of skill to consider an embodiment where
the optional spring is removed.
Ex. 1029 ¶ 9 (footnote omitted).
In response, Patent Owner argues that paragraph 152 of Shelton II
does not “teach that the retraction spring is optional.” PO Sur-Reply 10
(citing Ex. 1004 ¶ 152). According to Patent Owner, Dr. Knodel explained
that paragraph 152 of Shelton II “describes an instrument that includes a
retraction spring to provide assistance to a manual retraction mechanism.”
PO Sur-Reply 10 (citing Ex. 2020, 49:9–19). Dr. Knodel, however, did not
simply testify that paragraph 152 of Shelton II “describes an instrument that
includes a retraction spring to provide assistance to a manual retraction
mechanism”; but instead, opines that paragraph
152 is the case where the -- we don’t have automatic retraction.
We have manual retraction. And it is replaced there, but it’s
moot on whether the manual retraction is implemented with
assistance from a retraction spring or without assistance from a
retraction spring. I believe 152 leaves it open for -- that it could
be either way. And then 154 clarifies that in this sentence, I want
to be very clear that I’m talking about a manual retraction that is
utilized without the assistance of a retraction spring.
Ex. 2020, 48:20–49:8. Thus, Patent Owner’s argument does not persuade us
that one of ordinary skill would not have immediately envisioned removing
the retraction spring from Shelton II simply because Shelton II describes
including a spring in the illustrated embodiments.
Patent Owner next argues that one of ordinary skill in the art would
not “immediately envision” removing Shelton II’s retraction spring because
doing so “would significantly alter how the user operates its device.” PO
Resp. 58 (citing Ex. 2019 ¶ 94). According to Patent Owner, “Shelton II
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explains that the retraction spring functions to (1) automatically retract the
firing member, and/or (2) provide some retraction force to assist the
clinician in retracting the firing member.” PO Resp. 58–59 (citing Ex. 1004
¶¶ 73, 122). Thus, Patent Owner argues that “removal of the retraction
spring would be inconsistent with the invention of Shelton II, which is an
instrument that includes a spring that assists in retraction.” PO Resp. 59
(citing Ex. 1004 ¶ 14; Ex. 2019 ¶ 94). However, we agree with Petitioner
that “Shelton II did not confine its disclosure or claimed inventions to an
automatic retraction spring.” Pet. Reply 4 (citing Ex. 1004 ¶ 152). We also
credit the testimony of Dr. Knodel that “Shelton II’s device without a
retraction spring would work the same way as when the retraction spring is
disconnected. In each instance, the spring has no effect, and the user pulls
back on the manual lever to retract the firing drive.” Ex. 1029 ¶ 10. Thus,
Patent Owner’s argument is not persuasive.
Patent Owner further argues that one of ordinary skill in the art would
not “immediately envision” removing Shelton II’s retraction spring because
retraction springs were consistently used in the prior art to assist in retracting
the firing member. PO Resp. 59 (citing Ex. 2019 ¶ 95). Thus, Patent Owner
argues that “removal of the spring would be contrary to the conventional
wisdom of endoscopic surgical staplers at the time of the 749 Patent.” PO
Resp. 59 (citing Ex. 2019 ¶¶ 95–97).
However, we agree with Petitioner that “[p]aragraph [0154]’s
disclosure of ‘a manual retraction mechanism . . . without the assistance of a
retraction spring’ clearly conveys an instrument that retracts without the
previously-disclosed spring.” Pet. Reply 3. As Petitioner and Dr. Knodel
point out, “[t]he record evidence shows that both configurations—automatic
and manual retraction—were part of conventional wisdom.” Id. at 6; Ex.
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1029 ¶¶ 16–17 (citing Ex. 2018, 18:12–19:13); see also Ex. 1029 ¶ 11 (Dr.
Knodel states that “[b]y the time of the ’749 Patent, the 2006-2007
timeframe, both automatic retraction and fully manual retraction
mechanisms [without springs] were part of the conventional wisdom.”)
(footnote omitted).
Patent Owner last argues that one of ordinary skill in the art would not
“immediately envision” removing Shelton II’s retraction spring because “a
POSITA would have underst[ood] that Shelton II would not reliably retract
the firing member if the spring were removed from the instrument.” PO
Resp. 61 (citing Ex. 2019 ¶¶ 98–101). Relying on its expert, Dr. Awtar,
Patent Owner argues that if the spring in Shelton II were removed, “there
would be no component to guide the linked rack back into the pistol grip
during retraction” (PO Resp. 62 (citing Ex. 2019 ¶¶ 99–100), and as such,
“the linked rack would be prone to binding in certain conditions because it
would engage obstructions that prevent it from returning to the pistol grip of
the handle assembly (thus preventing full retraction).” PO Resp. 62 (citing
Ex. 2019 ¶ 100). We are not persuaded by Patent Owner’s argument.
The difficulty with Patent Owner’s argument is that it is premised
solely on Dr. Awtar’s speculation that “the linked rack would be prone to
binding” without a retraction spring. PO Resp. 62 (citing Ex. 1029 ¶¶ 99–
100). Yet, as Petitioner points out, Dr. Awtar conceded during deposition
that “‘[t]here is no reference to a binding problem in the text of the Shelton
II patent specification.’” Pet. Reply 6–7 (quoting Ex. 1015, 71:3–5).
Instead, we credit Dr. Knodel’s testimony that
[b]ecause Shelton II’s retraction spring does not guide the
proximal end of the linked rack, its removal would not lead to
the binding problem alleged by Dr. Awtar. If such a problem
existed in Shelton II’s device, it would have been present
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Patent 7,490,749 B2
24
regardless of the retraction spring. But Shelton II[] says nothing
about a potential binding problem, which tends to suggest that no
such problem exists.
Ex. 1029 ¶ 21. In addition, given the overall disclosure of Shelton II, we
credit Dr. Knodel’s testimony that
even if there were such a binding problem (with or without the
retraction spring), a person of ordinary skill would have readily
solved it. For example, a track or guide surface built into the
housing could be used to direct the linked rack into the handle of
the device. This would have been a trivial matter for an
ordinarily skilled person to resolve.
Id. ¶ 22. Thus, we conclude that Shelton II discloses “a manual retraction
mechanism . . . without the assistance of a retraction spring” (Ex. 1004
¶ 154) and the evidence supports Petitioner’s position that that one of
ordinary skill “would have immediately envisioned a configuration of
Shelton II’s surgical instrument 1010 lacking the tension/compression spring
1184 and relying solely on the manual retraction assembly.” Pet. 37–38
(citing Ex. 1003 ¶ 62). See Blue Calypso, 815 F.3d at 1343–44.
6. Conclusion
We have reviewed Petitioner’s contentions regarding independent
claim 1, and are persuaded that Petitioner has proven, by a preponderance of
the evidence, that independent claim 1 is anticipated by Shelton II.
7. Dependent Claim 3
Patent Owner does not argue separately dependent claim 3 in its
Response, only disputing Petitioner’s contentions with respect to parent
claim 1. See Generally, PO Resp; PO Sur-Reply.
We have reviewed Petitioner’s contentions regarding claim 3, which
are consistent with the disclosure of Shelton II and supported by the
testimony of Dr. Knodel, and are persuaded that Petitioner has proven, by a
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25
preponderance of the evidence, that dependent claim 3 is anticipated by
Shelton II. See Pet. 44–50.
8. Conclusion
We have carefully considered the positions of the parties as to
whether Shelton II anticipates claims 1 and 3 of the ’749 patent and the
evidence cited in support of those respective positions. We conclude that
Petitioner has shown, in its Petition, where all the limitations of claims 1 and
3, as they are arranged in those claims, are found in Shelton II. See Pet. 24–
50. Accordingly, we conclude that Petitioner has shown, by a
preponderance of the evidence, that claims 1 and 3 are anticipated by
Shelton II.
B. Petitioner’s Additional Challenges
Petitioner presents an alternative asserted ground of unpatentability of
claims 1 and 3 as obvious over Shelton II. Pet. 39–44. Petitioner also
presents two additional grounds of unpatentability of claims 1 and 3 as
anticipated/obvious over Swayze (id. at 50–57) and obvious over Shelton I.
Id. at 57–85. Because the challenge based on Shelton II, discussed above, is
dispositive of all the challenged claims, we need not reach Petitioner’s other
challenges as to these same claims. See SAS Inst., Inc. v. Iancu, 138 S. Ct.
1348, 1359 (2018) (holding a petitioner “is entitled to a final written
decision addressing all of the claims it has challenged”). Cf. In re Gleave,
560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other grounds of
unpatentability after affirming a ground based on anticipation); see also
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (an
administrative agency is at liberty to reach a decision based on a dispositive
issue).
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V. MOTION TO EXCLUDE
Petitioner has filed a Motion to Exclude. Paper 36.22 Petitioner seeks
“to exclude, in whole or in part, Exhibits 2003-2007, 2009 and 2013-2015.”
Id. at 1. Petitioner also seeks to exclude “Exhibit 2003 and Appendices 1–2
of Exhibit 2009 (the Hearsay Exhibits)” as improper hearsay under Federal
Rule of Evidence 801 and as unauthenticated under Federal Rule of
Evidence 901. Id. at 1–10. Petitioner further seeks to exclude Exhibits
2004–2007 as unauthenticated under Federal Rule of Evidence 901. Id. at
5–10. Petitioner still further seeks to exclude Exhibits 2013–2015 as they
violate the Board’s rules. Id. at 11–12 (citing 37 C.F.R. §§ 42.53(a), (f)).
Petitioner’s Motion is dismissed as moot because it seeks to exclude
evidence not considered or relied upon in rendering this Decision.
VI. CONCLUSION
Based on the information presented, we conclude that Petitioner has
shown, by a preponderance of the evidence, that claims 1 and 3 of the ’749
patent are unpatentable.23
In summary:

22 A public, redacted version of Petitioner’s Motion to Exclude was filed as
Paper 35.
23 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding, 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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Claims 35
U.S.C.
§
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 3 102/103 Shelton II 1, 3
1, 3 102/103 Swayze24
1, 3 102 Shelton I
Overall
Outcome
1, 3
VII. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1 and 3 of the ’749 patent have been shown to
be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is
dismissed as moot; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

24 As explained above, because we find that Petitioner has demonstrated
claims 1 and 3 are anticipated by Shelton II, it is unnecessary for us to reach
the remaining grounds of unpatentability proposed by Petitioner. In re
Gleave, 560 F.3d at 1338.
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FOR PETITIONER:

Steven Katz
Joshua Griswold
Kenneth Darby, Jr.
John Phillips
Ryan O’Connor
FISH & RICHARDSON P.C.
3200 RBC Plaza
60 South Sixth Street
Minneapolis, MN 55402
katz@fr.com
griswold@fr.com
kdarby@fr.com
phillips@fr.com
oconnor@fr.com

FOR PATENT OWNER:

Anish R. Desai
Elizabeth Stotland Weiswasser
Adrian Percer
Christopher Marando
Christopher Pepe
WEIL, GOTSCHAL & MANGES LLP
767 Fifth Avenue
New York, NY 10153
anish.desai@weil.com
elizabeth.weiswasser@weil.com
adrian.percer@weil.com
christopher.marando@weil.com
christopher.pepe@weil.com