Ethicon LLC

Patent Trials and Appeals Board

Nov 20, 2020

IPR2019-01110 (P.T.A.B. Nov. 20, 2020)

Trials@uspto.gov Paper 30
571-272-7822 Date: November 20, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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

IPR2019-01110
Patent 8,602,288 B2

Before JOSIAH C. COCKS, ZHENYU YANG, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Granting in part and Denying in part Patent Owner’s Motion to Amend
35 U.S.C. § 318(a)

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I. INTRODUCTION
On May 23, 2019, Intuitive Surgical, Inc. (Petitioner”) filed a Petition
requesting inter partes review of claims 10 and 11 of U.S. Patent 8,602,288
B2 (Ex. 1001) (“the ’288 patent”). Paper 2 (“Pet.”). Ethicon LLC (“Patent
Owner”) filed a Preliminary Response on September 15, 2019. Paper 6
(“Prelim. Resp.”). We determined, based on the information presented in the
Petition and Preliminary Response, that there was a reasonable likelihood
that Petitioner would prevail in showing that claims 10 and 11 were
unpatentable. Pursuant to 35 U.S.C. § 314, the Board instituted trial on
December 4, 2019. Paper 7 (“Inst. Dec.”).
Patent Owner did not file a Response to the Petition. Instead, Patent
Owner filed a non-contingent Motion to Amend on March 12, 2020
substituting claims 12 and 13 for claims 10 and 11.1 Paper 14 (“MTA”).
Petitioner filed an Opposition to the Motion to Amend on June 18, 2020.
Paper 19 (“MTA Opp.”). At Patent Owner’s request, we provided
Preliminary Guidance concerning Patent Owner’s Motion to Amend on June
30, 2020. Paper 21 (“Prelim. Guid.”). Patent Owner then filed a Reply in
Support of its Motion to Amend on July 31, 2020. Paper 24 (“MTA Reply”).
Petitioner filed a sur-reply on August 13, 2020. Paper 27 (“MTA Sur-reply”)
Oral arguments relating to Patent Owner’s Motion to Amend were
heard on September 10, 2020. A copy of the transcript has been entered into
the record. Paper 29 (“Tr.”).

1 While the Motion to Amend did not clearly state whether the Motion was
non-contingent, in its Reply, Patent Owner stated that the Motion to Amend
was non-contingent. MTA Reply, 1. Patent Owner confirmed that the
Motion to Amend was non-contingent at the Oral Hearing. Tr. 4.
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We have jurisdiction under 35 U.S.C. § 6. We issue this Final Written
Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
reasons discussed below, Patent Owner’s Motion to Amend is granted with
respect to cancelling claims 10 and 11 and denied with respect to proposed
substitute claims 12 and 13.
A. Real Parties in Interest
Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner, Intuitive Surgical, Inc.
identifies itself as the real party in interest. Pet. 2.
Patent Owner states that it is an indirect subsidiary of Johnson &
Johnson. Paper 5, 2. Patent Owner also states that the ’288 patent is licensed
to Ethicon Endo-Surgery, Inc., which has in turn sublicensed the ’288 patent
to Ethicon US, LLC. Id. Patent Owner states that Ethicon Endo Surgery, Inc.
and Ethicon US, LLC are also indirect subsidiaries of Johnson & Johnson.
Id.
B. Related Matters
The parties have indicated that the ’288 patent is involved in the
following litigation: Ethicon LLC et al. v. Intuitive Surgical, Inc. et al., C.A.
No. 1:18-cv-01325-LPS (D. Del.). Pet. 2; Paper 5, 2.
Patent Owner also represents that patents assigned to Patent Owner
and asserted against Petitioner in the litigation listed above are involved in
the following IPRs: IPR2018-00933, -934, -935, -936, -938, -1247, -1248,
-1254, -1703, IPR2019-00880, -00991, and -01066. Id.
C. The ’288 Patent
The ’288 patent is entitled Robotically-Controlled Motorized Surgical
End Effector System with Rotary Actuated Closure Systems Having
Variable Actuation Speeds. Ex. 1001, code (54). The ’288 patent issued
from U.S. App. No. 13/369,588, filed on Feb. 9, 2012, which is a
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continuation of U.S. App. No. 13/118,253, filed on May 27, 2011, which is a
continuation-in-part of U.S. App. No. 12/235,972, filed on Sept. 23, 2008.
Ex. 1001, codes (21), (45), and (63).
The ’288 patent generally relates to motorized surgical instruments.
Ex. 1001, col. 1, ll. 62–66. In one embodiment, the instrument comprises an
end effector which includes a component or part which can be selectively
moved between first and second position where the movement of the
component occurs in two phases and where the rate of movement during one
phase is different from the rate of movement in the other phase. Id. Abstr.
The end effector may comprise “graspers, cutters, staplers, clip appliers,
access devices, drug/gene therapy devices, ultrasound, RF or laser devices”
and the like. Id. at col. 9, ll. 46–52. In one embodiment, the moveable
component is an anvil of a surgical stapler. Id. at col. 10, ll. 1–19.
The ’288 patent discloses at least two methods for controlling the rate
at which the anvil is closed. The first involves the use of a variable pitch
groove/thread arrangement to close the anvil at two different rates. Id. at col.
53, ll. 50–64; Pet. 7–8. The second involves the use of a trunnion which
engages a slot having a steeper proximal portion and a shallower distal
portion. Ex. 1001, Figs. 57–58, col. 50, ll. 15–18; col. 4, ll. 60–63; Pet. 9–
10.
D. Proposed Substitute Claims
In its Motion to Amend, Patent Owner proposes substitute claims 12
and 13 for original claims 10 and 11, the only claims challenged in the
Petition. MTA 1. Substitute claims 12 and 13 read as follows2:

2 The claims are annotated to show the differences between the original
claims and the proposed substitute claims with underlining showing
limitations added to the claims and brackets showing deletions.
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12. (proposed substitute for claim 10) A surgical tool for
use with a robotic system that has a tool drive assembly that is
operatively coupled to a control unit of the robotic system that
is operable by inputs from an operator and is configured to
provide rotary output motions to a plurality of rotatable body
portions supported on the tool drive assembly, said surgical tool
comprising:
a surgical end effector comprising:
at least one component portion comprising a rotatable
jaw that is selectively movable between first and second
positions relative to at least one other component portion
thereof; and
a staple cartridge comprising a plurality of staples and a
sled, said staples being configured to be ejected out of said
staple cartridge by a distal movement of said sled through said
end effector;
an elongated shaft assembly operably coupled to said
surgical end effector, said elongated shaft assembly comprising:
an axially movable portion comprising a first cam in
operable communication with said at least one selectively
movable component portion of said surgical end effector,
wherein said first cam is configured to communicate with said
rotatable jaw to transmit closing motions thereto;
[and]
a rotatably movable portion comprising a rotatable drive
shaft configured to rotate in response to one of said rotary
output motions; said rotatable drive shaft in operable
engagement with said axially movable portion wherein an
initial rotation of said rotatably movable portion causes said
axially movable portion to move said selectively movable
component portion of said surgical end effector from said first
position into an intermediate position at a first rate, wherein a
subsequent rotation of said rotatably movable portion in a same
direction causes said axially movable portion to move said
selectively movable component portion of said surgical end
effector from said intermediate position to said second position
at a second rate, and wherein said first rate is greater than said
second rate[.];
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a first articulation joint configured to articulate said end
effector about a first axis in response to one of said rotary
output motions;
a second articulation joint configured to articulate said
end effector about a second axis in response to one of said
rotary output motions; and
a tool mounting plate supporting said elongate shaft
assembly and configured to be releasably mounted to said tool
drive assembly, said tool mounting plate comprising a plurality
of driven elements configured for driving engagement with a
corresponding plurality of rotatable body portions of said tool
drive assembly when said tool mounting plate is mounted to
said tool drive assembly.

13. (proposed substitute for claim 11) A surgical tool for
use with a robotic system that has a tool drive assembly that is
operatively coupled to a control unit of the robotic system that
is operable by inputs from an operator and is configured to
provide rotary output motions to a plurality of rotatable body
portions supported on the tool drive assembly, said surgical tool
comprising:
a surgical end effector comprising:
at least one component portion comprising a rotatable
jaw that is selectively movable between first and second
positions relative to at least one other component portion
thereof; and
a staple cartridge comprising a plurality of staples and a
sled, said staples being configured to be ejected out of said
staple cartridge by a distal movement of said sled through said
end effector;
an elongated shaft assembly operably coupled to said
surgical end effector, said elongated shaft assembly comprising:
an axially movable portion comprising a first cam in
operable communication with said at least one selectively
movable component portion of said surgical end effector,
wherein said first cam is configured to communicate with said
rotatable jaw to transmit closing motions thereto;
[and]
a rotatably movable portion comprising a rotatable drive
shaft configured to rotate in response to one of said rotary
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output motions; said rotatable drive shaft in operable
engagement with said axially movable portion wherein an
initial rotation of said rotatably movable portion causes said
axially movable portion to move said selectively movable
component portion of said surgical end effector from said first
position into an intermediate position at a first rate, wherein a
subsequent rotation of said rotatably movable portion in a same
direction causes said axially movable portion to move said
selectively movable component portion of said surgical end
effector from said intermediate position to said second position
at a second rate, and wherein said rotatably movable portion
comprises a closure member in threaded engagement with said
axially movable portion[.];
a first articulation joint configured to articulate said end
effector about a first axis in response to one of said rotary
output motions;
a second articulation joint configured to articulate said
end effector about a second axis in response to one of said
rotary output motions; and
a tool mounting plate supporting said elongate shaft
assembly and configured to be releasably mounted to said tool
drive assembly, said tool mounting plate comprising a plurality
of driven elements configured for driving engagement with a
corresponding plurality of rotatable body portions of said tool
drive assembly when said tool mounting plate is mounted to
said tool drive assembly.

E. Evidence
Petitioner relies on the following references:
Timm et al., US 7,510,107 B2, issued March 31, 2009 (Ex. 1006
“Timm”).
Anderson et al., US 6,783,524 B2, issued August 31, 2004 (Ex. 1008
“Anderson”).
Schulze et al., US 5,632,432, issued May 27, 1997 (Ex. 1007
“Schulze”).
Viola et al., US 5,915,616, issued June 29, 1999 (Ex. 1005 “Viola”).
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Tierney et al., US 6,331,181 B1, issued December 18, 2001 (Ex. 1009
“Tierney”).
Petitioner also relies on the Declaration of Dr. Gregory S. Fischer and
the Supplemental Declaration of Dr. Gregory S. Fischer. Exs. 1003 and
1023. Patent Owner relies on the Declaration of Dr. William Cimino. Ex.
2012.
F. Prior Art and Asserted Grounds
Petitioner asserts that proposed substitute claims 12 and 13 would
have been unpatentable on the following grounds:3
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
12, 13 112, first paragraph Written Description
4
12, 13 103(a) Timm, Anderson, Schulze, Viola, Tierney
12, 13 103(a) Timm, Anderson, Schulze, Shelton, Tierney

II. ANALYSIS
A. Statutory and Regulatory Requirements for the Motion to Amend
While the Board must assess the patentability of the proposed
substitute claims “without placing the burden of persuasion on the patent

3 The provisions of the America Invents Act regarding novelty and
obviousness apply to patents containing at least one claim having an
effective filing date on or after March 16, 2013. Pub L. 112–29. Petitioner
contends and Patent Owner does not contest that the ’288 patent has an
effective filing date of at least May 27, 2011. Pet. 4. Therefore, the Pre-AIA
provisions of 35 U.S.C. §§ 102, 103, and 112 apply to this decision.
4 We do not address this asserted ground because, as discussed below, it is
Patent Owner’s burden to show that the proposed substitute claims have
written description support.
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owner,” Aqua Prods., 872 F.3d at 1328 (en banc), Patent Owner’s proposed
substitute claims, however, must still meet the statutory requirements of 35
U.S.C. § 316(d) and the regulatory requirements of 37 C.F.R. § 42.121 as a
threshold matter. See USPTO’s Memorandum, Guidance On Motions to
Amend in view of Aqua Products (Nov. 2017), available at
https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_
to_amend_11_2017.pdf. Accordingly, Patent Owner must demonstrate: (1)
the amendment proposes a reasonable number of substitute claims; (2) the
amendment does not seek to enlarge the scope of the claims of the patent or
introduce new subject matter; (3) the amendment responds to a ground of
unpatentability involved in the trial; and (4) the original disclosure sets forth
written description support for each proposed claim. See 35 U.S.C.
§ 316(d)(1)(B), (3); 37 C.F.R. § 42.121; Hospira, Inc. v. Genentech, Inc.,
IPR2017-00737, Paper 108 at 47 (PTAB Oct. 3, 2018).
1. Patent Owner Proposes a Reasonable Number of Claims.
Patent Owner’s Motion to Amend substitutes one substitute claim for
each of the challenged claims. MTA 4. This is a reasonable number of
claims. See 37 C.F.R. § 41.121(a)(3) (“The presumption is that only one
substitute claim would be needed to replace each challenged claim.”).
2. The Proposed Substitute Claims do not Enlarge the Scope of the Claims
Patent Owner contends that the proposed substitute claims do not
enlarge the scope of the claims of ’288 patent as the proposed substitute
claims include narrowing limitations. MTA 2. Petitioner does not contest
Patent Owner’s contention. See MTA Opp. 1–5.
We find that the proposed substitute claims do not enlarge the scope
of the ’288 patent’s claims. The proposed substitute claims add limitations
relative to the original claims such as requiring the presence of a staple
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cartridge and a tool mounting plate, which narrow the scope of the claims.
MTA 2–3.
3. The Amendments Respond to a Ground of Unpatentability
Patent Owner contends that the proposed amendments respond to a
ground of unpatentability. MTA 14–17. Specifically Patent Owner contends
that the proposed substitute claims include limitations calling for “(1) a
staple cartridge comprising a sled that ejects staples through distal
movement of the sled through an end effector; (2) multiple articulation
joints; and (3) articulation in response to rotary output motion from a tool
drive assembly of a robotic system.” Id. at 14–15. Patent Owner contends
that these limitations address the grounds of invalidity based on Heinrich5
alone or in combination with Viola and/or Anderson. Id. Patent Owner also
contends that the limitation calling for a mounting plate distinguishes the
invention from the teachings of Timm, either alone or in combination with
Viola or Schulze. Id. at 16.
We agree that proposed substitute claims 12 and 13 each recite new
limitations or new combinations of limitations which are offered to address
the grounds of unpatentability recited in the Petition.
4. The Amendments Introduce New Matter and Lack Written Description
Support
Proposed substitute claims 12 and 13 introduce limitations calling for
(1) an axially movable closure cam; (2) a rotatable drive shaft, which causes
the axially movable cam to close a jaw; and (3) two articulation joints. MTA
A-1–A-5. Patent Owner contends that these elements are supported by the
Specification and do not introduce new matter. MTA 8–10, 12–13.

5 Heinrich et al., US 2005/0131390 A1, published June 16, 2005 (Ex. 1004
“Heinrich”).
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Petitioner contends that while the Specification discloses each of the
individual elements of the proposed substitute claims the Specification does
not disclose a single embodiment that includes all of the recited elements.
MTA Opp. 2. Petitioner contends that Patent Owner is improperly
combining features of two different embodiments from the Specification. Id.
at 2–4.
Patent Owner responds that there is no requirement that a single
embodiment be present in the Specification to provide written support as
long as the Specification provides sufficient description to “convey with
reasonable clarity to a POSITA that the applicant possessed the invention
claimed in proposed substitute claims 12 and 13.” MTA Reply 3. Patent
Owner, through its expert, contends that the Specification provides a
sufficient description to support proposed substitute claims 12 and 13. Id.;
Ex. 1012 ¶¶ 32–42. Patent Owner contends that one skilled in the art would
have understood that the embodiments described in the Specification are not
to be considered separate instruments but would have understood that they
possess common elements. MTA Reply 3–6; Ex. 1012 ¶¶ 39–42. Patent
Owner contends that one skilled in the art would understand that features
from one embodiment could be successfully incorporated into another,
specifically, that “the two joint articulation mechanism of surgical tool 6000
(driven by articulation drive gear 6322 attached to one of the driven
elements 1304) was complementary to and suitable to be used with the
closure and firing mechanisms described with respect to surgical tool
3400[6].” MTA Reply 6 (footnote omitted); Ex. 2012 ¶¶ 39–42.

6 We use the same shorthand to refer to the different embodiments as the
parties. Embodiment 3400 refers to the endocutter system shown in Ex.
1001, Figs. 72–76 and discussed at col. 54, l. 41–col. 56, l. 20. Embodiment
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Petitioner responds that while it may have been obvious to combine
different elements from different embodiments, that is not the same as
satisfying the written description requirement. MTA Sur-reply 2. Petitioner
contends that the Specification must contain sufficient disclosure that the
inventors contemplated “adding embodiment 6000’s articulation mechanism
to embodiment 3400.” Id. Petitioner contends that the present Specification
does not contain such a disclosure. Id. at 3–5.
We have considered the arguments presented by the parties and the
evidence of record and conclude that proposed substitute claims 12 and 13
are not sufficiently supported by the Specification. While we agree with
Patent Owner that a single embodiment with all the features of the claims is
not required to satisfy the written description requirement, the disclosure
must convey with reasonable clarity to one skilled in the art that the
inventors possessed the invention claimed in proposed substitute claims 12
and 13. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010). We find that the present disclosure does not meet this
requirement.
In support of its contention that one skilled in the art would have
recognized that the inventors contemplated combining the articulation
element of the 6000 embodiment to the 3400 embodiment, Patent Owner
points to the Declaration of Dr. Cimino. MTA Reply 3. Dr. Cimino testifies
that one skilled in the art would understand that the various embodiments are
not to be viewed in isolation. Ex. 2012 ¶ 39. To support this observation, Dr.
Cimino points to the teachings of the Specification where it states “[t]he

6000 refers to the endocutter system shown in Ex. 1001, Figs. 135–140 and
discussed at col. 79, l. 8–col. 80, l. 62.

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features illustrated or described in connection with one exemplary
embodiment may be combined with the features of other embodiments. Such
modifications and variations are intended to be included within the scope of
the present invention.” Id. (quoting Ex. 2003 ¶ 154). Dr. Cimino also
contends that this language would lead one skilled in the art to understand
that the various control motions disclosed in the ’288 patent are all operable
on the same surgical instrument. Id.
Based on a preponderance of the evidence we disagree with Patent
Owner’s contentions.. The cited paragraphs only discuss the possibility of
combining various unspecified aspects of the invention with each other. We
discern nothing in the cited passage which would inform one skilled in the
art that the inventors contemplated the specific combination of elements
recited in the proposed substitute claims. As Petitioner points out, the
portions of the Specification cited by Patent Owner do not inform one
skilled in the art that the inventors were in possession of the claimed subject
matter. MTA Sur-Reply, 4; See, e.g., Fujikawa v. Wattanasin, 93 F.3d 1559,
1571 (Fed. Cir. 1996) (“In the absence of such blazemarks, simply
describing a large genus of [potential surgical instruments] is not sufficient
to satisfy the written description requirement as to particular species or
subgenuses.”).
Patent Owner also contends that the teaching in the ’288 patent that
the two embodiments are operated using the same rotary output motions
would have led one skilled in the art to conclude that the inventors
contemplated an embodiment using the articulation mechanism of
embodiment 6000 in embodiment 3400. MTA Reply 4–5. Patent Owner
contends that one skilled in the art “would have understood that the closure
and cutting mechanisms are complimentary to articulation mechanisms,
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including either a single articulation joint driven by one rotary control
motion (Figs. 34-36) or two articulation joints driven by one rotary control
motion (Fig. 136-139).” Id. at 5 (citing Ex. 2012 ¶¶ 39–41, Ex. 2003 ¶¶ 234,
367, 389).
Again we do not agree with Patent Owner’s argument. While it is
clear that the two embodiments use the same drive mechanisms, Patent
Owner and Dr. Cimino do not adequately explain how this demonstrates that
the inventors contemplated using the articulation mechanism of the 6000
embodiment in the 3400 embodiment. See MTA Reply 5; Ex. 2012 ¶ 40.
Patent Owner’s statement that the two embodiments are complementary
does not explain how the combination of elements recited in the proposed
substitute claims was contemplated by the inventors. See, e.g., Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (“One shows
that one is ‘in possession’ of the invention by describing the invention, with
all its claimed limitations, not that which makes it obvious.”); Ariad Pharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc)
(noting the “well-settled” principle that “a description that merely renders
the invention obvious does not satisfy the [written description]
requirement.”). This is especially true given Dr. Cimino’s testimony that the
closure mechanisms of the two embodiments operate differently such that
the articulation mechanism of the 6000 embodiment would not work with
the closure mechanism of the 3400 embodiment. Ex. 1024, 22–33.
Based on the forgoing, we conclude that Patent Owner has not shown
that the proposed substitute claims meet the statutory requirements.7

7 While we acknowledge that in our Preliminary Guidance we found that the
proposed substitute claims were supported by the Specification and did not
introduce new matter, that finding was preliminary and non-binding. Prelim.
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Specifically, Patent Owner has not shown that the proposed substitute claims
are fully supported by the Specification and do not introduce new matter.
As discussed above, while each of the elements of the proposed substitute
claims can be found in either embodiment 3400 or embodiment 6400, Patent
Owner has not pointed to, nor do we discern, either a specific embodiment
containing all of the elements or a teaching in the Specification that the
inventors contemplated combining the articulation mechanism of the 6400
embodiment in the 3400 device. That alone is sufficient reason to deny
entry of those proposed substitute claims. Nevertheless, we also proceed to
evaluate the patentability of the substitute claims over the prior art.
B. Legal Standards
In an inter partes review, amended claims are not added to a patent as
of right, but rather must be proposed as a part of a motion to amend. 35
U.S.C. § 316(d). The Board must assess the patentability of proposed
substitute claims “without placing the burden of persuasion on the patent
owner.” Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017)
(en banc); see also Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129,
Paper 15 at 3‒4 (PTAB Feb. 25, 2019) (precedential). Subsequent to the
issuance of Aqua Products, the Federal Circuit issued a decision in Bosch
Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017)
(“Bosch”), as well as a follow-up order amending that decision on rehearing.
See Bosch Auto. Serv. Sols., LLC v. Iancu, No. 2015-1928 (Fed. Cir. Mar.
15, 2018) (Order on Petition for Panel Rehearing).

Guid. 2. Petitioner has subsequently presented additional arguments which
have persuaded us that our preliminary conclusions were in error. See MTA
Sur-reply 2–7.
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In accordance with Aqua Products, Bosch, and Lectrosonics, a patent
owner does not bear the burden of persuasion to demonstrate the
patentability of the substitute claims presented in the motion to amend.
Rather, ordinarily, “the petitioner bears the burden of proving that the
proposed amended claims are unpatentable by a preponderance of the
evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing);
Lectrosonics, Paper 15 at 3–4. In determining whether a petitioner has
proven unpatentability of the substitute claims, the Board focuses on
“arguments and theories raised by the petitioner in its petition or opposition
to the motion to amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir.
2020).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art; (3)
the level of skill in the art; and (4) objective evidence of nonobviousness.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Objective evidence of
nonobviousness may include the following: “commercial success, long felt
but unsolved needs, failure of others, etc.” Id.
We analyze the patentability of proposed substitute claims 12 and 13
in accordance with the above-stated principles.
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C. Level of Ordinary Skill in the Art
The level of ordinary skill in the art is a factual determination that
provides a primary guarantee of objectivity in an obviousness analysis.
AlSite Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing
Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. NuStar, Inc., 950 F.2d 714,
718 (Fed. Cir. 1991)).
Petitioner, through its declarant, Dr. Fischer, contends that
[a] person of ordinary skill in the art at the time of the
claimed invention (“POSITA”) would have had the equivalent
of a Master’s degree or higher in mechanical engineering,
electrical engineering, biomedical engineering, or a related field
directed towards medical electro-mechanical systems and at
least 2-3 years working experience in research and development
for surgical instruments. Experience could take the place of
some formal training, as relevant skills may be learned on the
job. This description is approximate, and a higher level of
education might make up for less experience, and vice versa.

Ex. 1003 ¶ 30. Patent Owner has not contested this definition of the skilled
artisan’s qualification. See MTA, 7–8. For purposes of this decision, we
adopt Dr. Fischer’s description of the level of ordinary skill in the art.
We also note that the applied prior art reflects the appropriate level of
skill at the time of the claimed invention. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001).
D. Claim Construction
We interpret a claim 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).
See Changes to the Claim Construction Standard for Interpreting Claims in
Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b)
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effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b)
(2019)). Under this standard, we construe 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.”
Id. Furthermore, we need only construe the claims to the extent necessary to
resolve the issue of whether the proposed substitute claims are patentable.
See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in
controversy, and only to the extent necessary to resolve the controversy. . .
.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999))).
As seen from the discussion which follows, we need not construe any
of the terms of the claims to resolve the issues before us.

E. Patentability of the Proposed Substitute Claims
1. Motivation to Combine References
“It is well-established that before a conclusion of obviousness may be
made based on a combination of references, there must have been a reason,
suggestion, or motivation to lead an inventor to combine those references.”
Pro-Mold & Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573 (Fed.
Cir. 1996).
[A] proper analysis under § 103 requires, inter alia,
consideration of two factors: (1) whether the prior art would have
suggested to those of ordinary skill in the art that they should
make the claimed composition or device, or carry out the claimed
process; and (2) whether the prior art would also have revealed
that in so making or carrying out, those of ordinary skill would
have had a reasonable expectation of success. Both the
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suggestion and the reasonable expectation of success must be
founded in the prior art, not in the applicant’s disclosure.

In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991) (citation omitted).
Each of the grounds asserted by Petitioner relies, at least in part, on
the combined teachings of Timm and Anderson. See, MTA Opp. 6, 18–19.
Central to both grounds is the issue of whether one skilled in the art would
have been motivated to combine the teachings of the references to create the
claimed invention and whether one skilled in the art would have had a
reasonable expectation of success in combining the teachings of the
references to arrive at the claimed subject matter. See MTA Opp. 6–10;
MTA Reply 7–18. Therefore we will first address the issues of motivation to
combine Timm with Anderson and whether one skilled in the art would have
had a reasonable expectation of success in doing so before we address
whether the combination of Timm and Anderson, and the other asserted
references (if necessary) teach all of the limitations of the proposed
substitute claims.
a) Timm
Timm relates to a surgical instrument such as a surgical stapler.
Ex.1006, col. 1, ll. 8–13. Referring to Figure 73A, reproduced below, in one
embodiment, the opening and closing of the stapler is accomplished using a
closure ring which engages a ramp at the end of the anvil. Id. at col. 36, ll.
18–24. As the closure ring is moved forward, the anvil is moved relative to
the staple cartridge. Id. The movement of the closure ring is controlled by
the rotation of a closure tube, which is threadably connected to the closure
ring. Id. In this embodiment, the anvil includes a pair of trunnions which
engage slots in the device which regulate the rate at which the anvil moves.
Id. at col. 35, l. 64 – col. 36, l. 3; col. 45, ll. 45–55; Ex. 1003 ¶ 89.
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Figure 73A of Timm illustrates a portion of a surgical stapler and is
reproduced below:

Figure 73A of Timm as annotated by Petitioner showing a partial
cross-section of a surgical stapling and severing instrument. Pet. 33.

b) Anderson
Anderson discloses an apparatus for enhancing robotic surgery. Ex.
1008, col. 3, ll. 64–65. The apparatus of Anderson comprises a tool drive
assembly coupled to a control station that is operated by a surgeon or other
user. Id. at col. 10, l. 40–col. 12, l. 22, col. 15, ll. 3–8, col. 21, l. 66–col. 22,
l. 19, col. 31, ll. 31–45, Figs. 1, 2, 12A–D, and 20.
c) Discussion
Petitioner contends that one skilled in the art would have been
motivated to combine the teachings of Timm with Anderson to produce a
surgical instrument like that taught by Timm that is operated by a robotic
system such as that taught by Anderson. MTA Opp. 6. In support of this
contention, Petitioner points to the teachings in Timm that the surgical
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instruments described therein can be robotically operated. Id. (citing Ex.
1006, col. 8, ll. 3–8, col. 12, ll. 1–3, col. 19, ll. 28–36; Ex. 1023 ¶¶ 42–72).
Petitioner also contends that one skilled in the art would have had a
reasonable expectation of success in producing a robotically controlled
instrument as claimed. MTA Opp. 9–10. Petitioner supports this contention
by pointing to various prior art systems where handheld surgical tools such
as that described in Timm were successfully modified to operate using a
robotic system. Id. (citing Exs. 1004, 1008, 1015, 1019; Ex. 1023 ¶¶ 56–59,
62–67).
Patent Owner contends that one skilled in the art would not have been
motivated to combine the teachings of Timm and Anderson. MTA Reply 7.
Patent Owner contends that Timm does not teach that its endocutters could
be operated using a robotic system. Id. Patent Owner also contends that
Anderson does not teach that its robotic system could be used with an
endocutter. Id.
Patent Owner contends that one skilled in the art would not have had a
reasonable expectation of success in combining the teachings of the
references. Id. at 8. Patent Owner contends that combining the teachings of
the references would have required a complete redesign in the system taught
by Anderson. Id.
We have considered the arguments presented by the parties and the
evidence of record and find that the evidence of record supports the
conclusion that one skilled in the art would have been motivated to adapt the
endocutter of Timm to be operated robotically using a robotic system
disclosed in Anderson with a reasonable expectation of success.
Referring to Figure 1, reproduced below, Timm teaches that “the
proximal end 24 can be permanently or removably associated with a handle
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or other actuating assemblies of a manually (or other, e.g., robotic or
computer) operated open or endoscopic surgical stapler 1.” Ex. 1006, col. 2,
ll. 5–8.

Figure 1 of Timm showing a perspective view of a surgical stapling and
severing instrument of various embodiments of the invention disclosed
therein.

Timm also teaches “[t]he use of the above-described tool assembly
100 as part of a robotic system is also envisioned.” Ex. 1006, col. 12, ll. 1–3.
We agree with Dr. Fischer that these teachings in Timm demonstrate that
Timm contemplated using the disclosed endocutter with a surgical robot and
that this would have motivated one skilled in the art to combine the
instrument of Timm with a robotic system, such as that taught by Anderson.
Ex. 1023 ¶ 44.
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Moreover, Anderson also contemplates use of its robotic system with
devices such as endocutters. Anderson teaches:
In further examples, the instrument probe assembly may
include suitable OEM components of biopsy probes, suction
probes, substance injection probes, surgical accessory
application probes, stapler probes, tissue grasping and cutting
probes, and the like. Likewise, the instrument probe assembly
may combine more than one of the medical functions of the
above described instruments.

Ex. 1008, col. 7, ll. 19–25. We agree with Dr. Fischer that this passage
demonstrates that Anderson contemplated use of the disclosed robotic
system with a variety of devices including the surgical instrument disclosed
in Timm. Ex. 1023 ¶ 43.
Patent Owner contends that Timm does not teach that the articulating
endocutters described therein could be operated using a robotic system.
MTA Reply 8–9. Patent Owner contends that the cited statements in Timm
are limited to embodiments for a handheld endocutter with a manual trigger.
Id. Patent Owner, through its expert Dr. Cimino, postulates that the
complexities of adapting a handheld instrument to a robotic control system
would not have motivated one skilled in the art to make such a system. Id. at
9. We are not persuaded by Patent Owner’s arguments.
While we agree with Patent Owner that the statements in Timm
regarding the use of a robotic control system are not specifically directed to
an articulated endocutter, the statements refer to the endocutters of Timm in
general and one skilled in the art would have regarded the statements as
applying to all of the endocutters disclosed in Timm. For example, referring
to Figure 1, Timm teaches that the endocutter can be associated with a
robotic system. Ex. 1006, col. 8, ll. 4–8. Figure 1 is described as
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“perspective view of a surgical stapling and severing instrument of various
embodiments of the present invention.” Id. at col. 3, ll. 1–3 (emphasis
added). We find that it would have been obvious based on these disclosures
that Timm’s various embodiments may be adapted for use in robotic
systems.
Moreover, the motivation to combine Timm and Anderson is would
not have been limited to the statements in Timm alone. Anderson teaches
that the system disclosed therein can be used with various other components
including staplers, tissue grasping and cutting probes and instruments that
combine more than one of the recited medical functions. Ex. 1008, col. 7, ll.
19–25.
We are also not persuaded by Patent Owner’s contention that the
complexities of adapting the device of Timm to work with the system of
Anderson would have discouraged one skilled in the art from combining the
references. MTA Reply 9. As discussed more fully below, we find that one
skilled in the art would have understood how to make the necessary
modifications and would have had reasons for, and would not have been
discouraged from, making the proposed combination.
We are also not persuaded by Patent Owner’s argument that the
stapler probes mentioned in Anderson are fundamentally different from the
endocutter of Timm and that one skilled in the art would have understood
that Anderson’s reference to a stapler probe does not include an endocutter.
MTA Reply 10–11. In the same vein, we are not persuaded by Patent
Owner’s argument that Anderson’s reference to OEM equipment means that
the devices are used without modification and that adapting the endocutter
for Timm to work with the Anderson system would have required extensive
modifications. Id. at 11–12. While Dr. Cimino testifies that one skilled in the
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art would understand an OEM component is to be used without
modification, Dr. Cimino offers no support for this conclusion. See Ex. 2012
¶ 56. We discern nothing in Anderson to teach that the OEM instruments
recited are to be used without modification of either the instrument or the
system of Anderson. As the Federal Circuit explained in ClassCo, “the
rationale of KSR does not support [the] theory that a person of ordinary skill
can only perform combinations of a puzzle element A with a perfectly fitting
puzzle element B.” ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed.
Cir. 2016), see also id. (“KSR does not require that a combination only unite
old elements without changing their respective functions.”).
Anderson teaches that the disclosed system can be used with stapler
probes, tissue and grasping probes and may combine more than one of the
recited functions. Ex. 1008, col. 7, ll. 19–25. Even if we accept Patent
Owner’s argument that the term stapler probe as used in Anderson does not
include endocutters, Anderson clearly embraces instruments which combine
stapling and cutting.
Patent Owner also contends that one skilled in the art would not have
been motivated to combine the teachings of Timm with Anderson as the
system of Anderson does not provide sufficient force to operate an
endocutter. MTA Reply 13. In support of this contention, Patent Owner cites
to the testimony of Dr. Cimino that the OEM devices contemplated by
Anderson only use about a tenth of the force required to operate an
endocutter. Id. (citing Ex. 2012 ¶¶ 83–84). We remain unpersuaded by this
argument. Dr. Cimino compares a sonic scalpel with an endocutter. Ex. 2012
¶ 82. While we agree with Dr. Cimino that a sonic cutting instrument is one
type of OEM instrument contemplated by Anderson, as discussed above,
Anderson also teaches use of instruments such as staplers and instruments
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that combine the feature of cutting instruments and staplers. Ex. 1008, col. 7,
ll. 19–25. Dr. Cimino does not offer a comparison of a stapler probe with an
endocutter or a comparison of an endocutter with an instrument that
combines the functions of a stapler and a cutter. Moreover, Timm teaches
that adaptations such as changes in gear ratios can be used to transmit the
forces necessary to operate a surgical instrument. Ex. 1006, col. 19, ll. 22–
27. Dr. Fischer testified that such modifications would have been within the
skill of an ordinary artisan. Ex. 1023 ¶ 68. We find that testimony
adequately supported by the record and credit the testimony.
Patent Owner cites to two prior patents and applications assigned to
Petitioner as showing that, at the time the invention was made, one skilled in
the art would have understood that the system of Anderson would not have
been able to drive an endocutter. MTA Reply 14. We remain unpersuaded.
The grounds of unpatentability before us are not limited to the teachings of
Anderson alone but are based on Anderson and Timm. Timm teaches
modifying the gear ratios as a means to generate the forces necessary to
operate an endocutter. Ex. 1006, col. 19, ll. 22–27. Thus, the combined
teachings of Timm and Anderson would have motivated one skilled in the
art to combine the teachings of the references to produce the claimed
endocutter system.
We now turn to the question of whether one skilled in the art would
have had a reasonable expectation of success in combining the endocutter of
Timm with the robotic system of Anderson.
Petitioner contends that one skilled in the art would have had a
reasonable expectation of success in combining the two disclosures. MTA
Opp. 9–10. Petitioner contends that the modifications necessary to adapt
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handheld instruments like those in Timm for use with a robotic system were
well known in the art. Id. at 9.
Patent Owner disagrees. MTA Reply 15–18. Patent Owner contends
that the system disclosed in Anderson is not capable of articulation as the
ultrasound devices disclosed in Anderson must be straight along a
longitudinal axis to operate properly. Id. at 15 (citing Ex. 2012 ¶ 81). Patent
Owner also contends that the system disclosed in Anderson is not capable of
operating the five control motions of Timm in that the device of Anderson
has at best four output motions. Id. at 15–16 (citing Ex. 1008, Fig. 13; Ex.
2012 ¶¶ 85–93). Patent Owner also contends that Petitioner has failed to
properly explain how one skilled in the art would have modified the system
of Anderson to operate the endocutter of Timm. Id. at 17–18.
We have considered the arguments presented by the parties and the
evidence of record and find that one skilled in the art would have had a
reasonable expectation of success in combining the endocutter of Timm with
the robotic system of Anderson.
As discussed above, both Anderson and Timm teach adapting
endocutters for use with a robotic system. Ex. 1006, col. 8, ll. 3–8, col. 12, ll.
1–3; Ex. 1008, col. 7, ll. 19–25. The art at the time also shows that one
skilled in the art would have known how to adapt a handheld endocutter to
be operated by a robotic system. For example, Dachs8 discloses a robotic
surgical system that allows operation of a surgical instrument as well as
articulation of the device. See Ex. 1015, col. 2, ll. 43–65. We agree with Dr.
Fischer that the teachings of Timm and Anderson combined would have led

8 Dachs II, et al. US 8,640,788 B2, issued February 4, 2014 (Ex. 1015
“Dachs”).
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one skilled in the art to have a reasonable expectation of success in
combining the teachings of the references. Ex. 1023 ¶ 47. We also find Dr.
Fischer’s testimony persuasive that the combination would have involved
the application of a known technique (Timm’s tool) with a known system
(Anderson’s robot) in the same field (surgical instruments). Id.
Patent Owner contends that modifying the system of Anderson to
operate the endocutter of Timm would have required a complete redesign of
the Anderson system which would entail more than just ordinary
experimentation. MTA Reply 17–18 (citing Ex. 2012 ¶ 90). We are not
persuaded by this argument.
Anderson teaches:
As described above, in alternative embodiments another
type of activation modality may be substituted for the rotatable
interface body of the robotic surgical system. For example, an
electrical power/control interface (e.g., including a multi-pin
connector) may be included in the interface assembly to
transmit electrical power and/or control signals from the robotic
surgical system to actuate a motor pack mounted in the
instrument base, the motor pack output may in turn may be
coupled to the instrument probe assembly so as to impart one or
more corresponding degrees of freedom to all or portions of the
instrument probe assembly relative to the base. The motor pack
may include one or more electrical motors, transmission
gearing, position encoders, torque sensors, feedback sensors,
and the like, and may transmit feedback or sensor signals to the
robotic surgical system via the interface.

Ex. 1008, col. 6, ll. 21–37. Anderson also teaches:
For example, one or more electric motor assemblies or motor
packs (optionally having gears and/or encoders) may be
mounted to base to drive one or more of the rotational and/or
translational degrees of freedom of the instrument, the motor
packs being electrically connected to receive control/power
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signals from (and optionally transmit feedback signals to) the
robotic surgical control system.

Id. at col. 23, ll. 39–45 (reference numeral omitted). Dr. Fischer has testified
that given this teaching in Anderson, one skilled in the art would have had a
reasonable expectation of success in adapting the robotic system of
Anderson to operate the endocutter of Timm. Ex, 1023 ¶ 68.
We are also not persuaded by Dr. Cimino’s testimony that modifying
Anderson would have required an extraordinary amount of experimentation.
Ex. 2012 ¶ 90. While Dr. Cimino lists various considerations which need to
be taken into account when modifying the system of Anderson, Dr. Cimino
does not explain why these considerations constitute more than ordinary
design considerations. See id.
Based on the foregoing we conclude that one skilled in the art would
have had a reasonable expectation of success in combining the robotic
system of Anderson with the endocutter of Timm to produce the claimed
invention as argued by Petitioner in Grounds 1 and 2.
2. Ground 1 – Obviousness based on Timm Instrument 4000 Combined
with Anderson, Schulze, Viola and Tierney
a) Proposed Substitute Claim 12
Petitioner contends that proposed substitute claim 12 is unpatentable
under 35 U.S.C. § 103(a) as obvious over Timm in view of Anderson and if
needed Schulze, Viola, and Tierney. MTA Opp. 6. Specifically, Petitioner
contends that it would have been obvious to one of ordinary skill in the art to
modify Timm’s surgical instrument labeled 4000 for use with Anderson’s
robotic system. Id. Petitioner also contends that it would have been obvious
to modify Timm’s surgical instrument labeled 1 for use with Anderson’s
robotic system. Id.
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Patent Owner contends that the combination of Timm and Anderson
does not teach all of the limitations of the proposed substitute claims,
specifically that neither reference teaches two closure rates as required by
proposed substitute claim 12. MTA Reply 19. As discussed above, Patent
Owner also contends that one skilled in the art would not have been
motivated to combine the teachings of Timm and Anderson and that one
skilled in the art would not have had a reasonable expectation of success in
combining the teachings of the references. MTA Reply 7–18.
(a) A surgical tool for use with a robotic system that has a tool drive
assembly that is operatively coupled to a control unit of the robotic
system that is operable by inputs from an operator and is configured to
provide rotary output motions to a plurality of rotatable body portions
supported on the tool drive assembly, said surgical tool comprising:
Petitioner contends that Timm combined with Anderson teaches this
limitation. MTA Opp. 10. Petitioner contends that the combination of Timm
and Anderson (including Tierney)9 teaches

9 Petitioner’s analysis also relies, in part, on the teachings of Tierney. See
MTA Opp. 10. Anderson incorporates the teachings of Tierney by reference
including the discussion of the carriage used in Anderson. Ex. 1008, col. 16,
ll. 17–23; col. 22, ll. 61–67; Col. 24, ll. 35–40. Incorporation by reference
provides a method for integrating material from various documents into a
host document — a patent or printed publication in an anticipation
determination — by citing such material in a manner that makes clear that
the material is effectively part of the host document as if it were explicitly
contained therein. Advanced DisplaySystems, Inc. v. Kent State Univ., 212
F.3d 1272, 1281 (Fed. Cir. 2000). To incorporate material by reference, the
host document must identify with detailed particularity what specific
material it incorporates and clearly indicate where that material is found in
the various documents. See In re Seversky, 474 F.2d 671, 674 (CCPA 1973)
(providing that incorporation by reference requires a statement “clearly
identifying the subject matter which is incorporated and where it is to be
found”).
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surgical tool (a surgical stapler) for use with a robotic system
(Anderson’s robotic surgical system 10) that has a tool drive
assembly (the combination of Tierney 181’s tool
holder/carriage 129 and adaptor 128; Anderson’s corresponding
carriage 37) that is operatively coupled to a control unit
(Anderson’s control station 12) of the robotic system that is
operable by inputs from an operator (“a surgeon or other user”).

Id. (citing Ex. 1006, Figs. 73–83; Ex. 1008, col. 12, ll. 6–22, Fig. 1; Ex.
1009, Figs. 1, 6–7M; Ex. 1023 ¶¶ 74–76). Petitioner goes on to contend that
“Anderson’s tool drive assembly is also configured to provide rotary output
motions to a plurality of rotatable body portions (Tierney 181’s drive
elements 119; Anderson’s corresponding engaging/interface members in
carriage 37) supported on the tool drive assembly.” Id. (citing Ex. 1008, col.
16, ll. 17–23, col. 22, ll. 61–67, col. 23, ll. 31–39, col. 24, ll. 35–40; Ex.
1023 ¶ 76).
Patent Owner does not contest the specific teachings of the references
with respect to this element of proposed claim 12 other than to argue that
there would have been no motivation to combine the references and one
skilled in the art would not have had a reasonable expectation of success.
See MTA Reply 7–18.
We find that the evidence of record supports the conclusion that
Timm combined with Anderson discloses a surgical tool for use with a
robotic system that has a tool drive assembly that is operatively coupled to a
control unit of the robotic system that is operable by inputs from an operator
and is configured to provide rotary output motions to a plurality of rotatable
body portions supported on the tool drive assembly. Timm discloses a
surgical tool that could be operated as part of a robotic system. Ex. 1006,
8:3–8, 12:1–3, 19:28–36. Anderson discloses a robotic arm assembly with
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actuators (control unit) to selectively angularly displace (rotate) transmission
members of the surgical instrument. Ex. 1008, 12:6–22, Fig. 1. Anderson
incorporates Tierney by reference, and Tierney discloses providing rotary
output motions to a plurality of rotatable body portions. Ex. 1009, 11:33–35,
Figs. 7F–7M.
(b) A surgical end effector comprising
Petitioner contends that Timm teaches this limitation. MTA Opp. 11.
Petitioner contends “Timm discloses a surgical end effector (e.g., the
combination of anvil assembly 4020, elongate channel assembly 4012, and
‘staple cartridge assemblies’).” Id. (citing Pet. 57; Ex. 1023 ¶ 77).
Patent Owner does not contest the specific teachings of the references
with respect to this element of proposed claim 12 other than to argue that
there would have been no motivation to combine the references and one
skilled in the art would not have had a reasonable expectation of success.
See MTA Reply 7–18.
We find that the evidence of record supports the conclusion that
Timm teaches a surgical end effector. Timm discloses a surgical stapler
instrument capable of applying lines of staples to tissue while cutting the
tissue between the lines of staples. Ex. 1006, col. 1, ll. 8–12. A surgical
stapler that also cuts tissue is a type of end effector. See id. at ll. 54–60.
(c) at least one component portion comprising a rotatable jaw that is
selectively movable between first and second positions relative to at
least one other component portion thereof; and
Petitioner contends that Timm teaches this limitation. MTA Opp. 11.
Petitioner contends that Timm discloses an anvil assembly that is selectively
moveable between an open and closed positon. Id. Petitioner also contends
that Timm teaches that the anvil assembly is rotatable. Id.
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Patent Owner does not contest the specific teachings of the references
with respect to this element of proposed substitute claim 12 other than to
argue that there would have been no motivation to combine the references
and one skilled in the art would not have had a reasonable expectation of
success. See MTA Reply 7–18.
We find that the evidence of record supports the conclusion that
Timm teaches a component portion comprising a rotatable jaw that is
selectively movable between first and second positions relative to at least
one other component portion thereof. As we discussed in our Decision to
institute, the component portion refers to the anvil of a linear surgical
stapler. Inst. Dec. 12–13. Timm discloses an anvil that is selectively
moveable between an open and closed position. Ex. 1006, col. 35. l. 64–col.
36, l. 24; Ex. 1023 ¶ 78. Timm teaches that the anvil comprises a rotatable
jaw, i.e., the portion of the anvil assembly which clamps the tissue. Id.
(d) a staple cartridge comprising a plurality of staples and a sled, said
staples being configured to be ejected out of said staple cartridge by a
distal movement of said sled through said end effector
Petitioner contends that Timm teaches this limitation. MTA Opp. 11–
12. Petitioner contends that Timm teaches a staple cartridge comprising a
plurality of staples and a sled where the staples are configured to be ejected
from the staple cartridge by the distal movement of the sled through the end
effector. Id. (citing Ex. 1006, col. 9, ll. 31–67, col. 10, ll. 40–53, col. 12, ll.
63–67; col. 35, ll. 55–58, Figs. 5–6; Ex. 1023 ¶¶ 79–80). Petitioner argues:
A POSITA would have understood that Timm’s “staple
cartridge assemblies” include the cartridge assembly shown in
Figures 5-6 of Timm. And it would have been obvious to use
the staple cartridge assembly in Figures 5-6 because Timm does
not restate the details of the “staple cartridge assemblies” used
with surgical instrument 4000. Thus, a POSITA would have
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been motivated to look at Timm’s other embodiments for a
suitable staple cartridge.

Id. (citations omitted).
Patent Owner does not contest the specific teachings of the references
with respect to this element of proposed substitute claim 12 other than to
argue that there would have been no motivation to combine the references
and one skilled in the art would not have had a reasonable expectation of
success. See MTA Reply 7–18.
We find that the evidence of record supports the conclusion that
Timm teaches a staple cartridge comprising a plurality of staples and a sled,
said staples being configured to be ejected out of said staple cartridge by a
distal movement of said sled through said end effector. Timm teaches a
staple cartridge comprising surgical fasteners arranged to be ejected from the
cartridge. Ex. 1006, col. 9, ll. 31–55. Timm also teaches a sled comprising
“a pair of upwardly-extending cam wedges which, when actuated to move
by the user, cam a series of surgical fasteners or staples into and through the
tissue and against staple forming pockets of anvil assembly to form the
fasteners and fasten tissue therewith.” Id. at col. 9, ll. 56–61 (reference
numbers omitted); see Ex. 1023 ¶¶ 79–80.
(e) an elongated shaft assembly operably coupled to said surgical end
effector, said elongated shaft assembly comprising
Petitioner contends that Timm discloses this limitation. MTA Opp. 12.
Petitioner contends that Timm discloses an elongated tube assembly which
includes a closure ring and distal closure tube that are operably coupled to
the surgical end effector. Id. (citing Ex. 1023 ¶¶ 81–82).
Patent Owner does not contest the specific teachings of the references
with respect to this element of proposed substitute claim 12 other than to
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argue that there would have been no motivation to combine the references
and one skilled in the art would not have had a reasonable expectation of
success. See MTA Reply 7–18.
We find that the evidence of record supports the conclusion that
Timm teaches an elongated shaft assembly operably coupled to said surgical
end effector, said elongated shaft assembly. Timm teaches that the device
may comprise an elongated closure tube assembly. Ex. 1006, col. 36, ll. 25–
27. Timm teaches that the closure tube acts on a closure ring such that the
closure ring causes the anvil assembly to pivot to the closed position. Id. at
col. 35, l. 64–col. 36, l. 24, Figs. 73A, 74A; Ex. 1023 ¶¶ 81–82.
(f) an axially movable portion comprising a first cam in operable
communication with said at least one selectively movable component
portion of said surgical end effector, wherein said first cam is
configured to communicate with said rotatable jaw to transmit closing
motions thereto
Petitioner contends that Timm teaches this limitation. MTA Opp. 12–
13. Petitioner contends that Timm teaches an axially moveable closure ring
in operable communication with the selectively moveable portion of the
surgical end effector. Id. Referring to Figure 73A of Timm, reproduced
below, Petitioner contends that “[c]losure ring 4030 also comprises a first
cam (distal end portion) wherein the first cam is configured to communicate
with (contact) said rotatable jaw to transmit closing motions thereto.” Id.
(citing Ex. 1023 ¶¶ 83–89).
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A portion of Figure 73A of Timm as annotated by Petitioner showing a
partial cross-sectional view of a surgical instrument of Timm. WTA Opp.
13.

Patent Owner does not contest the specific teachings of the references
with respect to this element of proposed substitute claim 12 other than to
argue that there would have been no motivation to combine the references
and one skilled in the art would not have had a reasonable expectation of
success. See MTA Reply 7–18.
We find that the evidence of record supports the conclusion that
Timm teaches an axially movable portion comprising a first cam in operable
communication with said at least one selectively movable component
portion of said surgical end effector, wherein said first cam is configured to
communicate with said rotatable jaw to transmit closing motions thereto.
Timm teaches that the closure ring is driven axially in the distal direction
and rides up a ramp on the proximate end of the anvil assembly causing the
anvil assembly to pivot to the closed position. Ex. 1006, col. 36, ll. 16–21;
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Ex. 1023 ¶ 83. As shown in Figure 73A above, Timm also discloses a first
cam (or distal end of the closure ring) configured to communicate with the
jaw of the anvil to cause the jaw to pivot to the closed position. Id.
(g) rotatably movable portion comprising a rotatable drive shaft configured
to rotate in response to one of said rotary output motions; said rotatable
drive shaft in operable engagement with said axially movable portion
wherein an initial rotation of said rotatably movable portion causes said
axially movable portion to move said selectively movable component
portion of said surgical end effector from said first position into an
intermediate position at a first rate, wherein a subsequent rotation of
said rotatably movable portion in a same direction causes said axially
movable portion to move said selectively movable component portion of
said surgical end effector from said intermediate position to said second
position at a second rate, and wherein said first rate is greater than said
second rate;
Petitioner contends that Timm teaches this limitation. MTA Opp. 13–
14. Referring to annotated Figure 73A of Timm, reproduced below,
Petitioner contends
Timm discloses a rotatably movable portion (distal
closure tube segment 4040) comprising a drive shaft (e.g., the
unthreaded portion or the entire distal closure tube segment
4040), which, in the Timm/Anderson instrument, is configured
to rotate in response to one of said rotary output motions. See,
e.g., Petition, 64-67; Timm, 35:64-36:24, Fig. 73A; Fischer
Supp., ¶¶90-94. The rotatable drive shaft is also in operable
engagement with said axially movable portion wherein an
initial rotation of said rotatably movable portion causes said
axially movable portion to move said selectively movable
component portion of said surgical end effector from said first
position into an intermediate position at a first rate, wherein a
subsequent rotation of said rotatably movable portion in a same
direction causes said axially movable portion to move said
selectively movable component portion of said surgical end
effector from said intermediate position to said second position
at a second rate, and wherein said first rate is greater than said
second rate. Id.
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Id.

Figure 73A of Timm annotated by Petitioner showing a partial cross-section
of an instrument of Timm. Id.

Petitioner also contends that if Timm does not teach two closure rates,
that element is taught by Viola or Schulze. Id.
Patent Owner contends that Timm does not teach or suggest closing
the end effector at two different closure rates. MTA Reply 20. Patent Owner
contends that Petitioner improperly draws a comparison with the closure
system of the ’288 patent. Id. Patent Owner also contends that one skilled in
the art would not have interpreted Timm’s 4000 embodiment as teaching
two closure rates. Id. (citing Ex. 2012 ¶¶ 71–75).
With respect to the teachings of Viola and Schulze, Patent Owner
contends that Petitioner’s argument improperly incorporates arguments from
the petition (with respect to the original claims) and that such argument
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should not be considered relative to the substitute claims. Id. at 21–22.
Patent Owner also argues that even if Petitioner has properly raised Viola
and Schulze, one skilled in the art would not have been motivated to
combine the teachings of those references with those of Timm and
Anderson. Id.
We have considered the arguments presented by the parties and the
evidence of record and conclude that Timm teaches a rotatably movable
portion comprising a rotatable drive shaft configured to rotate in response to
one of said rotary output motions; said rotatable drive shaft in operable
engagement with said axially movable portion wherein an initial rotation of
said rotatably movable portion causes said axially movable portion to move
said selectively movable component portion of said surgical end effector
from said first position into an intermediate position at a first rate, wherein a
subsequent rotation of said rotatably movable portion in a same direction
causes said axially movable portion to move said selectively movable
component portion of said surgical end effector from said intermediate
position to said second position at a second rate, and wherein said first rate is
greater than said second rate.
Referring to Figure 73A, Timm teaches
as the distal closure tube segment 4040 is rotated, the closure
ring 4030 is driven axially in the distal direction DD. As the
closure ring 4030 moves in the distal direction DD, it rides up a
ramp 4021 on the proximal end of anvil assembly 4020 to cause
the anvil assembly 4020 to pivot to a closed position.

Ex. 1006, col. 36, ll. 16–21.
With respect to the closure rates, while we agree with Patent Owner
that the text of Timm’s disclosure does not include a discussion of closure
rates, the drawings, particularly Figure 73A provide such a disclosure. See
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In re Wagner, 63 F.2d 985 (CCPA 1933) (explaining that it is proper to rely
on drawing to support a finding of obviousness).
Referring to Figure 73A, reproduced below, Timm teaches that the
anvil assembly 4020 is pivotally coupled to an elongated channel 4012 by a
pair of trunnions 4022 that are adapted to be received in corresponding slots
4014 in the walls of the elongated channel. Ex. 1006, col. 35, l. 64 – col. 36,
l. 24. As shown in Figure 73A below, the slots in the walls of the channel
have a steep portion and a shallow portion. Id. Fig. 73A; see also id. Figs.
104–105. In addition, ramp 4021 also has a steep portion and a shallow
portion. Id. As seen in Figure 73A below and as Dr. Fischer has testified,
“the steeper camming surfaces of ramp 4021 and the proximal portions of
slots 4014 cause anvil 4020 to move faster than the shallower distal
camming surfaces of slots 4014.” Ex. 1003 ¶ 89.

Figure 73A as annotated by Dr. Fischer showing a partial cross-section of an
instrument of Timm.

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Patent Owner contends that one skilled in the art would not interpret
the cam surface of Timm as necessarily disclosing two closure rates. MTA
Reply 21. Patent Owner supports this contention with the testimony of Dr.
Cimino. Id. (citing Ex. 2012 ¶¶ 71–75). We are not persuaded by this
argument.
With respect to the closure mechanism disclosed in Figure 73A of
Timm, Dr. Cimino first opines that Timm does not disclose two closure rates
as Timm does not teach the variable pitch tread arrangement taught in the
’288 patent. Ex. 2012 ¶ 73. While this may be true, as discussed above,
Petitioner’s contention with respect to two closure rates is not dependent on
the presence of a variable pitch thread.
Dr. Cimino also contends that one skilled in the art would not have
interpreted the slot arrangement shown in Figure 73A as necessarily
disclosing two closure rates but that one skilled in the art would have needed
more information to reach such a conclusion. Id. ¶ 74. Again, we are
unpersuaded.
Dr. Cimino offers no support for his conclusion that Timm does not
necessarily have two closure rates. During his deposition, Dr. Cimino
testified that to determine whether the end effector of Timm exhibited two
different closure rates, one would need to perform a kinematic analysis of
the mechanism motion. Ex. 1024, 118. Dr. Cimino admitted that he did not
perform such an analysis. Id. at 119. This is in contrast to Dr. Fischer’s
testimony where he explains precisely why he concludes that the end
effector of Timm exhibits two closure rates. Ex. 1003 ¶¶ 88–89.
Since we find that Timm alone teaches closure of the anvil at two
different rates, we need not address the issue of whether Viola or Schulze
provides such a teaching.
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(h) first articulation joint configured to articulate said end effector about a
first axis in response to one of said rotary output motions
Petitioner contends that Timm teaches this limitation. MTA Opp. 15.
Referring to an annotated portion of Figure 73A of Timm, Petitioner
contends
Timm discloses a first articulation joint (pivot holes 5008, 5010
and pins 4072, 4074), which, in the Timm/Anderson
instrument, is configured to articulate said end effector about a
first axis (pivot axis UA-UA) in response to one of said rotary
output motions (the rotary output motion from one of
Anderson’s engaging members).

Id. (citing Ex. 1006, col. 36, ll. 45–65, col. 37, ll. 8–13, col. 37, l. 55–col. 38,
l. 24, Fig. 73A; Ex. 1023 ¶¶ 95–98).

Petitioner’s Annotated Figure 73A of Timm showing an articulation joint in
cross-section. MTA Opp. 15.

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Patent Owner contends that Timm does not disclose an active
articulation for the instrument but instead refers to a passive articulation.
MTA 17. Patent Owner goes on to contend that even if Timm discloses an
active articulation, it accomplishes the articulation using a different method
than required by the claims. Id. Patent Owner also contends that Anderson
does not teach an articulated instrument. Id.
We find that the evidence of record supports the conclusion that
Timm teaches a first articulation joint configured to articulate said end
effector about a first axis in response to one of said rotary output motions.
Tim teaches that the distal closure tube may be formed with a pair of
opposed universal pivot arms, which allow the ring to pivot about an axis.
Ex. 1006, col. 36, ll. 45–46. Timm goes on to teach:
Thus, the person of ordinary skill in the art will
appreciate that the above-described universal ring 4070
arrangement facilitates the articulation of the distal closure tube
4040 and ultimately tool assembly 100" which is attached
thereto about multiple axes UA-UA and OA-OA relative to the
closure tube assembly 5000.

Id. at col. 37, ll. 8–13.
With respect to whether the articulation is active or passive, we agree
with Petitioner that Timm discloses an active articulation. MTA Opp. 15.
Timm teaches
[t]he proximal end (not shown) of the horizontal actuator bar
6140 may be operably attached to a joy stick assembly of the
type described above operably supported in the handle assembly
or other actuation arrangement for applying pushing and pulling
motions to the horizontal actuator bar 6140.

Ex. 1006, col. 44, ll. 47–52. While Timm teaches manual operation of the
articulation, Dr. Fischer has testified that one skilled in the art would have
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used the rotary output of one of Anderson’s engaging members to operate
the articulation joint. Ex. 1023 ¶ 95. We agree with Dr. Fischer that
Anderson teaches using a robotic system with articulating instruments such
as staplers. Id. ¶ 96. Anderson teaches
[a] single pivot wrist, a multi-pivot wrist, a distal roll joint
mechanism or other joints may be included to provide
additional operational degrees of freedom to the end effector.
Movement of end effector 38 relative to manipulator arm 26
controlled by appropriately positioned actuators, such as
electric motors, or the like, which respond to inputs from an
associated master control at the control station 12, so as to drive
the end effector 38 to a required orientation as dictated by
movement of the associated master control.

Ex. 1008, col. 11, ll. 56–65.
(i) a second articulation joint configured to articulate said end effector
about a second axis in response to one of said rotary output motions
Petitioner contends that Timm teaches this limitation. MTA Opp. 16.
Referring again to an annotated version of Timm’s Figure 73A, Petitioner
contends
Timm discloses a second articulation joint (pivot holes 4047
and pins 4074), which, in the Timm/Anderson instrument, is
configured to articulate said end effector about a second axis
(pivot axis OA-OA) in response to one of said rotary output
motions (the rotary output motion from one of Anderson’s
engaging members).

Id. (citing Ex. 1006, col. 36, l. 65–col. 37, l. 13; Fig. 73A; Ex. 1023 ¶¶ 99–
101).
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Figure 73A of Timm as annotated by Petitioner to show a second
articulation joint. MTA Opp. 16.

Patent Owner presents the same arguments regarding this limitation as
with the limitation regarding the first articulation joint. See MTA 17.
We find that the evidence of record supports the conclusion that
Timm teaches a second articulation joint configured to articulate said end
effector about a second axis in response to one of said rotary output motions.
Timm teaches a second articulating joint which pivots about an axis is
substantially orthogonal to the axis of the first joint. Ex. 1006, col. 36, l. 65–
col. 37, l. 7. As discussed above, Timm discloses an active articulation joint
and the teachings of Anderson would have led one skilled in the art to
operate the joint using one of the rotary outputs of Anderson. Id. at col. 44,
ll. 47–52; Ex. 1023 ¶ 99.
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(j) a tool mounting plate supporting said elongate shaft assembly and
configured to be releasably mounted to said tool drive assembly, said
tool mounting plate comprising a plurality of driven elements configured
for driving engagement with a corresponding plurality of rotatable body
portions of said tool drive assembly when said tool mounting plate is
mounted to said tool drive assembly.
Petitioner contends that Anderson alone or through incorporation of
Tierney teaches this limitation. MTA Opp. 17–18. Referring to Tierney
Figure 6 and Anderson Figure 3, reproduced below, Petitioner contends
Anderson discloses a tool mounting plate (Tierney 181’s
interface 110; Anderson’s corresponding instrument base 34 or
330, which includes a mounting plate 78), which, in the
Timm/Anderson instrument, supports said elongate shaft
assembly and is configured to be releasably mounted to said
tool drive assembly.

Id. at 17 (citing Ex. 1006, col. 11, l. 32–col. 12, l. 22, col. 16, l. 7–col. 18, l.
4, col. 18, ll. 16–19, col. 22, l. 8–col. 23, l. 45, Figs. 2, 3, 11–17, 20–22, 24;
Ex. 1009, col. 9, ll. 8–12, col. 10, ll. 12–24, col. 10, ll. 36–40; col. 16, l. 62–
col. 17, l. 4, Figs. 4, 6, 14A–C; Ex. 1023 ¶ 102). Petitioner also contends
[t]he tool mounting plate also comprises a plurality of driven
elements (Tierney 181’s driven elements 118; Anderson’s
corresponding transmission members 70, 72, 74, and 76 and
interface actuator members 344 and 353a-b) configured for
driving engagement with a corresponding plurality of rotatable
body portions (Tierney 181’s drive elements 119; Anderson’s
corresponding engaging/interface members) of said tool drive
assembly when said tool mounting plate is mounted to said tool
drive assembly.

Id. at 17–18.
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Figure 6 of Tierney as annotated by Petitioner showing the mechanical and
electrical interface of the tool disclosed in Tierney. MTA Opp. 18.

Figure 3 of Anderson as annotated by Petitioner showing a perspective
illustration of the robotic surgical tool with a cover of a tool base removed to
show internal structures of the tool base. Id. at 18.

Patent Owner does not contest the specific teachings of the references
with respect to this element of proposed substitute claim 12 other than to
argue that there would have been no motivation to combine the references
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and one skilled in the art would not have had a reasonable expectation of
success. See MTA Reply 7–18.
We find that the evidence of record supports the conclusion that
Anderson, either alone or through incorporation of Tierney, teaches a tool
mounting plate supporting said elongate shaft assembly and configured to be
releasably mounted to said tool drive assembly, said tool mounting plate
comprising a plurality of driven elements configured for driving engagement
with a corresponding plurality of rotatable body portions of said tool drive
assembly when said tool mounting plate is mounted to said tool drive
assembly. Anderson teaches:
Referring now to FIG. 3, base 34 of surgical instrument
28 suitably includes transmission members 70, 72, 74, and 76,
which include spools secured on shafts 70.1, 72.1, 74.1, and
76.1. Ends of shafts 70.1, 72.1, 74.1, 76.1 generally extend
from a side 77 of base 34 to a mounting plate 78 within base 34
and are configured to rotate. Generally, the ends of shafts 70.1,
72.1, 74.1, 76.1 at side 77 of base 34 extend through side 77, to
an outer surface of side 77 (not shown). At the outer surface,
each shaft 70.1, 72.1, 74.1, 76.1 includes an engaging member
(not shown) configured to releasably couple with a
complementary engaging member (not shown) rotatably
mounted on the carriage 37 of a robotic arm assembly 26 (see
FIG. 1). The engaging members on carriage 37 are generally
coupled to actuators (not shown), such as electric motors or the
like, to cause selective angular displacement of each engaging
member on the carriage 37 in response to actuation of its
associated actuator. Thus, selective actuation of the actuators is
transmitted through the engaging members on the carriage 37,
to the engaging members on the opposed ends of the shafts
70.1, 72.1, 74.1, 76.1 to cause selective angular displacement of
the spools 70, 72, 74, 76. Where more or fewer degrees of
freedom are desired, the number of spools may be decreased or
increased.

Ex. 1008, col. 11, l. 66– col. 12, l. 22.
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(k) Conclusion
Based on the foregoing we conclude that Petitioner has shown by a
preponderance of the evidence that the subject matter of proposed substitute
claim 12 would have been obvious to one of ordinary skill in the art at the
time the invention was made over Timm combined with Anderson.10
b) Proposed Substitute Claim 13
Proposed substitute independent claim 13 differs from proposed
substitute independent claim 12 by omitting the requirement that movement
of the selectively movable component portion at first and second rates
comprises a “first rate . . . greater than said second rate,” and by requiring
“wherein said rotatably movable portion comprises a closure member in
threaded engagement with said axially movable portion.” MTA, A-2, A-4.
With the exception of this element, our discussion of substitute claim 12 is
applicable to claim 13. Therefore we limit our discussion to the limitation
requiring “wherein said rotatably movable portion comprises a closure
member in threaded engagement with said axially movable portion.”
Petitioner contends that Timm teaches this limitation. MTA Opp., 18.
Petitioner contends that “[t]he rotatably moveable portion (Timm’s modified
closure tube segment 4040) is a closure member in threaded engagement
with the axially movable portion (modified closure ring 4030).” Pet. 77–
78(citing Ex. 1003 ¶ 174).
Patent Owner does not contest the specific teachings of Timm with
respect to this element of proposed substitute claim 13 other than to argue
that there would have been no motivation to combine the references and one

10 As discussed above, we find Timm and Anderson alone teach all of the
elements of proposed substitute claim 12. Therefore we do not reach the
issue of obviousness based on Viola and Schulze.
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skilled in the art would not have had a reasonable expectation of success.
See MTA Reply 7–18.
We find that the evidence of record supports the conclusion that
Timm teaches the limitation calling for said rotatably movable portion
comprises a closure member in threaded engagement with said axially
movable portion. Referring to Figure 73A, reproduced above in Section
II.E.2.a.1.(g), Timm teaches “[a] series of internal threads 4036 may be
provided in the proximal end 4034 of the non-rotating closure ring 4030 for
threadably receiving a threaded distal end 4042 of a distal closure tube
segment 4040.” Ex. 1006, col. 36, ll. 12–16.
In light of the foregoing discussion, we conclude that the subject
matter of proposed substitute claim 13 would have been obvious to one of
ordinary skill in the art at the time the invention was made over Timm
combined with Anderson.
3. Ground 2 – Obviousness based on Timm instrument 1 combined with
Anderson, Schulze, Shelton and Tierney.
a) Proposed Substitute Claim 12
Petitioner contends that proposed substitute claim 12 is unpatentable
under 35 U.S.C. § 103(a) as obvious over Timm in view of Anderson and if
needed Schulze, Shelton, and Tierney. MTA Opp. 18. Specifically,
Petitioner contends that it would have been obvious to one of ordinary skill
in the art to modify Timm’s surgical instrument 1 for use with Anderson’s
robotic system. Id. Petitioner also contends that it would have been obvious
to modify Timm’s surgical instrument label 1 for use with Anderson’s
robotic system. MTA Opp. 18–20.
Patent Owner contends that the combination of Timm and Anderson
does not teach all of the limitations of the proposed substitute claims,
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specifically that neither reference teaches two closure rates as required by
the claims. MTA Reply 19. As discussed above, Patent Owner also
contends that one skilled in the art would not have been motivated to
combine the teachings of Timm and Anderson and that one skilled in the art
would not have had a reasonable expectation of success in combining the
teachings of the references. MTA Reply 7–18.
(1) A surgical tool for use with a robotic system that has a tool drive
assembly that is operatively coupled to a control unit of the robotic
system that is operable by inputs from an operator and is configured to
provide rotary output motions to a plurality of rotatable body portions
supported on the tool drive assembly, said surgical tool comprising
The parties present the same evidence and arguments regarding this
limitation as discussed in Section II.E.2.a)1.(a) above. MTA Opp. 24; MTA
Reply 7–18. For the reasons stated above, we find that Timm combined with
Anderson teaches this limitation.
(2) at least one component portion comprising a rotatable jaw that is
selectively movable between first and second positions relative to at
least one other component portion thereof
Petitioner contends that Timm instrument 1 teaches this limitation.
MTA Opp. 24–25. Referring to annotated Figure 1 of Timm, Petitioner
contends “Timm discloses at least one component portion (anvil assembly
110) of the end effector comprising a rotatable jaw (the portion of anvil
assembly 110 . . . between first (open) and second (closed) positions relative
to at least one other component portion thereof (elongate channel assembly
120).” Id. (citing Ex. 1006, col. 10, l. 54–col. 11, l. 7, Figs. 1–9; Ex. 1023
¶ 127).
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Portion of Figure 1 of Timm as annotated by Petitioner showing anvil
assembly of the end effector of Timm. MTA Opp. 25.

Patent Owner does not contest the specific teachings of the references
with respect to this element of proposed substitute claim 12 other than to
argue that there would have been no motivation to combine the references
and one skilled in the art would not have had a reasonable expectation of
success. See MTA Reply 7–18.
We find that the evidence of record supports the conclusion that
Timm teaches at least one component portion comprising a rotatable jaw that
is selectively movable between first and second positions relative to at least
one other component portion thereof. Timm teaches the anvil assembly can
pivot from “an open first position wherein the anvil assembly 110 and the
elongate channel assembly 120 are disposed in spaced relation relative to
one another to a second closed position.” Ex. 1006, col. 10, l. 65–col. 11, l.
1; see Ex. 1023 ¶ 127.
(3) a staple cartridge comprising a plurality of staples and a sled, said
staples being configured to be ejected out of said staple cartridge by a
distal movement of said sled through said end effector
Petitioner contends that Timm teaches this limitation. MTA Opp. 25.
Referring to annotated Figures 1, 5, and 6 of Timm, Petitioner contends
“Timm discloses a staple cartridge (staple cartridge assembly 200)
comprising a plurality of staples (350) and a sled (160), and that the staples
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are configured to be ejected out of said staple cartridge by a distal movement
of said sled through said end effector.” Id. (citing Ex. 1006, col. 9, ll. 31–67,
col. 10, ll. 40–53, col. 12, ll. 63–67; col. 17, ll. 10–13; col. 18, ll. 16–24,
Figs. 5–6; Ex. 1023 ¶ 128).

A portion of Figure 1 of Timm as annotated by Petitioner showing the anvil
assembly of an end effector of Timm including the location of a staple
cartridge. MTA 25.

Figures 5 and 6 of Timm as annotated by Petitioner showing a staple
cartridge and sled. Id.

Patent Owner does not contest the specific teachings of the references
with respect to this element of proposed substitute claim 12 other than to
argue that there would have been no motivation to combine the references
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and one skilled in the art would not have had a reasonable expectation of
success. See MTA Reply 7–18.
We find that the evidence of record supports the conclusion that
Timm teaches a staple cartridge comprising a plurality of staples and a sled,
said staples being configured to be ejected out of said staple cartridge by a
distal movement of said sled through said end effector. Timm teaches that
the instrument may include a staple cartridge assembly. Ex. 1006, col. 9, ll.
14–15. Timm teaches a staple cartridge comprising surgical fasteners
arranged to be ejected from the cartridge. Ex. 1006, col. 9, ll. 31–55. Timm
also teaches a sled comprising “a pair of upwardly-extending cam wedges
which, when actuated to move by the user, cam a series of surgical fasteners
or staples into and through the tissue and against staple forming pockets of
anvil assembly to form the fasteners and fasten tissue therewith.” Id. at col.
9, ll. 56–61 (reference numbers omitted); Ex. 1023 ¶ 128.
(4) an elongated shaft assembly operably coupled to said surgical end
effector
Petitioner contends that at least two embodiments of Timm, either
alone or in combination with Anderson teach this limitation. MTA Opp. 26–
27.
Referring to Timm Figures 1 and 2, reproduced below, Petitioner
contends that in the embodiment which Petitioner calls the clamping collar
embodiment “Timm discloses an elongated shaft assembly (e.g., the
combination of elongated shaft 20 and clamping collar 140 as well as the
actuating cables contained therein) operably coupled to said surgical end
effector.” MTA Opp. 26 (citing Ex. 1006, col. 7, l. 49–col. 9, l. 11, col. 10, l.
61–col. 11, l. 35, Figs. 1–4; Ex. 1023 ¶¶ 129–130).
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Figure 1 of Timm as annotated by Petitioner showing a perspective view of a
surgical severing and stapling instrument. MTA 26.

Figure 2 of Timm as annotated by Petitioner showing an exploded view of a
surgical tool assembly. Id.

Petitioner also contends that “the elongated shaft assembly of the
Timm/Anderson instrument also includes one of Anderson’s transmission
members (e.g., 76, which includes drive shaft 76.1) in the tool mounting
portion that drives clamping collar 140.” Id. (citing Ex. 1008, col. 11, l. 66–
col. 12, l. 22, Fig. 3; Ex. 1023 ¶ 130).
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The second embodiment relied on by Petitioner is called the “closure
tube embodiment.” Referring to Timm Figures 1 and 44, Petitioner contends,
“Timm discloses an elongated shaft assembly (e.g., the combination of
elongated shaft 20 and closure tube assembly 2300) operably coupled to said
surgical end effector in the same way as the clamping collar embodiment.”
Id. at 27.

Figure 44 of Timm as annotated by Petitioner showing a perspective view of
a closure tube joint assembly installed over an articulated joint. Id.

Petitioner also contends that “the elongated shaft assembly of the
Timm/Anderson instrument also includes the gear or gear train in the tool
mounting portion that drives the gear rack on the modified closure tube
assembly 2300.” MTA Opp. 28 (citing Ex. 1023 ¶ 132).
Patent Owner does not contest the specific teachings of the references
with respect to this element of proposed substitute claim 12 other than to
argue that there would have been no motivation to combine the references
and one skilled in the art would not have had a reasonable expectation of
success. See MTA Reply 7–18.
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We find that the evidence of record supports the conclusion that
Timm teaches an elongated shaft assembly operably coupled to said surgical
end effector. Timm teaches that the surgical instrument includes an
elongated shaft operably connected to the tool assembly. Ex. 1006, col. 7, ll.
49–62; Ex. 1023 ¶ 129.
(5) an axially movable portion comprising a first cam in operable
communication with said at least one selectively movable component
portion of said surgical end effector, wherein said first cam is
configured to communicate with said rotatable jaw to transmit closing
motions thereto;
Petitioner contends that two embodiments of Timm teach this
limitation: a clamping collar embodiment and a closure tube embodiment.
MTA Opp. 28–29.
With respect to the clamping collar embodiment shown in Figure 2 of
Timm reproduced below, Petitioner contends
Timm discloses an axially movable portion (clamping
collar 140) of the elongated shaft assembly comprising a first
cam (distal end portion) in operable communication (contact)
with said at least one selectively movable component portion of
said surgical end effector, wherein the first cam is configured to
communicate with (contact) said rotatable jaw to transmit
closing motions thereto.

Id. at 28 (citing Ex. 1006, col. 10, l. 61–col. 11, l. 7, Figs. 2–4, 9; Ex. 1023
¶¶ 133–134).
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58

Figure 2 of Timm as annotated by Petitioner showing a portion of an
exploded perspective view of a surgical instrument. Id.

With respect to the closure tube embodiment, referring to Timm
Figure 44 reproduced below, Petitioner contends
Timm discloses an axially movable portion (closure tube
assembly 2300) of the elongated shaft assembly comprising a
first cam (distal end 2314) in operable communication (contact)
with said at least one selectively movable component portion of
said surgical end effector wherein the first cam is configured to
communicate with (contact) said rotatable jaw to transmit
closing motions thereto.

Id. at 28–29 (citing Ex. 1006, col. 24, ll. 56–62, Figs. 2–4, 7, 9, 42–44A; Ex.
1023 ¶ 135).
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Timm Figure 44 as annotated by Petitioner showing a perspective view of a
closure tube assembly installed over an articulation joint. Id. at 29.

Patent Owner does not contest the specific teachings of the references
with respect to this element of proposed substitute claim 12 other than to
argue that there would have been no motivation to combine the references
and one skilled in the art would not have had a reasonable expectation of
success. See MTA Reply 7–18.
We find that the evidence of record supports the conclusion that
Timm teaches an axially movable portion comprising a first cam in operable
communication with said at least one selectively movable component
portion of said surgical end effector, wherein said first cam is configured to
communicate with said rotatable jaw to transmit closing motions thereto.
Timm teaches:
It is contemplated that actuation by conventional means
(e.g., activated remotely, e.g., by a handle assembly 5 will
cause clamping collar 140 to move in a distal direction and
engage forward cam surface 115 of anvil assembly 110. This
will cause the anvil assembly 110 to pivot from an open first
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position wherein the anvil assembly 110 and the elongate
channel assembly 120 are disposed in spaced relation relative to
one another to a second closed position wherein anvil assembly
110 and staple cartridge assembly 200 cooperate to grasp tissue
therebetween, i.e., pre-clamp the tissue between tissue engaging
surface 114b of anvil assembly 110 and opposing tissue
engaging surface 231 of staple cartridge assembly 200.

Ex. 1006, col. 10, l. 61–col. 11, l. 6. Timm also teaches:
Those of ordinary skill in the art will understand that, as
the closure tube assembly 2300 is moved (pushed) in the distal
direction DD, the distal end 2314 of the distal closure tube
segment 2310 applies a closing motion to the anvil assembly
110 by contacting the cam surface 115 of anvil assembly 110
(shown in FIGS. 2, 4 and 7) to close anvil assembly 110
relative to the staple cartridge assembly 200.

Id. at col. 24, ll. 56–62.
(6) a rotatably movable portion comprising a rotatable drive shaft
configured to rotate in response to one of said rotary output motions;
said rotatable drive shaft in operable engagement with said axially
movable portion wherein an initial rotation of said rotatably movable
portion causes said axially movable portion to move said selectively
movable component portion of said surgical end effector from said first
position into an intermediate position at a first rate, wherein a
subsequent rotation of said rotatably movable portion in a same
direction causes said axially movable portion to move said selectively
movable component portion of said surgical end effector from said
intermediate position to said second position at a second rate, and
wherein said first rate is greater than said second rate
Petitioner contends that both the clamping collar embodiment and the
closure tube embodiment of Timm combined with Anderson teach this
limitation. MTA Opp. 29–32.
With respect to the clamping collar embodiment, Petitioner contends
Timm in view of Anderson discloses a rotatably movable portion (e.g.,
Anderson’s transmission member 76) of the elongated shaft assembly
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comprising a rotatable drive shaft (Anderson’s drive shaft 76.1) configured
to rotate in response to one of said rotary output motions (the rotary output
motion of the corresponding engaging member in the tool drive assembly).
Id. (citing Ex. 1008, col. 11, l. 66–col. 12, l. 22; Ex. 1006, col. 22, ll. 29–40;
Ex. 1023 ¶¶ 136–139). Petitioner also contends that Timm and Anderson
teach that the drive shaft is in operable engagement with the axially movable
portion. Id. at 29 (citing Ex. 1008, col. 11, l. 66 – col. 12, l. 22; Ex. 1006,
col. 22, ll. 29–40; Ex. 1023 ¶¶ 136–139).
With respect to the closure rates Petitioner contends:
An initial rotation of said rotatably movable portion causes said
axially movable portion to move said selectively movable
component portion of said surgical end effector from said first
position into an intermediate position (the position of anvil
assembly when clamping collar transitions from contacting the
steeper proximal portion of cam surface to contacting the
shallower distal portion of cam surface) at a first rate (the rate
resulting from the interaction of clamping collar and the steeper
proximal portion of cam surface).

Id. at. 30 (reference numbers omitted) (citing Ex. 1023
¶¶ 133–134, 136–139). Petitioner goes on to contend that as the rotatable
portion continues to advance the axially moveable portion cause the
selectively movable portion to move from an intermediate position to a
second position at a second rate. Id. (citing Ex.1023 ¶¶ 133–134, 136–139).
Referring to Figure 7 of Timm reproduced below, Petitioner contends “said
first rate is greater than said second rate because the steeper proximal
portion of cam surface 115 causes anvil assembly 110 to move faster than
the shallower distal camming surface of anvil assembly 110, which is a
radius.” Id. (citing Ex. 1023 ¶¶ 133–134, 136–139: Ex. 1006, col. 10, l. 54–
col. 11, l. 7, Fig. 7.).
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Portion of Figure 7 of Timm as annotated by Petitioner showing a
perspective view of an anvil portion of a surgical instrument. Id. at. 30.

Turning to the closure tube embodiment, referring to Figure 3 of
Anderson reproduced below, Petitioner contends
Timm in view of Anderson (and, if necessary, Shelton)
discloses a rotatably movable portion (e.g., Anderson’s
transmission member 76, which includes a gear secured on
drive shaft 76.1 or a gear train) comprising a rotatable drive
shaft (e.g., Anderson’s drive shaft 76.1) configured to rotate in
response to one of said rotary output motions.

Id. at 31 (citing Ex. 1008, col. 11, l. 66–col. 12, l. 22, Fig. 3; Ex. 1006, col.
22, l. 43–col. 25, l. 50; Ex. 1023 ¶¶ 140–144). Petitioner also contends “[t]he
drive shaft 76.1 is in operable engagement (via the pinion gear or gear train
mounted thereon) with the rack gear of the axially movable portion.” Id.

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Portion of Figure 3 of Anderson as annotated by Petitioner showing a
perspective view of the tool base of a robotic surgical tool with the cover
removed to show the internal structures. Id.

With respect to the tool operating at two closure rates, Petitioner,
referring to Timm Figure 7 above, contends that as the closure tube moves
axially, it transitions from contacting the steeper portion of the cam surface
to a shallower portion of the cam surface which, in turn, cause the movement
of the selectively movable portion of the tool at two different rates with the
first rate being faster than the second rate. Id. at. 32.
Petitioner also contends that Schulze and Viola teach modifying
Timm’s cam surface such that the selectively movable portion moves at two
rates. Id.
Patent Owner contends that the references do not teach all the
elements of the claims, particularly the requirement that the selectively
movable component moves at two different rates. MTA Reply 18. Patent
Owner contends that Timm does not explicitly disclose two different closure
rates and that Petitioner improperly relies on inherency. Id. at 21. Patent
Owner contends that one skilled in the art “would not have understood that
the cam surface 115 of Timm’s instrument 1 necessarily discloses the
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claimed first and second closure rates, wherein the first rate is greater than
the second.” Id. (citing Ex. 2012 ¶¶ 76–78).
Patent Owner also contends that Petitioner’s argument improperly
incorporates arguments from the Petition and should not be considered. Id. at
21–22. Patent Owner also argues that even if Petitioner has properly raised
Viola and Schulze, one skilled in the art would not have been motivated to
combine the teachings of those references with those of Timm and
Anderson. Id.
We have considered the arguments presented by the parties and the
evidence of record and find that the evidence of record supports the
conclusion that Timm combined with Anderson teaches a rotatably movable
portion comprising a rotatable drive shaft configured to rotate in response to
one of said rotary output motions; said rotatable drive shaft in operable
engagement with said axially movable portion wherein an initial rotation of
said rotatably movable portion causes said axially movable portion to move
said selectively movable component portion of said surgical end effector
from said first position into an intermediate position at a first rate, wherein a
subsequent rotation of said rotatably movable portion in a same direction
causes said axially movable portion to move said selectively movable
component portion of said surgical end effector from said intermediate
position to said second position at a second rate, and wherein said first rate is
greater than said second rate.
Anderson teaches rotating a shaft in response to the rotary output from
transmission members and spools located in the instrument base. Ex. 1008,
col. 11, l. 66– col. 12, l. 4; Ex. 1023 ¶ 140. Timm teaches that the rotation of
the shaft causes the closure tube to move axially such that the closure tube
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engages the cam surface of the anvil causing the anvil to move to the closed
position. Ex. 1006, col. 22, l. 43–col. 25, l. 50: Ex. 1023 ¶ 142.
With respect to two closure rates, we agree with Dr. Fischer that this
element is taught by Timm, specifically in Figure 7 shown above. See Ex.
1023 ¶¶ 141–143. As Dr. Fischer has testified, the cam surface of the anvil
has a steep sloped portion and a shallow sloped portion. Id. ¶ 141. Dr.
Fischer testified that as the closure ring engages the cam surface of the anvil,
the steep portion of the cam will cause the anvil to closure at a first rate and
the shallow portion will cause the anvil to close at a second rate with the first
rate being greater than the second rate. Id. ¶¶ 141–143.
We are not persuaded by Patent Owner’s argument that Timm does
not teach two closure rates. MTA Reply 21. As discussed above, Dr.
Fischer’s analysis is based on a review of the drawings of Timm which
provide the needed teaching. See In re Wagner, 63 F.2d 987 (explaining that
it is proper to rely on drawing to support a finding of obviousness).
We are similarly unpersuaded by Patent Owner’s contention that one
skilled in the art would not interpret the cam surface of Timm as necessarily
disclosing two closure rates. MTA Reply 21. Patent Owner relies on the
testimony of Dr. Cimino to support this contention. We do not find Dr.
Cimino’s testimony persuasive.
Dr. Cimino opines that it is not clear that Timm Figure 7 discloses a
shallow or steep portion. Ex. 2012 ¶ 78. Dr. Cimino, however, does not state
the basis for his opinion. Id. For this reason we give little weight to Dr.
Cimino’s opinion. See In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992)
(opinion evidence in declarations has little value without factual support).
Dr. Cimino then opines that one skilled in the art would need
additional information before concluding that the instrument closed at two
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different rates. Ex. 2012 ¶ 78. For the reasons stated above in Section
II.E.2.a.1.(g), we find this argument unpersuasive.
Since we find that Timm alone teaches closure of the anvil at two
different rates, we need not address the issue of whether Viola or Schulze
provides such a teaching.
(7) a first articulation joint configured to articulate said end effector about
a first axis in response to one of said rotary output motions
Petitioner contends that Timm combined with Anderson teaches this
limitation. MTA Opp. 32–33. Referring to Timm Figures 2 and 3 reproduced
below, Petitioner contends
Timm discloses a first articulation joint (e.g., Timm’s apertures
44a-b in flanges 42a-b, . . . [)] in the Timm/Anderson
instrument, is configured to articulate said end effector about a
first axis (the Z axis) in response to one of said rotary output
motions (the rotary output motion from one of Anderson’s
engaging members).

Id. (citing Ex. 1006, col. 8, l. 46–col. 9, l. 12, col. 22, ll. 43–44, Figs. 1–3;
Ex. 1023 ¶ 145).

Figure 2 of Timm as annotated by Petitioner showing an exploded
perspective view of a surgical stapling and severing instrument. Id. at 33.

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Figure 3 of Timm as annotated by Petitioner showing a right perspective
view of a stapling and severing instrument with a portion shown in cross-
section. Id.

Patent Owner does not contest the specific teachings of the references
with respect to this element of proposed substitute claim 12 other than to
argue that there would have been no motivation to combine the references
and one skilled in the art would not have had a reasonable expectation of
success. See MTA Reply 7–18.
We find that the evidence of record supports the conclusion that
Timm in combination with Anderson teaches a first articulation joint
configured to articulate said end effector about a first axis in response to one
of said rotary output motions.
Referring to Figure 3 above, Timm teaches
[i]n various embodiments, the distal end of tube adapter
40 may include a pair of opposing flanges 42a and 42b which
define a cavity 41 for pivotably receiving a pivot block 50
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therein. Each flange 42a and 42b may include an aperture 44a
and 44b oriented to receive a pivot pin 57 that extends through
an aperture in pivot block 50 to allow pivotable movement of
pivot block 50 about a “Z” axis defined as perpendicular to
longitudinal axis “X” of tool assembly 100. See FIG. 3. As will
be explained in more detail below, the channel assembly may
be formed with two upwardly extending flanges 121a, 121b that
have an aperture 122a, 122b, respectively, which are
dimensioned to receive a pivot pin 59. In turn, pivot pin 59
mounts through apertures 53a, 53b of pivot block 50 to permit
rotation of the tool assembly 100 about the “Y” axis as needed
during a given surgical procedure. Rotation of pivot block 50
about pin 57 along “Z” axis rotates tool assembly 100 about the
“”Z” axis. Other methods of fastening the channel 120 to the
pivot block and of fastening the anvil to the channel may be
effectively employed without departing from the spirit and
scope of the present invention.

Ex. 1006, col. 8, ll. 46–65. Dr. Fischer testifies that the rotary output would
have come from one of Anderson’s engaging members. See Ex. 1023 ¶ 145.
(8) a second articulation joint configured to articulate said end effector
about a second axis in response to one of said rotary output motions
Petitioner contends that Timm combined with Anderson teaches this
limitation. MTA Opp. 33–34. Again referring to Timm figures 2 and 3,
Petitioner contends
Timm discloses a second articulation joint (Timm’s
apertures 53a, 53b, 122a, 122b and pivot pin 59), which, in the
Timm/Anderson instruments, is configured to articulate said
end effector about a second axis (the Y axis) in response to one
of said rotary output motions (the rotary output motion from
one of Anderson’s engaging members).

Id. (citing Ex. 1023 ¶ 146).
Patent Owner does not contest the specific teachings of the references
with respect to this element of proposed substitute claim 12 other than to
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argue that there would have been no motivation to combine the references
and one skilled in the art would not have had a reasonable expectation of
success. See MTA Reply 7–18.
We find that the evidence of record supports the conclusion that
Timm in combination with Anderson teaches a second articulation joint
configured to articulate said end effector about a second axis in response to
one of said rotary output motions. In the discussion of the first articulation
joint quoted above, Timm also teaches the presence of a second articulation
joint which permits movement of the end effector about a second axis. Ex.
1006, col. 8, ll. 46–65. Dr. Fischer testifies that the rotary output would have
come from one of Anderson’s engaging members. See Ex. 1023 ¶ 146.
(9) a tool mounting plate supporting said elongate shaft assembly and
configured to be releasably mounted to said tool drive assembly, said
tool mounting plate comprising a plurality of driven elements configured
for driving engagement with a corresponding plurality of rotatable body
portions of said tool drive assembly when said tool mounting plate is
mounted to said tool drive assembly.
Petitioner contends that Timm combined with Anderson teaches this
element. MTA Opp. 34. Petitioner presents the same arguments discussed in
Section II.E.2.a.1.(j) above with the exception that the elongated shaft
engages the clamping collar of the closure tube. Id. (citing Ex. 1023 ¶ 147).
Patent Owner does not contest the specific teachings of the references
with respect to this element of proposed substitute claim 12 other than to
argue that there would have been no motivation to combine the references
and one skilled in the art would not have had a reasonable expectation of
success. See MTA Reply 7–18.
For the reasons stated in Section II.E.2.a)1.(j) above, we find that the
evidence of record supports the conclusion that Timm in combination with
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Anderson teaches a tool mounting plate supporting said elongate shaft
assembly and configured to be releasably mounted to said tool drive
assembly, said tool mounting plate comprising a plurality of driven elements
configured for driving engagement with a corresponding plurality of
rotatable body portions of said tool drive assembly when said tool mounting
plate is mounted to said tool drive assembly.
(10) Conclusion
Based on the foregoing, we conclude that the evidence of record
supports the conclusion that the subject matter of proposed substitute claim
12 would have been obvious to one of ordinary skill in the art at the time the
invention was made over Timm combined with Anderson.
b) Proposed Substitute Claim 13
The arguments presented by the parties with respect to proposed
substitute claim 13 in this ground are essentially the same as those discussed
above with respect to Ground 1. MTA Opp. 34, MTA Reply 7–18. For the
reasons stated above in Section II.E.2.b, we conclude that the subject matter
of substitute claim 13 would have been obvious to one of ordinary skill in
the art at the time the invention was made over Timm combined with
Anderson.
III. CONCLUSION11
For the foregoing reasons, we grant Patent Owner’s request to cancel
claims 10 and 11 and deny Patent Owner’s request to enter proposed
substitute claims 12 and 13 as summarized by the following table:

11 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
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Motion to Amend Outcome Claim(s)
Original Claims Cancelled by Amendment 10, 11
Substitute Claims Proposed in the Amendment 12, 13
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 12, 13
Substitute Claims: Not Reached

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Patent Owner’s motion to Amend is granted as to its
non-contingent request to cancel claims 10 and 11;
FURTHER ORDERED that Patent Owner’s Motion to Amend is
denied as to proposed substitute claims 12 and 13.

Through Reissue or Reexamination During a Pending AIA Trial
Proceeding. See 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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FOR PETITIONER:
Steven Katz
John Phillips
Ryan O’Connor
FISH & RICHARDSON P.C.
One Marina Park Drive
Boston, Massachusetts 02210-1878
katz@fr.com
phillips@fr.com
oconnor@fr.com
FOR PATENT OWNER:
Anish Desai
Elizabeth Weiswasser
Adrian Percer
Christopher Marando
Christopher Pepe
WEIL, GOTSHAL & MANGES LLP
2001 M Street, NW Suite 600
Washington, DC 20036
anish.desai@weil.com
elizabeth.weiswasser@weil.com
adrian.percer@weil.com
christopher.marando@weil.com
christopher.pepe@weil.com