P TECH, LLC

Patent Trials and Appeals Board

Sep 3, 2021

IPR2020-00649 (P.T.A.B. Sep. 3, 2021)

Trials@uspto.gov Paper 31
571-272-7822 September 3, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

INTUITIVE SURGICAL, INC.,
Petitioner,
v.
P TECH, LLC,
Patent Owner.

IPR2020-00649
Patent 9,192,395 B2

Before SHERIDAN K. SNEDDEN, MICHELLE N. WORMMEESTER,
and CYNTHIA M. HARDMAN, Administrative Patent Judges.
HARDMAN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)
Denying Patent Owner’s Motion to Exclude
37 C.F.R. § 42.64
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I. INTRODUCTION
This is a Final Written Decision in an inter partes review challenging
the patentability of claims 1 and 4 of U.S. Patent No. 9,192,395 B2 (“the
’395 patent,” Ex. 1001). We have jurisdiction under 35 U.S.C. § 6.
Petitioner Intuitive Surgical, Inc. has the burden of proving
unpatentability of the challenged claims by a preponderance of the evidence.
35 U.S.C. § 316(e). Having reviewed the parties’ arguments and supporting
evidence, for the reasons discussed below, we find that Petitioner has
demonstrated by a preponderance of the evidence that claims 1 and 4 are
unpatentable. We also deny Patent Owner P Tech, LLC’s motion to exclude
evidence.
A. Real Parties in Interest
Petitioner and Patent Owner each identify themselves as the sole real
parties in interest. Paper 2 (“Pet.”) 1; Paper 4, 2.
B. Related Matters
The ’395 patent is involved in P Tech LLC v. Intuitive Surgical, Inc.,
1:19-cv-00525-RGA (D. Del.). Pet. 1–2; Paper 4, 2. Petitioner indicates
that related U.S. Patent No. 10,368,953 (the “’953 patent”) is also involved
in this litigation. Pet. 2.
Petitioner filed a petition for inter partes review of related U.S. Patent
No. 9,149,281. Pet. 2; Paper 4, 2; see also IPR2020-00650. We note that
Petitioner has also filed IPR2020-01687 against the ’953 patent.
Petitioner asserts that Patent Owner is prosecuting U.S. Patent
Application Nos. 16/272,650, 16/412,008, and 16/674,970, each of which
claims the benefit of U.S. App. No. 13/888,957 (i.e., the application that led
to the ’395 patent). Pet. 2.
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C. The ’395 Patent
The ’395 patent states that “[a]n improved apparatus and method of
securing body tissue may be performed with a robotic mechanism.” Ex.
1001, Abstract. The body tissue may be secured with a fastener such as a
suture, staple, or screw. Id. at 1:33–34.
Figure 1 of the ’395 patent is reproduced below.

Figure 1 above shows an “apparatus 30 for use in securing tissue in a
patient’s body.”1 Id. at 4:51–52. The figure “is a schematic illustration
depicting the manner in which a robotic mechanism and an imaging device
are positioned relative to a patient’s body.” Id. at 2:36–39. The apparatus
includes operating table 32, robotic mechanism 38 “to position a tissue

1 Throughout this Decision, we omit bolding of reference numbers in quotes from
the ’395 patent and prior art patents.
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securing device, fastener, or other apparatus at a desired location within the
patient during performance of a surgical procedure,” and imaging device 40.
Id. at 4:66–5:5. The robotic mechanism “is guided by automatic controls
which include the computer 44 and robotic arm interface 46,” and “may
have manually operable controls which provide for interaction between the
surgeon and the robotic mechanism.” Id. at 5:14–23.
Figure 22 of the ’395 patent is reproduced below.

Figure 22 above is a schematic illustration depicting the manner in which
legs of a staple 306, 308 are bent and “end portions of the staple are bonded
together by the robotic mechanism” of Figure 1. Id. at 3:51–55. The ’395
patent describes the elements of Figure 22 as follows:
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When the staple 300 is utilized to secure the body tissue, end
portions 302 and 304 of legs 306 of the staple are moved into
engagement (FIG. 22) and bonded together. By bonding the
end portions 302 and 304 of the legs 306 and 308 of the staple
300 together, the staple is locked into the tissue 64. Any
tendency for the resilient legs 306 and 308 to spring back to
their original positions . . . is prevented by the interconnected
the end portions 302 and 304 of the legs.
Id. at 26:56–63.
Figure 26 of the ’395 patent is reproduced below.

Figure 26 above “is a schematic illustration depicting the manner in which
[staple 346 is inserted into body tissue and] is bent and legs of the staple are
bonded together by operation of the robotic mechanism of FIG. 1.” Id. at
4:1–4.
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The ’395 patent describes the elements of Figure 26 as follows:
Continued downward movement of the pusher plate 338
causes force transmitting members or lands 356 and 358
connected to the pusher plate 338 to press against the connector
or bight portion 346 of the staple 330 . . . . As the pusher plate
338 continues to be advanced or lowered to the position shown
in FIG. 26, the lands or force transmitting members 356 and
358 deflect or bend the legs 342 and 344 to the gripping
position illustrated in FIG. 26, to dispose a portion of the body
tissue 334 between the legs 342 and 344 and the connector or
bight portion 346 of the staple 330 (FIG. 26).
. . .
Once the staple 330 has been bent or deformed to grip
the body tissue 334 in the manner illustrated schematically in
FIG. 26, the legs 342 and 344 of the staple are bonded together.
. . . Once the legs 342 and 344 of the staple have been bonded
together, the staple is released or disengaged from the anvils
350 and 352 by an injector spring 362 having legs 364 and 366
(FIG. 23) which are pressed against the staple 330. This force
separates the staple from the anvils 350 and 352.
Id. at 29:51–30:37.
In one embodiment, the robotic mechanism 38 is used to secure body
tissue with a threaded fastener 440. Figure 34 of the ’395 patent is
reproduced below.
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Figure 34 above “is a schematic illustration depicting the manner in which
the robotic mechanism of FIG. 1 is utilized to position a threaded fastener in
body tissue.” Id. at 4:28–30. The ’395 patent discloses position sensor 452
in the context of the embodiment shown in Figure 34. The ’395 patent
provides the following description of Figure 34:
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The robotic mechanism 38 includes a programmable
computer 444 (FIG. 34) which is connected with a fastener
drive member 446 by a motor 448. . . . A position sensor 452 is
connected with fastener drive member 446 and the computer
444. The position sensor 452 has an output which is indicative
of the position of the fastener drive member 446. The output
from the position sensor 452 indicates the depth or distance to
which the threaded fastener is moved into body tissue by
operation of the motor 448 to rotate the fastener drive member
446.
. . .
By utilizing the robotic mechanism 38 to manipulate the
fastener 440, the fastener can be accurately positioned relative
to body tissue. . . . In addition, the position sensor 452 enables
the distance to which the fastener 440 is moved into the body
tissue to be accurately controlled.
Id. at 36:36–37:4.
D. Illustrative Claims
Independent claims 1 and 4 illustrate the claimed subject matter and
are reproduced below (with the same bracketed numbering used in the
Petition added to the limitations of claim 1):
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1. [1.1] A robotic fastening system comprising:

[1.2] a robotic mechanism including an adaptive arm
configured to position a staple relative to a body portion of a
patient;

[1.3] a robotic arm interface configured to operate the adaptive
arm of the robotic mechanism;

[1.4] a staple having first and second legs;

[1.5] a fastening member coupled to the adaptive arm, the
fastening member having first and second force transmitting
portions and configured to secure the body portion with the
staple by applying a force from the first and second force
transmitting portions to move the first and second legs of the
staple toward each other;

[1.6] at least one of a position sensor configured to indicate a
distance moved by the staple and a force measurement device
configured to indicate a resistance required to move the staple
relative to the body portion; and

[1.7] a tissue retractor assembly coupled to the robotic
mechanism, the tissue retractor assembly including a cannula
configured to facilitate insertion of the fastening member
through the cannula into a working space inside the patient.

4. A robotic fastening system comprising:

a robotic mechanism including an adaptive arm configured to
position a staple relative to a body portion of a patient;

a robotic arm interface configured to operate the adaptive arm
of the robotic mechanism;

an endoscope coupled to the adaptive arm;

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an imaging device configured provide an image, from the
endoscope, of the staple relative to the body portion;

a staple having first and second legs;

a fastening member coupled to the adaptive arm, the fastening
member having first and second force transmitting portions and
configured to secure the body portion with the staple based on a
location of tissue determined with the image provided by the
endoscope by applying a force from the first and second force
transmitting portions to move the first and second legs of the
staple toward each other; and

at least one of a position sensor configured to indicate a
distance moved by the staple and a force measurement device
configured to indicate a resistance required to move the staple
relative to the body portion.

Ex. 1001, 44:36–56, 44:60–45:15.

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E. Asserted Challenges to Patentability
Petitioner asserts the following challenges to patentability (Pet. 3):
Claim(s)
Challenged 35 U.S.C. § Reference(s)/Basis
1, 4 103(a)2 Tierney,3 McGarry4
1 103(a) Tierney, McGarry, Bonutti5
1, 4 103(a) Tierney, Hooven6
1, 4 103(a) Tierney, McGarry, Bonutti, Hooven, Whitman7
1, 4 103(a)
Tierney, McGarry, Bonutti,
Hooven, Whitman,
Madhani,8 Cooper9
Petitioner relies on two declarations from Dr. Gregory Fischer.
Ex. 1003 (“Fischer Decl.”); Ex. 1025 (“Fisher Supp. Decl.”). Patent Owner

2 The parties use a 2002 priority date for the challenged claims. Pet. 4; Paper 12,
26. The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), included revisions to 35 U.S.C. § 103 that became effective after
this date. Therefore, we apply the pre-AIA version of 35 U.S.C. § 103.
3 US 6,331,181 B1, issued December 18, 2001 (Ex. 1004).
4 US 5,289,963, issued March 1, 1994 (Ex. 1005).
5 US 6,277,136 B1, issued August 21, 2001 (Ex. 1006).
6 US 5,518,163, issued May 21, 1996 (Ex. 1007).
7 US 6,793,652 B1, filed November 28, 2000, issued September 21, 2004 (Ex.
1008).
8 US 5,792,135, issued August 11, 1998 (Ex. 1009).
9 WO 98/25666, published June 18, 1998 (Ex. 1010).
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relies on two declarations from Dr. Cameron Riviere. Ex. 2001 (“Riviere
Decl.”); Ex. 2006 (“Riviere Second Decl.”).
II. ANALYSIS
A. Legal Principles
A patent may not be obtained “if the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.”
35 U.S.C. § 103(a) (2012). An obviousness analysis involves underlying
factual inquiries including (1) the scope and content of the prior art; (2)
differences between the claimed invention and the prior art; (3) the level of
ordinary skill in the art; and (4) where in evidence, objective indicia of
nonobviousness, such as commercial success, long-felt but unsolved needs,
and failure of others.10 Graham v. John Deere Co., 383 U.S. 1, 17–18, 35–
36 (1966). An obviousness determination requires finding “a motivation to
combine accompanied by a reasonable expectation of achieving what is
claimed in the patent-at-issue.” Intelligent Bio-Sys., Inc. v. Illumina
Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016).
B. Level of Ordinary Skill in the Art
Factors pertinent to determining the level of ordinary skill in the art
include the type of problems encountered in the art and prior art solutions to
those problems. See Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693,
696–97 (Fed. Cir. 1983). The prior art itself may reflect an appropriate skill
level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).

10 On this record, neither party has pointed us to any evidence of objective indicia.
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Patent Owner proposes that a person of ordinary skill in the art:
would have had the equivalent of a Bachelor’s degree or higher
in mechanical engineering, electrical engineering, biomedical
engineering, or a related field directed towards medical electro-
mechanical systems and at least 3 years of experience working
with robotic surgical instruments. Experience with robotic
surgical instruments could take the place of formal training, as
relevant skills may be learned on the job or through practical
experience. Alternatively, a higher level of education might
make up for less experience.
Paper 12 (“Resp.”) 26; Riviere Decl. ¶ 18. Petitioner does not dispute this
proposal or provide an alternate proposal.
Based on our review of the ’395 patent and the types of problems and
solutions described in the ’395 patent and cited prior art, we adopt Patent
Owner’s proposal.
C. Claim Construction
In an inter partes review, we construe a patent 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).” 37 C.F.R. § 42.100(b) (2019); see also
Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc).
Petitioner addresses the construction of three claim terms.
First, Petitioner asserts that “at least one of a position sensor . . . and a
force measurement device” (which appears in claims 1 and 4) requires at
least one of a position sensor and at least one of a force measurement
device. Pet. 17. Patent Owner applies Petitioner’s proposed claim
construction. Resp. 29. Because this proposed construction is undisputed
and consistent with the claim language, we adopt it.
Second, Petitioner mentions but does not provide a proposed
construction for the claim term “tissue retractor assembly” (which appears
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in claim 1). Pet. 18. Patent Owner also does not provide a proposed
construction of this claim term, arguing that the term does not require
construction. Resp. 29–30. Only claim terms in controversy need be
construed. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999). On this record, the parties have not proposed constructions
for this claim term, and we see no dispute that requires us to expressly
construe this term.
Third, Petitioner argues that the claim term “first and second force
transmitting portions” (which appears in claim 1 (at limitation [1.5]) and
claim 4) should be construed as a means-plus-function limitation under
35 U.S.C. § 112, ¶ 6 (pre-AIA). Pet. 14–16; Paper 15 (“Reply”) 1–2.
Petitioner identifies the function performed by the “first and second force
transmitting portions” as moving the first and second legs of the staple
toward each other, and the corresponding structure disclosed in the
Specification as including force transmitting members or lands 356 and 358.
Pet. 14–15 (citing Ex. 1001, 29:51–60; Fischer Decl. ¶¶ 47–50). Patent
Owner disputes that this term is in means-plus-function format. Resp. 26–
29; Paper 22 (“Sur-reply”) 2.
We note that in its arguments relating to the Hooven-based grounds,
however, Petitioner does not treat this term as a means-plus-function
limitation (see Pet. 16, 64–65), and Patent Owner does not dispute that
Hooven discloses “first and second force transmitting portions.” See
generally Resp. 57–76. Accordingly, on this record, we need not construe
this term to resolve the parties’ disputes under the Hooven-based grounds.
Vivid Techs., Inc., 200 F.3d at 803 (“[O]nly those terms need be construed
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that are in controversy, and only to the extent necessary to resolve the
controversy.”).
However, even if construction of “first and second force transmitting
portions” were necessary to resolve the parties’ disputes under the Hooven-
based grounds, we agree with Patent Owner that this claim term is not in
means-plus-function format. 35 U.S.C. § 112, ¶ 6 (pre-AIA) states: “An
element in a claim for a combination may be expressed as a means or step
for performing a specified function without the recital of structure, material,
or acts in support thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the specification and
equivalents thereof.” “[F]ailure to use the word ‘means’” in the disputed
limitation “creates a rebuttable presumption . . . that § 112, para. 6 does not
apply.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir.
2015) (en banc in relevant part). The challenger can overcome the
presumption by “demonstrat[ing] that the claim term fails to ‘recite
sufficiently definite structure’ or else recites ‘function without reciting
sufficient structure for performing that function.’” Id. at 1349 (quoting
Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).
Although the limitation “first and second force transmitting portions”
does not use the word “means,” Petitioner contends under an alternative
theory that § 112, para. 6 applies because “portion” is a “nonce word” and
the “prefix ‘force transmitting’ does not impart any structure.” Pet. 14.
Patent Owner responds that “portion” is not a nonce word, and that persons
of ordinary skill in the art would understand “portion” to mean structure.
Resp. 28–29 (citing, e.g., various portions of Hooven (Ex. 2006) that use the
term “portion”). Patent Owner also contends that a person of ordinary skill
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in the art would recognize that the “first and second force transmitting
portions” of the robotic system of the challenged claims are the structural
portions of the system that apply a force to move the legs of the staple
toward each other. Id. at 29 (citing Riviere Second Decl. ¶¶ 45–54). We
determine that on this record, Petitioner has not overcome the presumption
that § 112, para. 6 does not apply.
First, Petitioner has not persuaded us that “portion” is necessarily a
nonce word. See, e.g., Zimmer Surgical, Inc. v. Stryker Corp., 2018 WL
30308515, *8 (D. Del. June 29, 2018) (“‘Portion’ is not a nonce word.”).
Patent Owner demonstrates that prior art of record uses “portion” to refer to
structure. For example, Hooven refers to the “business portion of the
instrument” as the structure in the instrument that “accomplishes a step in a
surgical procedure, whether that be ligating, stapling, cutting, manipulating
tissue, or combinations of such steps.” Riviere Second Decl. ¶ 50 (quoting
Ex. 1007, 4:21–32). Petitioner’s expert Dr. Fischer asserts that in Hooven,
the word preceding the word “portion” provides the structure (see Fischer
Supp. Decl. ¶ 13, discussing, e.g., “handle portion”), but this does not apply
to Hooven’s use of the term “business portion of the instrument,” because
“business” does not expressly recite structure.
Second, “even if the claims recite a nonce term followed by
functional language, other language in the claim ‘might inform the structural
character of the limitation-in-question.’” MTD Prods. Inc. v. Iancu, 933
F.3d 1336, 1341–42 (Fed. Cir. 2019) (quoting Williamson, 792 F.3d at
1351). Petitioner narrowly focuses on the word “portion” while overlooking
the larger context of the claims. The claims are directed to a robotic
fastening system comprising elements configured to position a staple
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relative to a patient’s body. The fastening system includes a “fastening
member having first and second force transmitting portions” that apply a
force to move the staple legs towards each other. We agree with Dr. Riviere
that persons of ordinary skill in the art would understand that the “first and
second force transmitting portions” are structural parts of the fastening
member. See Second Riviere Decl. ¶ 49. This is consistent with the
Specification, which depicts “[f]orce transmitting members” as structures
that move staple legs towards each other. See Ex. 1001, 26:52–56, 27:21–
23 (“Force transmitting members 312 and 314 (FIG. 21) are then moved by
the robotic mechanism 38 to deflect the staple legs 306 and 308.”), Fig. 21,
29:51–60 (discussing “force transmitting members or lands 356 and 358
connected to the pusher plate 338”), Figs. 25, 26); Riviere Second Decl.
¶¶ 51–53.
Thus, in the context of the challenged claims, we agree with Patent
Owner that a person of ordinary skill in the art would have recognized the
“first and second force transmitting portions” as connoting the structural
portions of the fastening member that move the staple legs towards each
other. See, e.g., Resp. 29; Riviere Second Decl. ¶¶ 49–53. As such, on this
record, Petitioner has not overcome the presumption that § 112, ¶ 6 does not
apply to the limitation “first and second force transmitting portions.”
D. Summary of Asserted Prior Art References
Below we summarize the prior art references that we discuss in detail
herein.
1. Summary of Tierney (Ex. 1004), Madhani (Ex. 1009), and Cooper
(Ex. 1010)
Tierney incorporates Madhani and Cooper by reference. Ex. 1004,
1:60–66, 8:4–7. Accordingly, we discuss these references together.
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Tierney relates to “surgical tools having improved mechanical and/or
data interface capabilities to enhance the safety, accuracy, and speed of
minimally invasive and other robotically enhanced surgical procedures.”
Ex. 1004, 1:12–15. Tierney describes that
[r]obotic surgery will generally involve the use of multiple
robotic arms. One or more of the robotic arms will often
support a surgical tool which may be articulated (such as jaws,
scissors, graspers, needle holders, microdissectors, staple
appliers, tackers, suction/irrigation tools, clip appliers, or the
like) or non-articulated (such as cutting blades, cautery probes,
irrigators, catheters, suction orifices, or the like).
Id. at 6:20–28. Tierney states that its
robotic surgical system 10 generally includes master controller
150 and a robotic arm slave cart 50. Master controller 150
generally includes master controllers (not shown) which are
grasped by the surgeon and manipulated in space while the
surgeon views the procedure views [sic] a stereo display. The
master controllers are manual input devices which preferably
move with six degrees of freedom, and which often further have
an actuatable handle for actuating tools (for example, for
closing grasping saws, applying an electrical potential to an
electrode, or the like).
Id. at 6:61–7:4.
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Figure 2 of Tierney is reproduced below.

Figure 2 above “is a perspective view of a robotic surgical arm cart system
[50] in which a series of passive set-up joints support robotically actuated
manipulators.” Id. at 5:29–31. The cart “includes a base 52 from which
three surgical tools 54 are supported. More specifically, tools 54 are each
supported by a series of manually articulatable linkages, generally referred
to as set-up joints 56, and a robotic manipulator 58.” Id. at 7:16–21. In the
cart, “robotic manipulators 58 preferably include a linkage 62 that constrains
movement of tool 54,” and “linkage 62 includes rigid links coupled together
by rotational joints in a parallelogram arrangement so that tool 54 rotates
around a point in space 64.” Id. at 7:41–48. Manipulator 58 may include a
cannula 72. Id. at 8:9–10.
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Figure 2A of Tierney is reproduced below.

Figure 2A above is a perspective view of a robotic surgical manipulator 58
for use in the cart system of Figure 2. Tierney discloses that
[l]inkage 62 of manipulator 58 is driven by a series of motors
70. These motors actively move linkage 62 in response to
commands from a processor. Motors 70 are further coupled to
tool 54 so as to rotate the tool about axis 66, and often to
articulate a wrist at the distal end of the tool about at least one,
and often two, degrees of freedom. Additionally, motors 70 can
be used to actuate an articulatable end effector of the tool for
grasping tissues in the jaws of a forceps or the like. Motors 70
may be coupled to at least some of the joints of tool 54 using
cables, as more fully described in U.S. Pat. No. 5,792,135
[Madhani], the full disclosure of which is also incorporated
herein by reference. As described in that reference, the
manipulator will often include flexible members for transferring
motion from the drive components to the surgical tool. For
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endoscopic procedures, manipulator 58 will often include a
cannula 72. Cannula 72 supports tool 54, allowing the tool to
rotate and move axially through the central bore of the cannula.
Id. at 7:63–8:13 (emphasis added).
Turning to Madhani, Madhani discloses a telesurgery system for
laparoscopic surgery that “allows a surgeon at one location to perform
surgery on a patient at another location.” Ex. 1009, 5:8–10. The system
includes an “articulated surgical instrument for minimally invasive surgery
which provides a high degree of dexterity, low friction, low inertia and good
force reflection.” Id. at 1:15–19. The instrument is provided with a “unique
cable and pulley drive system [that] operates to reduce friction and enhance
force reflection” and a “unique wrist mechanism [that] operates to enhance
surgical dexterity compared to standard laparoscopic instruments.” Id. at
Abstract. According to Madhani, “laparoscopic surgical instruments
generally include a laparoscope for viewing the surgical field, and working
tools such as clamps, graspers, scissors, staplers, and needle holders.” Id. at
1:51–55.
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Figure 3 of Madhani is reproduced below.

Figure 3 above is a perspective view of a force-reflecting surgical
instrument 12 disclosed in Madhani. Id. at 48–49. Instrument 12 is
controlled by a computer and a master device that is manipulated by a
surgeon at a remote location. Id. at 5:13–16. Madhani’s system “has two
opposed pivoting jaws and a pivoting wrist member [22],” and “is adapted
to be coupled via a servomechanism to a master control operated by a
surgeon.” Id. at 3:26–32. Madhani discloses that
[o]nce instrument 12 is in the proper position, . . . the surgeon
can perform the necessary surgical procedures on the patient
with instrument 12. Forces experienced by instrument 12 are
reflected back to the surgeon by master device 150 [not shown].
The reflected forces may be scaled up in order to allow the
surgeon to better “feel” the surgical procedures. As a result, the
surgeon can feel instrument 12 engaging types of tissue that do
not provide much resistance. In addition, movements of master
device 150 [not shown] relative to instrument 12 may be scaled
down so that the precision and dexterity of instrument 12 can be
increased.
Id. at 7:20–32.
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Instrument 12 is driven by drive motors M1, M2, M3, M4, M5, M6
and M7 (FIGS. 3, 4, 6 and 7a-b) in conjunction with a series of cables and
pulleys. Id. at 5:16–19. Madhani discloses that
[d]rive motors M1, M2, M3, M4 and M5 are mounted to sliding
bracket 96 and drive respective cables C1[,] C2, C3[,] C4 and
C5. Sliding bracket 96 supports each of the drive motors.
During operation sliding bracket 96 is connected to positioning
mechanism 14 by mounting bracket 36. When instrument 12 is
mounted on positioning mechanism 14, the drive motors
operate to move distal portion 28b relative to sliding bracket 96.
Sliding bracket 96 thus forms the support bracket of the
surgical instrument. Each drive motor M1, M2, M3, M4 and
M5 includes a respective encoder E1, E2, E3, E4 and E5 for
providing computer 11 with the rotational position of their
respective drive shafts.
Id. at 8:28–39.
Tierney also incorporates Cooper by reference, and cites Cooper’s
disclosure of a multicomponent telepresence system and methods that
improve the safety and speed with which robotic surgical tools can be
removed and replaced during a surgical procedure. Ex. 1004, 1:60–2:11.
Cooper “relates to robotically-assisted surgical manipulators and more
particularly to systems and methods for performing telerobotic surgical
procedures on a patient while providing the surgeon with the sensation of
physical presence at the surgical site.” Ex. 1010, 1:17–21. Cooper
describes design goals for its systems to include “easy sterilization so that
they can be reused after the components have been contaminated during an
operation,” and “to minimize instrument exchange time during the surgical
procedure.” Id. at 3:4–8.
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2. Summary of Hooven (Ex. 1007)
Hooven discloses an endoscopic stapling and cutting instrument that
is interconnected with a controller and a video display monitor. Ex. 1007,
4:6–8. Hooven’s device “will place down plural parallel rows of staples
with the staples offset in the rows. The instrument will also operate a knife
to pass between two adjacent parallel rows of staples. Such an instrument
staples tissue together and cuts that tissue between the stapled portions.” Id.
at 4:34–40. Figures 1 and 3, annotated by Petitioner and reproduced below,
illustrate several components of Hooven’s system.

Figure 1 above “is a schematic view of an endoscopic surgical system of the
present invention interconnected with a microprocessor/controller and a
video display screen.” Id. at 3:14–16. Figure 3 above “is a longitudinal
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cross-sectional view of the handle portion of one embodiment of an
endoscopic stapling and cutting system of the present invention.” Id. at
3:18–20. Petitioner’s annotations label the controller, endoscopic stapling
and cutting instrument, and the instrument’s motor.
3. Summary of Whitman (Ex. 1008)
Whitman discloses “an electro-mechanical surgical device” with a
housing, an elongated shaft extending from the housing, an elongated shaft
coupleable to a surgical instrument, at least two axially rotatable drive shafts
within the shaft, a surgical instrument coupled to each of the drive shafts, a
steering cable arrangement, and a motor system within the housing.
Ex. 1008, 3:1–11. The system includes a first encoder 106 and a second
encoder 108, which are configured to output a signal in response to and in
accordance with the rotation of first and second drive shaft 30, 32,
respectively. Id. at 7:56–60. Figure 8 of Whitman is reproduced below.
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Figure 8 is a schematic view of an encoder 106, 108. Whitman discloses
that
[m]ounted non-rotatably on drive shaft 30, 32 is a magnet 240
having a north pole 242 and a south pole 244. The encoder
106, 108 further includes a first sensor 246 and second sensor
248, which are disposed approximately 90° apart relative to the
longitudinal, or rotational, axis of drive shaft 30, 32. The
output of the sensors 246, 248 is persistent and changes its state
as a function of a change of polarity of the magnetic field in the
detection range of the sensor. Thus, based on the output signal
from the encoders 106, 108, the angular position of the drive
shaft 30, 32 may be determined within one-quarter revolution
and the direction of rotation of the drive shaft 30, 32 may be
determined. The output of each encoder 106, 108 is transmitted
via a respective line 110, 112 of data transfer cable 38 to
controller 122. The controller 122, by tracking the angular
position and rotational direction of the drive shafts 30, 32 based
on the output signal from the encoders 106, 108, can thereby
determine the position and/or state of the components of the
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surgical instrument or attachment connected to the electro-
mechanical surgical device 10. That is, by counting the
revolutions of the drive shaft 30, 32, the controller 122 can
determine the position and/or state of the components of the
surgical instrument or attachment connected to the electro-
mechanical surgical device 10.
Id. at 8:5–29 (emphasis added).
In one embodiment, Whitman discloses the use of a circular surgical
stapler attachment that includes an anvil portion having an anvil mounted on
the distal end of an anvil stem. Id. at 8:30–36. The anvil stem is extended
and retracted by the operation of an anvil drive shaft. Id. at 8:36–38. The
system is capable of determining whether the anvil has successfully moved
between its extended and retracted positions. Id. at 8:38–41.
E. Obviousness Analysis: Tierney, McGarry, Bonutti, Hooven and Whitman
Petitioner contends that claims 1 and 4 are unpatentable over Tierney,
McGarry, Bonutti, Hooven, and Whitman. Pet. 74–77. With the exception
of the claimed position sensor (recited in claim 1 (limitation [1.6]) and in
claim 4), Patent Owner does not dispute that the cited prior art teaches or
suggests the limitations of claims 1 and 4. Although we need not make
specific findings about claim limitations that Patent Owner does not dispute
are disclosed in the prior art, see In re NuVasive, Inc., 841 F.3d 966, 974
(Fed. Cir. 2016), for completeness we set forth below how Petitioner has
demonstrated that the cited prior art teaches or suggests each limitation of
claims 1 and 4. We also address Patent Owner’s arguments regarding the
claimed position sensor, and its arguments that Petitioner has not
demonstrated a motivation to combine the prior art teachings with a
reasonable expectation of success.
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For the reasons explained below, on this record we find that Petitioner
establishes by a preponderance of the evidence that claims 1 and 4 are
unpatentable as obvious.
1. Claim 1
(a) Limitation [1.1]: A robotic fastening system comprising:
To the extent the preamble is limiting, we find that Petitioner
establishes by a preponderance of the evidence that Tierney discloses a
robotic fastening system. See Pet. 27–28 (citing, e.g., Ex. 1004, 6:20–37,
6:61–63, 7:16–18, 9:8–15, 9:66–10:11, 11:66–12:29, Figs. 1–4, 5F), 58;
Fischer Decl. ¶¶ 67–69. For example, Tierney discloses a robotic surgical
system, which can include a stapler. Pet. 27–28; see also Ex. 1004, Fig. 1
and 5:24–28 (disclosing robotic surgical system 10), 6:22–28 (teaching use
of staple appliers in the robotic surgical system).
(b) Limitation [1.2]: a robotic mechanism including an
adaptive arm configured to position a staple relative to a
body portion of a patient;
Petitioner establishes by a preponderance of the evidence that Tierney
discloses this limitation. Pet. 29–31 (citing, e.g., Fischer Decl. ¶¶ 70–71),
58. For example, Petitioner’s annotated version of Tierney Figure 3A,
which exemplifies a portion of Tierney’s robotic surgical system, is
reproduced below:
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In the annotated version of Tierney Figure 3A above, Petitioner highlights
that robotic cart 50 includes an arm having a set up joint 56 and robotic
manipulator 58. Pet. 30. The figure also shows surgical tool 54, which
Tierney teaches can be a staple applier. Ex. 1004, 6:20–28. Petitioner
persuasively maps these features in Tierney to the “adaptive arm” recited in
claim 1. Pet. 29–31; Fischer Decl. ¶¶ 70–71.
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(c) Limitation [1.3]: a robotic arm interface configured to
operate the adaptive arm of the robotic mechanism;
Petitioner establishes by a preponderance of the evidence that Tierney
discloses this limitation, e.g., by disclosing “master controllers” configured
to operate the adaptive arm of the robotic mechanism. Pet. 31 (citing, e.g.,
Ex. 1004, 6:63–7:6, 11:66–12:64; Fischer Decl. ¶ 72), 58.
(d) Limitation [1.4]: a staple having first and second legs;
Petitioner establishes by a preponderance of the evidence that Tierney
in view of Hooven discloses this limitation.11 Pet. 58–59. Both Tierney and
Hooven disclose a stapler, and a person of ordinary skill in the art would
have understood that a staple generally has first and second legs. Ex. 1004,
6:25; Ex. 1007, 4:34–37; Fischer Decl. ¶ 135; Pet. 59. Petitioner also
establishes that Hooven’s stapler applies staples having first and second
legs. Fischer Decl. ¶ 136; Pet. 59.
(e) Limitation [1.5]: a fastening member coupled to the
adaptive arm, the fastening member having first and second
force transmitting portions and configured to secure the
body portion with the staple by applying a force from the
first and second force transmitting portions to move the first
and second legs of the staple toward each other;
With respect to “a fastening member coupled to the adaptive arm,”
Petitioner establishes that the surgical tool resulting from adapting Hooven’s
stapler for use with Tierney’s robotic system has an interface that
mechanically and electrically couples the tool to the adaptive arm. Pet. 62–
63; Fischer Decl. ¶ 145.

11 As discussed below in Section II.E.1(h), Petitioner establishes by a
preponderance of the evidence that a person of ordinary skill in the art would have
been motivated to combine Tierney’s robotic system and Hooven’s stapler.
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Petitioner also establishes that the Tierney/Hooven stapler teaches or
suggests the remainder of this limitation (“the fastening member having first
and second force transmitting portions . . . to move the first and second legs
of the staple toward each other”). Pet. 62–63; Fischer Decl. ¶ 145.
Petitioner’s annotated version of Hooven Figure 8 is reproduced below:

Petitioner’s annotated version of Hooven Figure 8, reproduced above,
depicts Hooven’s stapler, with Petitioner’s annotations calling out the first
force transmitting portion (“staple drivers 84,” shown in yellow), the second
force transmitting portion (“anvil 75,” shown in blue), and the fastener
(“staple 81”). In operation, a motor drives a wedge-shaped sliding
mechanism (driving wedge 83) along the length of the stapler and a drive
screw (e.g., threaded rod 71) moves staple drivers 84 (yellow) and staple 81
toward anvil 75 (blue). Pet. 64–65; Ex. 1007, 5:62–6:3; Fischer Decl.
¶¶ 146–47. This moves the staple legs together to secure the body portion.
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(f) Limitation [1.6]: at least one of a position sensor
configured to indicate a distance moved by the staple and a
force measurement device configured to indicate a
resistance required to move the staple relative to the body
portion; and
(i) at least one of a position sensor configured to indicate a
distance moved by the staple
With respect to the limitation “at least one of a position sensor
configured to indicate a distance moved by the staple,” Petitioner establishes
that both Hooven and Whitman disclose such a position sensor.12 Pet. 69–
70, 75–76. Specifically, Hooven discloses a position sensor (contact 87)
which can indicate the distance Hooven’s staple 81 moves from its initial
position inside the cartridge to its driven position. Id. at 69 (citing Fischer
Decl. ¶¶ 154–55; Ex. 1007, 6:16–19, Fig. 7). Contact 87 is engaged when
the firing nut has moved to its most forward position after driving and
forming the staples. Ex. 1007, 6:16–19. Thus, when contact 87 is activated
at the end of the firing stroke, it will indicate the position of the firing nut 86
and driving wedge 83, thereby indicating that staple 81 has been moved the
distance between its initial position inside the cartridge and its driven
position. Fischer Decl. ¶ 155. Hooven also teaches sensing the movement
of the firing nut as it travels along the threaded rod (id.; Ex. 1007, 6:33–47),
which would similarly track the position of the staple.

12 Petitioner also argues that Tierney (via its incorporation by reference of
Madhani) discloses the claimed position sensor, i.e., by disclosing motor encoders
configured to indicate a distance moved by the fastener. Pet. 66–69. Because we
find that each of Hooven and Whitman adequately discloses the claimed position
sensor, and find that a person of ordinary skill in the art would have been
motivated to combine this aspect of Whitman with the Tierney/Hooven system, we
need not and do not reach Petitioner’s other argument based on Tierney/Madhani.
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Patent Owner argues that Hooven’s contact 87 is not a position sensor
because (i) “it is not active during formation of any staples;” (ii) “its output
is not a position” but rather a binary (yes/no) indication of whether the firing
nut has moved to its most forward position; and (iii) it “does not sense the
distance moved by any staple,” but rather senses the distance moved by the
firing nut. Resp. 68–69 (quoting Riviere Second Decl. ¶ 238; citing id.
¶¶ 239–40 and Ex. 1007, 6:16–22).
Patent Owner’s arguments are unavailing. Regarding (i), we see
nothing in the language of claim 1, nor have the parties pointed us to
anything in the Specification, that requires the claimed position sensor to be
“active during formation of any staples.” Reply 22–23; Fischer Supp. Decl.
¶ 109. Regarding (ii) and (iii), we similarly see nothing in the language of
claim 1, nor have the parties pointed us to anything in the Specification, that
excludes determining the position of the staple by proxy. Indeed, Hooven’s
disclosure relating to contact 87 is consistent with the description of the
position sensor in the ’395 patent, which indicates that sensor 452 “has an
output which is indicative of the position of the fastener drive member 446,”
rather than of the position of the fastener itself. Ex. 1001, 36:45–50, Fig.
34; Fischer Decl. ¶ 155; Fischer Supp. Decl. ¶¶ 108, 110.
Nevertheless, we also find that Whitman discloses a position sensor as
claimed, i.e., controller 122 and encoders 106, 108. See Fischer Decl. ¶ 169.
Whitman teaches that “controller 122, by tracking the angular position and
rotational direction of the drive shafts 30, 32 based on the output signal from
the encoders 106, 108 can thereby determine the position and/or state of the
components of the surgical instrument or attachment connected to the
electro-mechanical surgical device 10.” Ex. 1008, 8:20–25. In particular,
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because the pitch of the drive shaft is known, the position of the stapler is a
function of, and ascertainable on the basis of, the rotation of the drive shaft.
Id. at 8:55–9:1; Fischer Decl. ¶¶ 169–70. As Dr. Fischer establishes, a
person of ordinary skill in the art would have immediately understood that
position sensors could be used to sense the position of each of the
components moved by the motors, and thus would measure the distance
moved by the staple. Fischer Decl. ¶ 173.
Patent Owner does not dispute that Whitman discloses a position
sensor as claimed, but rather argues that a person of ordinary skill in the art
would not have been motivated to combine Whitman’s position sensor with
Tierney and Hooven with a reasonable expectation of success. See Resp.
72–76. We address those arguments in Section II.E.1(h)(ii) below.
(ii) a force measurement device configured to indicate a
resistance required to move the staple relative to the
body portion
Petitioner establishes that Tierney in view of Hooven discloses this
limitation. See Pet. 70–71 (citing, e.g., Fischer Decl. ¶¶ 156–58). In
particular, Hooven discloses a force measurement device (e.g., the sensor
circuits in Hooven’s controller 31 and/or the sensors in Hooven’s end
effector) configured to indicate (via signals sent to the “logic circuits” in
controller 31) a resistance required to move the fastener relative to the body
portion (“the power and/or force being used” by drive motor 45 to move
driving wedge 83 and fire staple 81). Fischer Decl. ¶ 156; Ex. 1007, 8:29–
32. The force to move the staple would be the same as the resistance to
movement due to the body tissue felt by the staple.13 Fischer Decl. ¶ 156.

13 Petitioner also argues that Tierney (via its incorporation by reference of
Madhani) discloses the claimed force measurement device. Pet. 71–72. Because
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(g) Limitation [1.7]: a tissue retractor assembly coupled to the
robotic mechanism, the tissue retractor assembly including
a cannula configured to facilitate insertion of the fastening
member through the cannula into a working space inside the
patient.
Petitioner establishes that Tierney’s cannula 72 is configured to
facilitate insertion of the Tierney/Hooven stapler through the cannula into a
working space inside the patient.14 Pet. 72 (citing Fischer Decl. ¶ 159).
(h) Motivation to Combine with a Reasonable Expectation of
Success
(i) Combining Tierney’s Robotic System and Hooven’s
Stapler
Petitioner persuasively establishes that a person of ordinary skill in
the art would have been motivated to modify Tierney’s robotic system to
accommodate Hooven’s stapler. See Pet. 59–61 (additionally cross-
referencing id. at 37–40); see also In re Venner, 262 F.2d 91, 95 (C.C.P.A.
1958) (holding that broadly providing an automatic means to replace a
manual activity that accomplishes the same result is insufficient to
distinguish over the prior art). Tierney teaches using its robotic system with
“any . . . end effector which is useful for surgery,” including “staple
appliers.” Pet. 37, 60–61; Fischer Decl. ¶¶ 82, 139; Ex. 1004, 6:22–28,

we find that Hooven adequately discloses the claimed force measurement device,
we need not and do not reach this other argument.
14 Petitioner also establishes that Bonutti discloses a retractor mounted on a
cannula, and that it would have been obvious in view of Bonutti to modify
Tierney’s cannula 72 to include a tissue retractor. Ex. 1006, Abstract, 3:57–58,
9:47–49, Fig. 21; Pet. 74–77 (citing, e.g., Fischer Decl. ¶ 168
(“Tierney/Hooven/Whitman would disclose claim 4, and with the addition of
Bonutti ’136, would disclose claim 1.”)); see also Pet. 54–57 (citing, e.g., Fischer
Decl. ¶¶ 125–30).
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10:8–11. Petitioner establishes that a person of ordinary skill in the art
would have turned to Hooven for details on how to implement Tierney’s
robotic system with a stapler. Pet. 37, 60–61; Fischer Decl. ¶ 83.
Petitioner also establishes that a person of ordinary skill in the art
would have known the benefits of using Tierney’s robotic system, including
more rapid tool changes, which leads to enhanced safety and reliability, and
increased accuracy and surgical dexterity compared to using manual
instruments such as Hooven’s stapler. Pet. 37–38, 60–61; Fischer Decl.
¶¶ 82, 87; Ex. 1019, 2:16–55; Ex. 1004, 2:28–35. And Petitioner establishes
that adaptation of handheld surgical tools like Hooven’s stapler for use with
robotic systems like Tierney’s was well known and routine in the art. Pet.
39 (citing Fischer Decl. ¶¶ 88–92 (discussing prior art examples of adapting
handheld tools for use with robotic surgical systems)). Moreover, Tierney
and Hooven have the common objectives of allowing for a high degree of
control of end effectors, which would have motivated a person of ordinary
skill in the art to implement the computer-control features of Hooven’s
stapler in Tierney’s robotic system, to obtain a high degree of control (and
the ensuing safety benefits) over the resulting robotic surgical stapler. Id. at
61; Fischer Decl. ¶¶ 93–95, 139; Ex. 1004, 1:12–16; Ex. 1007, 2:24–27.
Petitioner establishes that a person of ordinary skill in the art would
have reasonably expected the Tierney/Hooven combination to be successful,
including because adapting a surgical instrument like Hooven’s stapler for
use with a robotic system like Tierney’s was well within the level of
ordinary skill in the art, and merely the application of a known technique
(e.g., adapting manually controlled components for use with a robotic
system) with known devices (Hooven’s stapler and Tierney’s surgical
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robot), where each device in the combined system performs the same
predictable function as it does separately. Fischer Decl. ¶¶ 97, 140
(discussing prior art examples of converting handheld tools for robotic
surgical systems); see also Pet. 40–41, 61–62; KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (“[A] court must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions.”). Dr. Fischer explains that a person of ordinary skill
in the art would have known how to make mechanical linkages between
Tierney’s driven elements and Hooven’s moveable components, e.g., by
using gears. Fischer Decl. ¶¶ 97, 99, 140–42; see also Pet. 40–41, 61–62.
We find Petitioner’s rationales regarding why a person of ordinary
skill in the art would have been motivated to combine Tierney’s and
Hooven’s teachings with a reasonable expectation of success to be
reasonable and supported by the cited evidence and expert testimony.
Nevertheless, Patent Owner raises several arguments regarding a lack of
motivation to combine and reasonable expectation of success. We address
each argument below.
Patent Owner recognizes that Petitioner provides two options for
combining Tierney and Hooven, which it designates as Options (1) and (2).
These options vary with respect to the motor used to provide the forces
needed to operate the end effector (stapler). Fischer Decl. ¶ 137; Resp. 58,
59–61. In Option (1), Hooven’s motor is incorporated into Tierney’s
housing and shaft. Fischer Decl. ¶ 137; Resp. 58–60; Pet. 60; Riviere
Second Decl. ¶ 198. In Option (2), Tierney’s motor is used.15 Fischer Decl.
¶¶ 137, 140, 141; Resp. 60–61; Pet. 60; Riviere Second Decl. ¶ 199.

15 Because we find that Petitioner establishes unpatentability by a preponderance of
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Patent Owner argues that “Option (1) fails” because it moves
Hooven’s motor into Tierney’s housing, but a person of ordinary skill in the
art “would have known to avoid incorporating a motor into the housing of
Tierney’s sterilizable tool because sterilization occurs at high temperatures
that would render the motor inoperable for re-use of the tool.” Resp. 60
(citing Ex. 1004, 10:25–32); Riviere Second Decl. ¶ 218. We find this
argument unavailing. Tierney indicates that surgical tools “will generally be
sterile structures,” and does not require sterilization using high temperatures.
Ex. 1004, 10:25–32 (emphasis added). Indeed, the record indicates that
surgical tools can be disposable, and that motors can be sterilized using
means other than high temperatures. See Fischer Supp. Decl. ¶¶ 92–94; Ex.
1033, 1:12–28 (describing sterilization of articles using gaseous plasmas);
Ex. 1007, 2:32–34 (indicating that components may be disposable).
Patent Owner also argues a lack of motivation to combine Tierney
and Hooven because the combination would change the “basic principles
under which Tierney was designed to operate.” Resp. 62. First, Patent
Owner argues that the tools in Tierney’s system “have a rigid shaft,” but
Hooven’s hand-held stapler has an “axially flexible shaft,” which could
cause unexpected and unsafe stapler movement. Id. at 63 (citing Riviere
Second Decl. ¶¶ 143, 203–06). This argument is unavailing, because as
shown in Petitioner’s composite figure reproduced below, the proposed
combination uses Tierney’s shaft:

the evidence based on “Option (1),” we need not and do not reach the parties’
arguments regarding “Option (2).”
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The composite figure above shows Hooven’s stapler attached to Tierney’s
rigid shaft 102. Pet. 60; Ex. 1004, 9:8–10 (describing rigid shaft 102); see
also Fischer Decl. ¶ 137 (presenting same composite figure); Reply 20
(confirming that the proposed combination uses Tierney’s rigid shaft);
Fischer Supp. Decl. ¶¶ 95–97 (explaining same); Riviere Second Decl. ¶ 205
(acknowledging that under Petitioner’s arguments, use of Tierney’s rigid
shaft is possible, and thus acknowledging that the proposed combination
does not require use of Hooven’s flexible shaft).
Patent Owner also argues that ordinarily skilled artisans would not
have combined Tierney and Hooven because “wrist articulation, which is
important for the safe operation of a robotic stapler, is completely missing”
in the combination.16 Resp. 63; see also Sur-reply 15. Patent Owner argues
that “[r]emoving the hand-held feature of Hooven’s stapler and
Tierney/Madhani’s cables and pulleys eliminates both Hooven’s desired

16 In its Sur-reply, Patent Owner raises a new argument that neither of Petitioner’s
designs (Options 1 or 2) “provide[s] for rotation of the linear stapler.” See Sur-
reply 15–17. This argument comes too late. Petitioner presented the combination
of Tierney and Hooven in the Petition, and thus Patent Owner could have, and
should have, raised this argument in its Patent Owner Response. 37 C.F.R.
§ 42.23(b).
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high degree of control in manipulating the linear stapler by hand and
Tierney’s dexterity resulting from wrist articulation while increasing
friction, inertia, complexity, weight and size contrary to the express
teachings of Tierney/Madhani.” Resp. 64 (citing, e.g., Riviere Second Decl.
¶¶ 207–11). Patent Owner contends that an ordinarily skilled artisan “would
not have had a reasonable expectation of success knowing that a surgeon
would be unable to properly position the linear stapler in many applications
without Hooven’s hand-held feature or Tierney/Madhani’s wrist
articulation.” Id.
Patent Owner’s arguments are unavailing. First, although Tierney
contemplates use of staplers with its system, we see nothing in Tierney that
requires use of a wrist with a stapler. See, e.g., Ex. 1004, 7:65–8:1 (teaching
that the system “often” “articulate[s] a wrist”); see also id. at dependent
claims 5, 8, 16, 25, 28 (specifying, in contrast to the broader independent
claims from which they depend, that the end effector is coupled to the probe
with a wrist); Reply 20–21. Second, the prior art shows that a wrist is not
required for a robotic stapler. See, e.g., Ex. 1018, Figs. 3–8; Fischer Supp.
Decl. ¶ 98 (noting that although a wrist may provide benefits, the prior art
shows that it is not required for a robotic stapler); Reply 20–21.17 Indeed,
consistent with the prior art teaching robotic staplers without a wrist,
challenged claims 1 and 4 do not recite a wrist. Finally, although Dr.
Riviere testifies that “the surgeon would be unable to properly position the
linear stapler in many applications” without wrist articulation, he is not a

17 We need not and do not address either Petitioner’s alternative argument that an
ordinarily skilled artisan could have used Hooven’s flexible shaft as “an alternative
to a wrist,” or Patent Owner’s responses to this argument. Reply 21; Resp. 64–65.
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surgeon (see Riviere Decl. ¶ 2), and does not cite any evidence to
corroborate this testimony. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations.”). Accordingly we
do not credit Dr. Riviere’s testimony on this point.
Patent Owner also argues that there is “no disclosure in
Tierney/Madhani that would have motivated a [person of ordinary skill in
the art] to use any drive system other than a cable and pulley drive system,”
which is advantageous for rigid robotic tools. Resp. 66 (citing Riviere
Second Decl. ¶¶ 213–14); see also id. at 65–66 (arguing that “[r]emoving
the cables and pulleys . . . would have been inconsistent with the objects of
the invention and the principles of operation of Tierney/Madhani”), 67.
This argument is unavailing because it mischaracterizes Tierney. Tierney is
not limited to use of Madhani’s cable system, but instead expressly discloses
that mechanical linkages can be made via “cabling arrangements, drive
chains or belts, hydraulic drive systems, gear trains, or the like.”18 Ex.
1005, 9:31–45; Fischer Supp. Decl. ¶ 104.
Additionally, Patent Owner’s argument that the proposed combination
would have resulted in a loss of control of Hooven’s stapler is unavailing.
Resp. 64. To the contrary, Dr. Fischer explains that the robotic arm would

18 Patent Owner and Dr. Riviere appear to suggest that Tierney only discloses cable
and pulley drive systems because Tierney’s Fig. 4B, which Tierney identifies as an
“alternative drive system” (Ex. 1004, 9:44–45), also uses cables and pulleys. See,
e.g., Resp. 47; Riviere Second Decl. ¶ 213 (citing Ex. 1004, 9:30–45). This
argument is unavailing. Tierney unambiguously discloses “gear trains” among a
number of “alternative drive systems.” Ex. 1004, 9:30–33.
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hold the instrument steadier than a surgeon’s hand, and the use of the motors
in the robotic system to actuate the stapler reduces the forces required for
the surgeon to apply to the instrument. Fischer Supp. Decl. ¶¶ 100, 102.
Moreover, even if Petitioner’s proposed combination did result in some loss
of a desired “dexterity and other advantages built into the Tierney/Madhani
[cable and pulley] drive system,” “a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate a motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006). Here, Petitioner adequately establishes that
incorporating Hooven’s handheld tool into Tierney’s robotic system would
have resulted in benefits including increased accuracy compared to
manually operated instruments, and would have allowed the surgeon to use
Tierney’s robotic system throughout surgery, rather than having to switch to
Hooven’s handheld tool. See Pet. 37–38 (addressing benefits of surgical
robots), 60–62; Reply 21–22; Fischer Supp. Decl. ¶ 102. Patent Owner has
not shown that any purported loss of dexterity would have outweighed the
anticipated benefits of the combined system sufficient to undermine
Petitioner’s showing.
Finally, Patent Owner argues “there is not enough space for the
proposed additional components from Hooven’s shaft in the shaft 102 of
Tierney.” Resp. 66 (citing Riviere Decl. ¶¶ 219–221). This argument is
unavailing because Patent Owner has not established a basis for arguing that
the diameter of Tierney’s shaft is too small to accommodate the additional
components from Hooven. Patent figures are not drawn to scale unless
otherwise stated. Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d
951, 956 (Fed. Cir. 2000). It is undisputed that Tierney does not provide
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dimensions for its drawings or otherwise disclose the dimension of its shaft.
Reply 6; Fischer Supp. Decl. ¶ 44; Ex. 1024, 45:6–8. Moreover, Dr. Fischer
establishes that different sized shafts were available, and a person of
ordinary skill in the art would have understood how to appropriately size the
shaft to fit the necessary components. Fischer Supp. Decl. ¶¶ 44, 48, 49,
105; see also KSR, 550 U.S. at 421 (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”).
(ii) Combining Tierney’s Robotic System and Hooven’s
Stapler with Whitman’s Position Sensor
As discussed above, both Hooven and Whitman disclose a position
sensor. See Section II.E.1.(f). Petitioner persuasively establishes that as an
alternative to using Hooven’s position sensor, a person of ordinary skill in
the art would have been motivated to combine Whitman’s position sensor
with the Tierney/Hooven system. Fischer Decl. ¶ 172. For example,
Whitman teaches that the position sensor allows selective enabling or
disabling of the robotic system based on the positions of the components of
the surgical instrument, and allows Tierney’s controller to determine
whether there was an error during retraction of the staple driver. Pet. 76;
Fischer Decl. ¶¶ 171–72; Ex. 1008, 12:42–47 (confirming that the gap
between the anvil and the body portion of the stapler may be determined
using the output of signal encoders on the corresponding motor drive shaft),
15:60–16:23 (confirming that the system can determine whether retraction
of the staple/drive cutter is complete using the output of signal encoders).
In addition to the reasons discussed above why a person of ordinary
skill in the art would have been motivated to combine Tierney and Hooven
with a reasonable expectation of success, Petitioner also establishes that a
person of ordinary skill in the art would have been motivated to combine
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Whitman with Tierney and Hooven. Pet. 76–77; Fischer Decl. ¶ 173.
Specifically, the combination would have been merely the application of a
known technique (tracking the position of the drives shafts based on the
output signal from the encoders to determine the position and/or state of the
components of the surgical instrument as taught by Whitman) with the
Tierney/Hooven system in the same field of endeavor (robotically controlled
surgical staplers). Pet. 76–77; Fischer Decl. ¶ 173; KSR, 500 U.S. at 417
(“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.”). Each system would continue to
perform the same predictable functions as it does separately without
significantly altering or hindering the functions performed by the
Tierney/Hooven system (e.g., clamping, cutting, and stapling). Pet. 77;
Fischer Decl. ¶ 173.
Patent Owner argues that a person of ordinary skill in the art would
not have been motivated to combine Whitman (which requires “an
extremely flexible shaft”) with Hooven (which requires “a semi-rigid shaft”)
and Tierney (which requires a rigid shaft), with a reasonable expectation of
success. Resp. 72 (citing, e.g., Riviere Second Decl. ¶¶ 258–59). Patent
Owner also argues that incompatibility between the cables of Whitman and
Tierney would cause a loss of control of Tierney’s end effector and
Whitman’s shaft. Id. at 73 (citing Riviere Second Decl. ¶ 259). These
arguments are unavailing, because the proposed combination does not
include Whitman’s shaft, Hooven’s shaft, or Tierney’s cables. Reply 20,
23–24; Fischer Supp. Decl. ¶ 112.
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Finally, Patent Owner argues that the position sensor in Whitman
“requires a torsionally stiff drive shaft,” but a person of ordinary skill in the
art would not have been able to pass such a drive shaft through a wrist.
Resp. 73–74 (citing, e.g., Riviere Second Decl. ¶¶ 260, 207–11; Ex. 1008,
8:5–9:8; Ex. 2004, 114:15–119:19). This argument is unavailing because,
as discussed above, the Tierney/Hooven combination does not require a
wrist. See also Reply 24; Fischer Supp. Decl. ¶ 113.
(i) Summary as to Claim 1
As discussed above, Petitioner’s analysis addresses every limitation
in claim 1 and provides reasons with rational underpinning as to why a
person of ordinary skill in the art would have been motivated to combine the
cited prior art teachings with a reasonable expectation of success. Thus,
based on the trial record, and taking into account Patent Owner’s arguments,
we find that Petitioner has demonstrated by a preponderance of the evidence
that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious.
2. Claim 4
Claim 4 is similar to claim 1, with the primary difference being that
claim 1 requires a “tissue retractor assembly” whereas claim 4 does not, and
claim 4 requires an endoscope and an imaging device whereas claim 1 does
not. Resp. 57; Riviere Second Decl. ¶ 180. Petitioner demonstrates that
Tierney discloses the endoscope and imaging device recited in claim 4. Pet.
73 (cross-referencing id. at 32–34); Fischer Decl. ¶¶ 73–75, 164. Other than
this difference, Petitioner’s arguments regarding obviousness of claim 4
over Tierney, Hooven, and Whitman are similar to the arguments discussed
above for claim 1. See Pet. 73–77. Apart from its arguments already
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discussed above with respect to claim 1, Patent Owner does not provide
additional arguments specific to claim 4. See generally Resp.
Accordingly, for the reasons discussed above, we find that Petitioner
has demonstrated by a preponderance of the evidence that claim 4 is
unpatentable under 35 U.S.C. § 103(a) as obvious.
F. Remaining Grounds
In view of our determination that claims 1 and 4 would have been
obvious as discussed above, we need not and do not address Petitioner’s
additional grounds of unpatentability. See, e.g., SAS Inst. Inc. v. Iancu, 138
S. Ct. 1348, 1359 (2018) (holding a petitioner “is entitled to a final written
decision addressing all of the claims it has challenged”); Boston Sci. Scimed,
Inc. v. Cook Grp. Inc., Nos. 2019-1594, -1604, -1605, 2020 WL 2071962, at
*4 (Fed. Cir. Apr. 30, 2020) (non-precedential) (recognizing that the “Board
need not address issues that are not necessary to the resolution of the
proceeding” and, thus, agreeing that the Board has “discretion to decline to
decide additional instituted grounds once the petitioner has prevailed on all
its challenged claims”).
III. PATENT OWNER’S MOTION TO EXCLUDE
Patent Owner moves to exclude (i) Exhibits 1026 through 1037; and
(ii) paragraphs 23–26, 28–30, 36, 49, 54–57, 60, 61, 63, 64, 76, 92, and 99
of Dr. Fischer’s Supplemental Declaration (Exhibit 1025), as well as any
reference to or reliance on these paragraphs in the Reply.19 Paper 23, i.
Patent Owner argues that this evidence supports Petitioner’s prima facie

19 Patent Owner also requested that the Board preclude Petitioner from using all
evidence and arguments that are the subject of its Motion at any hearing. Mot. 1.
Because the hearing has already taken place, we dismiss this request as moot.
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case of obviousness, and thus comes too late because it was not cited in the
Petition, but rather first cited in the Reply. Id. at 2. Petitioner responds that
the Reply does not seek to fill alleged gaps in the Petition, but rather
responds to arguments raised in the Patent Owner Response. Paper 24, 1.
Patent Owner, as the moving party, bears the burden of establishing
that it is entitled to the requested relief. 37 C.F.R. §§ 42.20(c), 42.62(a).
We determine that Patent Owner has not met its burden. As an initial
matter, the Board has advised that a motion to exclude should not be used to
“address arguments or evidence that a party believes exceeds the proper
scope of reply.” See Patent Trial and Appeal Board Consolidated Trial
Practice Guide (November 2019) (“TPG” 20) 79; see also Paper 24, 2.
However, even if we consider Patent Owner’s arguments on the merits, we
find them unavailing. For the reasons advanced by Petitioner, which we
adopt, we find that the subject evidence is not used to present a prima facie
showing of obviousness, fill any alleged gaps in Petitioner’s obviousness
grounds, or support a new motivation to combine, but rather is properly
presented to rebut arguments Patent Owner advanced in its Response. See
Paper 24, 6–15.
Patent Owner also contends that the timing of Petitioner’s
introduction of these exhibits and the related testimony prevented Patent
Owner “from mounting a complete and fair defense.” Paper 23, 8; see also
id. at 7–9. However, we agree with Petitioner that there is nothing
inherently improper with submitting evidence after the patent owner
response, and in fact, such submission is expressly contemplated by the
TPG. See TPG 73 (stating that a party “may submit rebuttal evidence in

20 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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support of its reply”); Paper 24, 5. Patent Owner had an opportunity to
depose Petitioner’s expert and to submit a sur-reply addressing the evidence
it seeks to exclude, and also had the opportunity to request leave to submit a
supplemental declaration from its own expert. See, e.g., IPR2020-00051,
Paper 33 at 5 (authorizing patent owner to file a supplemental declaration
after the petitioner’s reply).
For the above reasons, we deny Patent Owner’s motion to exclude.
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IV. CONCLUSION21
Based on the information presented, we conclude that Petitioner has shown
by a preponderance of the evidence that claims 1 and 4 are unpatentable under 35
U.S.C. § 103(a) as obvious.
In summary:

21 Should Patent Owner wish to pursue amendment of the challenged claims in a
reissue or reexamination proceeding subsequent to the issuance of this decision, we
draw Patent Owner’s attention to the April 2019 Notice Regarding Options for
Amendments by Patent Owner Through Reissue or Reexamination During a
Pending AIA Trial Proceeding. 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).
22 We do not address Petitioner’s grounds based on Tierney and McGarry.
23 We do not address Petitioner’s ground based on Tierney, McGarry, and Bonutti.
24 We do not address Petitioner’s ground based on Tierney and Hooven.
25 We do not address Petitioner’s ground based on Tierney, McGarry, Bonutti,
Hooven, Whitman, Madhani, and Cooper.
Claims

35 U.S.C. § Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 4 103(a) Tierney, McGarry22

1 103(a) Tierney, McGarry, Bonutti23

1, 4 103(a) Tierney, Hooven24
1, 4 103(a)
Tierney, McGarry,
Bonutti, Hooven,
Whitman
1, 4

1, 4 103(a)
Tierney, McGarry,
Bonutti, Hooven,
Whitman,
Madhani, Cooper25

Overall
Outcome 1, 4

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V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1 and 4 of U.S. Patent 9,192,395 B2 have been
shown by a preponderance of the evidence to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is denied;
and
FURTHER ORDERED that, because this is a final written decision, parties
to this proceeding seeking judicial review of our Decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Steven Katz
John Phillips
Ryan O’Connor
FISH & RICHARDSON P.C.
katz@fr.com
phillips@fr.com
oconnor@fr.com

For PATENT OWNER:

Robert Evans, Jr.
Michael J. Hartley
Kathleen Markowski Petrillo
LEWIS RICE LLC
revans@lewisrice.com
mhartley@lewisrice.com
kpetrillo@lewisrice.com