Ethicon Endo-Surgery, Inc.v.Covidien AG

Patent Trial and Appeal Board

Dec 17, 2015

12348748 (P.T.A.B. Dec. 17, 2015)

Trials@uspto.gov Paper No. 10
571-272-7822 Entered: December 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ETHICON ENDO-SURGERY, INC.,
Petitioner,

v.

COVIDIEN AG,
Patent Owner.
____________

Case IPR2015-01275
Patent 8,241,284 B2
____________

Before JAMES A. TARTAL, ZHENYU YANG, and JAMES A. WORTH,
Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge YANG.
Opinion Concurring filed by Administrative Patent Judge WORTH.
Opinion Dissenting filed by Administrative Patent Judge TARTAL.

YANG, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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INTRODUCTION
Ethicon Endo-Surgery, Inc. (“Petitioner”) filed a Petition for an inter
partes review of claims 1–18 of U.S. Patent No. 8,241,284 B2 (“the ’284
patent,” Ex. 1001). Paper 1 (“Pet.”). Covidien AG (“Patent Owner”) timely
filed a corrected Preliminary Response. Paper 9 (“Prelim. Resp.”). We have
jurisdiction under 35 U.S.C. § 314.
For the reasons provided below, we determine Petitioner has not
established a reasonable likelihood that it would prevail in showing the
unpatentability of at least one challenged claim. See 35 U.S.C. § 314(a).
Therefore, we deny the Petition for an inter partes review.

The ’284 Patent
The ’284 patent relates to an endoscopic bipolar electrosurgical
forceps for clamping, sealing and/or dividing tissue. Ex. 1001, 3:40–42.
The forceps includes an elongated shaft having opposing jaw members. Id.
at 3:42–43. At least one non-conductive and spaced-apart stop member is
disposed on an inner-facing surface of at least one of the jaw members and is
positioned to control the gap distance between the opposing jaw members
when the tissue is held therebetween. Id. at 3:50–54. A longitudinally
reciprocating knife severs the tissue proximate the sealing site once an
effective seal is formed. Id. at 3:54–56.

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Illustrative Claim
Claims 1 and 12 are independent claims. Claim 1 is illustrative. It is
reproduced below:
1. An endoscopic bipolar forceps, comprising:
an elongated shaft having opposing jaw members at a distal end
thereof, the jaw members including a length and a periphery
and movable relative to one another from a first position
wherein the jaw members are disposed in spaced relation
relative to one another to a second position wherein the jaw
members cooperate to grasp tissue therebetween, the jaw
members each including respective flat seal surfaces
extending along a respective length thereof and adaptable to
connect to a source of electrical energy such that the jaw
members are capable of conducting energy through tissue
held therebetween to effect a tissue seal;
a plurality of non-conductive stop members disposed along the
length of at least one of the seal surfaces of at least one of
the jaw members such that the plurality of non-conductive
stop members are disposed along the same plane on the seal
surface with respect to one another, the non-conductive stop
members configured to maintain a uniform distance between
the jaw members along the length thereof; and a knife
disposed in operative communication with at least one of the
jaw members and translatable to sever tissue disposed
between jaw members.

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Asserted Ground of Unpatentability
Petitioner asserts the following grounds of unpatentability:
Claim(s) Basis References
1–11 § 103 Fox1 and Eggers ’1422
11 § 103 Fox, Eggers ’142, and Slater3
1–18 § 103 Eggers ’471,4 Wales,5 Fox, and Eggers
’142
11 § 103 Eggers ’471, Wales, Fox, Eggers ’142,
and Slater
12–18 § 103 Schulze,6 Fox, and Eggers ’142
In support of its patentability challenge, Petitioner relies on the
Declaration of David C. Yates. Ex. 1004.

ANALYSIS
Claim Construction
In an inter partes review, we interpret a claim term in an unexpired
patent according to its broadest reasonable construction in light of the
specification of the patent in which it appears. 37 C.F.R. § 42.100(b); In re

1 Fox et al., U.S. Patent No. 5,674,220, issued October 7, 1997 (Ex. 1006,
“Fox”).
2 Eggers et al., U.S. Patent No. 5,891,142, issued April 6, 1999 (Ex. 1007,
“Eggers ’142”).
3 Slater et al., U.S. Patent No. 5,396,900, issued March 14, 1995 (Ex. 1011,
“Slater”).
4 Phillip E. Eggers, U.S. Patent No. 5,330,471, issued July 19, 1994
(Ex. 1009, “Eggers ‘471”).
5 Kenneth S. Wales, U.S. Patent No. 5,800,449, issued September 1, 1998
(Ex. 1008, “Wales”)
6 Schulze et al., U.S. Patent No. 5,599,350, issued February 4, 1997
(Ex. 1012, “Schulze”)
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Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279 (Fed. Cir. 2015). Under
that standard, and absent any special definitions, we assign claim terms their
ordinary and customary meaning, as would be understood by one of ordinary
skill in the art at the time of the invention, in the context of the entire patent
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007).
Petitioner proposes claim constructions for “jaw members movable
with respect to the elongated shaft” and “drive rod assembly.” Pet. 8–11.
Claim terms need only be construed to the extent necessary to resolve the
controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
(Fed. Cir. 2011). For purposes of this Decision, we determine that it is
unnecessary to construe those two terms expressly.
Central to our Decision, however, is the construction of “a uniform
distance between the jaw members along the length thereof,” a limitation
required by all challenged claims. Both the Specification and the challenged
claims of the ’284 patent require this distance when tissue is held between
the jaw members. Indeed, the Specification discloses that the stop members
are “positioned to control the gap distance between the opposing jaw
members when the tissue is held therebetween.” Ex. 1001, 3:50–54; see also
id. at Abstract (stating the same), 5:3–6 (stating the same). In addition,
claim 15 recites “[a]n endoscopic bipolar forceps according to claim 12
wherein the jaw members and the non-conductive stop members are
configured such that the distance between the jaw members when tissue is
held therebetween is between about 0.002 inches and about 0.003 inches.”
Id. at 15:21–16:3. Thus, we conclude that the challenged claims require “a
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uniform distance between the jaw members” when tissue is held between the
opposing jaw members.
In the dissent’s view, our construction is not the broadest reasonable
because it includes the requirement of “when tissue is held between the
opposing jaw members.” See Dissent 1–3. According to the dissent, we
should “apply the ordinary and customary meaning of the term[] recited in
the claims without express construction.” Id. at 3. We disagree.
First, the dissent ignores that a claim term, in general, should be given
its ordinary and customary meaning, not in a vacuum, but rather, in the
context of the patent in which the term appears. Translogic Tech., 504 F.3d
at 1257. Merely stating that we apply the ordinary and customary meaning,
in this instance, does not clarify the issue.
Second, the dissent is correct in its understanding of the law; that is,
when construing claim terms, we shall not read into a claim a limitation
from an embodiment, if that limitation is not present in the claim itself.
Bayer AG v. Biovail Corp., 279 F. 3d 1340, 1348 (Fed. Cir. 2002). The
dissent, however, is mistaken in its understanding of the facts of this case;
that is, the requirement of “when tissue is held therebetween” is not from a
specific embodiment, but rather, from the abstract and summary of the
invention. See Ex. 1001, Abstract, 3:40–54 (summary of the forceps of the
“present disclosure”), 4:65–5:6 (summary of the method of the “present
disclosure”). Indeed, the ’284 patent explains that the stop members are
“designed to control the gap distance between opposing jaw members and
enhance the manipulation and gripping of tissue during the sealing and
dividing process.” Id. at 1:23–26. When a patent “describes the features of
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the ‘present invention’ as a whole, this description limits the scope of the
invention.” Verizon Service Corp. v. Vonage Holdings Corp., 503 F.3d
1295, 1308 (Fed. Cir. 2007).
Referring to Figure 5 of the ’284, the dissent states that “[j]aw
members 22 and 24 are not parallel to each other at all times.” Dissent 2.
The dissent is correct because Figure 5 shows the forceps “in open
configuration.” See Ex. 1001, 5:29–30, 5:33–36. Indeed, both claims 1 and
12, the only two independent claims, recite two positions of the jaw
members: “a first position wherein the jaw members are disposed in spaced
relation relative to one another” and “a second position wherein the jaw
members cooperate to grasp tissue therebetween.” Ex. 1001, 13:54–57,
14:55–59. The dissent, however, would require the “uniform distance” not
at either of the explicitly stated position, but rather, “some other position,
such as when fully closed,” in the absence of any tissue. See Dissent 2. The
dissent does not explain how Figure 5, showing the forceps in the first
position, supports its opinion. We decline to join the dissent’s unreasonably
broad construction. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
1298 (Fed. Cir. 2015) (“Even under the broadest reasonable interpretation,
the Board’s construction cannot be divorced from the specification and the
record evidence.”) (quotation marks omitted).
The challenged claims also require “a uniform distance between the
jaw members along the length thereof.” The ’284 patent discloses that the
stop members control the “overall gap distance” between the jaw members.
Ex. 1001, 4:59–63. As a result, the uniform distance between the jaw
members must be maintained along the entire length thereof. Our
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understanding is confirmed by the plain and ordinary meaning of “uniform,”
which means “[n]ot changing in form or character; remaining the same in all
cases and at all times.” See
http://www.oxforddictionaries.com/us/definition/american_english/uniform.
See also http://www.merriam-webster.com/dictionary/uniform (defining
“uniform” as “having always the same form, manner, or degree: not varying
or variable”).
Accordingly, we construe “a uniform distance between the jaw
members along the length thereof” to mean that, when tissue is held between
the opposing jaw members (i.e., “the jaw members cooperate to grasp tissue
therebetween,” as recited in both independent claims), the distance between
the jaw members is the same along the entire length thereof.

35 U.S.C. § 325(d)
Patent Owner asks us to deny the Petition under 35 U.S.C. § 325(d),
arguing that all but one references relied on in the Petition were considered
during prosecution. Prelim. Resp. 9–12. The statute allows, but does not
require, the Director to deny a petition if “the same or substantially the same
prior art or arguments previously were presented to the Office.” 35 U.S.C.
§ 325(d). We decline to exercise our discretion to deny the Petition under
§ 325(d).

Obviousness over Fox and Eggers ’142
Petitioner asserts that claims 1–11 would have been obvious over the
combination of Fox and Eggers ’142. Pet. 11–32. Based on the current
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record, we determine Petitioner has not established a reasonable likelihood
that it would prevail in this assertion.
Petitioner asserts that one of ordinary skill in the art would have been
motivated to combine the teachings of Fox and Eggers ’142. Id. at 14–18.
Petitioner also refers to the prior art for teaching each and every limitation of
claims 1–11. Id. at 18–32. Assuming, without deciding, that Petitioner has
provided sufficient rationale for combining the prior art, we nevertheless
agree with Patent Owner that the combination does not teach “non-
conductive stop members configured to maintain a uniform distance between
the jaw members along the length thereof,” as all challenged claims require.
See Prelim. Resp. 14–26.
Fox teaches a bipolar endoscopic clamping, coagulation and cutting
device. Ex. 1006, 2:62–65. The device includes an end effector with jaw
members arranged to grasp tissue therebetween. Id. at 4:46–52. Each jaw
member includes an electrode. Id. According to Fox, “[w]here necessary,
shorting may be prevented by, for example, including an island of insulation
on the grasping surface 27 or 36 of either electrode 21 or 22 to establish an
insulative gap between the conductive surfaces.” Id. at 4:25–29. In
addition, Fox states that “[t]issue stop 418 is positioned within closure tube
420.” Id. at 4:38–39.
Eggers ’142 teaches surgical forceps with oppositely disposed tissue
grasping surfaces at the tip regions of corresponding tines. Ex. 1007,
Abstract. “These forceps employ electrically insulative spacer regions or
assemblies in conjunction with the mutually inwardly facing electrically
conductive tissue grasping surfaces of the two movable tines of the
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instruments.” Id. at 3:46–50. The spacer arrangement serves to space the
tissue grasping surfaces apart when the tines are in a substantially closed
orientation. Id. at 3:50–52.
Petitioner argues that the “island of insulation” in Fox is a non-
conductive stop member, and “is provided to ‘establish an insulative gap’
and to prevent shorting.” Pet. 21, 23 (citing Ex. 1006, 4:25–29). According
to Petitioner, because “this is the same purpose as the stop members of the
’284 patent . . . Fox’s disclosed stop members create a uniform desired gap
distance the same way as the ’284 Patent.” Id. at 23. We are not persuaded.
First, Fox does not disclose “stop members.” At most, it teaches a
single “island of insulation.” Second, as Patent Owner points out, Fox
provides no information about the “shape, position, length and/or
orientation” of the “island of insulation.” Prelim. Resp. 17. It is unclear
how the purpose of establishing an insulative gap would result in the gap
being uniform along the entire length of the jaw members, where there is
only one island of unknown size and location.
The dissent points to claim 2 of the ’284 patent, which recites “at least
two non-conductive stop members . . . that extend different heights.” See
Dissent 3 (citing Ex. 1001, 14:7–11). Despite couching it as a claim
construction issue,7 the dissent concludes that claim 2 shows that “[t]he ’284
patent, therefore, provides that a configuration consisting of a single stop
member of a particular height (of unknown size and location), i.e. an ‘island

7 The dissent states that we “disregard[] the language of claim 2 in
construing claim terms” without explaining how claim 2 would inform our
claim construction. See Dissent 3.
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of insulation,’ is sufficient to maintain a uniform distance between the jaw
members.” Id. at 2–3. We disagree.
Under the statute, an inter partes review may be instituted only if “the
information presented in the petition . . . and any response filed [thereto]
shows that there is a reasonable likelihood that the petitioner would prevail”
in the unpatentability challenge. 35 U.S.C. § 314(a) (emphasis added). In
the Petition, Petitioner does not rely on claim 2 of the ’284 patent to support,
as the dissent insists, a uniform distance between the jaw members. To the
contrary, when discussing claim 2,
Petitioner submits that this claim limitation is (a) not supported
by the disclosure of the ‘284 Patent and (b) at odds with the
requirement of claim 1 (and PO’s arguments during
prosecution) that “the non-conductive stop members [are]
configured to maintain a uniform distance between the jaw
members along the length thereof.” Providing stop members of
different heights as required by this claim necessarily results in
a non-uniform distance between jaw members.
Pet. 26 (emphasis added). As a result, the information presented in the
Petition does not show a reasonable likelihood that Petitioner would prevail,
based on claim 2 of the ’284 patent, that an “island of insulation” of
unknown size and location, is sufficient to maintain a uniform distance
between the jaw members. We decline to join the dissent in reforming the
Petition and rely on an argument Petitioner specifically disclaimed.
Petitioner also asserts that Fox teaches the uniform distance limitation
because it is a “parallel closure device,” whose jaws are parallel to each
other as they close. Pet. 23. As support, Petitioner cites to Figures 1 and 2
of Fox and paragraph 38 of the Yates Declaration. Figures 1 and 2,
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however, represent the cross-section views of an end effector. Ex. 1006,
3:21–24. In other words, it only shows the distal end of the two jaw
members and does not support Petitioner’s contention of parallel jaws. In
his Declaration, Mr. Yates simply states, without any support or explanation,
that “since the tube closure mechanism of Fox results in parallel closure of
the jaws, the presence of a single island sets a uniform gap along the entire
length of the jaws in Fox.” Ex. 1004 ¶ 38. We decline to accord such a
conclusory statement much weight. And even if we were to consider his
testimony, we would not be persuaded. Indeed, nowhere does Mr. Yates
analyze the gap when tissue is held between the jaws.8 Parallel closure of
the jaws in the absence of tissue held therebetween does not satisfy the
limitation of “uniform distance between the jaw members along the length
thereof,” as properly construed.
Petitioner next contends that the electrically insulative spacer regions
124a–124f and 126a–126f in Figures 8–10 of Eggers ’142, “evenly spaced
apart longitudinally along a grasping length LG,” are examples of the non-
conductive stop members (21–22 (citing Ex. 1007, 9:33–36, 9:40–42)).
According to Petitioner, the “particular arrangement of [the] insulative
spacers in Eggers ’142 also provides for the claimed ‘uniform distance

8 According to the dissent, “at this stage of the proceeding, prior to any
deposition testimony, we do not know whether Petitioner’s expert analyzed
this or not.” Dissent 5. An analysis not explained in the declaration,
regardless of whether it was actually performed or not, cannot support a
Petition. 35 U.S.C. § 314(a).
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between the jaw members.’” Id. at 23. Figure 8 of Eggers ’142 is
reproduced below:

Figure 8 is a partial sectional view of an embodiment of forceps
according to Eggers ’142. Ex. 1007, 4:61–62. It shows strips 124a–124f
having a uniform thickness T1, and 126a–126f having a thickness T2. Id. at
9:40–41, 9:49–50. The strips “are aligned for movement into mutual contact
when in a closed orientation.” Ex. 1007, 9:66–10:1.
A partial sectional view of the forceps of Figure 8 with a full closure
orientation is shown in Figure 11, reproduced below. Ex. 1007, 5:1–2.

Figure 11 shows “strips or insulated regions 124a and 126a having
been moved into mutual contacting relationship.” Id. at 10:47–49.
According to Eggers ’142, “[u]pon further pressure being made by the user,
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then the remaining strips progressively come into contact.” Id. at 10:54–56.
At this position, the total spacing between the grasping surfaces, represented
as T in Figure 11, is the sum of the thickness T1 and T2. Id. at 10:57–60.
Petitioner contends, and the dissent agrees, that spacing T is uniform along
the length because the T1 and T2 are constant. Pet. 24; Dissent, 4–5. We
are not persuaded.
First, as explained above, we construe “a uniform distance between
the jaw members along the length thereof” to mean that, when the tissue is
held between the opposing jaw members, the distance between the jaw
members is the same along the entire length thereof. See supra at 7.
Spacing T in Figure 11, however, represents the distance between the two
grasping surfaces without any tissue. See Ex. 1007, Fig. 11; see also id. at
10:47–50 (stating that Figure 11 shows strips 124a and 126a in mutual
contacting relationship “without the presence of tissue interposed
therebetween”). As a result, constant spacing T is not the same as “a
uniform distance between the jaw members along the length thereof,” as
construed above.
Second, Eggers ’142 teaches that in Figures 8 and 11, the tines are
bowed “at 112 and 114 toward each other from a location rearwardly
positioned from tip regions 116 and 118.” Id. at 10:50–52. This bowed
arrangement is better illustrated in Figure 14, reproduced below:
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Figure 14 is a plan view of the forceps according to Eggers ’142.
Ex. 1007, 5:3–5, 5:11–12. The only difference between this embodiment
and the one illustrated in Figures 8–11 is that the former has insulative
spacers on one grasping surface, while the latter has insulative spacers on
both grasping surfaces. Id. at 9:34–36, 11:49–51, 13:22–23; compare id. at
Figs. 8, 9, with id. at Figs. 12, 13.
Contrary to the dissent’s assertion, our analysis is based not on our
own interpretation, but on the prior art description. See Dissent 5. Indeed,
Eggers ’142 teaches that both tines 152 and 154 in Figure 14—which, as
explained above, has the same configuration as Figure 8—are bent mutually
inwardly from bend points 178 and 180. Id. at 13:32–34. Points 178 and
180 are located a distance, LB, rearwardly from the tips 156 and 158. Id. at
13:34–36. The bends or bowing is at an angle  with respect to the
longitudinal extent of tines 152 and 154. Id. at 13:36–39. Given this
configuration, we agree with Patent Owner that because the tines in Eggers
’142 are bowed along the length thereof, the insulative spacers do not
“maintain a uniform distance between the jaw members along the length
thereof,” as required by the challenged claims. See Prelim. Resp. 23–25.
Indeed, Figure 8 depicts tines 112 and 114 as grasping tissue 132. See
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Ex. 1007, 9:59–60. It shows that the distance between the tines (or the
grasping surfaces) is not uniform along the length thereof. See id. at Fig. 8.
In sum, Petitioner does not point to sufficient evidence or present
persuasive argument to show that either Fox or Eggers ’142 teaches “non-
conductive stop members configured to maintain a uniform distance between
the jaw members along the length thereof,” as all challenged claims require.
As a result, we deny the Petition regarding the obviousness challenge of
claims 1–11 over Fox and Eggers ’142.

Other Asserted Obviousness Grounds
Petitioner further argues that (1) claim 11 would have been obvious
over Fox, Eggers ’142, and Slater; (2) claims 1–18 would have been obvious
over Eggers ’471, Wales, Fox, and Eggers ’142; (3) claim 11 would have
been obvious over Eggers ’471, Wales, Fox, Eggers ’142, and Slater; and (4)
claims 12–18 would have been obvious over Schulze, Fox, and Eggers ’142.
Pet. 32–60. As Patent Owner points out, Petitioner does not rely on any
additional prior art for teaching “non-conductive stop members configured
to maintain a uniform distance between the jaw members along the length
thereof,” the limitation required by all challenged claims. See Prelim. Resp.
27; see also Pet. 41–42 (relying on Fox and Eggers ’142 for teaching the
limitation). We, therefore, deny the rest of the Petition for the same reason
as explained above.

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CONCLUSION
For the foregoing reasons, the information presented in the Petition
and accompanying evidence do not establish a reasonable likelihood that
Petitioner would prevail in showing the unpatentability of any one of claims
1–18 of the ’284 patent.

ORDER
Accordingly, it is
ORDERED that Petitioner’s request for an inter partes review of
claims 1–18 of the ’284 patent is denied.

PETITIONER:

Jason A. Engel
Benjamin E. Weed
K&L GATES LLP
jason.engel.PTAB@klgates.com
benjamin.weed.PTAB@klgates.com

PATENT OWNER:

Naveen Modi
Paromita Chatterjee
Thomas A. Beaton
Aryn D. Wadadli
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
mitachatterjee@paulhastings.com
thomas.a.beaton@paulhastings.com
aryn.d.wadadli@paulhastings.com
Trials@uspto.gov Paper No. 10
571-272-7822 Entered: December 17, 2015

JAMES A. WORTH, Administrative Patent Judge, concurring.
I join the result and reasoning of the majority opinion. I write
separately to discuss an additional reason to conclude that the Petition does
not establish a reasonable likelihood of success. For each of the proposed
grounds, Petitioner contends that it would have been obvious to combine
Fox and Eggers ’142, alone or in further combination with additional
references. I would find that the Petition fails to explain why the proposed
combination of references would have been obvious, i.e., the Petition does
not articulate a sufficient reason why a person of ordinary skill would have
combined the references in the manner proposed. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
Petitioner contends that “[a] person of skill in the art would have been
motivated to incorporate the spacer regions of Eggers ’142 into the end
effector illustrated in Fig. 5 of Fox as Fox’s disclosed islands of insulation to
provide the benefits described in Eggers ’142 in the Fox endoscopic bipolar
forceps.” Pet. 14 (citing Ex. 1004 (Yates Decl.) ¶¶ 83–89).
However, Patent Owner argues that such generalized motivation is
insufficient to establish obviousness. Prelim. Resp. 28–29 (citing Cisco Sys.
Inc. v. C-Cation Techs., LLC, IPR2014-00454, slip op. at 13–15 (PTAB
Aug. 29, 2014) (Paper No. 12)). Indeed, Petitioner and Petitioner’s
Declarant pre-emptively attempt to address some of the concerns raised by
Patent Owner in the Preliminary Response. I address the issues as follows.
First, Patent Owner disputes that the teaching in Eggers ’142 of
insulative spaces is applicable to non-tweezer bipolar electrosurgical
instruments, as Petitioner contends. Prelim. Resp. 28–29; Pet. 15; Ex. 1004
¶¶ 55–58. Mr. Yates avers that Eggers ’142 refers in the Background of the
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Specification to other patents that relate to non-tweezer bipolar instruments.
To the extent that this is a question of whether the patents relate to the same
field of invention, I am persuaded by Petitioner that Eggers ’142 and Fox
relate to the same field of invention as the ’284 patent.
However, Patent Owner argues that Petitioner still provides an
insufficient explanation as to why a person of ordinary skill would have
sought to improve, in particular, Fox’s “island of insulation,” with the
insulative spaces of Eggers ’142. Prelim. Resp. 28–29.
Petitioner’s rationale for the particular combination is based, inter
alia, on the general similarity of structures. Pet. 16–18. Petitioner asserts
that electrodes 216 and [217] of Fox include tissue grasping teeth 206 and
208 (Ex. 1006, 5:36–37) and that Eggers ’142’s spacers achieve grasping
using “a roughened or tooth-like surface” (Ex. 1007, 3:1–3, 15:41–45, Figs.
20–21). Pet. 17. Although Petitioner argues that the structures are directed
to a similar purpose, I am not persuaded that Petitioner has sufficiently
established that this would be a case of simple substitution of one structure
for another. See KSR, 550 U.S. at 416. Petitioner’s Declarant does not rely
on any additional persuasive evidence for the conclusion of substitutability.
Ex. 1004 ¶¶ 89–90. Petitioner’s Declarant explains the proposed
combination:
For example, incorporating the embodiment of Figs. 17 and 18
of Eggers ‘142 into Fox would result in the square/circular
spacers being arranged on either side of the knife channel of
Fox, with the knife channel being positioned where the middle
row of spacers (212b in Fig. 17 or 226b in Fig. 18) is in Eggers
‘142. This arrangement replicates the teeth illustrated in Fig. 7
of Fox, albeit with Eggers ‘142’s insulative spacers (for
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example, having a circular shape as in Fig. 18) dimensioned as
in Eggers ‘142 as opposed to Fox’s grasping teeth.

Id. I would determine that the Petition and Petitioner’s Declarant do not
provide sufficient evidence that this would have constituted the simple
substitution of one piece for another for purposes of establishing the
obviousness of a combination to a person of ordinary skill.
Petitioner also contends that “Fox provides an express motivation to
look to references like Eggers ‘142 in discussing an ‘island of insulation’ to
establish an insulative gap.” Pet. 15 (citing Ex. 1006, 4:25-29; Ex. 1004 ¶
84). In this regard, Fox states that “[w]here necessary, shorting may be
prevented by, for example, including an island of insulation on the grasping
surface 27 or 36 of either electrode 21 or 22 to establish an insulative gap
between the conductive surfaces.” Ex. 1006, 4:25–29. Thus, Petitioner’s
Declarant proffers that a person of ordinary skill would have looked to
improve Fox’s island of insulation as an insulative gap. Ex. 1004 ¶ 84.
In context, however, Fox discloses immediately thereafter:
“However, the grasped tissue will generally prevent shorting of the
electrodes during treatment and, once the tissue is treated it may not be
necessary or desirable to prevent the electrodes from shorting.” Ex. 1006,
4:29–32. Although this additional disclosure of Fox does not necessarily
teach away from the use of Fox’s “island of insulation” as an insulative gap,
Fox does explain that it “may not be desirable” to use an island of insulation
to prevent shorting. Therefore, I am persuaded by Patent Owner that this
disclosure from Fox, on its own, is not sufficient to establish the obviousness
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of a modification thereof, e.g., in combination with Eggers ’142. See
Prelim. Resp. 29.
The Petition finally looks to the Specification of the subject patent
itself:
Fox discloses that its “island of insulation” is provided to
“establish an insulative gap” and to prevent shorting. (Ex. 1006
at 4:25–29). This is the same purpose as the stop members of
the ‘284 Patent:

[T]o achieve a desired spacing between the
electrically conductive surfaces 35 of the
respective jaw members 22 and 24, (i.e., gap
distance) and apply a desired force to seal the
tissue 150, at least one jaw member 22 and/or 24
includes at least one stop member, e.g., 50a, which
limits the movement of the two opposing jaw
members 22 and 24 relative to one another.

(Id. at 10:52–58). Fox’s disclosed stop members create a
uniform desired gap distance the same way as the ‘284 Patent.

Pet. 23. However, the Petition’s reliance on the Specification of the ’284
patent represents impermissible hindsight. I, therefore, conclude that the
Petition fails to articulate a sufficient reason for the proposed combination of
references. 37 C.F.R. § 42.104(b). The other proposed grounds similarly
fail to articulate a rationale for obviousness.

Trials@uspto.gov Paper No. 10
571-272-7822 Entered: December 17, 2015

JAMES A. TARTAL, Administrative Patent Judge, dissenting.
In my opinion, in choosing to deny institution of inter partes review
in this proceeding, the Board loses sight of the standard which we are
compelled to apply, and instead reaches issues best resolved in a final
written decision based on a record fully developed through the trial process.
Because I find that the information presented in the Petition and the
Preliminary Response shows that there is a reasonable likelihood Petitioner
would prevail, I respectfully dissent.
Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
“unless . . . the information presented in the petition . . . shows that there is a
reasonable likelihood that the petitioner would prevail with respect to at least
1 of the claims challenged in the petition.” Thus, we need not resolve in an
institution decision contested issues when Petitioner provides sufficient
evidence to show a reasonable likelihood of prevailing.
First, the majority opinion finds central to its decision the
determination that “a uniform distance between the jaw members along the
length thereof” means “when tissue is held between the opposing jaw
members (. . .), the distance between the jaw members is the same along the
entire length thereof.” Majority Opinion (Maj. Op.), 5–8. The claim,
however, contains no limitation corresponding to the presence or absence of
tissue and it is unreasonable to suggest that an apparatus falls within the
scope of a claim only when it is holding tissue. Moreover, particular
features appearing in the written description should not be read into the
claim if the claim language is broader. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993); see also Johnson Worldwide Assocs., Inc. v. Zebco
Corp., 175 F.3d 985, 992 (Fed. Cir. 1999) (“[J]ust as the preferred
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embodiment itself does not limit claim terms, mere inferences drawn from
the description of an embodiment of the invention cannot serve to limit
claim terms, as they are insufficient to require a narrower definition of a
disputed term.”) (internal citations omitted). I find insufficient the premise
that because the ’284 patent “discloses that the stop members are ‘positioned
to control the gap distance between the opposing jaw members when the
tissue is held therebetween,’” a limitation should be imported into the claim
to require a uniform distance “when tissue is held between the opposing
jaws,” as opposed to a uniform distance with the jaws in some other
position, such as when fully closed or in a grasping position. See Maj. Op.
at 5–6, quoting Ex. 1001, 3:50–54.
Figure 5 of the ’284 patent is reproduced below.

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Figure 5 shows an embodiment of the endoscopic bipolar forceps, as
claimed, including first jaw member 22, second jaw member 24, and pivot
37. Ex. 1001, 5:49–50, 22–29. Jaw members 22 and 24 are not parallel to
each other at all times. Thus, the construction adopted by the majority
suggests that, depending upon the thickness and uniformity of the tissue
being grasped, the same set of jaw members may or may not fall within the
scope of the claims. For example, if it is a particularly thick piece of tissue
being grasped by the jaw members as they pivot about pivot 37, according to
the construction adopted by the majority, because the jaw members remain
not parallel, and therefore not at a “uniform distance,” the apparatus falls
outside of the claims. If, however, the same apparatus is used to grasp
thinner tissue such that the jaw members pivot into a parallel position, the
apparatus would then be within the scope of the claim. I disagree such a
construction is the broadest reasonable. I would instead apply the ordinary
and customary meaning of the terms recited in the claims without express
construction at this stage of the proceeding and without importation of
elements disclosed in the specification of the ’284 patent.
Next, the majority opinion concludes that Fox fails to disclose “stop
members,” because it discloses only an “island of insulation,” and that it is
unclear how only one island of unknown size and location could be
configured to maintain a uniform distance between the jaw members along
the length thereof. Maj. Op. at 10. Claim 2 of the ’284 patent, however,
requires only two “non-conductive stop members … that extend different
heights.” Ex. 1001, 14:7–11. The ’284 patent, therefore, provides that a
configuration consisting of a single stop member of a particular height (of
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unknown size and location), i.e. an “island of insulation,” is sufficient to
maintain a uniform distance between the jaw members. The majority
opinion, however, takes the unconventional approach of disregarding the
language of claim 2 in construing claim terms, and instead suggests that it is
constrained by the arguments made by Petitioner in the Petition. Maj. Op. at
11. In my view, it is improper to adopt a claim construction that is not
reasonable merely because it comports with an argument made (or not made)
by a party.
The majority opinion also finds insufficient support for Petitioner’s
contention that Fox teaches the uniform distance limitation. I disagree.
According to the majority, Petitioner’s expert failed to “analyze the gap
when tissue is held between the jaws.” Id. at 11–12. Even assuming such a
feature should have been considered based on the majority’s claim
construction, at this stage of the proceeding, prior to any deposition
testimony, we do not know whether Petitioner’s expert analyzed this or not.
Moreover, there is evidence that supports Petitioner’s contention that Fox
teaches the uniform distance limitation, principally an expert declaration
stating that “the tube closure mechanism of Fox results in parallel closure of
the jaws.” Ex. 1004, ¶ 38. Rather than decline to accord the opinion of
Petitioner’s expert “much weight,” as the majority insists because it is
“conclusory,” for purposes of an institution decision I find the expert’s
testimony in this proceeding to be sufficient support to demonstrate a
reasonable likelihood Petitioner would prevail, which is all that we need
resolve at this stage of the proceeding.
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Finally, the majority opinion determines that because “the tines in
Eggers ’142 are bowed along the length thereof, the insulative spacers do not
‘maintain a uniform distance between the jaw members along the length
thereof,’ as required by the challenged claims.” Maj. Op. at 14–15.
Contrary to the Majority’s conclusion, Eggers ’142 expressly discloses an
“electrically insulative spacer assembly [] positioned on and supported from
at least one of the tissue grasping surfaces to space the tissue contacting
surfaces apart an optimized distance, T, when the tines are in a substantially
closed orientation.” Ex. 1007 at Abstract, 3:40–52. Because the majority’s
determination concerning Eggers ’142 is premised on a construction of
“uniform distance” as requiring tissue between the jaw members, I disagree.
The majority opinion further neglects to consider whether “substantially
closed” includes closed with tissue between the tines. The majority opinion
is further premised on its own interpretation of Figure 8 of Eggers ’142 as
showing a distance between tines that is not uniform along the length
thereof, rather than the text of Eggers ’142. Maj. Op. 15. It is not readily
apparent how the majority reached this conclusion, unsupported by an
expert’s testimony. At a minimum, a proper determination of what Eggers
’142 discloses to one of ordinary skill in the art would best be made with the
benefit of testimony introduced through a full trial.
With regard to a motivation to combine Fox and Eggers, the Petition
explains:
Moreover, Fox provides an express motivation to look to
references like Eggers ’142 in discussing an “island of
insulation” to establish an insulative gap. (Ex. 1006 at 4:25-29;
Ex. 1004 at ¶ 84). Fox notes that such an island of insulation
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can be positioned on either electrode in a bipolar forceps device
to prevent shorting or arcing during treatment. (Id.). A person
of skill would have been motivated, in view of this disclosure,
to look to other references that disclose using similar insulative
materials on similar tools for additional details on how the
islands of insulation could be dimensioned, formed, and
applied. (Ex. 1004 at ¶¶ 84-85).
Accordingly, a person of skill in the art would have
incorporated Eggers ’42’s teaching of dimensions (see Ex. 1007
at 10:46-11:24), material for (id. at 11:25-27) and arrangement
of stop members on the sealing surfaces (see, e.g., id. at 9:2-23,
Figs. 8, 10-13, 15, 17-18), and mechanisms for affixing stop
members (see, e.g., id. at 11:25-45) to provide Fox’s islands of
insulation. (Ex. 1004 at ¶¶ 84-85).

Pet. 15–16. That Fox may also suggest that it “may not be desirable” to use
an island of insulation to prevent shorting does not demonstrate a “teaching
away,” or that Petitioner has failed to provide a sufficient rationale in
support of the asserted combination to show a reasonable likelihood of
prevailing. Thus, for purposes of a decision to institute, I am persuaded that
Petitioner articulates a sufficient reason why a person of ordinary skill would
have combined the references in the manner proposed. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).