Ethicon LLC v. Intuitive Surgical, Inc.

Case: 20-1528 Document: 51 Page: 1 Filed: 08/23/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ETHICON LLC, CILAG GMBH INTERNATIONAL
Appellants
v.
INTUITIVE SURGICAL, INC.,
Cross-Appellant
______________________
2020-1528, 2020-1546
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
01703.
______________________
Decided: August 23, 2021
______________________
BRIAN E. FERGUSON, Weil, Gotshal & Manges LLP,
Washington, DC, argued for appellant Ethicon LLC. Ap-
pellants Ethicon LLC and Cilag GmbH International also
represented by CHRISTOPHER MARANDO, PRIYATA PATEL,
CHRISTOPHER PEPE, AUDRA SAWYER; ANISH R. DESAI,
ELIZABETH WEISWASSER, New York, NY.
STEVEN KATZ, Fish & Richardson, P.C., Boston, MA, ar-
gued for cross-appellant. Also represented by RYAN
PATRICK O'CONNOR, JOHN C. PHILLIPS, San Diego, CA.
Case: 20-1528 Document: 51 Page: 2 Filed: 08/23/2021
2 ETHICON LLC v. INTUITIVE SURGICAL, INC.
______________________
Before O’MALLEY, CLEVENGER, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
This is an appeal and cross-appeal from the final writ-
ten decision of the Patent Trial and Appeal Board in an in-
ter partes review of U.S. Patent No. 8,616,431, where the
Board held certain claims anticipated, and other claims ob-
vious. Ethicon LLC, the patent owner, asks this court to
consider two claim construction disputes. Petitioner Intu-
itive Surgical, Inc. cross-appeals, seeking review of a fac-
tual issue regarding motivation to combine. We adopt the
Board’s construction of the disputed terms “robotic system”
and “tool mounting portion” and thus affirm the Board’s
anticipation findings. We also determine that the Board’s
finding of no motivation to combine is not supported by sub-
stantial evidence, and reverse the Board’s decision as to ob-
viousness.
BACKGROUND
I
The ’431 patent relates to a tool mounting device for
coupling a surgical tool to a robotic system. One disclosed
tool is a surgical stapler, such as an endocutter, which in-
cludes two jaw members to deploy staples into soft tissue
and a cutting member to cut the tissue as it is stapled. The
specification discloses that the robotic system may include
a controller and a robotic arm (also referred to as a “manip-
ulator”). The robotic system controls the surgical tool by
operably coupling the surgical tool to the robotic arm. Spe-
cifically, the “surgical tool 1200 is operably coupled to the
manipulator by a tool mounting portion [1300].” ’431 pa-
tent col. 28 ll. 11–13. Figure 38 illustrates tool mounting
portion 1300:
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ETHICON LLC v. INTUITIVE SURGICAL, INC. 3
Id. Fig. 38. Figure 38 also shows “interface 1230[,]” which
“mechanically and electrically couples the tool mounting
portion 1300 to the manipulator.” Id. at col. 28 ll. 13–16.
The ’431 patent specification also discloses a “unique
and novel transmission arrangement” that enables the sur-
gical tool “to be operably coupled to a . . . robotic system
that only has four rotary output bodies, yet obtain[s] the
rotary output motions” to control five motions. Id. at col. 88
ll. 22–35. The five control motions contemplated include:
(1) articulating the end effector about a first articulation
axis; (2) articulating the end effector about a second artic-
ulation axis; (3) rotating the end effector; (4) closing the an-
vil; and (5) firing the cutting instrument. In this
embodiment, a single rotary output body drives the two dif-
ferent articulation movements (1) and (2).
Independent claim 1 is illustrative and includes the
two disputed claim terms at issue in this appeal:
1. A tool mounting device for coupling a surgical
end effector configured to selectively perform at
least two actions in response to control motions ap-
plied thereto to a tool drive assembly of a robotic
system that is operatively coupled to a control unit
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4 ETHICON LLC v. INTUITIVE SURGICAL, INC.
of the robotic system, said tool mounting device
comprising:
a tool mounting portion configured for operable at-
tachment to the tool drive assembly of the robotic
system;
an elongated shaft assembly having a proximal end
portion operably supported on said tool mounting
portion and a distal end portion operably interfac-
ing with said surgical end effector to apply said con-
trol motions thereto; and
a transmission arrangement operably supported on
said tool mounting portion such that when said tool
mounting portion is attached to the tool drive as-
sembly, said transmission arrangement is config-
ured to operably interface with a rotatable driven
element of the tool drive assembly to receive a ro-
tary output motion therefrom, said transmission
arrangement communicating with the control unit
of the robotic system and being responsive to actu-
ation motions therefrom to move between first and
second positions such that when said transmission
arrangement is in said first position, an application
of said rotary output motion thereto by said rotat-
able driven element of the tool drive assembly
causes a first one of said control motions to be ap-
plied to a portion of said surgical end effector
through said elongated shaft assembly and when
said transmission arrangement is in said second
position, said application of said rotary output mo-
tion thereto by said rotatable driven element of the
tool drive assembly causes a second one of said con-
trol motions to be applied to another portion of said
surgical end effector through said elongated shaft
assembly.
Id. at col. 91 ll. 2–35 (emphases added to disputed limita-
tions).
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ETHICON LLC v. INTUITIVE SURGICAL, INC. 5
II
Tierney 1 is the primary prior art reference in the IPR.
Like the challenged patent, Tierney is directed to a robotic
surgical system where a number of different tool types can
be coupled to a robotic manipulator. As illustrated by Fig-
ure 6 below, however, Tierney comprises four rotary drive
elements 118 that control only four motions of an end effec-
tor:
Tierney Fig. 6. Particularly, Tierney discloses control of
the following movements: (1) articulation about a first
axis; (2) articulation about a second axis; (3) actuation of
the two-element end effector; and (4) rotation about an
axis. Id. at col. 9 ll. 24–32.
Whitman 2 and Timm 3 are secondary prior art refer-
ences asserted in the IPR. Whitman discloses a powered
surgical stapler with drivers to drive the movement of the
surgical device, but adds a “function selector module,” or a
shifter, that is actuatable “between four different
1 U.S. Patent No. 7,542,320.
2 U.S. Pat. App. Pub. No. 2009/0101692.
3 U.S. Pat. App. Pub. No. 2008/0308601.
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6 ETHICON LLC v. INTUITIVE SURGICAL, INC.
functional positions.” Whitman ¶ 76. In other words,
Whitman discloses a shifter that allows a single rotary out-
put body to control more than one motion. Whitman dis-
closes using this shifter to help control the following
motions with just two driving bodies: (1) rotation about an
axis; (2) articulation about a single axis; (3) opening and
closing of the jaws of the device; and (4) cutting and sta-
pling. Id. ¶¶ 79–82.
Timm discloses a surgical stapling and cutting instru-
ment with at least the following motion controls: (1) artic-
ulation about a first axis; (2) articulation about a second
axis; (3) rotation about an axis, id.; (4) clamping; and
(5) stapling. Timm ¶¶ 135–37. Timm, however, does not
disclose a robotic surgical system.
III
Intuitive filed an IPR petition challenging claims 1–7,
10–14, 16–20, and 23–26 of the ’431 patent on four grounds.
Intuitive Surgical, Inc. v. Ethicon LLC, No. IPR2018-
01703, Paper 2, at 9 (P.T.A.B. Sept. 11, 2018) (Petition).
Ground 1 asserted that claims 1–6 and 10–13 would have
been obvious over Tierney in view of Whitman. Ground 2
asserted that claims 7, 14, 16–20, and 23–26 would have
been obvious over Tierney in view of Whitman and further
in view of Zemlok. 4 Ground 3 asserted that claims 1, 2, 6,
and 10–13 are anticipated by Whitman. Ground 4 asserted
that claim 11 would have been obvious over Tierney in view
of Whitman and further in view of Timm. The Board insti-
tuted review on all grounds. Intuitive Surgical, Inc. v. Eth-
icon LLC, No. IPR2018-01703, 2019 WL 764067, at *1
(Feb. 19, 2019) (Institution Decision).
The Board ultimately determined that Intuitive had
proven by a preponderance of the evidence that claims 1, 2,
6, and 10–13 of the ’431 patent were anticipated by
4 U.S. Pat. App. Pub. No. 2008/0251568.
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ETHICON LLC v. INTUITIVE SURGICAL, INC. 7
Whitman (ground 3), but that Intuitive had failed to prove
that the remainder of the claims would have been obvious
over any of the proposed combinations. Intuitive Surgical,
Inc. v. Ethicon LLC, No. IPR2018-01703, 2020 WL 813856,
at *1 (Feb. 18, 2020) (Final Decision).
Ethicon appeals and Intuitive cross-appeals. We have
jurisdiction under 28 U.S.C.§ 1295(a)(4)(A).
DISCUSSION
I
On appeal, Ethicon asserts that the Board erred in
finding that Whitman anticipates claims 1, 2, 6, and 10–13
because it erred in its construction of either of two claim
terms: (1) “tool mounting portion”; and (2) “robotic sys-
tem.” We address each argument in turn below.
Claim construction is ultimately a question of law that
this court reviews de novo. Knowles Elecs. LLC v. Cirrus
Logic, Inc., 883 F.3d 1358, 1361–62 (Fed. Cir. 2018). While
we review constructions based on the claim language, the
specification, and the prosecution history de novo, we re-
view the Board’s subsidiary factual findings regarding ex-
trinsic evidence for substantial evidence. Personalized
Media Commc’ns, LLC v. Apple Inc., 952 F.3d 1336,
1339–40 (Fed. Cir. 2020). The Board applied the broadest
reasonable interpretation standard, under which a claim
construction “must be reasonable in light of the specifica-
tion, prosecution history, and the understanding of one
skilled in the art.” Personalized Media, 952 F.3d at 1340
(citing Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
1298 (Fed. Cir. 2015), overruled on other grounds by Aqua
Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en
banc)).
A
We begin with the Board’s construction of “tool mount-
ing portion.” The Board construed this term to mean a
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8 ETHICON LLC v. INTUITIVE SURGICAL, INC.
“structure for operable attachment to the tool drive assem-
bly of a robotic system, and that operably supports an elon-
gated shaft assembly and a transmission arrangement.”
Final Decision, 2020 WL 813856, at *7. Ethicon asserts
that the Board erred in its construction by failing to give
any meaning to the term “mounting.” According to Ethi-
con, the tool mounting portion is the “portion of the tool
mounting device that mounts to the robotic system.” Ap-
pellant’s Br. 36. Because Ethicon’s proposed construction
lacks support in the intrinsic evidence, we decline its re-
quest to change the Board’s claim construction.
Looking to the claim term itself, the logical reading of
the term “tool mounting portion” requires a mounting por-
tion for a tool. The term “tool” modifies “mounting portion.”
The full claim phrase—“a tool mounting portion configured
for operable attachment to the tool drive assembly of the
robotic system,” ’431 patent col. 91 ll. 8–9—supports this
reading. Indeed, the claimed “configured for” language is
directed only to supporting the tool drive assembly; it says
nothing about mounting to the robotic system. Other limi-
tations in the claim further support this construction.
First, claim 1 recites “an elongated shaft assembly having
a proximal end portion operably supported on said tool
mounting portion . . . .” Id. at col. 91 ll. 10–11. Next,
claim 1 recites “a transmission arrangement operably sup-
ported on said tool mounting portion . . . .” Id. at col. 91
ll. 14–15. Both limitations describe a tool that is supported
on the tool mounting portion.
Turning to the specification, Ethicon asserts that it
“consistently describes that the tool mounting portion is
the portion of the surgical tool that mounts to the robotic
system . . . .” Appellant’s Br. 39. For example, Ethicon
points to the disclosure in the specification that states that
“[t]he surgical tool 1200 is operably coupled to the manip-
ulator by a tool mounting portion . . . .” ’431 patent col. 28
ll. 11–13; see also Oral Arg. at 4:38–5:10,
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20-
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ETHICON LLC v. INTUITIVE SURGICAL, INC. 9
1528_03032021.mp3. We disagree. We discern no clear
disclaimer or lexicography in the specification that would
limit the “tool mounting portion” to require mounting to the
robotic system. The portion of the specification identified
by Ethicon is no different than the claim language where
the “tool mounting portion” is “configured for operable at-
tachment to the tool drive assembly of the robotic system.”
In neither instance is the tool mounting portion described
as mounted to the robotic system.
Referring to Figures 35 and 37–48, Ethicon asserts
that every embodiment in the specification shows that the
tool mounting portion is mounted to and supported by the
manipulator of the robotic system. As we have repeatedly
held, however, the fact that embodiments (or even every
embodiment) in the specification depict a particular ar-
rangement or structure does not require reading that ar-
rangement or structure into the claims. See Aventis
Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330
(Fed. Cir. 2012) (“‘[I]t is . . . not enough that the only em-
bodiments, or all of the embodiments, contain a particular
limitation’ to limit a claim term beyond its ordinary mean-
ing.” (second alteration in original) (quoting Teleflex, Inc.
v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir.
2002))); Innova/Pure Water, Inc. v. Safari Water Filtration
Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004) (“[P]articu-
lar embodiments appearing in the written description will
not be used to limit claim language that has broader effect.”
(first citing Electro Sci. Indus., Inc. v. Dynamic Details,
Inc., 307 F.3d 1343, 1349 (Fed. Cir. 2002); and then citing
Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347–48
(Fed. Cir. 1998))); Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 906 (Fed. Cir. 2004) (“[T]his court has ex-
pressly rejected the contention that if a patent describes
only a single embodiment, the claims of the patent must be
construed as being limited to that embodiment.” (collecting
cases)).
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10 ETHICON LLC v. INTUITIVE SURGICAL, INC.
Our review of the claim language and specification re-
veals no support for limiting the “tool mounting portion”
claim language to require mounting to the robotic system.
Accordingly, we adopt the Board’s construction of “tool
mounting portion.”
B
We next turn to the Board’s construction of “robotic sys-
tem.” The Board construed the term to mean “a system
that comprises, inter alia, a tool drive assembly and a con-
trol unit, and that [] is a self-powered, computer-controlled
device that can be programmed to aid in the positioning
and manipulation of surgical instruments, enabling the
surgeon to carry out more complex tasks.” Final Decision,
2020 WL 813856, at *6. Ethicon challenges this construc-
tion, asserting that the Board should have construed this
term to mean a “system comprising a master controller and
a robotic arm slave cart (i.e., a telesurgical system).” Ap-
pellant’s Br. 51. Relying on both the plain claim language
and extrinsic evidence cited by both parties, we again agree
with the Board’s construction.
We turn first to the claim language, which recites “a
tool drive assembly of a robotic system that is operably cou-
pled to a control unit of the robotic system . . . .” ’431 pa-
tent col. 91 ll. 4–6. The Board properly found that the
claim language makes clear that the robotic system in-
cludes at least a tool drive assembly and a control unit, but
does not require a “master controller” or a “robotic slave
arm cart.” Thus, the added language in Ethicon’s proposed
construction finds no support in the claims themselves.
The specification also supports the Board’s broader
construction. While Ethicon is correct that the specifica-
tion discloses numerous embodiments in which the robotic
system includes a master controller and a robotic slave arm
cart, the specification also indicates that the robotic system
is not limited to such systems. As the Board aptly noted,
the specification teaches that other robotic systems may be
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ETHICON LLC v. INTUITIVE SURGICAL, INC. 11
used in connection with the invention. For example, the
specification states that “a variety of different forms of the
tool systems disclosed and claimed herein [may be] effec-
tively employed in connection with other types and forms
of robotic systems that supply programmed rotary or other
output motions.” Id. at col. 35 ll. 1–5. Similarly, the spec-
ification states that “[t]hose of ordinary skill in the art will
appreciate that various embodiments of the present inven-
tion may incorporate a wide variety of alternative robotic
structures . . . .” Id. at col. 27 ll. 49–52.
Finally, the extrinsic evidence presented in this case
supports the Board’s construction. We review the Board’s
subsidiary factual findings regarding extrinsic evidence for
substantial evidence. Personalized Media, 952 F.3d
at 1339 (citation omitted). The Board relied on an article
by Bishoy Morris titled “Robotic Surgery: Applications,
Limitations, and Impact on Surgical Education” in constru-
ing this term. Ethicon asserts that the Board “erred by re-
lying on extrinsic evidence to impermissibly broaden the
scope of the claims.” Appellant’s Br. 59. We disagree. The
Board was entitled to look to extrinsic evidence “to assist
in the proper understanding of the disputed limitation[,]”
Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc.,
262 F.3d 1258, 1269 (Fed. Cir. 2001) (citation omitted),
particularly where both parties presented the Morris arti-
cle to construe the “robotic system” term.
Moreover, substantial evidence supports the Board’s
reading of the Morris article to supply a definition of robotic
systems broader than that sought by Ethicon. The Board
pointed to the following description of robotic surgical sys-
tems in the Morris article:
A surgical robot is a self-powered, computer-con-
trolled device that can be programmed to aid in the
positioning and manipulation of surgical instru-
ments, enabling the surgeon to carry out more com-
plex surgical tasks. Systems currently in use are
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12 ETHICON LLC v. INTUITIVE SURGICAL, INC.
not intended to act independently from human sur-
geons or to replace them.
Final Decision, 2020 WL 813856, at *6 (quoting J.A. 1900).
Though the Morris article does mention that components
of a robotic system may include a master console and a ro-
botic manipulator, it does so only with regard to two spe-
cific robotic surgical systems. We see no error in the
Board’s finding that the broader definition recited above
more accurately characterizes the definition of a robotic
system as understood by the Morris article. We therefore
adopt the Board’s construction of “robotic system.”
C
Ethicon does not challenge the Board’s anticipation
findings under the Board’s constructions. Because we
adopt the Board’s constructions for both terms, we affirm
the Board’s anticipation findings.
II
Turning to Intuitive’s cross-appeal, Intuitive chal-
lenges the Board’s holding that Intuitive failed to demon-
strate that claims 1–7, 10–14, 16–20, and 23–26 would
have been obvious under 35 U.S.C. § 103. It is undisputed
that the combination of Whitman and Tierney teach all the
limitations of claim 1 of the ’431 patent. Further, Ethicon
has not challenged—either before the Board or on appeal—
Intuitive’s assertion that the prior art teaches each and
every limitation of all of the challenged claims. Ethicon’s
sole argument before the Board was that a person of ordi-
nary skill in the art would not have been motivated to com-
bine the prior art references to arrive at the claimed
invention. The Board agreed with Ethicon. On appeal, In-
tuitive asserts that substantial evidence does not support
the Board’s finding that one of ordinary skill would not
have been motivated to combine Whitman and Tierney in
a way that would have satisfied all of the limitations of
claim 1.
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ETHICON LLC v. INTUITIVE SURGICAL, INC. 13
A claim is invalid for obviousness “if the differences be-
tween the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a
person having ordinary skill in the art.” 35 U.S.C. § 103(a)
(2006). Obviousness is a question of law based on underly-
ing factual determinations, including “whether a [person of
ordinary skill in the art] would have been motivated to
combine the prior art to achieve the claimed invention and
whether there would have been a reasonable expectation of
success in doing so.” TQ Delta, LLC v. Cisco Sys., Inc.,
942 F.3d 1352, 1357 (Fed. Cir. 2019) (alteration in original)
(quoting In re Warsaw Orthopedic, Inc., 832 F.3d 1327,
1333 (Fed. Cir. 2016)). We review the Board’s obviousness
determination de novo and its underlying factual findings
for substantial evidence. Belden Inc. v. Berk-Tek LLC,
805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing Randall Mfg.
v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013)).
The substantial evidence standard asks “whether a
reasonable fact finder could have arrived at the agency’s
decision,” and “involves examination of the record as a
whole, taking into account evidence that both justifies and
detracts from an agency’s decision.” In re Gartside,
203 F.3d 1305, 1312 (Fed. Cir. 2000) (first citing Consol.
Edison Co. v. NLRB, 305 U.S. 197, 229 (1938); and then
citing Universal Camera Corp. v. NLRB, 340 U.S. 474,
487–88 (1951)). We determine that a reasonable fact finder
could not have arrived at the Board’s decision in light of the
prior art and expert testimony in the record.
The Board first found that a person of ordinary skill
would not have been motivated to combine Whitman and
Tierney to increase the total number of functions that can
be performed on the end effector. Although the Board rec-
ognized that the combination of Whitman and Tierney
would be able to perform more than the four functions dis-
closed in Tierney, the Board explained that it was unper-
suaded that one of ordinary skill would have been
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14 ETHICON LLC v. INTUITIVE SURGICAL, INC.
motivated to combine the references because Intuitive
failed to identify a surgical instrument known in the art at
the time of the invention that performed more than four
functions, and thus there would be no need “to obtain a
functionality for which there was no use.” Final Decision,
2020 WL 813856, at *10 (citation omitted).
As an initial matter, the Board’s finding that Intuitive
failed to identify a surgical instrument that performs more
than four functions is not supported by substantial evi-
dence. Indeed, the Board’s finding is contrary to prior art
of record, Timm, which was presented by Intuitive in its
petition and discloses at least five different functions. Spe-
cifically, Timm discloses a surgical device that (1) articu-
lates about a Y-axis; (2) articulates about a Z-axis;
(3) rotates; (4) clamps; and (5) staples. J.A. 2024
¶¶ 135–36. Although Intuitive did not directly assert be-
fore the Board that Timm discloses these five functions, In-
tuitive’s explanation of Timm’s two-axis articulation—both
in its petition and in Dr. Knodel’s declaration—at least
suggested that Timm disclosed a surgical device with five
functions. For example, Dr. Knodel explained that Timm
discloses the same two-axis articulation joint as the
’431 patent, indicative of two functions—articulating the
end effector about a first and second articulation axis.
J.A. 1456 ¶ 203. Dr. Knodel continued by explaining that
this two-axis joint was preferred because it was desirable
for surgical tools to employ a roll-pitch-yaw mechanism, in-
dicative of a third function—rotation. Id. ¶ 204. Finally,
Dr. Knodel explained that Timm and Whitman are both in
the same field of surgical stapling systems, that Timm dis-
closes an end effector, and that Timm discloses a surgical
instrument that supports a staple cartridge, suggesting the
fourth and fifth functions—clamping and stapling.
Regardless, even without Timm, Intuitive presented
evidence that the combination of Tierney and Whitman dis-
closes more than four functions, showing in and of itself
that a surgical device with more than four functions is at
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ETHICON LLC v. INTUITIVE SURGICAL, INC. 15
least possible. The Board went too far by requiring Intui-
tive to specifically identify a preexisting surgical device
with more than four functions. Indeed, the Board itself rec-
ognized—and Intuitive asserted in its petition—that one
factor of a successful minimally invasive robotic system is
increasing surgical dexterity, a factor that would be aided
by increased end effector functionality.
We also determine that substantial evidence does not
support the Board’s finding that even though Intuitive
identified at least six functions disclosed between Whitman
and Tierney, it did not provide “evidence that one of ordi-
nary skill in the art would have interpreted the references
in the same manner (e.g., that one of ordinary skill in the
art would have considered cutting and stapling performed
in the same instrument to be two separate functions as op-
posed to a single ‘firing’ function) . . . .” Final Decision,
2020 WL 813856, at *10. As Intuitive explained to the
Board, Whitman and Tierney do not disclose the same four
functions, and thus there are more than four total func-
tions between the two references regardless of whether cut-
ting and stapling are interpreted as one or two functions.
See Intuitive Surgical, Inc. v. Ethicon LLC, No. IPR2018-
01703, Paper 14, at 10 (P.T.A.B. Jul. 9, 2019) (Petitioner’s
Reply). In particular, Intuitive pointed to using Tierney’s
disclosure of a dual-axis articulation in place of Whitman’s
single-axis articulation, resulting at least in the following
functions: “roll; clamp; horizontal articulation; vertical ar-
ticulation; cut; and staple.” Id. at 12. Thus, even if a
skilled artisan were to read cut and staple as a single func-
tion, Intuitive still identified five functions to the Board.
Additionally, the Board failed to address other undis-
puted evidence regarding purported motivations for com-
bining Whitman’s shifter with Tierney. Of particular
relevance here, Intuitive presented expert evidence to the
Board that a skilled artisan would have been motivated to
include Whitman’s shifter in Tierney’s device even if fewer
functions were in play. Dr. Knodel explained that it “may
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16 ETHICON LLC v. INTUITIVE SURGICAL, INC.
be advantageous to provide a shifter to switch between ar-
ticulation and stapling” in that using a shifter would pre-
vent one from accidently changing the articulation during
stapling because the articulation function would not be se-
lected during stapling. J.A. 1378 ¶ 54. In other words,
“you might still want a shifter because you may want to
isolate the functions” and “make sure [that] you cannot fire
at the same time you’re articulating . . . .” Intuitive Surgi-
cal, Inc. v. Ethicon LLC, No. IPR2018-01703, Paper 21,
at 18–19 (P.T.A.B. Nov. 12, 2019) (Oral Hearing). As there
was no evidence disputing this expert testimony, the Board
erred by not addressing it.
We thus agree with Intuitive that the Board erred in
finding that a person of ordinary skill would not have been
motivated to use Whitman’s shifter in Tierney because it
was unnecessary. Because substantial evidence does not
support the Board’s finding that there was no motivation
to combine, and because there is no dispute that the com-
bined prior art discloses all of the claim limitations, we re-
verse the Board’s finding that claims 1–7, 10–14, 16–20,
and 23–26 are not unpatentable under 35 U.S.C. § 103.
CONCLUSION
We have considered the parties’ remaining arguments,
but we do not find them persuasive. For the foregoing rea-
sons, we affirm the Board’s anticipation findings and re-
verse the Board’s determination of non-obviousness.
AFFIRMED-IN-PART AND REVERSED-IN-PART
COSTS
No costs.