Ethicon LLC v. Intuitive Surgical, Inc.

Case: 21-1601 Document: 57 Page: 1 Filed: 05/19/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ETHICON LLC, CILAG GMBH INTERNATIONAL,
Appellants
v.
INTUITIVE SURGICAL, INC.,
Appellee
______________________
2021-1601
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
00991.
______________________
Decided: May 19, 2022
______________________
ADAM BANKS, Weil, Gotshal & Manges LLP, New York,
NY, argued for appellants. Also represented by ANISH R.
DESAI, ELIZABETH WEISWASSER; STEPHANIE NICOLE
ADAMAKOS, PRIYATA PATEL, CHRISTOPHER PEPE, AUDRA
SAWYER, Washington, DC.
STEVEN KATZ, Fish & Richardson, P.C., Boston, MA, ar-
gued for appellee. Also represented by RYAN PATRICK
O'CONNOR, JOHN C. PHILLIPS, San Diego, CA.
______________________
Case: 21-1601 Document: 57 Page: 2 Filed: 05/19/2022
2 ETHICON LLC v. INTUITIVE SURGICAL, INC.
Before NEWMAN, CLEVENGER, and STOLL, Circuit Judges.
Opinion for the court filed by Circuit Judge STOLL.
Circuit Judge NEWMAN dissents without opinion.
STOLL, Circuit Judge.
This is a patent validity case. Ethicon LLC and Cilag
GmbH International (collectively, “Ethicon”) appeal from
the Patent Trial and Appeal Board’s final written decision
holding claims 13–15 and 17–18 of U.S. Patent
No. 8,602,287 unpatentable as obvious. Ethicon challenges
the Board’s fact findings regarding analogous art and mo-
tivation to combine prior art references. Because substan-
tial evidence supports the Board’s findings, we affirm.
BACKGROUND
I
Ethicon is the assignee of the ’287 patent which is di-
rected to a motor-driven surgical cutting instrument. Spe-
cifically, the ’287 patent is directed to a motor-driven
“endocutter,” which is a tool that simultaneously cuts and
staples tissue along the edges of the cut.
’287 patent, Figs. 2–3; see also id. at col. 1 l. 56–col. 2 l. 9.
Claim 13 of the ’287 patent is representative of the
claims on appeal:
Case: 21-1601 Document: 57 Page: 3 Filed: 05/19/2022
ETHICON LLC v. INTUITIVE SURGICAL, INC. 3
13. A surgical instrument, comprising:
an end effector comprising a firing element,
wherein the firing element is configured to
move along a firing path, and wherein the
firing path comprises:
an initial position; and
an end-of-stroke position;
an electric motor, wherein the electric mo-
tor drives the firing element in a first direc-
tion along the firing path when the electric
motor is rotated in a first rotational direc-
tion; and
a control circuit for controlling the electric
motor, wherein the control circuit is config-
ured to switch between a plurality of oper-
ational modes during rotation of the
electric motor in the first rotational direc-
tion, and wherein the plurality of opera-
tional modes comprises:
a first operational mode, wherein the con-
trol circuit operates in the first operational
mode when the firing element is positioned
within a first range of positions along the
firing path, wherein the first range of posi-
tions is positioned between the initial posi-
tion and a second range of positions, and
wherein a first amount of current is sup-
plied to the electric motor during the first
operational mode; and
a second operational mode, wherein the
control circuit operates in the second oper-
ational mode when the firing element is po-
sitioned within the second range of
positions along the firing path, wherein the
Case: 21-1601 Document: 57 Page: 4 Filed: 05/19/2022
4 ETHICON LLC v. INTUITIVE SURGICAL, INC.
second range of positions is positioned be-
tween the first range of positions and the
end-of-stroke position, wherein a second
amount of current is supplied to the electric
motor during the second operational mode,
and wherein the second amount of current
is greater than the first amount of current.
Id. at col. 18 l. 58–col. 19 l. 24.
The purportedly inventive feature of claim 13 is that
the motor for driving the endocutter uses two “operational
modes,” which apply two different amounts of current to
the motor based on the positioning of the firing element in
the firing path. In describing how this two-mode operation
works, Ethicon repeatedly cites a specific portion of col-
umn 12. There, the ’287 patent describes a “‘soft’ start
quality by limiting the motor’s ability to exert full load im-
mediately.” Id. at col. 12 ll. 33–41. This is accomplished
by initially having “resistive element 144” in series with
the motor on startup “from time T0 to time T1.” Id.at col. 12 ll. 5–11.
Case: 21-1601 Document: 57 Page: 5 Filed: 05/19/2022
ETHICON LLC v. INTUITIVE SURGICAL, INC. 5
Appellants’ Br. 14 (annotating ’287 patent, Fig. 11). At
time T1, the “switch 146” is closed, “thereby shorting the
resistive element 144 and supplying increased power to the
motor 65.” ’287 patent col. 12 ll. 11–14. The patent ex-
plains that this “limit[s] the sudden jerking start.” Id.at col. 12 ll. 35–37. “In addition, by starting the soft start
mode, the likelihood of the motor overpowering the car-
tridge lockout mechanism is reduced.” Id. at col. 12
ll. 37–39. The section finishes by referencing an additional
feature of “reducing the power prior to the knife reaching
its end-of-stroke (or distal) position [in order to] ease[] re-
versal of the motor direction.” Id. at col. 12 ll. 39–41.
II
Intuitive Surgical, Inc. challenged certain claims of the
’287 patent based on four obviousness combinations.
J.A. 112–113. The obviousness combination accepted by
the Board and at issue on appeal is U.S. Patent Application
Publication No. 2007/0175956 A1 (Swayze) in view of U.S.
Patent No. 4,346,335 (McInnis). We describe each refer-
ence below.
Swayze discloses a similar endocutter to the one de-
scribed in the ’287 patent, lacking only the soft start circuit
(boxed in red below):
Case: 21-1601 Document: 57 Page: 6 Filed: 05/19/2022
6 ETHICON LLC v. INTUITIVE SURGICAL, INC.
Appellee’s Br. 5.
Instead of using a resistor in series with the motor that
controls the amount of current flowing into the motor for a
certain period of time (e.g., when the motor is starting),
which is then short circuited when the motor gets up and
running (i.e., the ’287 patent, “soft start” approach),
Swayze describes a “sensor 110” that can either be (1) an
“on-off” type sensor or a (2) rheostat / variable resistor that
allows more voltage to go to the motor based on how far the
user pulls the endocutter trigger. J.A. 1522–23 (Swayze
¶ 55).
McInnis is a 1982 patent directed to the “Speed Control
of a D.C. Electric Motor.” J.A. 1532. McInnis explains that
its motor circuitry is “particularly advantageous when the
Case: 21-1601 Document: 57 Page: 7 Filed: 05/19/2022
ETHICON LLC v. INTUITIVE SURGICAL, INC. 7
motor is used to drive an electric vehicle,” J.A. 1535 (McIn-
nis col. 2 ll. 51–53), but it also teaches that its “motor con-
troller may be suitably modified for other appropriate
motor control applications,” J.A. 1537 (McInnis col. 5
ll. 34–37). Notably, McInnis discloses a “starting resis-
tor 60” that is “connected in series” with its motor in a way
that is “conventional in the art,” and then this resistor is
short circuited “shortly after the motor is started.”
J.A. 1537 (McInnis col. 5 ll. 56–62).
After a standard briefing schedule and oral hearing,
the Board held the claims unpatentable as obvious over
Swayze in view of McInnis. J.A. 46. The Board found that
McInnis was analogous prior art, J.A. 34–37, and found
that a person of ordinary skill in the art would have been
motivated to combine Swayze with McInnis, J.A. 37–38.
The Board rejected Intuitive’s three other obviousness
grounds because it determined that Ethicon had success-
fully antedated the references involved in those combina-
tions.
Ethicon appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
Ethicon challenges the Board’s findings as to analogous
art and motivation to combine. Both are fact findings that
we review for substantial evidence. Airbus S.A.S. v. Fire-
pass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019) (analogous
art); Arthrex, Inc. v. Smith & Nephew, Inc., 935 F.3d 1319,
1328 (Fed. Cir. 2019) (motivation to combine). The sub-
stantial evidence standard does not ask us to reweigh the
facts and evidence, but instead asks whether there is “evi-
dence that a reasonable mind might accept as adequate to
support a conclusion.” Cleo Inc. v. United States, 501 F.3d
1291, 1296 (Fed. Cir. 2007). “Although a reviewing court
must take into account contradictory evidence or any evi-
dence in the record that undermines the agency’s finding,
the substantial evidence test does not require that there be
Case: 21-1601 Document: 57 Page: 8 Filed: 05/19/2022
8 ETHICON LLC v. INTUITIVE SURGICAL, INC.
an absence of evidence detracting from the agency’s conclu-
sion, nor is there an absence of substantial evidence simply
because the reviewing court would have reached a different
conclusion based on the same record.” Id.The Board adequately supported its findings on both
issues with evidence in the record, including expert testi-
mony. We address each finding in turn.
I
We begin with the Board’s finding that McInnis is anal-
ogous art. Prior art is analogous when the reference
is: (1) “within the field of the inventor’s endeavor” or
(2) “reasonably pertinent to the particular problem with
which the inventor was involved.” In re Wood, 599 F.2d
1032, 1036 (C.C.P.A. 1979); see also In re Clay, 966 F.2d
656, 658–59 (Fed. Cir. 1992); In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). Here, the Board found that McInnis
is analogous art because it “address[ed] at least one prob-
lem faced by the inventors of the ’287 patent.” J.A. 36. Spe-
cifically, the Board found McInnis addressed a problem in
electric motor control that the inventors of the ’287 patent
also faced—an in rush of current potentially leading to a
jerking start. J.A. 35–36. This fact finding is supported by
substantial evidence.
First, the Board considered the problems facing the in-
ventors of the ’287 patent as part of the “reasonably perti-
nent” inquiry. See Clay, 966 F.2d at 659 (“[T]he purposes
of both the invention and the prior art are important in de-
termining whether the reference is reasonably pertinent to
the problem the invention attempts to solve.”). The Board
noted that the ’287 patent “describes more than one prob-
lem,” one of which being a “sudden jerking start.” J.A. 35
(quoting ’287 patent col. 12 ll. 33–37). In addition to citing
the ’287 patent specification, the Board pointed to an in-
vention disclosure submitted by Ethicon, written by a
named inventor on the ’287 patent. The disclosure de-
scribed the invention as “limit[ing] the sudden jerking
Case: 21-1601 Document: 57 Page: 9 Filed: 05/19/2022
ETHICON LLC v. INTUITIVE SURGICAL, INC. 9
start” and described one of the “problem[s] to be solved” as
limiting “gyroscopic effects on the handle due to rotating
masses.” J.A. 35 (quoting J.A. 2951). The Board explained
that evidence of record suggests that a second “problem
faced by the inventors of the ’287 patent” involved “limiting
the motor’s ability to exert full load immediately.”
J.A. 35–36 (quotations omitted). For this proposition, the
Board pointed to a different invention disclosure by an-
other named inventor on the ’287 patent. There, the inven-
tor listed the “[p]roblem to be [s]olved” as the ability “to
limit a powered endocutter start-off and end power capa-
bilities.” J.A. 36 (quoting J.A. 2949).
The Board then examined McInnis to determine
whether, under the second prong of the analogous art in-
quiry, it was “reasonably pertinent” to those problems ad-
dressed by the ’287 patent. The Board noted that McInnis
is directed to controlling the speed of an electric motor.
J.A. 36 (citing J.A. 1532 (McInnis, Abstract)). McInnis ac-
complishes speed control by “changing the field strength of
the motor, by changing the armature voltage, or by insert-
ing a resistance in the armature circuit.” J.A. 1535 (McIn-
nis col. 1 ll. 9–12); J.A. 36. In particular, McInnis teaches
an embodiment in which a resistor “is connected in series
with the armature circuit . . . to prevent a high in rush of
current when the motor is started, as is conventional in the
art.” J.A. 1537 (McInnis col. 5 ll. 56–59); J.A. 36.
The Board then credited Intuitive’s expert’s testimony
that “an in rush of current,” addressed by McInnis, “can
‘lead to a jerking start or introduction of backlash, and re-
duce the user’s ability to control the device.’” J.A. 36 (quot-
ing J.A. 2567 (Fischer Suppl. Decl. ¶ 58)). Accordingly, the
Board concluded that McInnis is analogous art because it
“addresses at least one problem faced by the inventors of
the ’287 patent”—the sudden jerking start. J.A. 36. Based
on the excerpts described above, we conclude that this find-
ing was supported by substantial evidence.
Case: 21-1601 Document: 57 Page: 10 Filed: 05/19/2022
10 ETHICON LLC v. INTUITIVE SURGICAL, INC.
On appeal, Ethicon makes two principal arguments in
challenging the Board’s analogous art finding. Neither is
persuasive. First, Ethicon points to a different problem ad-
dressed in the ’287 patent—motor overpowering the car-
tridge lockout mechanism, ’287 patent col. 12 ll. 37–39—
which it calls the “core problem.” E.g., Appellants’ Br. 34.
Ethicon contends that because McInnis is not directed to
that specific alternative problem, it is not analogous art.
The ’287 patent does mention that “[i]n addition” to ad-
dressing a sudden jerking start, the soft start feature re-
duces “the likelihood of the motor overpowering the
cartridge lockout mechanism.” ’287 patent col. 12 ll. 37–39.
Indeed, the written description (as well as the invention
disclosure statements from the named inventors) makes
clear that the inventors were considering multiple prob-
lems that would be addressed through improved motor con-
trol, one of which being the jerking start that is caused by
a high in rush of current. And, as explained above, the
Board’s finding that McInnis is reasonably pertinent to the
problem of sudden in rush of current upon starting the mo-
tor is supported by substantial evidence. Ethicon’s identi-
fication of an additional problem faced by the ’287 patent
inventors and unaddressed by the Board in finding that
McInnis is analogous art is thus irrelevant.
To the extent Ethicon argues that there is a disconnect
between a sudden jerking start and a sudden in rush of
current when the motor is started, the Board expressly
credited Intuitive’s expert’s testimony that a high in rush
of current can “lead to a jerking start, or introduction of
backlash, and reduce the user’s ability to control the de-
vice.” J.A. 36 (quoting J.A. 2567 (Fisher Suppl. Decl. ¶ 58)).
We see no reason to disturb the Board’s crediting of this
testimony. See ESIP Series 2, LLC v. Puzhen Life USA,
LLC, 958 F.3d 1378, 1384 (Fed. Cir. 2020) (“We find no er-
ror in the Board’s decision to credit the opinion of one ex-
pert over another, and we do not reweigh evidence on
appeal.”). Moreover, the analogous art test does not
Case: 21-1601 Document: 57 Page: 11 Filed: 05/19/2022
ETHICON LLC v. INTUITIVE SURGICAL, INC. 11
require that the references use the exact same words to de-
scribe the problem that they seek to solve. Cf. Donner
Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359
(Fed. Cir. 2020) (“Although the dividing line between rea-
sonable pertinence and less-than-reasonable pertinence is
context dependent, it ultimately rests on the extent to
which the reference of interest and the claimed invention
relate to a similar problem or purpose.”). Rather, it re-
quires that the prior art reference be “reasonably pertinent
to the problem with which the inventor was involved.”
Clay, 966 F.2d at 659. Even if we might have made a dif-
ferent fact finding were we the fact finder, we cannot say
that the Board’s affirmative finding on this point was un-
reasonable.
Second, Ethicon attempts to create an additional hur-
dle, as a legal matter, to the “reasonably pertinent” inquiry.
Ethicon argues that “[e]ven if the Board had correctly con-
cluded that the [’]287 [p]atent and McInnis addressed the
same problem, McInnis is still not ‘analogous prior art’” be-
cause McInnis would not have logically commended itself
to an inventor’s attention. Appellants’ Br. 39–40; see also
Appellants’ Reply Br. 13 (describing this as a “second
prong”). Phrased differently, Ethicon argues that in addi-
tion to being directed to the same problem as the chal-
lenged patent, the prior art must also be such that “a POSA
reasonably would have consulted that reference to solve
the problem.” Appellants’ Br. 41.
This is not a separate legal test, but instead two sides
of the same coin. As we have explained, “[t]o be deemed
‘analogous art,’ a reference outside an inventor’s field of en-
deavor must be ‘reasonably pertinent’ to the particular
problem with which the inventor is involved, such that a
person of ordinary skill would reasonably have sought a so-
lution to the problem in that outside field.” Sci. Plastic
Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1358 (Fed. Cir.
2014) (emphasis added). In other words, it is the fact that
the reference is “reasonably pertinent” to a problem the
Case: 21-1601 Document: 57 Page: 12 Filed: 05/19/2022
12 ETHICON LLC v. INTUITIVE SURGICAL, INC.
patent is trying to solve that makes it a reference that
would have logically commended itself to the inventor’s at-
tention, even though that reference was outside the field of
endeavor of the patent.
It is clear from Ethicon’s application of this supposed
“second prong” that Ethicon is impermissibly “collaps[ing]
the field-of-endeavor and reasonable-pertinence inquiries.”
Donner, 979 F.3d at 1360. For instance, Ethicon attempts
to draw a distinction between “large motors used in electric
vehicles” and “small motor[s] for use in a minimally inva-
sive surgical tool.” Appellants’ Br. 39–40. It suggests that
a skilled artisan would not have “bypassed the specific field
of endocutters, or even surgical instruments more broadly”
and “leaped all the way to motor vehicle motors at the other
end of the spectrum.” Appellants’ Br. 46. But that is the
point of the “reasonably pertinent” inquiry, rendering prior
art “analogous” when it is directed to solving the same
problem, even when it is in a different field of endeavor.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(“When a work is available in one field, design incentives
and other market forces can prompt variations of it, either
in the same field or a different one.”); see also Donner,
979 F.3d at 1361 (noting that “there will frequently be sig-
nificant differences between a patent and a reference from
a different field of endeavor” but “it does not follow that
such a reference is, for that reason alone, not reasonably
pertinent to one or more problems to which the claimed in-
vention relates”). 1
1 Even if Ethicon’s proposed legal test were correct
(it is not), Ethicon incorrectly asserts as a factual matter
that McInnis is restricted to “large motors used in electric
vehicles.” This does not appear to be the case. As the
Board found, McInnis “relates generally to D.C. electric
motors, and particularly to the speed control of separately
excited or shunt wound D.C. electric motors,” listing
Case: 21-1601 Document: 57 Page: 13 Filed: 05/19/2022
ETHICON LLC v. INTUITIVE SURGICAL, INC. 13
For at least these reasons we conclude that substantial
evidence supports the Board’s finding that McInnis is anal-
ogous art to the ’287 patent.
II
We turn next to motivation to combine. The Board
found that a person of ordinary skill in the art would have
been motivated to implement the soft start circuit taught
in McInnis in Swayze’s endocutter system because “a soft
start is beneficial to, and thus, would improve an endocut-
ter.” J.A. 37. In particular, the Board relied on a specific
prior art reference, U.S. Patent Application Publication
No. 2008/0298784 (Kastner), that taught “[s]oft-starting
can also be useful in hand-held power tools, such as drills”
to “minimize fatigue and potential injury, while allowing
greater control of the tool,” as supplying a motivation to
combine McInnis and Swayze. J.A. 1821 (Kastner ¶ 30);
J.A. 37–38; J.A. 2567–72 (Fischer Suppl. Decl. ¶¶ 57–64).
In its final written decision, the Board noted that Ethicon
failed to address Kastner, as well as the expert testimony
describing Kastner. J.A. 37–38. The Board’s reliance on
Kastner and the expert testimony describing Kastner as
supplying a motivation to combine was not unreasonable.
On appeal, Ethicon contests the Board’s determination
that Ethicon failed to address Kastner, addresses the mer-
its of Kastner (for the first time), and argues that the
Board’s analysis was conclusory. Appellants’ Br. 51–56.
We address each argument in turn.
First, regarding Ethicon’s failure to address Kastner,
Ethicon cites certain pages of its briefing before the Board
that it asserts shows it responded to this argument. Ap-
pellants’ Br. 53–55 (citing J.A. 369–70 (Patent Owner’s
“electric vehicle[s]” as an exemplary environment in which
its motor control is “particularly advantageous.” J.A. 1535
(McInnis col. 1 ll. 6–8, col. 2 ll. 51–53); J.A. 34.
Case: 21-1601 Document: 57 Page: 14 Filed: 05/19/2022
14 ETHICON LLC v. INTUITIVE SURGICAL, INC.
Response (citing J.A. 2865–70 (Cimino Decl. ¶¶ 101–04,
107–10))); J.A. 529–30 (Sur-Reply (citing J.A. 2872–74 (Ci-
mino Decl. ¶¶ 113–14))). None of these cited portions, how-
ever, reference Kastner. We see no error in the Board’s
conclusion that Ethicon failed to address Kastner and the
expert testimony describing Kastner. Indeed, a simple re-
view of the record supports this determination. Ethicon’s
Patent Owner’s Response challenged whether a skilled ar-
tisan would have been motivated to combine Swayze and
McInnis but did not address Kastner. J.A. 365–70. The
cited portions of Ethicon’s expert’s declaration likewise
failed to address Kastner. J.A. 2864–70 (Cimino Decl.
¶¶ 98–110). And in its Sur-Reply, the section regarding
motivation to combine once again failed to address Kast-
ner. J.A. 527–30.
Second, Ethicon argues that Kastner’s teachings are
limited to “drills,” which use more powerful motors than
endocutters, and therefore its teachings do not apply to en-
docutters. Appellants’ Br. 55 (quoting J.A. 1821 (Kastner
¶ 30)). Ethicon does not point to where it made this argu-
ment before the Board. Instead, it cites a portion of its ex-
pert’s declaration that was not cited in its papers to the
Board. Appellants’ Br. 55–56 (citing J.A. 2876–77 (Cimino
Decl. ¶ 119)). This argument is therefore waived. See Red-
line Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435,
450 (Fed. Cir. 2015) (holding arguments waived where they
were not presented to the Board).
Third, Ethicon criticizes the Board’s motivation finding
(relying on Kastner) as conclusory and without reasoned
explanation. Because Ethicon never rebutted Kastner be-
fore the Board and did not point to the portions of its ex-
pert’s testimony discussing Kastner, we cannot fault the
Board for its arguably limited treatment of this issue. See
Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1328
(Fed. Cir. 2017) (“[W]e are not persuaded that Novartis
presented its arguments against the use of mannitol in
such a way that it would be appropriate to find fault in the
Case: 21-1601 Document: 57 Page: 15 Filed: 05/19/2022
ETHICON LLC v. INTUITIVE SURGICAL, INC. 15
Board’s arguably limited treatment of those arguments in
the Final Written Decision.”). 2
The Board’s motivation to combine finding is supported
by substantial evidence in the form of an unrebutted refer-
ence (Kastner) and Intuitive’s expert’s declaration describ-
ing Kastner.
CONCLUSION
We have considered the remainder of Ethicon’s argu-
ments on appeal and conclude that they are without merit.
Accordingly, because the Board’s findings on analogous art
and motivation to combine are supported by substantial ev-
idence, we affirm.
AFFIRMED
2 Because substantial evidence supports the Board’s
finding that Kastner provides a different motivation to im-
plement a soft start circuit in Swayze’s endocutter, we need
not consider Ethicon’s argument that Swayze already
solves the high inrush of current problem with its variable
resistor connected in series with the motor. See J.A. 37–38
(Board determining that they “do not need to resolve these
issues” due to Kastner).