NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

INTUITIVE SURGICAL, INC.,

Appellant

v.

ETHICON LLC,

Appellee

ANDREW HIRSHFELD, PERFORMING THE 

FUNCTIONS AND DUTIES OF THE UNDER 

SECRETARY OF COMMERCE FOR 

INTELLECTUAL PROPERTY AND DIRECTOR OF 

THE UNITED STATES PATENT AND TRADEMARK 

OFFICE,

Intervenor

______________________ 

2020-1480; 2020-1482

______________________ 

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2018-

01247, IPR2018-01254. 

______________________ 

Decided: February 11, 2022

______________________ 

STEVEN KATZ, Fish & Richardson P.C., Boston, MA, argued for appellant. Also represented by RYAN PATRICK 

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2 INTUITIVE SURGICAL, INC. v. ETHICON LLC

O'CONNOR, JOHN C. PHILLIPS, San Diego, CA.

 ANISH R. DESAI, Weil, Gotshal & Manges LLP, New 

York, NY, argued for appellee. Also represented by 

ELIZABETH WEISWASSER; PRIYATA PATEL, CHRISTOPHER 

PEPE, Washington, DC.

 SARAH E. CRAVEN, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, argued for 

intervenor. Also represented by THOMAS W. KRAUSE,

FARHEENA YASMEEN RASHEED, MOLLY R. SILFEN. 

 ______________________ 

Before O’MALLEY, CLEVENGER, and STOLL, Circuit Judges.

O’MALLEY, Circuit Judge. 

Intuitive Surgical, Inc. (“Intuitive”) appeals from two

final written decisions of the Patent Trial and Appeal

Board (“Board”) upholding the patentability of claims 24–

26 of U.S. Patent No. 8,479,969. 

At issue in this case is whether the Board erred in upholding the patentability of claim 24 of the ’969 patent over 

the combination of the Giordano and Wallace prior art references, and in upholding the patentability of claims 24–26

over the combination of the Timm and Anderson prior art 

references. We hold that the Board did not err and affirm. 

I. BACKGROUND

A.

In minimally invasive surgery (“MIS”), a surgeon uses

specialized surgical techniques and tools to access a patient 

through smaller incisions than would typically be used in traditional open surgery. MIS benefits patients by reducing

hospital stays and costs, providing shorter recovery times, 

and improving operating room efficiency. 

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The ’969 patent, entitled “Drive Interface for Operably 

Coupling a Manipulatable Surgical Tool to a Robot,” relates 

to a robotically controlled endoscopic surgical instrument

commonly used in MIS procedures. As disclosed in the ’969 

patent, a robotically controlled surgical instrument comprises a robotic system with a control unit (e.g., a controller) and a shaft that includes an electronically conductive 

elongated member. The surgical instrument comprises an 

end effector connected to a distal end of the shaft and receives command from the control unit for surgical functions. A surgeon may remotely control the surgical 

instrument with the controller to robotically perform an 

MIS. 

The end effector may consist of various surgical tools, 

such as a surgical stapler (also known as an endocutter) 

capable of cutting and stapling tissue. The ’969 patent describes the endocutter as having a pair of jaws that are configured to grasp and clamp onto tissue within the body of a 

patient. One jaw typically has a staple cartridge and the 

other jaw (referred to as an anvil) has the ability to clamp 

down on tissue to secure it. Once a patient’s tissue is secured between the jaws, the movement of a sled causes the 

staples to fire from the cartridge, deforming against the anvil and forming several rows of staples that secure the tissue. Notably, in claims 24–26, the distal end of the shaft

comprises an articulation joint to facilitate articulation of 

the end effector. Articulation means that part of the surgical tool can move relative to the tool shaft. A sample end 

effector with an articulation joint (14) is shown in Figure 2: 

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4 INTUITIVE SURGICAL, INC. v. ETHICON LLC

The articulation joint allows the shaft to articulate along 

two axes. Articulation cables couple the articulation joint 

to the tool mounting portion, such that the articulation 

joint may be operated by rotary motion from the robotic 

system. The ’969 patent also contains tactile feedback sensors in the end effector. 

Claim 24 is the primary claim at issue on appeal:1

A surgical tool for use with a robotic system that 

has a tool drive assembly that is operatively coupled to a control unit of the robotic system that is 

operable by inputs from an operator and is configured to provide at least one rotary output motion to 

at least one rotatable body portion supported on the 

tool drive assembly, said surgical tool comprising:

a surgical end effector comprising at least one component portion that is selectively movable between 

first and second positions relative to at least one 

1 As noted, claims 25 and 26 are also at issue in the 

IPR predicated on the Timm and Anderson references. Because those two claims depend from claim 24 and Intuitive 

makes no unique arguments relating to their validity, we 

focus solely on claim 24. 

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other component portion thereof in response to control motions applied to said selectively movable 

component portion; 

an elongated shaft assembly defining a longitudinal 

tool axis and comprising:

a distal spine portion operably coupled to 

said end effector; and 

a proximal spine portion pivotally coupled 

to said distal spine portion at an articulation joint to facilitate articulation of said 

surgical end effector about an articulation 

axis that is substantially transverse to said 

longitudinal tool axis; and 

at least one gear-driven portion that is in 

operable communication with said at least 

one selectively movable component portion 

of said surgical end effector and wherein 

said surgical tool further comprises: 

a tool mounting portion operably coupled to 

a distal end of said proximal spine portion, 

said tool mounting portion being configured to operably interface with the tool 

drive assembly when coupled thereto, said 

tool mounting portion comprising: 

a driven element rotatably supported on said tool mounting portion and configured for driving 

engagement with a corresponding 

one of the at least one rotatable 

body portions of the tool drive assembly to receive corresponding rotary output motions therefrom; and 

a transmission assembly in operable engagement with said driven 

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6 INTUITIVE SURGICAL, INC. v. ETHICON LLC

element and in meshing engagement with a corresponding one of 

said at least one gear-driven portions to apply actuation motions 

thereto to cause said corresponding 

one of said at least one gear driven 

portions to apply at least one control motion to said selectively movable component.

J.A. 338.

Four prior art references are relevant to this consolidated appeal: U.S. Patent Application No. 2008/0167672 

(“Giordano”), U.S. Patent No. 6,699,235 (“Wallace”), U.S. 

Patent No. 7,510,107 (“Timm”), and U.S. Patent No. 

6,783,524 (“Anderson”). Giordano claims a handheld surgical instrument for use in MIS, including the non-robotic 

elements but not the robotic claim limitations of the ’969 

patent. J.A. 1563–1769. Giordano discloses an articulation pivot, which allows the surgical tool to bend relative to 

the shaft, and an articulation control, which allows a surgeon to control rotational articulation about the pivot. Additionally, Giordano incorporates U.S. Patent No. 

6,978,921 (“Shelton”), which itself discloses a handheld 

surgical instrument that has a stapler end effector, but no

articulation joint. 

Wallace claims a robotically controlled surgical stapler 

and discloses the same robotic elements as the ’969 patent

and similar non-robotic elements. J.A. 1311–44. In Wallace, the distal end of the surgical stapler contains a wrist 

mechanism allowing for articulate movements during MIS. 

Timm describes a handheld surgical stapler. J.A. 

1423–1562. In Timm, the stapler possesses both active and 

passive articulation joints. The passive articulation joints 

may be locked or unlocked. In the locked state, the passive 

articulation joint does not move. In the unlocked state, the 

passive articulation joint moves when pressed against 

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INTUITIVE SURGICAL, INC. v. ETHICON LLC 7

some other object and thus moves the instrument tip. A 

surgeon may thus unlock the passive articulation joint and 

move the joint by pressing the tool against some other object and then lock the joint once it has reached the surgeon’s desired position.

Anderson describes a robotic surgical tool with an end 

effector that includes an ultrasound probe tip for cutting 

and cauterizing tissue. J.A. 1132–1237. Anderson also discloses robotic elements and non-robotic elements that are 

similar to those disclosed in the ’969 patent. The Anderson

invention provides the surgeon with tactile feedback, 

where sensors located on the end effector sense the forces 

applied to the surgical tool and electronically relay this information back to the surgeon’s workstation at the master 

controller. Anderson does not describe passive articulation.

B.

Intuitive filed three petitions with the Board, each contending claim 24 is invalid as either anticipated or obvious. 

Only the two petitions asserting claim 24 would have been 

obvious—IPR2018-01254 (“the Giordano/Wallace proceeding”) and IPR2018-01247 (“the Timm/Anderson proceeding”)—are relevant to these combined appeals. 

In the Giordano/Wallace proceeding, Intuitive argued 

that claims 1–11 and 24 would have been obvious over the 

Giordano and Wallace prior art references. Claims 1–11 

are not at issue in the appeal from that proceeding. Intuitive set forth two alternative grounds for its contention 

that Intuitive’s proposed combination satisfied claim 24’s 

“articulation joint” limitation. 

First, in what the Board termed Intuitive’s “primary 

combination,” Intuitive argued that claim 24 would have 

been obvious because a person of ordinary skill in the art 

would have been motivated to combine Shelton’s stapler 

end effector with Giordano’s articulation mechanism, and 

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8 INTUITIVE SURGICAL, INC. v. ETHICON LLC

then combine the resulting surgical instrument with Wallace’s robotic system. Intuitive acknowledged that Shelton 

did not include an articulation joint as required by claim 

24, but proposed modifying Shelton’s shaft assembly—containing the end effector stapler—with Giordano’s articulation mechanism—containing the articulation pivot point 

and articulation control. According to Intuitive, a person 

of ordinary skill in the art would have been motivated to 

apply a known technique to a known system to yield predictable results without significantly altering or hindering 

the functionality of the Shelton stapler. The Board disagreed, finding no motivation to pursue Intuitive’s primary 

combination because the combination would result in a device with a manually controlled articulation control located 

on the instrument’s shaft, contravening Wallace’s express 

purpose of a robotic instrument. The Board also noted that 

Intuitive never described how a person of ordinary skill in 

the art would have modified or replaced Giordano’s manual 

articulation control with another component in the tool 

mounting portion of Wallace. 

Second, in what the Board termed Intuitive’s “alternative combination,” Intuitive argued that a person of ordinary skill in the art would have modified Shelton’s stapler 

to include an articulation joint similar to that described in 

Wallace. Under this line of logic, a person of ordinary skill 

in the art would be motivated to improve Giordano’s disclosure of one axis movement using Wallace’s disclosure of an 

articulation mechanism using gear-driven articulation 

rods to enable multi-axis, 360 degree movement. Here, too, 

the Board disagreed. The Board found that Intuitive 

waived its “one axis” argument because it was made for the 

first time in the reply brief. The Board also noted that Intuitive’s “one axis” argument contradicted the original theory Intuitive proffered in its petition—that the only 

motivation for combining Shelton’s surgical stapler with 

Wallace’s articulation mechanism was to achieve the benefit of multi-axis articulation. The Board dismissed 

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INTUITIVE SURGICAL, INC. v. ETHICON LLC 9

Intuitive’s argument that Shelton and Wallace were compatible, as Intuitive offered no support for the proposition

that Shelton’s firing bar could articulate and bend around 

multiple axes. 

In the Timm/Anderson proceeding, Intuitive argued 

that claims 19–26 would have been obvious over the Timm 

and Anderson prior art references. Intuitive contended 

that a person of ordinary skill in the art would have combined the Timm prior art reference—which disclosed the 

claimed articulating surgical stapler—and the Anderson 

prior art reference—which disclosed the claimed robotic 

system—to obtain the claimed invention. According to Intuitive, a person of ordinary skill in the art would have 

been motivated to combine Timm and Anderson because 

Timm’s end effector and Anderson’s robotic system would 

provide a wide range of articulation movements to facilitate surgery. The Board disagreed once more, finding insufficient motivation to combine because Timm uses a 

passive articulation joint and Anderson’s robotic system 

lacked the level of tactile feedback needed to safely perform 

passive articulation. The Board also rejected Intuitive’s argument that a person of ordinary skill in the art would 

have combined tactile feedback with Anderson’s robotic 

system based on a lack of evidence. Even Intuitive’s expert 

admitted that he was unaware of the existence of any system providing tactile feedback for a passively articulated 

tool. 

Intuitive timely appeals to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). 

II. DISCUSSION

We review the Board’s ultimate obviousness determinations de novo and review its underlying factual findings 

for substantial evidence. PersonalWeb Techs., LLC v. Apple, Inc., 917 F.3d 1376, 1381 (Fed. Cir. 2019). 

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10 INTUITIVE SURGICAL, INC. v. ETHICON LLC

On appeal, Intuitive argues that the Board erred by upholding the patentability of claim 24 over the combination 

of Giordano and Wallace. Intuitive additionally argues 

that substantial evidence does not support the Board’s 

finding that a person of ordinary skill in the art would not 

have been motivated to combine Timm and Anderson. We 

address each issue in turn.

A.

Intuitive asserts that the Board erred in upholding 

claim 24’s patentability over the Giordano and Wallace 

prior art references. According to Intuitive, the Board erroneously required the “articulation control” to be specifically discussed in its petition because the “articulation 

control” is not a claim limitation. Intuitive argues that, 

contrary to the Board’s finding, Intuitive properly described how combining Giordano and Wallace meets the articulation joint requirement in claim 24. Specifically, 

Intuitive asserts that a person of ordinary skill in the art 

would have removed and replaced Giordano’s handle—

which hosts Giordano’s articulation control—with Wallace’s tool mounting portion, which implies that Giordano’s 

articulation control would no longer externally reside on 

the handle of the surgical instrument. 

But Intuitive’s arguments misinterpret the Board’s 

findings. The Board correctly found that Intuitive failed to 

explain how a person of ordinary skill in the art would have 

modified Giordano’s articulation control to be remotely controlled by Wallace’s robotic system. It found that the primary combination did not include any modification to 

relocate Giordano’s articulation control into Wallace’s tool 

mounting portion. Although Intuitive argues in its reply 

brief that Giordano’s manual articulation control would be 

coupled into the tool base of the Wallace robot, that argument was not set forth in Intuitive’s initial petition and 

was not raised until after Ethicon pointed out the deficiencies in Intuitive’s petition. More crucially, the Board did 

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INTUITIVE SURGICAL, INC. v. ETHICON LLC 11

not abuse its discretion in excluding Intuitive’s reply argument. Petitioners may not use reply briefs to cure deficiencies in their petitions. Wasica Fin. GmbH v. Cont’l Auto. 

Sys., Inc., 853 F.3d 1272, 1286–87 (Fed. Cir. 2017) (“We 

also are unpersuaded by Continental’s attempts to cure the 

petition’s deficiencies in its subsequent briefing to the 

Board and to us.”). Although Intuitive terms its argument

a “post-petition clarification,” the Board is well within its 

discretion to disregard this belated argument and rely only 

on Intuitive’s petition and its expert declaration—neither 

of which discussed relocating Giordano’s articulation control to Wallace’s tool mounting portion. Intuitive only addressed Giordano’s articulation control once in its petition, 

vaguely stating that a person of ordinary skill in the art 

would have been motivated to combine because “it would 

have been obvious, in view of Wallace, to adapt the resulting device . . . for use with a surgical robotic system.” Although Intuitive has since made extensive arguments on 

appeal with respect to locating the articulation control in 

Giordano’s handle on Wallace’s “tool mounting portion,” Intuitive never presented these arguments to the Board, either in its petition or even in its reply. 

Intuitive also argues that the Board erred in focusing 

on non-claim terms, such as “articulation control.” We are 

unconvinced. Intuitive shoulders the burden to present 

compelling evidence showing that a person of ordinary skill 

in the art would have been motivated to combine 

Giordano’s manual articulation control with Wallace’s robotic system. The Board focused on Giordano’s “articulation control” not as a claim limitation, but as evidence of 

Intuitive’s failure to adequately explain how a person of ordinary skill in the art would have combined the Giordano 

prior art reference with the Wallace prior art reference to 

satisfy the limitations of claim 24.

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12 INTUITIVE SURGICAL, INC. v. ETHICON LLC

B.

Next, substantial evidence supports the Board’s decision to uphold claim 24’s patentability over the Timm and 

Anderson prior art references. On appeal, Intuitive argues 

that the Board erred in finding that there was no motivation for a person of ordinary skill in the art to combine the 

Timm and Anderson references. Specifically, it asserts 

that the Board’s finding rested on the erroneous assumption that tactile feedback would be required in every form 

of passive articulation. Intuitive points to testimony by its 

expert witness Dr. Knodel that tactile feedback may not be 

necessary in all surgical procedures. We disagree. The 

Board relied upon the expert testimony of Ethicon’s expert 

witness Dr. Fegelman to make the factual finding that tactile feedback would be necessary in a surgical instrument 

with a passive articulation joint. The Board also properly 

found Dr. Knodel’s testimony to be undermined by his own 

admission that “passive articulation against a structure in 

the body raises concerns of damaging tissue due to excessive force.” J.A. 30. To the extent that Intuitive argues 

that tactile feedback is not required for every surgical procedure involving passive articulation, that argument is a 

factual dispute. Because the Board’s factual finding on this 

point was supported by substantial evidence, we decline to 

disturb it. 

III. CONCLUSION

We have considered Intuitive’s remaining arguments 

and find them unpersuasive. For the reasons discussed 

above, on this record, the Board did not err in upholding

the patentability of claim 24 of the ’969 patent over the 

combinations of Giordano/Wallace and Timm/Anderson. 

Accordingly, we affirm the decision of the Board.

AFFIRMED

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