Case: 22-1102 Document: 37 Page: 1 Filed: 12/15/2022

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

P TECH, LLC, Appellant

v.

INTUITIVE SURGICAL, INC., Appellee ______________________

2022-1102, 2022-1115 ______________________

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2020- 00649, IPR2020-00650. ______________________

Decided: December 15, 2022 ______________________

ROBERT M. EVANS, JR., Lewis Rice LLC, St. Louis, MO, argued for appellant. Also represented by MICHAEL HENRY DURBIN, MICHAEL J. HARTLEY.

STEVEN KATZ, Fish & Richardson P.C., Boston, MA, ar- gued for appellee. Also represented by RYAN PATRICK O'CONNOR, San Diego, CA. ______________________

Before LOURIE, DYK, and CUNNINGHAM, Circuit Judges. Case: 22-1102 Document: 37 Page: 2 Filed: 12/15/2022

2 P TECH, LLC v. INTUITIVE SURGICAL, INC.

LOURIE, Circuit Judge. P Tech, LLC (“P Tech”) appeals from two final written decisions of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) collectively holding that claims 1 and 4 of U.S. Patent 9,192,395 and claims 1−20 of U.S. Patent 9,149,281 are unpatentable because they would have been obvious over the cited prior art. P Tech, LLC v. Intuitive Surgical, Inc., No. IPR2020-00649 (P.T.A.B. Sept. 3, 2021) (“’395 Decision”); P Tech, LLC v. Intuitive Surgical, Inc., No. IPR2020-00650 (P.T.A.B. Sept. 8, 2021) (“’281 Decision”). For the following reasons, we affirm. BACKGROUND This appeal pertains to two inter partes reviews (“IPRs”). Intuitive Surgical, Inc. (“Intuitive”) filed IPR pe- titions challenging claims in the ’395 and ’281 patents di- rected to robotic surgical systems for fastening body tissue. Representative claim 1 from each patent is presented be- low: 1. A robotic fastening system comprising: a robotic mechanism including an adap- tive arm configured to position a staple rel- ative to a body portion of a patient; a robotic arm interface configured to oper- ate the adaptive arm of the robotic mecha- nism; a staple having first and second legs; a fastening member coupled to the adap- tive arm, the fastening member having first and second force transmitting por- tions and configured to secure the body portion with the staple by applying a force from the first and second force Case: 22-1102 Document: 37 Page: 3 Filed: 12/15/2022

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transmitting portions to move the first and second legs of the staple toward each other; at least one of a position sensor configured to indicate a distance moved by the staple and a force measurement device config- ured to indicate a resistance required to move the staple relative to the body por- tion; and a tissue retractor assembly coupled to the robotic mechanism, the tissue retractor as- sembly including a cannula configured to facilitate insertion of the fastening mem- ber through the cannula into a working space inside the patient. ’395 patent at col. 44 ll. 36–56. 1. A robotic system for engaging a fastener with a body tissue, the system comprising: a robotic mechanism including an adap- tive arm, the robotic mechanism config- ured to position a fastener relative to the body tissue, the robotic mechanism having first and second force transmitting por- tions configured to apply at least one of an axial force and a transverse force relative to the fastener; a computer configured to control the ro- botic mechanism; and an adaptive arm interface coupled to the adaptive arm and the computer, the adap- tive arm interface configured to operate the computer, Case: 22-1102 Document: 37 Page: 4 Filed: 12/15/2022

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wherein a magnitude of the at least one axial force and transverse force applied to the fastener is limited by the computer. ’281 patent at col. 44 ll. 44−59. The differences between these claims have not been argued as significant to this ap- peal. Therefore, they all stand or fall together. The ’281 patent also includes dependent claims that re- cite that the system further comprises a position sensor configured to indicate a distance moved by the fastener or staple. ’281 patent at col. 45 ll. 6−7, col. 46 ll. 6−7. For the purposes of this appeal, only the position sensor recited in the ’281 patent is relevant. Both of Intuitive’s petitions asserted obviousness of the challenged claims over U.S. Patent 6,331,181 (“Tierney”) in view of other prior art references, including U.S. Patent 5,518,163 (“Hooven”). Tierney teaches robotic surgical sys- tems comprising robotic arms to which surgical tools, in- cluding staplers, may be attached. Hooven teaches a hand- held endoscopic stapling and cutting instrument. At the Board, with the exception of the claimed position sensor, P Tech did not dispute that the asserted prior art separately teaches the limitations of the challenged claims. ’395 Decision at *26; ’281 Decision at *29−30. Instead, P Tech focused its arguments in both proceedings on an as- serted lack of motivation to combine Tierney with Hooven. Id. In particular, P Tech asserted that although the chal- lenged claims did not require an articulable joint near the head of the stapling device, the cited art described benefits of such articulation. As the proposed combination seem- ingly lacked this articulable joint, a skilled artisan would have lacked motivation to combine the references. P Tech similarly asserted that the combined device would lack Case: 22-1102 Document: 37 Page: 5 Filed: 12/15/2022

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other beneficial features, including providing force-feed- back to the surgeon operating the device. In both proceedings, after weighing the evidence, the Board found P Tech’s arguments unpersuasive. ’395 Deci- sion at *34−42; ’281 Decision at *30−37. The Board also rejected P Tech’s challenges to Hooven’s alleged disclosure of a position sensor. ’281 Decision at *37−38. The Board subsequently issued final written decisions holding that In- tuitive met its burden to show by a preponderance of the evidence that the challenged claims were unpatentable as obvious in both proceedings. ’395 Decision at *48−49; ’281 Decision at *41−42. P Tech appealed both final written decisions and we consolidated the appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). DISCUSSION We review the Board’s legal determinations de novo, In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the Board’s factual findings for substantial evidence, In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is supported by substantial evidence if a reasonable mind might accept the evidence as adequate to support the find- ing. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). I. P Tech first contends that the Board erred as a matter of law in its motivation to combine analyses by improperly excluding, or otherwise ignoring, evidence in the record. P Tech next contends that the Board erred as a matter of law by resting its motivation to combine analyses on the claims of Tierney and on figures of a non-asserted reference, U.S. Patent 6,231,565 (“Tovey”). Third, P Tech contends that substantial evidence does not support the Board’s findings of a motivation to combine. We address these challenges in turn. Case: 22-1102 Document: 37 Page: 6 Filed: 12/15/2022

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A The parties agree that the claims of the ’395 patent and the ’281 patent do not require an articulating joint near the head of the claimed robotic surgical stapler. Both parties also agree that Intuitive’s petitions did not assert, and therefore did not prove by a preponderance of the evidence, that such an articulating joint would have been obvious. But P Tech contends that the asserted prior art highlights the need for, or at least the benefit of, such a joint, and that because Intuitive’s proposed combination lacked such a joint, a skilled artisan would not have been motivated to combine the references as Intuitive asserts. P Tech con- tends that, by improperly ignoring or excluding the prior arts’ disclosures describing the benefit of this articulating joint, the Board erred in conducting its motivation to com- bine analyses. Intuitive responds that the Board did not exclude any evidence. Instead, the Board properly weighed the evi- dence of record and then subsequently found that the lack of an articulable joint near the head of the proposed robotic surgical stapler would not dissuade a skilled artisan from making the proposed combination. P Tech is correct that a motivation to combine analysis must account for “reasons not to combine,” which are facts relevant to the overall consideration of obviousness. See, e.g., Arctic Cat Inc. v. Bombardier Rec. Prods., 876 F.3d 1350, 1360 (Fed. Cir. 2017); see also id. at 1363 (“Evidence suggesting reasons to combine cannot be viewed in a vac- uum apart from evidence suggesting reasons not to com- bine.”). Thus, there may not be a motivation to combine where the combination would be inoperable, present unde- sirable qualities, see In re Urbanski, 809 F.3d 1237, 1243– 44 (Fed. Cir. 2016), or be “unlikely to be productive of the result sought by the applicant,” Arctic Cat, 876 F.3d at 1360 (citation omitted). The relevance of foregone, un- claimed benefits to the motivation-to-combine analysis is, Case: 22-1102 Document: 37 Page: 7 Filed: 12/15/2022

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however, uncertain. See Urbanski, 809 F.3d at 1243. In any event, the Board did not exclude or ignore the evidence to which P Tech now points on appeal as supporting the inclusion of an articulable joint near the head of the sta- pler. Nor did the Board exclude or ignore evidence regard- ing other benefits of prior art devices, such as force- feedback, that are allegedly lacking in the device proposed by Intuitive. Instead, the Board expressly considered this evidence, along with P Tech’s arguments, and found it in- sufficient to rebut Intuitive’s showing of a motivation to combine. ’395 Decision at *34−42; ’281 Decision at *30−37. In particular, the Board found that “even if Petitioner’s proposed combination did result in some loss of a desired ‘dexterity and other advantages built into’” Tierney, “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate a motivation to combine.” ’395 Decision at *41 (citing Medi- chem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)); ’281 Decision at *36 (same). The Board subse- quently found that Intuitive had sufficiently proven a mo- tivation to combine by “adequately establish[ing] that incorporating Hooven’s handheld tool into Tierney’s robotic system would have resulted in benefits including increased accuracy compared to manually operated instruments, and would have allowed the surgeon to use Tierney’s robotic system throughout surgery, rather than having to switch to Hooven’s handheld tool.” ’395 Decision at *41; ’281 De- cision at *36. P Tech further contends that the Board erred by not crediting its expert’s testimony on motivation to combine because the expert was “not a surgeon.” Intuitive responds that the Board did not ignore this testimony simply be- cause the expert was not a surgeon. Rather, the Board cor- rectly noted that the expert did not support his assertions that a surgeon would be unable to properly position a sta- pler in many applications without this articulation with corroborating evidence. The Board therefore, in its Case: 22-1102 Document: 37 Page: 8 Filed: 12/15/2022

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evaluation, decided to afford these unsupported assertions little weight. We agree with Intuitive that the Board did not abuse its discretion in affording expert testimony regarding a lack of motivation to combine little weight after finding that the expert “d[id] not cite any evidence to corroborate [his] opinion.” ’395 Decision at *39−40; ’281 Decision at *34−35; see In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corrobo- ration warrants discounting the opinions expressed in the declarations.”). Lastly, P Tech asserts that the Board abused its discre- tion by rejecting as untimely arguments that P Tech made in its sur-reply to further rebut motivation to combine, namely, that Intuitive’s proposed combination did not pro- vide for rotation of the stapler. Intuitive responds that the Board did not abuse its discretion in finding that P Tech’s sur-reply arguments were untimely. We agree with Intuitive. As the Board explained, “Pe- titioner presented the combination of Tierney and Hooven in the Petition, and thus Patent Owner could have, and should have, raised this argument in its Patent Owner Re- sponse.” ’395 Decision at *38 n.16 (citing 37 C.F.R. § 42.23(b) (“A sur-reply may only respond to arguments raised in the corresponding reply.”)); ’281 Decision at *33 n.4 (same). P Tech asserts that its sur-reply arguments were timely made in response to Intuitive’s reply argu- ments that the combined robotic system and stapler would “both continue to work as they always have.” But Intuitive made the same assertions in its petitions. Appx168, Appx257. Thus, it was not an abuse of discretion for the Board to deem these sections of P Tech’s sur-reply as un- timely. B Case: 22-1102 Document: 37 Page: 9 Filed: 12/15/2022

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P Tech next contends that it was improper for the Board to look to the claims of Tierney while conducting its motivation to combine analyses to determine whether a skilled artisan would have understood that a robotic surgi- cal stapler needed to articulate. P Tech also asserts that the Board similarly inappropriately relied on figures from an unasserted reference, Tovey, to support a conclusion that articulation of the stapler head was not required, and therefore lack of such articulation would not dissuade a skilled artisan from combining the asserted references. Intuitive responds that the Board simply considered Tierney and Tovey as part of the totality of evidence. We agree with Intuitive that the Board did not err in assessing the claims of Tierney or the figures of Tovey as relevant to what the skilled artisan would have found desirable or nec- essary in a robotic surgical stapler. C Finally, P Tech contends that the Board’s motivation to combine analyses were not supported by substantial evi- dence. As discussed above in sections I.A−B, after weigh- ing evidence based on expert testimony and numerous publications that the parties presented, the Board reached a factual finding that a motivation to combine Tierney with Hooven was supported by “benefits including increased ac- curacy compared to manually operated instruments,” as well as “allow[ing] the surgeon to use Tierney’s robotic sys- tem throughout surgery, rather than having to switch to Hooven’s handheld tool.” ’395 Decision at *41; ’281 Deci- sion at *36. This assessment of the benefits, along with the assessment of potential downsides of the combination, pro- vides sufficient evidence to support the Board’s finding of a motivation to combine. For the reasons set forth above, P Tech has not made a convincing case that the Board erred in finding a motiva- tion to combine. Case: 22-1102 Document: 37 Page: 10 Filed: 12/15/2022

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II. In an effort to argue that the position sensor limitation rescues dependent claims 8 and 16 of the ’281 patent, P Tech further asserts that the Board incorrectly construed this term. 1 Claim 8 depends from claim 1, and recites that the system further comprises “a position sensor configured to indicate a distance moved by the fastener.” ’281 patent at col. 45 ll. 6−8. Claim 16 recites the same (id. at col. 46 ll. 6−8), but depends from independent claim 10, which is reproduced below. 10. A robotic system for engaging a fastener with a body tissue, the system comprising: a robotic mechanism including an adap- tive arm, the robotic mechanism config- ured to position the fastener having first and second legs, the robotic mechanism having first and second force transmitting portions configured to apply at least one of an axial force and a transverse force to move the first and second legs toward each other; a computer configured to control the ro- botic mechanism and limit a magnitude of the at least one axial force and transverse force; and an adaptive arm interface coupled to the adaptive arm and the computer, the adap- tive arm interface configured to operate the computer,

1 Although the term “position sensor” also appears in the claims of the ’395 patent, P Tech did not appeal the Board’s assessment of “position sensor” in the ’395 patent proceeding. Case: 22-1102 Document: 37 Page: 11 Filed: 12/15/2022

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wherein the first and second legs are con- figured to engage the fastener with the body tissue. ’281 patent at col. 45 ll. 12−27. The differences between these claims have not been argued as significant to this ap- peal. P Tech contends that the Board ignored undisputed ex- pert testimony in construing “position sensor” and in find- ing that Hooven disclosed such a sensor by teaching an element of its device that “indicat[es] that [a] staple . . . has been moved the distance between its initial position inside the cartridge and its driven position,” along with sensors that “track the position of the staple.” ’281 Decision at *37– 38. In particular, P Tech contends that the Board incor- rectly identified Hooven’s contact 87 as such a sensor be- cause: (1) it is not active during the formation of any staples; (2) its output is not a position but rather a binary indication of whether a firing nut has moved; and (3) it does not sense the distance moved by any fastener or staple. Intuitive responds that, as P Tech frames its appeal as a question of claim construction, and neither the parties nor the Board construed “position sensor,” P Tech forfeited this argument. Intuitive also responds that even if this is- sue was not forfeited, the Board correctly rejected each of the three arguments that P Tech asserts in finding that Hooven discloses the claimed position sensor. We agree that the parties did not argue for a construc- tion of “position sensor,” and that the Board did not for- mally construe this term. P Tech’s assertion that the Board erred as a matter of law in construing this claim term is not the correct frame through which the Board’s analysis of position sensors should be reviewed on appeal. Properly presented, this is, instead, a question of whether the Board’s determination that Hooven renders obvious the claimed position sensor was supported by substantial evi- dence. We believe that it was. Indeed, the Board took Case: 22-1102 Document: 37 Page: 12 Filed: 12/15/2022

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explicit notice of P Tech’s sensor arguments and explained why it found them unpersuasive. ’281 Decision at *38. In particular, the Board held that it saw “nothing in the lan- guage of claims 8 and 16, nor have the parties pointed [] to anything in the Specification requiring the claimed posi- tion sensor to be ‘active during formation of any staples’” or “excluding determining the position of the staple by proxy.” Id. at *38. We agree. CONCLUSION For the foregoing reasons, we affirm the Board’s final written decisions holding unpatentable the challenged claims in the ’395 and ’281 patents. AFFIRMED