Olympus America, Inc.v.Perfect Surgical Techniques, Inc.

Patent Trial and Appeal Board

Jun 8, 2015

09808096 (P.T.A.B. Jun. 8, 2015)

Trials@uspto.gov Paper 51 Paper XX
Tel: 571-272-7822 Entered: June 8, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

OLYMPUS AMERICA INC. and
OLYMPUS MEDICAL SYSTEMS CORPORATION,
Petitioner,

v.

PERFECT SURGICAL TECHNIQUES, INC.,
Patent Owner.
_______________

Case IPR2014-00241
Patent 6,682,527 B2
_______________

Before FRANCISCO C. PRATS, BENJAMIN D. M. WOOD, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Olympus America Inc. and Olympus Medical Systems Corporation
(collectively, “Petitioner”) filed a corrected Petition requesting inter partes review
of claims 17–30 of Patent No. US 6,682,527 B2 (Ex. 1011, “the ’527 patent”)
pursuant to 35 U.S.C. §§ 311–319. Paper 5 (“Pet.”), 1–2. On June 16, 2014, we
issued a Decision on Institution (Paper 15, “Dec. on Inst.”), instituting inter partes
review of claims 17–23, 26, 29, and 30 of the ’527 patent. Dec. on Inst. 33.
Subsequent to institution, Patent Owner filed a Patent Owner Response (Paper 28,
“PO Resp.”), and Petitioner filed a Reply (Paper 35, “Pet. Reply”) thereto.
The parties requested an oral hearing (Papers 38 and 39) and appeared
before us on February 23, 2015. The record includes a transcript of the hearing.
Paper 50 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision,
issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, addresses issues and
evidence raised during the inter partes review. For the reasons that follow, we
determine that Petitioner has demonstrated by a preponderance of the evidence that
claims 17–23, 26, 29, and 30 of the ’527 patent are unpatentable.
A. The ’527 Patent
The ’527 patent discloses a radio frequency generator for use in
electrosurgery. Ex. 1101, col. 5, ll. 35–38. Bipolar systems use two or more
electrodes of opposite polarity that are in direct or indirect contact with the treated
tissue. See id. at col. 1, ll. 18–21; col. 2, ll. 20–31; col. 7, ll. 37–57. Petitioner’s
declarant presented a block diagram of a bipolar system, reproduced below:
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Pet. 7 (citing Ex. 1113 ¶ 28). As shown in the block diagram above, in such
bipolar systems, current flows from the radio frequency (“RF”) generator to the
electrodes and through the treated tissue. Id. Among other things, the
electrosurgical effect may be a function of the profile of the power output of the
generator (e.g., the level of power, the variation of power over time, the frequency
of the power, etc.). See Ex. 1101, col. 3, ll. 23–26. Regardless of the type of
surgical instruments carrying the electrodes, the principles and tissue effects of
electrosurgery are the same. See id. at col. 1, ll. 57–60; col. 5, ll. 35–38; see also
Pet. 7–8 (citing Ex. 1113 ¶ 32).
According to the Specification of the ’527 patent, under certain
circumstances, charring of the treated tissue (Ex. 1101, col. 1, ll. 30–36), and
premature increase in impedance between the electrode and the tissue, may prevent
complete, thorough, and uniform heating of the tissue under treatment (see id. at
col. 2, ll. 54–61). The Specification of the ’527 patent suggests that the cause of
this premature increase in impedance is due to the formation of a vapor layer
between the electrodes and the treated tissue. Id. at col. 2, l. 49–col. 3, l. 9.
The ’527 patent teaches that the problem of prematurely increased
impedance may be avoided by selecting and applying an initial level of power to
the electrodes and then increasing power from that initial level at a predetermined
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rate. Id. at col. 3, ll. 16–20. The initial level and predetermined rate are “selected
to avoid creating a vapor layer and to permit an impedance increase to occur as a
result of complete tissue desiccation.” Id. at col. 3, ll. 20–22; see also id. at col. 7,
ll. 1–20 (describing the flow chart of Fig. 3). As to the predetermined rate, the
’527 patent teaches that the rate “may be preselected by a user depending on the
electrode sizes, the target tissue type, the degree of tissue perfusion, and the initial
power level,” and that such rate may “be linear and increase at a rate in the range
from 1 W/sec to 100 W/sec, preferably from 1W/sec to 10/W sec.” Id. at col. 3,
ll. 23–28; see id. at col. 4, ll. 40–45.
Figure 3 of the ’527 patent is reproduced below with our annotations.

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The ’527 patent explains:
As seen in FIG. 3, voltage, current, and power levels are determined
and the power level is tested at 20 millisecond intervals. If the power
level read is more than 5 watts greater than a power set value, the
system automatically terminates power delivery and enters the fault
state, where it remains until the system is re-powered. At this same
interval, tissue impedance is measured and tested by comparing the
measured impedance to an impedance limit, the impedance limit
typically being in the range from 50 ohms to 1000 ohms. If the
measured impedance exceeds the impedance limit, the power delivery
is automatically terminated and the system returns to ready state.
Incremental and total energy levels are also calculated during this 20
millisecond interval. If the impedance limit is not exceeded, the
power set level is increased at a predetermined rate from the initial
level, wherein the initial level and predetermined rate are selected to
avoid creating a vapor layer and to permit an impedance increase to
occur as a result of complete tissue desiccation. Typically, the
predetermined rate is from 1 W/sec to 100 W/sec, and the electrode
members are energized at this increased power set value at 100
millisecond intervals.

Id. at col. 7, ll. 1–20 (emphasis added).
1

B. Illustrative Claim
Claim 17 is independent and is illustrative. The remaining challenged
claims 18–23, 26, 29, and 30 depend from claim 17. Claim 17 is reproduced below
with disputed limitations emphasized.

17. A radio frequency generator comprising:
a radio frequency power source having a controlled voltage
output and a bipolar connection for bipolar forceps having first and
second jaws with first and
second electrode members; and

1
Petitioner alleges that Figure 3 contains certain errors. Pet. 23 n.7. The alleged
errors are not relevant to our analysis in this Decision.
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means for automatically increasing power delivered to the
bipolar forceps;
wherein the increasing means increases the power at a
predetermined rate from an initial level, the initial level and
predetermined rate avoiding formation of a vapor layer while
permitting an impedance increase to occur as a result of complete
tissue dessication.
2

Ex. 1011, col. 10, ll. 4–15 (emphasis added).
C. References, Declarations, and Depositions
Petitioner and Patent Owner primarily rely upon the following references,
declarations, and depositions:
Exhibits Nos. References, Declarations, and Depositions
1104 Patent No. US 6,139,546 (“US’546”)
1105 Patent No. US 5,954,717 (“US’717”)
1108 Patent No. US 6,398,779 B1 (“US’779”)
1110 Patent No. US 6,936,047 B2 (“US’047”)
1111 International Publication WO 97/40882 A2 (“WO’882”)
1113 Declaration of Roger Odell
2002 Declaration of Dr. Robert Tucker
2005 Deposition Transcript of Dr. Robert Tucker
D. Reviewed Grounds of Unpatentability
We instituted inter partes review on the following grounds of
unpatentability (Dec. on Inst. 33):
Ground References Reviewed Claim(s)
§ 103(a) US’717 and US’546 17, 18, 21, 22, 29, and
30

2
We understand “dessication” to be a misspelling or alternative spelling of the
word “desiccation.”
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Ground References Reviewed Claim(s)
§ 103(a) US’717, US’546, and
US’779
19
§ 103(a) US’717, US’546, and
US’047
20 and 26
§ 103(a)
US’717, US’546, and
WO’882
23

II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are construed
according to their broadest reasonable interpretation in light of the specification of
the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed
Techs., LLC, 778 F.3d 1271, 1281–82 (Fed. Cir. 2015) (“Congress implicitly
adopted the broadest reasonable interpretation standard in enacting the AIA,” and
“the standard was properly adopted by PTO regulation.”); Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Moreover, claim
terms are given their ordinary and customary meaning, as would be understood by
one of ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A patentee may act
as his or her own lexicographer by providing a special definition for a claim term
in the specification with “reasonable clarity, deliberateness, and precision.” In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Generally, in the absence of such a
special definition or other considerations, “limitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993).
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In the Decision on Institution, we provided constructions for various terms
of the challenged claims. Dec. on Inst. 10–16. Patent Owner does not challenge
our constructions of these terms. See Tr. 95:12–97:5. Claim 17, however, recites
means for automatically increasing power delivered to the bipolar
forceps; wherein the increasing means increases the power at a
predetermined rate from an initial level, the initial level and
predetermined rate avoiding formation of a vapor layer while
permitting an impedance increase to occur as a result of complete
tissue dessication.
Ex. 1011, col. 10, ll. 9–14. Petitioner only challenges our construction of this
means-plus-function term. Pet. Reply 1–3.
In the Petition, Petitioner proposed a construction for this means-plus-
function limitation. Pet. 19–24. In particular, Petitioner argued that we should
apply a two-step analysis to this term: first, identify the particular function
performed by the means, and, second, review the specification to identify the
structure performing that function. Id. at 19; see Med. Instrumentation &
Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). We agreed.
Regarding the first step, we determined that, in the function of
“automatically increasing power delivered to the bipolar forceps,” the reference to
bipolar forceps is merely a statement of intended use of the claimed generator, and
this function is read as increasing power delivered to the bipolar connection, not to
the bipolar forceps. Dec. on Inst. 11; see Pet. 20. Further, we determined that the
means for automatically increasing power must (1) have an initial level; (2) must
increase power at a predetermined rate from that initial level; and (3) the initial
level and predetermined rate must be chosen to avoid formation of a vapor layer,
e.g., avoid exceeding the impedance limit (Ex. 1101, col. 7, ll. 13–18), “while
permitting an impedance increase to occur as a result of complete tissue
dessication.” Dec. on Inst. 11; see Pet. 21.
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Regarding the second step, the Specification of the ’527 patent discloses the
means for automatically increasing power is “a programmable digital controller, a
control program embodied in a tangible medium, or other means for automatically
increasing power delivered by the generator. In particular, the digital controller or
other increasing means can be programmed to implement any of the methods
described above independent of operator intervention.” Ex. 1101, col. 4, ll. 56–62;
see Pet. 22. Thus, Petitioner concludes that “the corresponding structure must
include the algorithm used to carry out the claimed function.” Id. at 22–23 (citing
Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed.
Cir. 2008)). Again, we agreed.
Referring to the discussion of Figure 3, as annotated above (see Ex. 1101,
col. 7, ll. 1–20), we determined that the algorithm is depicted in Figure 3 (see Pet.
23). Dec. on Inst. 12. In particular, we determined that the algorithm
carries out four functions: (1) it determines (by measuring or
calculating) the voltage, current, power and impedance levels
(Ex. 1101 at Col. 7:1–3; Col. 7:6–7), (2) it shuts off power when the
determined power level exceeds a predetermined level (Ex. 1101 at
Col. 7:3–5), (3) it shuts off power when the calculated impedance
level exceeds a predetermined impedance level (Ex. 1101 at Col. 7:9–
12) and (4) it increases power from an initial level at a predetermined
rate with the predetermined rate and initial level being selected to
avoid the formation of a vapor layer (Ex. 1101 at Col. 7:13–17).

Id. at 12.
Nevertheless, Petitioner argues that we erred in construing the means-plus-
function limitation for two reasons. Pet. Reply 1–3; see PO Resp. 11–12. First,
Petitioner argues that we improperly broadened the claimed function by ignoring
the requirement “to avoid formation of a vapor layer” of the “wherein” clause of
claim 1. Id. at 2. We disagree and note that we expressly stated that this
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requirement is both part of the description of the function of the limitation and a
feature of the algorithm included in the corresponding structure described in the
Specification. Dec. on Inst. 11–13. Second, Petitioner argues that “[our]
conclusion that the corresponding structure is an algorithm for increasing power is
also incorrect.” Pet. Reply 2 (citing Dec. on Inst. 13, 20). Petitioner argues that,
“[a]s an initial matter, an algorithm per se is not structure.” Id. As noted above,
however, we determined that “means for automatically increasing power to the
bipolar forceps” may be a programmable digital controller. Ex. 1101, col. 4,
ll. 56–62; see Pet. 22–23. The corresponding structure that performs the claimed
function may include any computer or microprocessor, computer program, and/or
algorithm. WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir.
1999) (“In a means-plus-function claim in which the disclosed structure is a
computer, or microprocessor, programmed to carry out an algorithm, the disclosed
structure is not the general purpose computer, but rather the special purpose
computer programmed to perform the disclosed algorithm.” (citation omitted)). In
Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, the Federal Circuit confirmed
that, on this point, WMS Gaming remains correctly decided and that
the disclosure of a general purpose computer or a microprocessor as
corresponding structure for a software function does nothing to limit
the scope of the claim and “avoid pure functional claiming.”
[Aristocrat, 521 F.3d at 1336.] As such, when a patentee invokes
means-plus-function claiming to recite a software function, it accedes
to the reciprocal obligation of disclosing a sufficient algorithm as
corresponding structure.

Eon Corp. IP Holdings, LLC v. AT&T Mobility LLC, No. 2014-1392, 2014-1393,
2015 WL 2083860 at *5 (Fed. Cir. May 6, 2015). Here, the Specification of the
’527 patent has done so. Thus, we do not determine that the algorithm alone is the
structure; instead, we conclude that the digital controller programmed to perform
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the disclosed algorithm is the corresponding structure. Dec. on Inst. 12 (“Thus,
Petitioner concludes that ‘the corresponding structure must include the algorithm
used to carry out the claimed function.’ We agree.” (emphasis added; citations
omitted)).
Only terms which are in controversy need to be construed, and then only to
the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Because neither party challenges
our constructions for the other claim terms construed in the Decision on Institution,
and because we discern no reason based on the complete record now before us to
change these constructions, to the extent necessary, we adopt those constructions
for the Final Written Decision. No additional claim terms need to be construed.
B. Grounds of Unpatentability
1. Overview
We instituted inter partes review of claims 17–23, 26, 29, and 30 of the ’527
patent on Petitioner’s asserted grounds that each of these claims is rendered
obvious over US’717 and US’546, alone or in combination with US’779, US’047,
or WO’882. Pet. 4–6, 31–60. A patent claim is obvious under 35 U.S.C. § 103(a)
if the differences between the claimed subject matter 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 to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level of
skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary
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considerations.
3
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). On this
record, we are persuaded that Petitioner has demonstrated by a preponderance of
the evidence that each of the claims 17–23, 26, 29, and 30 of the ’527 patent is
rendered obvious over US’717 and US’546, alone or in combination with US’779,
US’047, or WO’882.
2. Person of Ordinary Skill in the Art
Neither Petitioner nor its declarant proposes a definition for a person of
ordinary skill in the art. PO Resp. 13; see Pet. Reply 3–4. Further, Petitioner
argues that no express statement of or expert testimony regarding the level of
ordinary skill is necessary unless the level of ordinary skill in the art is material to
the determination of obviousness. Pet. Reply 3. Nevertheless, Petitioner’s
declarant provides testimony as to what a person of ordinary skill would
understand the terms of the reviewed claims to mean. See, e.g., Ex. 1113 ¶ 48; see
also PO Resp. 13 (“Mr. Odell states, at different times, that ‘one of ordinary of
skill’ would have considered certain combinations of references.”).
Patent Owner contends that a person of ordinary skill in the art possesses
a Bachelor’s Degree in either Physics, Electrical Engineering, or
Mechanical Engineering and two to three years’ experience working
in the field of electrosurgery. A person of ordinary skill in the art
would be familiar with electrode designs and heating biological tissue
through the application of various forms of electromagnetic energy,
including RF energy.

PO Resp. 12–13 (citing Ex. 2002 ¶¶ 13–17). For purposes of the Decision on
Institution, we determined that the prior art adequately reflects a level of ordinary

3
Patent Owner does not contend in the Patent Owner Response that secondary
considerations are present, which would render the reviewed claims patentable
over US’717 and US’546, alone or in combination with US’779, US’047, or
WO’882.
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skill in the art. Dec. on Inst. 21 (citing Litton Indust. Prods., Inc. v. Solid State Sys.
Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985)). Although Patent Owner contends
that Petitioner’s arguments are deficient because Petitioner fails to specify the level
of ordinary skill in the art (PO Resp. 12–14), Patent Owner’s declarant,
Dr. Tucker, suggests that the level of ordinary skill in the art is not relevant to the
determination whether the whether the teachings of US’717 and US’546 would
have been combined.
4
E.g., Ex. 2005, 112:20–22 (“Q. So you would have the
same opinion regardless of what the level of skill in the art was? A. Correct.”);
see Pet. Reply 4 n.3.
Petitioner’s declarant, Mr. Odell, meets or exceeds the qualifications set
forth in Patent Owner’s definition of a person or ordinary skill in the art. See
Ex. 1113 ¶¶ 5, 7; Ex. 2005, 205:22–206:9; Pet. Reply 14–15; but see Tr. 86:11–25
(Patent Owner’s counsel argues that Mr. Odell is not a person of more than
ordinary skill in the art.). Further, Mr. Odell, as a person of equal or greater skill
in the art, may testify as to what a person of ordinary skill in the art would know or
understand. See Ex. 2005, 107:21–108:10. Therefore, to the extent that it is
necessary, for purposes of this Decision, we adopt Patent Owner’s definition of a
person of ordinary skill in the art.
3. Obviousness over US’717 and US’546, Alone or in Combination with
US’779, US’047, or WO’882
a. Claim 17
Petitioner argues that claim 17 is rendered obvious over US’717 and
US’546. Pet. 39–42. According to Petitioner, US’717 “recognizes substantially
the same problem that is recognized in the ’527 patent — the possible formation of

4
Dr. Tucker does not address the level of ordinary skill in the art with respect to
the combination of teachings of US’717 and US’546, with those of the other
applied references. See Ex. 2002 ¶¶ 26–35.
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a vapor layer between the electrodes and tissue that would cause a premature spike
in impedance and would prevent sufficient current from reaching the tissue to
obtain the desired therapeutic effect.” Id. at 39 (citing Ex. 1105, col. 3, ll. 9–30;
col.7, ll. 42–51). Petitioner contends that US’717 discloses a radio frequency
generator used in an ablation procedure. Id.; Pet. Reply 12. Petitioner further
contends that the generator includes a bipolar output connection which is capable
of being connected to bipolar forceps. Pet. 39 (citing Ex. 1105, col. 6, ll. 31–35).
According to Petitioner, “US’717 discloses a three-phase process for avoiding the
premature creation of a vapor layer.” Id. (citing Ex. 1105, col. 3, ll. 31–51).
Petitioner argues that, in phases 2 and 3, the operation of the generator corresponds
to the recited means for automatically increasing power of claim 17. Id. (citing
Ex. 1105, col.7, ll. 10–28; col. 7, l. 52–col. 8, l. 2). Power is increased at a
predetermined rate (id. at 40 (citing Ex. 1105, col. 5, ll. 9–30; col. 8, ll. 13–18)),
and this information is used to determine a maximum power level for phase 3 (id.
(citing Ex. 1105, col.8, ll. 29–36)). However, Petitioner acknowledges that
“US’717 does not expressly describe the particular algorithm used to increase
power from an initial level to the new set point level.” Id.
Referring to Figure 11 of US’546, Petitioner argues that US’546 teaches a
microprocessor-controlled, radio frequency generator which increases power over
time at a predetermined rate in accordance with a Power Control Parameter
Schedule. Id. at 34. Moreover, referring to Figures 12 and 15A of US’546,
Petitioner argues that US’546 teaches algorithms used to increase the power. Id. at
35–37 (citing Ex. 1104, col. 15, ll. 1–26); see Pet. Reply 11, 13–14.
Petitioner presents arguments supporting a conclusion of obviousness of
claim 17 over US’717 and US’546 (Pet. 39–42), and Petitioner’s declarant,
Mr. Odell, provides a claim chart comparing the limitations of claim 17 to the
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teachings of US’717 and US’546 (Ex. 1113, 35–43). According to Mr. Odell’s
claim chart, US’717 teaches all of the limitations of claim 17, except for the
algorithm that is included in the corresponding structure of the means-plus-
function limitation. See supra Sec. II.A.
Petitioner further argues that it would have been obvious to combine the
teachings of US’546 to use a digital controller programmed to implement the
disclosed power output function of the radio frequency generator described in
US’717. Pet. 41; Ex 1113, 41. First, Petitioner argues that one of ordinary skill
would have considered combining the teachings of US’717 and US’546 because
both US’717 and US’546 “deal with the same problem (how to increase power at a
predetermined rate) in the same field of technology (electrosurgery).” Pet. 38, 41.
Second, Petitioner argues that US’546 shows an algorithm for increasing power at
a predetermined rate as disclosed in US’717, and one skilled in the art would have
been motivated to use such an algorithm to achieve the disclosed power increase.
Id.
Patent Owner contends that Petitioner fails to justify combining the
teachings of US’717 and US’546 to achieve the radio frequency generators recited
in independent claim 17. PO Resp. 14–21. In particular, Patent Owner contends
that US’717 teaches away from the use of an algorithm that functions to provide
power in a way that avoids formation of a vapor layer. Id. at 14–19. Further,
Patent Owner contends that Petitioner provides no reason to combine the teachings
of US’717 and US’546. Id. at 19–21. Finally, Patent Owner contends that the
proposed combination of US’717 and US’546 does not teach all of the limitations
of claim 17. Id. at 21–22. For the reasons that follow, we are not persuaded by
Patent Owner’s contentions.
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First, Patent Owner contends that US’717 teaches away from the use of an
algorithm that functions to provide power in a way that avoids formation of a
vapor layer. Id. at 14–19. In particular, Patent Owner contends that US’717
teaches that power is raised until a vapor layer is formed then reduced. Id. at 15–
16. Thus, Patent Owner contends that US’717 teaches away from using an
algorithm that avoids vapor layer formation. Id. at 14–19.
A reference may teach away from its modification (1) when a person of
ordinary skill would be discouraged from deviating from the path set out in the
reference; (2) when a person of ordinary skill would be led in a direction divergent
from the path that was taken by the patentee; or (3) when the modification would
render the resulting apparatus or method inoperable or unsuitable for the intended
purpose of the modified reference. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). Here, Patent Owner contends that Petitioner’s proposed modification of
US’717 would render its apparatus inoperable or unsuitable for its intended
purpose. PO Resp. 18–19; see Plas-Pak Indus., Inc. v. Sulzer Mixpac AG, 600
Fed. Appx. 755, 758 (Fed. Cir. 2015) (“[C]ombinations that change the ‘basic
principles under which the [prior art] was designed to operate,’ In re Ratti, . . . 270
F.2d 810, 813 ([CCPA] 1959), or that render the prior art ‘inoperable for its
intended purpose,’ In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984), may fail to
support a conclusion of obviousness.”).
In particular, Patent Owner contends that, based on Dr. Tucker’s testimony,
modifying US’717, such that power is delivered to its apparatus to avoid formation
of the vapor layer, would alter a basic principle of operation of US’717. PO
Resp. 18. Specifically, Patent Owner contends that the US’717 apparatus is
intended to operate without regard to the formation of a vapor layer, and is
“predicated on the principle that impedance levels consistent with the existence of
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a vapor layer are to be used as upper bounds on the power delivered to the
electrosurgical device.” Id. Nevertheless, Patent Owner acknowledges that
US’717 teaches that
impedance increases during the heating of tissue in a desiccation
procedure are associated with the formation of a vapor layer at or near
the electrode-tissue interface. The described vapor layer spreads from
the nucleation site to cover the electrodes within a short period of
time, causing impedance increases and attendant problems with the
delivery of energy to the target tissue.

Id. at 15 (citing Ex. 1105, col. 3, ll. 9–30); see Ex. 2002 ¶¶ 18–23, 28, 29. Further,
as Dr. Tucker testified, US’717 teaches determining a maximum power level at
which a vapor layer forms and then operating its apparatus at a fraction of the
maximum power level, e.g., preferably 70–80 percent of the maximum power
level, to avoid formation of the vapor layer. Ex. 2005, 148:18–24, 149:20–150:11,
151:25–152:13; see Pet. Reply 7–8; Tr. 67:21–68:18. Thus, we are not persuaded
that the proposed modification of US’717 in view of the teachings of US’546 to
employ an algorithm to avoid formation of the vapor layer, once the power level at
which a vapor layer forms is determined, would render the modified apparatus
inoperable or unsuitable for the intended purpose of US’717.
Second, Patent Owner contends that neither Petitioner nor Mr. Odell
provides a reason to combine the teachings of US’717 and US’546 to achieve the
radio frequency generator recited in claim 17. PO Resp. 19–21. In particular,
Patent Owner contends that, even if Mr. Odell is correct that US’717 and US’546
address the “same problem” and are in the “same field of technology,” these
similarities do not provide an adequate basis for a finding that one of ordinary skill
in the art would have a reason to combine these references to achieve the recited
generator. Id. at 20–21. Moreover, because of the allegedly different approaches
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to the formation of a vapor layer between US’717 and the ’527 patent, Patent
Owner contends that Petitioner fails to show a sufficient reason to combine the
teachings of US’717 and US’546. Id. at 21. We disagree.
Petitioner argues that US’717 provides a sufficient reason to combine its
teachings with those of US’546. Pet. Reply 10–11. In particular, Petitioner argues
that US’717 teaches increasing power from an initial power level to a power level
that is a fraction of a previously determined, maximum power level. Pet. 39 (citing
Ex. 1105, col. 3, ll. 39–44); Pet. Reply 12; see Ex. 1105, col. 3, ll. 44–51;
Ex. 2005, 162:23–164:17, 44:11–46:6, 59:2–13, 96:13–98:3. Petitioner argues that
US’717 also teaches that the power delivery can be under the control of a
controller to increase power delivered to bipolar forceps automatically from an
initial level at a predetermined rate. Pet. 39–40; Pet. Reply 12–14; see Pet. Reply 5
n.4 (citing Ex. 1105, col. 5, ll. 5–31; col. 10, ll. 45–59). Petitioner acknowledges
that US’717 does not teach a specific program for increasing power (Pet. 40–41;
Pet. Reply 11–12), but asserts that US’546 teaches such a program for increasing
power at a predetermined rate from an initial level (see Pet. 34–37, 41 n.12; Ex.
1104, col. 14, l. 43–col. 15, l. 64; col. 18, ll. 3–8, 18–38; Figs. 12 and 15A). “[I]f a
technique has been used to improve one device, and a person of ordinary skill in
the art would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or her
skill.” KSR, 550 U.S. at 417 (citation omitted); see Pet. 38, 41 n.12. In view of the
foregoing analysis, a preponderance of the evidence supports Petitioner’s
arguments. See also Ex. 1113, 41–43 (discussing the teachings of US’717 and
US’546); Ex. 2005, 103:1–106:21 (discussing the teachings of US’546). Thus, we
are persuaded that the teachings of US’717 and US’546 provide sufficient reason
for their combination, as argued by Petitioner.
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Third, Patent Owner contends that the proposed combination of US’717 and
US’546 does not teach all of the limitations of claim 17. PO Resp. 21–22. As with
Patent Owner’s first contention, Patent Owner contends that the proposed
modification of the teachings of US’717 in view of those of US’546 would render
the resulting generator inoperable or unsuitable for US’717’s intended purpose. Id.
Consequently, Patent Owner contends that the proposed combination cannot teach
all of the limitations of independent claim 17. Id. For the reasons set forth above,
we are not persuaded by Patent Owner’s contention. See Pet. Reply 12–14.
Despite Patent Owner’s arguments to the contrary (PO Resp. 16–17), we
agree with Petitioner that independent claim 17 does not prohibit the determination
of the power level at which a vapor layer forms before the radio frequency
generator’s means for automatically increasing power increases power at a
predetermined rate from an initial level to a level less than that at which a vapor
layer forms, thereby “avoiding formation of a vapor layer while permitting an
impedance increase to occur as a result of complete tissue dessication” (Pet. Reply
8–10). See Tr. 61:23–62:2, 65:4–12, 65:17–66:13. We are persuaded by Petitioner
that a person of ordinary skill in the art would have had reason to use the controller
of US’717 to implement the power increase by an algorithm, such as that taught by
US’546. Consequently, we are persuaded that Petitioner demonstrates by a
preponderance of the evidence that claim 17 would have been rendered obvious
over US’717 and US’546.
b. Claims 29 and 30
Claims 29 and 30 depend directly from claim 17. Claim 29 recites “[a] radio
frequency generator as in claim 17, wherein the increasing means comprises a
programmable digital controller,” and claim 30 recites “[a] radio frequency
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generator as in claim 17, wherein the increasing means comprises a control
program embodied in a tangible medium.” US’717 discloses
[i]n still another aspect of the present invention, computer programs
embodied in a tangible medium, such as a floppy disk, compact disk,
tape, flash memory, hard disk memory, or the like, which set forth any
of the methods described above, in computer-readable code. Such
computer programs are useful with digital controllers which may be
built into a radio frequency power supply or other electrosurgical
power supply according to the present invention.

Ex. 1105, col. 4, ll. 59–66 (emphases added).
Patent Owner relies only on its arguments and evidence, discussed above,
contesting the combination of the teachings of US’717 and US’546 with respect to
independent claim 17 to overcome Petitioner’s arguments and evidence with
respect to these claims.
5
PO Resp. 10; Pet. Reply 1. We are persuaded that
US’717 teaches or suggests the additional limitations of claims 29 and 30 and that
a person of ordinary skill in the art would have had reason to combine the
teachings of US’717 and US’546 to achieve the generator of the ’527 patent, as
recited in claims 29 and 30. Pet. 59–60; Ex. 1113 ¶ 49; see KSR, 550 U.S. at 417.
Therefore, in view of the foregoing discussion of the combination of the teachings
of US’717 and US’546 with respect to claim 17, we are persuaded that Petitioner
has demonstrated by a preponderance of the evidence that US’717 and US’546
would have rendered obvious claims 29 and 30 of the ’527 patent.

5
In the Scheduling Order (Paper 16, 2–3), we cautioned Patent Owner that any
arguments for patentability not raised in the Patent Owner Response will be
deemed waived.
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c. Claims 18, 21, and 22
Petitioner also argues that dependent claims 18, 21, and 22 are unpatentable
under 35 U.S.C. § 103(a) as rendered obvious over US’717 and US’546. Claim 18
recites
[a] radio frequency generator as in claim 17, wherein the increasing
means initiates a cycle where it measures an impedance of tissue,
compares the measured impedance to an impedance limit, and
increases the power level based on the predetermined rate if the
measured impedance does not exceed the impedance limit.

Petitioner argues that “US’546 discloses using impedance monitoring to determine
whether to continue or halt the increase of power to the bipolar connection.”
Pet. 48–49 (citing Ex. 1104, col. 15, ll. 36–54; Fig. 12 (showing impedance
monitoring at steps 1214, 1218, 1222, 1226, 1230, and 1234)). Claim 21 recites
“[a] radio frequency generator as in claim 18, wherein the increasing means repeats
the cycle.” Petitioner argues that “US’546 repeats the cycle of the corresponding
algorithm for increasing power using impedance monitoring.” Pet. 52 (citing
Ex. 1104, col. 14, ll. 43–col. 15, l. 35; col. 17, ll. 3–44). Claim 22 recites “[a]
radio frequency generator as in claim 18, wherein the increasing means is activated
only once for continual cycling.” Petitioner argues that “US’546 is activated only
once for continual recycling.” Pet. 53 (citing Ex. 1104, col. 14, ll. 43–col. 15,
l. 35; col. 17, ll. 3–44).
Patent Owner relies only on its arguments and evidence, discussed above,
contesting the combination of the teachings of US’717 and US’546 with respect to
independent claim 17 to overcome Petitioner’s arguments and evidence with
respect to these claims. PO Resp. 10–11; Pet. Reply 1. We are persuaded that
US’546 teaches or suggests the additional limitations of claims 18, 21, and 22 and
that a person of ordinary skill in the art would have had reason to combine the
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teachings of US’717 and US’546 to achieve the generator of the ’527 patent, as
recited in claims 18, 21, and 22. Pet. 47–53; see KSR, 550 U.S. at 417. Therefore,
in view of the foregoing discussion of the combination of the teachings of US’717
and US’546 with respect to claim 17, we are persuaded that Petitioner has
demonstrated by a preponderance of the evidence that US’717 and US’546 would
have rendered obvious claims 18, 21, and 22 of the ’527 patent.
d. Claims 19, 20, 23, and 26
Claim 19 recites “[a] radio frequency generator as in claim 18, wherein the
impedance limit is selected to indicate the impedance increase due to complete
tissue desiccation.” Petitioner argues that the additional limitations of claim 19 are
taught by US’779. In particular, Petitioner argues that US’779 teaches that one
should select an impedance limit that corresponds to “complete tissue seal.”
Pet. 51 (citing Ex. 1108, col.13, ll. 19–21). Further, Petitioner argues that US’779
shows a technique used to improve another device and that it would be obvious to
use it to complement the primary references, US’717 and US ’546. See Pet. 50
(citing KSR, 550 U.S. at 417).
Claim 20 recites “[a] radio frequency generator as claim 18 wherein the
impedance limit is in the range from 50 ohms to 1000 ohms.” Petitioner argues
that claim 20 is rendered obvious over US’717, US’546, and US’047. Pet. 51–52.
In particular, Petitioner argues that US ’047 shows the identical range of
impedance limits (“from about 50 to about 1000 ohms”) in the context of a bipolar
surgical generator. See Ex. 1110, col. 4, ll. 50–53. Further, Petitioner argues that
“if a technique has been used to improve one device, and a person of ordinary skill
in the art would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or her
skill.” Pet. 50 (quoting KSR, 550 U.S. at 417).
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Claim 23 recites “[a] radio frequency generator as in claim 17, further
comprising a user interface for inputting the rate of power increase, the initial
power level, and an impedance limit.” Petitioner argues that each of the additional
limitations of claim 23 is taught by WO’882. Pet. 53–54. In particular, Petitioner
argues that WO’882 teaches inputting values from which the rate of power
increase, the initial power level, and an impedance limit are determined. Id. (citing
Ex. 1111, 20:11–19; 22: 12–19; 23:26–33). Petitioner argues that a person skilled
in the art would have reason to combine the teachings of US’717 and US’546 with
those of WO’882, because, as Petitioner’s declarant testifies (Ex. 1113 ¶¶ 44, 49),
the use of user interfaces in radio frequency generators was standard in the industry
as of the filing date of the ’527 patent and the use of the interface shown in
WO’882 “results in a combination of familiar elements according to known
methods [which] . . . does no more than yield predictable results.” Pet. 54 (quoting
KSR, 550 U.S. at 416).
Claim 26 recites “[a] radio frequency generator as in claim 17, wherein the
predetermined rate of power increase is in the range from 1 W/sec to 100 W /sec.”
Petitioner argues here that US’047 teaches raising the power at a predetermined
rate of about 2 W/sec to 3 W/sec. Pet. 56–57 (citing Ex. 1110, col. 3, ll. 46–56;
col. 4, ll. 15–18 (teaching an increase from 0 W to 25–35 W over a period of 8 to
15 seconds)). Petitioner, thus, argues that the range for the rate taught by US’047
falls within the range recited in claim 26. In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness.”). Further, Petitioner argues that combining the
teachings of US’047 with the teachings of US’717 and US’546 would have been
obvious to a person of ordinary skill in the art “since it is merely using a known
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technique used to improve one device, ‘and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.’” Pet.
57 (quoting KSR, 550 U.S. at 417).
With respect to each of claims 19, 20, 23, and 26, Patent Owner relies only
on its arguments and evidence, discussed above, contesting the combination of the
teachings of US’717 and US’546 with respect to independent claim 17 to
overcome Petitioner’s arguments and evidence with respect to these claims. PO
Resp. 10–11; Pet. Reply 1. We have reviewed Petitioner’s evidence and are
persuaded that the applied additional references teach or suggest all of the
additional limitations of claims 19, 20, 23, and 26. Pet. 50–54, 56–57; see Dec. on
Inst. 23–25, 26–28. We also are persuaded that a person of ordinary skill in the art
at the time of the invention would have had a reason to combine the teachings of
each of US’779, US’047, and WO’882 with the combination of the teachings of
US’717 and US’546. Therefore, in view of the foregoing discussion of the
combination of the teachings of US’717 and US’546 with respect to claim 17, we
are persuaded that Petitioner has demonstrated by a preponderance of the evidence
that US’717 and US’546, in combination with US’779, US’047, or WO’882,
would have rendered obvious claims 19, 20, 23, and 26 of the ’527 patent.
For the reasons set forth above, we are persuaded that Petitioner has
demonstrated by a preponderance of the evidence that claims 17–23, 26, 29, and 30
of the ’527 patent are rendered obvious over US’717 and US’546, alone or in
combination with US’779, US’047, or WO’882.
C. Patent Owner’s Motion to Exclude Evidence
Patent Owner filed a Motion to Exclude Evidence (Paper 40 (“PO Mot.”));
Petitioner filed an Opposition to Patent Owner’s Motion to Exclude Evidence
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(Paper 43 (“Pet. Opp.”)); and Patent Owner filed a Reply to Petitioner’s
Opposition to the Motion to Exclude Evidence (Paper 44 (“PO Reply to Opp.”)).
As an initial matter, Petitioner argues that Patent Owner’s Motion to Exclude
Evidence, filed on January 20, 2015, was untimely filed. Pet. Opp. 1. For the
reasons set forth below, we agree and deny Patent Owner’s Motion to Exclude
Evidence as untimely filed.
In our Scheduling Order, we set DUE DATE 4, the deadline for either party
to file any motion to exclude evidence, as January 20, 2015. Paper 16, 5. This
date was selected by us for DUE DATE 4 because January 19, 2015, was the date
of the 2015 Martin Luther King, Jr. Day Federal Holiday. The Scheduling Order
further stated that
This order sets due dates for the parties to take action after institution
of the proceeding. The parties may stipulate to different dates for
DUE DATES 1 through 5 (earlier or later, but no later than DUE
DATE 6). A notice of the stipulation, specifically identifying the
changed due dates, must be promptly filed. The parties may not
stipulate to an extension of DUE DATES 6 and 7.

Id. at 1 (emphasis added). On August 21, 2014, the parties filed a Notice of
Stipulation to Adjust Schedule Due Dates 1–4, which among other dates changed
DUE DATE 4 from January 20, 2015, to January 19, 2015. Paper 27, 3. Counsel
for each party signed the Notice of Stipulation. Id. at 4.
Patent Owner contends that, despite the parties’ stipulation changing DUE
DATE 4 to January 19, 2015, the DUE DATE for filing Patent Owner’s Motion to
Exclude Evidence remained January 20, 2015, because January 19, 2015, was a
Federal holiday. PO Reply to Opp. 1. Under 35 U.S.C. § 21(b),
[w]hen the day, or the last day, for taking any action or paying any fee
in the United States Patent and Trademark Office falls on Saturday,
Sunday, or a Federal holiday within the District of Columbia, the
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action may be taken, or the fee paid, on the next succeeding secular or
business day.

We understand that the statute applies to deadlines set by statute, rule or order; not
to different dates stipulated to by the parties. Similarly, under 37 C.F.R. § 1.7(a),
when a deadline falls on a Federal holiday, action may be taken “on the next
succeeding business day.” Section 1.7, however, applies to deadlines “fixed by
statute or by or under this part” of this chapter.
6
See 37 C.F.R. § 42.1(a) (“[Section
1.7] of this chapter also appl[ies] to proceedings before the Board, as do other
sections of part 1 of this chapter that are incorporated by reference into this part.”).
Although the Scheduling Order is an order made pursuant to 37 C.F.R. § 42.5(c),
the Scheduling Order permits the parties to change DUE DATES 1–5 set therein to
“different” dates by stipulation. Paper 16, 1 (emphasis added). Moreover, given
that filings with the Board may be made electronically (see 37 C.F.R. § 42.6(b)(1))
and the Patent Review Processing System accepts filings twenty-four hours a day
and seven days a week, we only require that stipulated DUE DATES 1–5 may be
“earlier or later [than the date set in the Scheduling Order], but no later than DUE
DATE 6.” Paper 16, 1. Within these limits, the Board observes stipulated dates,
and stipulated dates are binding on the parties by their agreement.
Here, the parties stipulated to January 19, 2015, as DUE DATE 4. As noted
above, Patent Owner’s Motion to Exclude Evidence was not filed on or before
stipulated DUE DATE 4, and Patent Owner has provided no reason for its delay in
filing its Motion to Exclude Evidence, which warrants our acceptance of its

6
S. Rept. No. 82-1979, at 2407 (1952) (With respect to 35 U.S.C. § 21, “‘[f]ixed
by statute’ is omitted from the corresponding section of the existing statute as
unnecessary. Saturday is added as a day on which action need not be taken.”;
emphasis added).
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untimely Motion to Exclude Evidence.
7
Therefore, we deny Patent Owner’s
untimely Motion to Exclude Evidence.
D. Improper Filing of Demonstrative Exhibits
The panel “may expunge any paper directed to a proceeding . . . that is not
authorized under this part or in a Board order or that is filed contrary to a Board
order.” 37 C.F.R. § 42.7(a). After reviewing Exhibits 1028 and 1029, we
determine that these exhibits are not authorized by this part or in a Board order or
are contrary to a Board order.
According to Petitioner, “Exhibit 1128 is a demonstrative exhibit in the form
of a PowerPoint presentation containing excerpts of case law . . . as well as
excerpts of other filed exhibits;” and “Exhibit 1129 is a demonstrative exhibit in
the form of a PowerPoint presentation containing of a graph depicting the power
output of the generator of the ‘717 patent versus time.” Pet. Opp. 3 (Ex. 1128),
5 (Ex. 1129) (emphases added). As indicated in the Board’s Office Trial Practice
Guide, demonstrative exhibits may be presented at the oral hearing. 77 Fed. Reg.
48756, 48768 (Aug. 14, 2012). However, the filing of demonstrative exhibits was
not authorized by our rules or by any order in this case. Moreover, our order
granting the parties’ requests for an oral hearing expressly prohibits the filing of
demonstrative exhibits without our prior authorization. Paper 42, 4 (“The parties
shall not file any demonstrative exhibits in this case without prior authorization
from the Board.”); see PO Reply to Opp. 4. Because Petitioner did not request
authorization to file and we did not authorize the filing of these demonstrative

7
Patent Owner contends that Petitioner is not prejudiced by Patent Owner’s late
filing of the Motion to Exclude Evidence. PO Reply to Opp. 3. Nevertheless, as a
general matter, if we accepted Patent Owner’s late filing, Petitioner would have
one day less to prepare its opposition to Patent Owner’s Motion to Exclude
Evidence than is permitted by the parties’ stipulation. Pet. Opp. 2.
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exhibits at DUE DATE 3, we expunge Exhibits 1028 and 1029. See C&D Zodiac,
Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 3 (PTAB Mar. 3,
2015) (Paper 30).

III. CONCLUSION
After consideration of the Petition and the Patent Owner Response and for
the reasons set forth above, we conclude that Petitioner has demonstrated by a
preponderance of the evidence that claims 17–23, 26, 29, and 30 of the ’527 patent
are rendered obvious over US’717 and US’546, alone or in combination with
US’779, US’047, or WO’882.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that Petitioner has shown by a preponderance of the evidence
that
A. Claims 17, 18, 21, 22, 29, and 30 are rendered obvious over US’717
and US’546;
B. Claim 19 is rendered obvious over US’717, US’546, and US’779;
C. Claims 20 and 26 are rendered obvious over US’717, US’546, and
US’047; and
D. Claim 23 is rendered obvious over US’717, US’546, and WO’882;
FURTHER ORDERED that Patent Owner’s Motion to Exclude Evidence is
denied as untimely filed;
FURTHER ORDERED that Exhibits 1028 and 1029 are expunged; and
FURTHER ORDERED that, because this is a final decision, parties to the
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proceeding seeking judicial review of the decision must comply with the notice
and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Deborah E. Fishman
KAYE SCHOLER LLP
DFishmanPTAB@kayescholer.com

Steven I. Weisburd
ARENT FOX LLP
steven.weisburd@arentfox.com

Robert E. Bugg
DICKSTEIN SHAPIRO LLP
buggr@dicksteinshapiro.com

PATENT OWNER:

Jason S. Angell
Robert E. Freitas
Daniel J. Weinberg
FREITAS ANGELL & WEINBERG LLP
jangell@fawlaw.com
rfreitas@fawlaw.com
dweinberg@fawlaw.com