Last week, the U.S. Court of Appeals for the Federal Circuit issued a decision in Auris Health, Inc. v. Intuitive Surgical Operations, Inc., No. 2021-1732 (April 29, 2022), vacating and remanding a Patent Trial and Appeal Board decision on patentability.
Auris had sought inter partes review of all claims of U.S. Patent No. 8,142,447 (“the ’447 patent”), which relates to robotic surgery systems that allow surgeons to remotely manipulate surgical tools using a controller. In particular, the ’447 patent addresses difficulties surgeons face in switching between different surgical instruments by using a servo-pulley mechanism. In the IPR, Auris asserted that all claims of the ’447 patent were obvious in view of two prior art patents. In its final written decision, the Board determined that the asserted prior art references disclosed each limitation of the challenged claims, but that a skilled artisan would not have been motivated to combine those references because “surgeons were skeptical about performing robotic surgery in the first place.” Accordingly, the Board held that Auris had not demonstrated the unpatentability of the challenged claims. Auris appealed.
On review, the Federal Circuit held that “generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine.” The Court explained that the motivation-to-combine inquiry asks whether a skilled artisan “not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.” As to the “would have” question, the Court explained, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” The Court noted that evidence of industry skepticism may play a role in an obviousness inquiry, but as a secondary consideration, and that even then “the evidence of skepticism must be specific to the invention, not generic to the field.” The Court vacated the Board’s decision and remanded for further consideration of the parties’ motivation-to-combine evidence under the proper legal standard.
Judge Reyna dissented. While he agreed that “skilled artisans’ general skepticism toward robotic surgery, by itself, could be insufficient to negate a motivation to combine,” he disagreed “that it could never support a finding of no motivation to combine.” Moreover, he believed the Board’s decision on lack of motivation to combine was supported by more than just evidence general skepticism.