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Is Evidence of Generic Industry Skepticism Enough to Preclude a Finding of a Motivation to Combine?

| Kendall LoebbakaGeetha Durairaj, Ph.D.

AURIS HEALTH, INC., v. INTUITIVE SURGICAL OPERATIONS, INC.,

Before Dyk, Prost, and Reyna. Appeal from the Patent Trial and Appeal Board (PTAB).

Summary: Evidence of generic industry skepticism cannot, by itself, form the basis to preclude a finding of motivation to combine.

Auris Health requested Inter Partes Review of a patent directed to a robotic surgery system with a servo-pulley mechanism that allows surgeons to remotely manipulate and quickly swap out surgical instruments using a controller, thereby reducing surgery time. Auris argued that the challenged claims were obvious over the combination of two patent publications called Smith and Faraz. Auris argued that a skilled artisan would have been motivated to combine Smith and Faraz to decrease the number of assistants needed for the surgery and robotize some tasks.  The patent owner responded that a skilled artisan would not have been motivated to combine Smith and Faraz as the “surgeons were skeptical about performing robotic surgery in the first place.” The Board agreed that the combination of Smith and Faraz disclosed every limitation of the challenged claims. However, the Board concluded that a skilled artisan would not have been motivated to combine those references because of the general skepticism about using robotic systems during surgery at the time of the invention. Auris appealed.

The Federal Circuit vacated and remanded the Board’s decision. The Federal Circuit held that, while specific evidence of skepticism in the industry related to a specific combination of references may be used in a motivation-to-combine analysis, evidence of generic industry skepticism alone cannot preclude a finding of motivation to combine. The Federal Circuit held that the Board “impermissibly” relied on the patent owner’s expert testimony on general skepticism for performing telesurgery in finding a lack of motivation to combine. The Federal Circuit therefore remanded for the Board to determine whether the evidence was sufficient to establish a motivation to combine.

Judge Reyna dissented, arguing that the majority’s finding announces a new inflexible and rigid legal principle that it is “impermissible” to consider evidence of artisan’s skepticism towards a field in determining motivation to combine.

Editor: Paul Stewart