Federal Circuit Vacates PTAB Determination That Claims Were Not Obvious Because Of Flawed Motivation-To-Combine Analysis
On April 29, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated and remanded the final written decision of the Patent Trial and Appeal Board (“PTAB”), which found that the Petitioner, Auris Health, Inc. (“Auris”), had failed to demonstrate that the challenged claims were unpatentable as obvious based on evidence of general skepticism about the field of invention. Auris Health, Inc. v. Intuitive Surgical Operations, __ F.4th __ (Fed. Cir. April 29, 2022).
The technology at issue relates to robotic surgery systems, and specifically addresses difficulties surrounding the swapping in-and-out of various surgical instruments from the robotic surgery system, due to, e.g., limited space, range of motion, and time.
Auris filed a petition for inter partes review asserting an obviousness combination of two prior art references—Smith and Faraz—which together disclose each limitation of the challenged claims. Smith discloses an exoskeleton controller that a clinician wears and manipulates in order to remotely control a pair of robotic arms, each of which holds a surgical instrument. Faraz discloses an adjustable support stand that holds multiple surgical instruments, and which can be adjusted either manually or robotically. In its petition, Auris argued that a skilled artisan would have been motivated to combine Smith and Faraz to decrease the number of assistants needed during surgery by accomplishing traditionally human tasks robotically. The patent owner, Intuitive Surgical Operations (“Intuitive”), countered that no motivation would have existed because surgeons were generally very skeptical about performing robotic surgery at all, so there would have been no reason to further complicate Smith’s robotic surgery system with additional robotic components, like Faraz’s roboticized surgical stand. The PTAB agreed with Intuitive, and therefore found that Auris had not proven the challenged claims obvious.
On appeal, the CAFC explained that, in an obviousness analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. But the CAFC cautioned that generic industry skepticism alone cannot control the motivation to combine inquiry.
The CAFC further explained that evidence of industry skepticism is more germane to the question of objective evidence of non-obviousness, and, even then, the evidence of skepticism must be specific to the invention, not generic to the field. With respect to Intuitive’s suggestion that industry skepticism can be relevant in a motivation to combine analysis in order to place oneself in the mind of the skilled artisan, the CAFC explained that specific evidence of industry skepticism related to a specific combination of references might contribute to a lack of motivation to combine, but that was not the case in this proceeding. Rather, in this case, the PTAB improperly relied on evidence of general skepticism, which was not tied to the specific references at issue, or the specific proffered motivation to combine them. Accordingly, the CAFC vacated the final written decision and remanded the case for the PTAB examine the record evidence to determine, using the correct criteria, whether there was a motivation to combine.
Judge Reyna dissented because he disagreed with the majority opinion that general skepticism by itself could never support a finding of a lack of motivation to combine. He further expressed concern that the majority’s opinion would be construed to announce an inflexible and rigid rule with respect to general skepticism that would be at tension with the controlling Supreme Court obviousness caselaw of KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). And he noted multiple cases involving fields of technology that are inherently dangerous or risky, where expert testimony expressing skepticism was considered probative of a lack of motivation to combine.