“Industry skepticism…should be a ‘secondary consideration [in the obviousness analysis] in a significantly different context…. [and] even then, the evidence of skepticism must be specific to the invention, not generic to the field.’” – CAFC
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday, April 29, held that the Patent Trial and Appeal Board (PTAB) erred in finding that Auris Health, Inc. had failed to demonstrate that the claims of Intuitive Surgical Operations, Inc.’s patent for robotic surgery systems were unpatentable as obvious. The CAFC said the PTAB impermissibly rested its motivation-to-combine finding on evidence of “general skepticism” about the field of invention, and thus vacated and remanded.
Intuitive’s U.S. Patent No. 8,142,447 is directed to improvements over the company’s earlier robotic surgery systems, which allow for remote control of surgical tools. The PTAB found that the prior art asserted by Auris—two patents titled Smith and Faraz—disclosed each limitation of the challenged claims. The only issue that remained was whether a skilled artisan would have been motivated to combine Smith and Faraz. Intuitive argued that “a skilled artisan wouldn’t have been motivated to combine the references because ‘surgeons were skeptical about performing robotic surgery in the first place, [so] there would have been no reason to further complicate Smith’s already complex robotic surgical system with [Faraz’s] roboticized surgical stand.’” The Board ultimately found that “the evidence . . . supports the position [that] there is no motivation to complicate Smith’s system when there is skepticism at the time of the invention for using robotic systems during surgery in the first place.”
CAFC: Skepticism Should be Secondary
In its discussion, the CAFC explained that, while evidence of industry skepticism may play a role in the obviousness inquiry, it should be a “secondary consideration in a significantly different context…. [and] even then, the evidence of skepticism must be specific to the invention, not generic to the field.”
Here, the Board relied almost entirely on Intuitive’s expert testimony, who said there was skepticism about performing telesurgery at the time of invention. “This is insufficient,” said the court. The CAFC did not weigh in on what the result might be if the Board had considered the evidence under the correct analysis, determining it would be inappropriate to weigh in the first instance on appeal, and instead remanded the cas for examination of “the sufficiency of the record evidence to establish that there was a motivation to combine utilizing the correct criteria.”
Reyna: The Majority Announces a ‘Rigid and Inflexible Rule’
Judge Reyna dissented from the court, rejecting the majority’s view that the PTAB’s decision was contrary to the court’s law on obviousness. While general skepticism could be insufficient by itself to negate a motivation to combine, in this case “the Board dedicated several pages to explaining multiple reasons why Auris’s proffered motivation to combine was inadequate,” said Reyna. In addition to crediting the expert testimony on skepticism as well as on several other points, Reyna said the Board showed that Auris had failed to “articulate how one would have combined Smith and Faraz to achieve the stated goal of reducing the number of assistants.”
Reyna also said the majority opinion is concerning for broader reasons:
I am also concerned that the majority opinion may reasonably be understood to announce an inflexible and rigid rule, namely that it is “impermissible” for the Board to consider evidence of artisans’ skepticism toward robotic surgery in determining motivation to combine. I find no authority for this assertion, and indeed it appears in tension, at a minimum, with the central thrust of KSR.
Reyna cited several cases where the CAFC “has accounted for the attitudes of medical professionals toward certain types of procedures when determining whether a motivation to combine has been adequately demonstrated,” including Kinetic Concepts, Inc. v. Smith & Nephew, Inc. and Henny Penny Corp. v. Frymaster LLC.
Furthermore, the majority’s assertion that skepticism should be a secondary consideration “suggests, to some extent, that objective indicia are less important or less probative of obviousness or non-obviousness than the other Graham factors,” Reyna explained. “The majority cites no case in which this court has endorsed that view, and in fact that view appears inconsistent with a number of our opinions,” he added.
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