In a recent opinion by the Federal Circuit, Auris Health, Inc. v Intuitive Surgical Operations, Inc., Case 2021-1732, the panel split on the weight of general industry skepticism in an obviousness analysis and split on whether it should be weighed in the main obviousness analysis or only as part of the secondary considerations analysis. In the split decision, Judge Prost writing for the majority, vacated and remanded the case back to the Board, holding that general industry skepticism is not alone enough to defeat obviousness. Slip Op., p. 7

This case involves five claims directed to swapping out instruments for robotic surgery systems. Slip Op., p. 2. Auris petitioned for inter partes review of Intuitive’s claims, as unpatentable for obviousness. Id. Auris asserted Smith and Faraz as prior art references, with Smith directed towards a remotely manipulated exoskeleton controller for a robotic surgical system and Faraz directed towards an adjustable support stand that holds surgical instruments. Slip Op., p. 3-4. In the Board’s Final Written Decision, the Board “determined that Auris’s asserted prior-art combination [] disclosed each limitation of the challenged claims.” Slip Op., p. 3. However, the parties disputed whether “a skilled artisan would have been motivated to combine” the references. Id. Auris argued that “a skilled artisan would be motivated to combine [the references] to decrease the number of assistants needed during surgery[,]” while Intuitive argued that there would not have been a motivation to combine based on general industry skepticism because “surgeons were skeptical about performing robotic surgery in the first place.” Slip Op., p. 5. The Board sided with Intuitive on this issue, concluding there was a lack of motivation to combine, and Auris appealed the decision. Slip Op., p. 2.

Here, the majority couched their analysis on a “would have” question for obviousness – “[t]he motivation-tocombine 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.’ Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015).” Slip Op., 5 (emphasis added). The majority then couched the skepticism inquiry as only a secondary considerations question and one that requires the skepticism to be “specific to the invention, not generic to the field.” Slip Op., 6. The Court noted that while the Board “credited Intuitive’s vague expert testimony that ‘there was great skepticism for performing telesurgery’ at the time of the invention” to find “a skilled artisan ‘would not have been compelled to complicate Smith’s system further,’” that was insufficient for the Board to find non-obviousness. Id. Not wanting to perform factfinding in the first instance on competing evidence involving the purpose of the combined references, the Court vacated and remanded. Id.

In dissent, Judge Reyna disagreed with at least two premises of the majority decision: (1) that general industry skepticism can never support a finding of no motivation to combine and (2) the majority’s “inflexible and rigid” holding that “it is ‘impermissible’ for the Board to consider evidence of artisans’ skepticism toward robotic surgery in determining motivation to combine.” Slip Op. Dissent, 2-3.

First, the dissent provided a detailed list of expert testimony provided to the Board and noted each piece of the evidence met the substantial evidence standard and should have been used to affirm the Board’s nonobviousness decision. Id., 2.

Second, the dissent discussed why the majority’s categorization of skepticism as a secondary consideration inquiry was wrong. Id., at 4. And more so, why the majority’s delegation of secondary consideration inquiry to being of lesser value than the core obviousness inquiry was wrong. Id. For the latter, Judge Reyna relied on three cases to demonstrate that all four Graham factors have equal weight in the obviousness inquiry: Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc) (“A determination of whether a patent claim is invalid as obvious under § 103 requires consideration of all four Graham factors, and it is error to reach a conclusion of obviousness until all those factors are considered.”); Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir. 1996) (“It is the secondary considerations that are often most probative and determinative of the ultimate conclusion of obviousness or non-obviousness. The district court did not provide reasons for apparently discounting ProMold’s evidence of secondary considerations; that was error as a matter of law.”); and Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1378 (Fed. Cir. 2012) (“These objective guideposts are powerful tools for courts faced with the difficult task of avoiding subconscious reliance on hindsight.”).

Take Away:

When presenting industry skepticism evidence to show a lack of motivation to combine references, this case suggests that it is best practice to present skepticism specific to the invention and in combination with other evidence showing a lack of motivation to combine.

This article appeared in the May 2022 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.

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