IPR finding of no obviousness reversed as “generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine”

Auris Health, Inc. v. Intuitive Surgical Operations, Inc.

Docket No. 2021-1732 (IPR2019-1533) (https://cafc.uscourts.gov/opinions-orders/21-1732.OPINION.4-29-2022_1943629.pdf)

DYK, PROST, REYNA (D)

April 29, 2022

Brief Summary:   IPR finding of no obviousness reversed and remanded as industry skepticism was too general and not specific to the actual combination.

Summary:  Auris appealed PTAB (“Board”) IPR final written decision (FWD) that it did not show the claims of Intuitive’s US 8,142,447 relating to robotic surgery systems unpatentable as obvious.  The Board determined that the asserted prior art (Smith and Faraz) disclose each limitation of the challenged claims, with the only remaining issue was whether there was a motivation to combine the references.  This FC panel opinion explains that Smith discloses a robotic surgical system that a clinician wears to mimic the clinician’s movement and that the clinician “‘may direct [an] assistance to relocate the robot[ic] arms’ as necessary.”  Faraz, the FC panel explains, discloses an adjustable (manually or robotically) support stand for holding surgical instruments that “can support multiple surgical implements while [they] are being moved” and “provide support for a surgeon’s arms during long or complicated surgery.”  Auris argued the skilled artisan would have been “motivated to combine Smith and Faraz to decrease the number of assistants needed during surgery by roboticizing some of their tasks” while Intuitive disagreed “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 agreed with Intuitive, writing “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’”.  Auris argued in this appeal that the Board improperly relied “on general skepticism about the field of robotic surgery to find a lack of motivation to combine.”  The FC panel explained that “[t]he 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’” (Belden, FC 2015) and “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason” (KSR, US 2007), but that “generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine”.  Industry skepticism, the FC panel wrote, “may play a role in an obviousness inquiry—but as 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” (WBP, FC 2016; “while specific evidence of industry skepticism related to a specific combination of references might contribute to finding a lack of motivation to combine, that’s not what we have here”).  The FC panel therefore vacated and remanded the Board’s decision.  Judge Reyna’s dissent argued that “general skepticism toward robotic surgery, by itself, could be insufficient” but disagreed “that it could never support a finding of no motivation to combine” (citing KSR, US 2007; Kinetic Concepts, FC 2012 (no motivation to combine); Henny Penny, FC 2019; Apple, FC 2016 (en banc (must consider all four Graham factors, including secondary considerations)); Pro-Mold, FC 1996; Mintz, FC 2012 (“avoiding subconscious reliance on hindsight”)).