General Industry Skepticism Alone Does Not Negate Motivation to Combine: Federal Circuit | Practical Law

General Industry Skepticism Alone Does Not Negate Motivation to Combine: Federal Circuit | Practical Law

In Auris Health, Inc. v. Intuitive Surgical Operations, Inc., the US Court of Appeals for the Federal Circuit held that evidence of general industry skepticism does not, standing alone, preclude a finding of motivation to combine in an obviousness analysis.

General Industry Skepticism Alone Does Not Negate Motivation to Combine: Federal Circuit

by Practical Law Intellectual Property & Technology
Published on 02 May 2022USA (National/Federal)
In Auris Health, Inc. v. Intuitive Surgical Operations, Inc., the US Court of Appeals for the Federal Circuit held that evidence of general industry skepticism does not, standing alone, preclude a finding of motivation to combine in an obviousness analysis.
On April 29, 2022, in Auris Health, Inc. v. Intuitive Surgical Operations, Inc., the US Court of Appeals for the Federal Circuit held that evidence of general industry skepticism is insufficient, standing alone, to preclude a finding of motivation to combine ( (Fed. Cir. Apr. 29, 2022)).
In 2019, Auris Health, Inc. petitioned the Patent Trial and Appeal Board (PTAB) for inter partes review (IPR) of all claims of Intuitive Surgical Operations, Inc.'s US Patent No. 8,142,447. The patent relates generally to robotic surgery systems and claims an improvement allowing surgeons to more quickly swap out surgical instruments. The invention's benefits include reduced surgery time, improved safety, and increased reliability.
During the IPR, the PTAB determined that Auris's asserted prior art combination (Smith and Faraz) disclosed each challenged claim limitation. The critical question then became whether a person of ordinary skill in the art (POSITA) at the time of the invention would have been motivated to combine Smith and Faraz.
On the issue of motivation to combine:
  • Auris argued that a POSITA would have been motivated to combine Smith and Faraz because roboticizing some tasks traditionally performed by surgical assistants would decrease the number of assistants needed during surgery.
  • Intuitive argued that a POSITA would not have been motivated to combine the references because the general skepticism of surgeons about robotic surgery meant that a POSITA would see no reason to further complicate Smith's complex robotic surgical system with Faraz's roboticized surgical stand.
The PTAB agreed with Intuitive, holding that the general skepticism in the art at the time of invention negated the motivation to combine the prior art references. Auris appealed to the Federal Circuit.
The Federal Circuit reversed, holding that generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine. The court reasoned that this legal principle follows from motivation-to-combine precedent, holding that:
  • Motivation-to-combine analysis properly focuses on whether a POSITA not only could have but would have been motivated to combine the prior art to arrive at the challenged claims.
  • Any need or problem known in the art at the time of invention and addressed by the patent can provide motivation to combine.
With respect to industry skepticism, the court explained that:
  • General industry skepticism is relevant to obviousness, but as a secondary consideration of non-obviousness.
  • In a secondary considerations analysis, evidence of skepticism must be specific to the invention, not generic to the field.
  • The PTAB's motivation-to-combine analysis relied almost exclusively on evidence of general skepticism in the field of robotic surgery.
  • The patent owner's expert testimony on industry skepticism was vague and insufficient to defeat motivation to combine.
The Federal Circuit remanded to the PTAB to reexamine the record evidence and determine whether there was a motivation to combine under the principles announced in the opinion.
In a dissenting opinion, Circuit Judge Reyna:
  • Agreed with the majority that general skepticism, by itself, could be insufficient to negate motivation to combine.
  • Disagreed that:
    • general skepticism can never support a finding of no motivation to combine, calling the majority's holding a new, inflexible, and rigid legal principle that conflicts with US Supreme Court precedent; and
    • the PTAB's motivation to combine analysis relied solely on general skepticism.
Counsel litigating invalidity for obviousness in the PTAB or a district court should ensure that the evidence of skepticism is not generic to the field but rather includes specific evidence of industry skepticism related to a specific combination of references.