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How “generic skepticism” affects the motivation to combine

October / November 2022 IP Newsletter

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The U.S. Court of Appeals for the Federal Circuit gave new life to a challenge of a robotic surgery patent after rejecting the relevance of surgeons’ skepticism for robotic surgery. The court held that the U.S. Patent Trial and Appeal Board (PTAB) improperly found such generic skepticism about a field — as opposed to skepticism about a specific invention — rendered the patented invention nonobvious.

Patent goes under the knife

Intuitive Surgical Operations holds a patent related to robotic surgery systems. The patented invention incorporates a pulley mechanism that allows for quicker swapping out of surgical instruments, thereby reducing surgery time, improving safety and increasing the system’s reliability.

Auris Health, a competitor of Intuitive, petitioned the PTAB for inter partes review (IPR) of the patent. Under IPR, the board can reconsider and cancel an already-issued patent based on certain types of “prior art” showing that the invention was anticipated or obvious.

The board found that two earlier patents, one for a type of robotic surgery interface and the other for an adjustable support stand that could hold instruments, disclosed the invention claimed in Intuitive’s patent. But it also determined that a skilled artisan in the relevant field wouldn’t have been motivated to combine the earlier inventions to produce the challenged invention, meaning the patent wasn’t obvious or invalid. Auris appealed to the Federal Circuit.

Court reverses PTAB

The motivation-to-combine inquiry focuses on whether a skilled artisan not only could have made, but also would have been motivated to make, the combination of prior art to arrive at the patented invention. Any need or problem known in the relevant field at the time of invention and addressed by the invention can provide a reason for combining the elements in the manner claimed.

The PTAB had reasoned that, because surgeons were skeptical of robotic surgery, there would be no motivation to complicate the patented robotic surgery interface by combining it with the adjustable support stand. However, “generic industry skepticism” alone can’t preclude a finding of motivation to combine.

Although specific evidence of industry skepticism toward a specific combination of prior art might contribute to a finding of no motivation to combine, the court said, that wasn’t the case here. Rather, the PTAB incorrectly relied almost exclusively on evidence of general skepticism about the field of robotic surgery.

Left open

The PTAB had cited evidence that combining the prior art would reduce the number of assistants required, as well as evidence that the combination would undermine precision. The Federal Circuit sent the case back to the board to analyze that evidence to establish whether a motivation to combine existed under the correct criteria.