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CAFC Updates


By May 2, 2022No Comments

Auris petitioned for inter partes review of certain claims of Intuitive’s U.S. Patent No. 6,522,906 directed to systems and methods for performing robotically-assisted surgery using a master control, asserting six combinations of four prior art references to support its unpatentability contentions. In this non-precedential opinion, the CAFC concludes with respect to claims 51 and 53 that the Board did not err in finding that Auris failed to demonstrate by a preponderance of the evidence that there would have been a reasonable expectation of success in modifying the primary reference’s system to incorporate a dual functioning master. However, the record for claim 16 was not identical to the record that the Board relied on in upholding claims 51 and 53.  Noting that Intuitive did not make the same arguments or create the same record for claim 16 as it did for claims 51 and 53, the CAFC concludes that the Board’s finding that the prior art in combination did not disclose the disassociating limitation was based on an improper claim construction.  Accordingly, the CAFC affirms the Board’s decision with respect to independent claims 51 and 53 and vacates and remands the Board’s decision with respect to claim 16 and the claims that depend therefrom.

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