AURIS HEALTH, INC. v. INTUITIVE SURGICAL OPERATIONS

Auris petitioned for inter partes review of all claims of Intuitive’s U.S. Patent No. 8,142,447 relating to robotic surgery systems. In its final written decision, the Board determined that Auris failed to demonstrate that the claims were unpatentable as obvious. Although the Board agreed with Auris that its combination of two references disclosed every limitation of the challenged claims, the Board concluded that a skilled artisan wouldn’t have been motivated to combine those references. Auris appeals. The CAFC observes that evidence of industry skepticism may play a role in an obviousness inquiry, but that the skepticism must be specific to the invention, not generic to the field. The CAFC notes that the Board almost exclusively relied on evidence of general skepticism about the field of robotic surgery to find a lack of motivation to combine, crediting Intuitive’s vague expert testimony that “there was great skepticism for performing telesurgery” at the time of the invention. Because the CAFC finds that this analysis is insufficient, it vacates and remands. Judge Reyna dissents, disagreeing that general skepticism toward robotic surgery could never support a finding of no motivation to combine, and noting that the Board relied on more than just general skepticism to find no motivation to combine and dedicated several pages to explaining multiple reasons why Auris’s proffered motivation to combine was inadequate. 

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