ETHICON LLC v. INTUITIVE SURGICAL, INC.

Ethicon appeals a final written decision issued in two consolidated inter partes review proceedings where the Board concluded that the challenged claims of U.S. Patent No. 9,844,379 (relating to a surgical stapling instrument that uses an I-beam firing member and a no-cartridge safety lockout) are unpatentable as obvious. On appeal, Ethicon argues that the Board improperly placed the burden on Ethicon as the patentee to disprove that a POSITA would have had a reasonable expectation of success in combining the prior art, and that the Board’s finding of a reasonable expectation of success is unsupported by substantial evidence. In this non-precedential opinion, the CAFC finds that the Board weighed competing evidence on the issue of a reasonable expectation of success and made its determination on the record as a whole, which is not indicative of a situation where the Board improperly shifted the burden of proof on the patent owner to establish non-obviousness in the first instance. The CAFC also concludes that the Board’s finding of a reasonable expectation of success is supported by substantial evidence, especially in light of the parties’ stipulation regarding the relative skill and experience level of a POSITA in this case. Accordingly, the CAFC affirms. Judge Newman dissents because in her view the majority’s reconstruction of a novel surgical device from components of known devices, using the ’379 patent as a template for the reconstruction constitutes judicial hindsight prohibited by the Supreme Court in, KSR v. Teleflex.

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