CAFC tackles "industry skepticism" in "motivation to combine" case in Auris v. Intuitive Surgical

In an IP battle between "heavy-weight" law firms Sidley Austin LLP, (for appellant) and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (for appellee), the appellant Auris Health prevailed against patentee in a "motivation to combine" case. The outcome:

Auris Health, Inc. (“Auris”) petitioned for inter partes review of all five claims of Intuitive Surgical Operations, Inc.’s (“Intuitive”) U.S. Patent No. 8,142,447 (“the ’447 patent”). In its final written decision, the Patent Trial and Appeal Board (“Board”) determined that Auris failed to demonstrate that the claims were unpatentable as obvious. Auris Health, Inc. v. Intuitive Surgical Operations, Inc., No. IPR2019-01533, Paper 45, 2021 WL 826396 (P.T.A.B. Mar. 3, 2021) (“Final Written Decision”). 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. Because the Board impermissibly rested its motivation-to-combine finding on evidence of general skepticism about the field of invention, we vacate and remand.

The CAFC framed the issue:

Before the Board, Auris argued that a skilled artisan would be motivated to combine Smith and Faraz to decrease the number of assistants needed during surgery by roboticizing some of their tasks. Intuitive responded that a skilled artisan wouldn’t have been motivated to combine the references because “surgeons were skeptical about performing robotic surgery in the first place, [so] there would have been no reason to further complicate Smith’s already complex robotic surgical system with [Faraz’s] roboticized surgical stand.” Final Written Decision, 2021 WL 826396, at *7–8. The Board agreed with Intuitive and concluded that “the evidence . . . supports the position [that] there is no motivation to complicate Smith’s system when there is skepticism at the time of the invention for using robotic systems during surgery in the first place.” Id. at *9. On appeal, Auris challenges the Board’s reliance on general skepticism about the field of robotic surgery to find a lack of motivation to combine. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

The majority of two made short work of the argument

The motivation-to-combine inquiry asks whether a skilled artisan “not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted). As to the “would have” question, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). It follows that generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine.

To be sure, evidence of industry skepticism may play a role in an obviousness inquiry—but as a secondary consideration in a significantly different context. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1335–36 (Fed. Cir. 2016). Yet even then, the evidence of skepticism must be specific to the invention, not generic to the field. Id. Although Intuitive suggests that the Board may consider generic industry skepticism in a motivation-to-combine analysis to “place [itself] in the minds of” skilled artisans, Appellee’s Br. 40–41 (citing Interconnect Plan. Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)), it offers no case law to suggest that the Board can rely on generic industry skepticism to find a lack of motivation to combine. And while specific evidence of industry skepticism related to a specific combination of references might contribute to finding a lack of motivation to combine, that’s not what we have here.

Judge Reyna in dissent, in effect, raises the issue that the facts underlying "motivation to combine" are evaluated by a "substantial evidence" standard, and that, here, a reasonable mind could accept that general industry skepticism foreclosed motivation to combine. The "negative pressure" wound healing case of Kinetic Concepts was cited by Judge Reyna. The question remains: is motivation to combine a legal issue or a factual issue?

Judge Reyna writes:

I respectfully dissent. In my view, the Board’s determination that Auris failed to show a motivation to combine is adequately supported by substantial evidence and was not contrary to our law on obviousness. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016) (“We review the Board’s legal conclusion of obviousness de novo, and underlying factual findings for substantial evidence.”); Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938) (Substantial evidence “means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.”).

I am also concerned that the majority opinion may reasonably be understood to announce an inflexible and rigid rule, namely that it is “impermissible” for the Board to consider evidence of artisans’ skepticism toward robotic surgery in determining motivation to combine. I find no authority for this assertion, and indeed it appears in tension, at a minimum, with the central thrust of KSR. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) (rejecting the “rigid approach of the Court of Appeals” and articulating an “expansive and flexible approach” of determining obviousness). This is particularly true when considering art in fields of endeavor that are inherently dangerous or risky. Indeed, in past cases, this court has accounted for the attitudes of medical professionals toward certain types of procedures when determining whether a motivation to combine has been adequately demonstrated. See, e.g., Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (finding no motivation to combine where “doctors were not using the disclosed devices and methods to heal wounds with negative pressure because they did not believe that these devices were capable of such healing”).
(...) I recognize that the majority states that skepticism “may play a role in an obviousness inquiry—but as a secondary consideration.” Maj. Op. 5. But this assertion suggests, to some extent, that objective indicia are less important or less probative of obviousness or non-obviousness than the other Graham factors. The majority cites no case in which this court has endorsed that view, and in fact that view appears inconsistent with a number of our opinions. See, e.g., Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc) (“A determination of whether a patent claim is invalid as obvious under § 103 requires consideration of all four Graham factors, and it is error to reach a conclusion of obviousness until all those factors are considered.”); Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir. 1996) (“It is the secondary considerations that are often most probative and determinative of the ultimate conclusion of obviousness or nonobviousness. The district court did not provide reasons for apparently discounting Pro-Mold’s evidence of secondary considerations; that was error as a matter of law.”); Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1378 (Fed. Cir. 2012) (“These objective guideposts are powerful tools for courts faced with the difficult task of avoiding subconscious reliance on hindsight.”). In sum, the majority overlooks multiple reasons why the Board found the proffered motivation to combine insufficient. It also announces a new legal principle that I believe conflicts with KSR and its progeny. For these reasons, I dissent.