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3 May 2022Medtech

Fed Circuit revives bid to invalidate robotic surgery patent

The US Court of Appeals for the Federal Circuit has renewed Auris Health’s attempt to invalidate Intuitive Surgical’s patent covering a robotic surgical tool.

In a precedential ruling handed down on Friday, April 29, the Federal Circuit overturned the Patent Trial and Appeal Board’s (PTAB) finding that Auris Health had failed to demonstrate all five claims of the patent were unpatentable as obvious.

“Because the board impermissibly rested its motivation-to-combine finding on evidence of general skepticism about the field of invention, we vacate and remand,” said the court.

The patent at issue—US patent number 8,142,447—describes an improvement over Intuitive’s earlier robotic surgery systems, which allow surgeons to remotely manipulate surgical tools using a controller.

The invention attempts to address the difficulty of instrument swapping through a robotic system with a servo-pulley mechanism, which allows clinicians to more quickly swap out surgical instruments.

Auris Health had petitioned for inter partes review of all five claims of the patent. The PTAB concluded that Auris Health’s asserted prior-art combination of two patents disclosed each limitation of the challenged claims, but concluded a skilled artisan would not have been motivated to combine the two patents.

Intuitive argued 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”, a sentiment the PTAB agreed with.

However, late last week, the Federal Circuit reversed and remanded the decision. In delivering the court’s opinion, Circuit Judge Sharon Prost said that “generic industry scepticism cannot, standing alone, preclude a finding of motivation to combine”.

Prost added: ”To be sure, evidence of industry scepticism may play a role in an obviousness inquiry—but as a secondary consideration in a significantly different context. Yet even then, the evidence of scepticism must be specific to the invention, not generic to the field.”

According to the Federal Circuit, the PTAB “almost exclusively” relied on the evidence of general sceptism to find a lack of motivation to combine the two patents.

“It’s unclear how the board would parse its impermissible reliance on general industry skepticism from the rest of the record evidence on motivation to combine,” said Prost.

The case was remanded to the PTAB, so that the board could “examine the sufficiency of the record evidence to establish that there was a motivation to combine utilising the correct criteria”, concluded Prost.

Circuit Judge Jimmie Reyna issued a dissenting opinion, stating that the PTAB had “relied on more than just general scepticism to find no motivation to combine” and had dedicated several pages to explaining the reasons why Auris Health’s proffered motivation to combine was inadequate.

He added: “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.”

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