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obviousness

Delayed Disclaimer: Patent Owner Arguments Made during IPR Not a Claim Limiting Disclaimer in That Proceeding

by Aashish Kapadia | Nov 29, 2022 | Patents

Repeating a conclusion from an earlier non-precedential opinion in VirnetX, the US Court of Appeals for the Federal Circuit held that the Patent Trial & Appeal Board (Board) need not accept a patent owner’s arguments as a disclaimer in the very same inter partes review (IPR) proceeding in which those arguments are made. CUPP Computing AS v. Trend Micro Inc., Case Nos. 2020-2262, 2020-2263, 2020-2264, at *11 (Fed. Cir. Nov. 16, 2022) (Dyk, Taranto, Stark, JJ.)

CUPP Computing is the owner of three related patents each entitled “systems and methods for providing security services during power management mode.” After CUPP sued Trend Micro for patent infringement, Trend Micro filed petitions for IPR against all three patents, asserting that several claims of CUPP’s patents were obvious over two prior art references. The Board instituted all three IPR and found all challenged claims unpatentable as obvious. CUPP appealed.

The Federal Circuit affirmed the Board’s conclusions. The principal issue concerned CUPP’s argument that the Board erred in claim construction. In CUPP’s view, all of the evidence required the claimed “security system processor” be remote from a “mobile device processor.” The Court rejected CUPP’s arguments. Starting with the claims, the Court found that they simply required that the two processors be different. Although some claims required the security system to send a wake signal to or communicate with the mobile device, that language did not support CUPP’s remoteness construction. As the Court explained, just as an individual can send a note to oneself via email, a unit of the mobile device can send signals to and communicate with the same device. Indeed, some of the claims teach communication via an internal port of the mobile device, which was consistent with a preferred embodiment disclosed in the specification in which the two processors could be within the same mobile device.

The Federal Circuit then addressed CUPP’s disclaimer arguments. The Court agreed with the Board that CUPP’s statements made during the original prosecution were far from clear and unmistakable, being susceptible to several reasonable interpretations that are contrary to CUPP’s construction. The Court also agreed with the Board that CUPP’s arguments during the Trend Micro IPRs do not qualify as a disclaimer for purposes of claim construction. While a disclaimer made during an IPR proceeding is binding in subsequent proceedings, the “Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.”

As the Federal Circuit explained, expanding the application of disclaimers to the proceedings in which they are made—as CUPP proposed—is rife with problems. IPR proceedings are more similar to district court litigation than they are to initial examination, and it is well established that disclaimers in litigation are not binding in the proceeding in which they are made. Further, CUPP’s proposal would effectively render IPR claim amendments unnecessary, as patent owners would be free to change the scope of their claims retrospectively without regard to the protections provided by the IPR claim amendment process, such as [...]

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Sleep Better: Amendments Proposed during IPR Deemed Proper and Valid

by Rodney Swartz, PhD | Nov 29, 2022 | Patents

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s (Board) finding that proposed amendments made during an inter partes review (IPR) are valid and proper despite the inclusion of changes not related to patentability issues raised in the petition. Nat’l Mfg., Inc. v. Sleep No. Corp., Case No. 21-1321 (Fed. Cir. Nov. 14, 2022) (Stoll, Schall, Cunningham, JJ.)

We’ve likely all seen the commercials promising a proven quality of sleep. Sleep Number is the owner of numerous patents, including several directed to methods for adjusting “the pressure in an air mattress ‘in less time and with greater accuracy’ than previously known.” The patents state this is achieved by taking pressure measurements at the valve enclosure and applying a pressure adjustment factor that is iteratively revised using an “adjustment factor error.” The patent states that this method allows for monitoring the pressure of the air mattress without the need to turn off the pumps.

American National Manufacturing challenged the validity of the patents in an IPR proceeding, claiming that most were rendered obvious by the prior art of Gifft in view of Mittal and Pillsbury and that six of the dependent claims requiring a “multiplicative pressure adjustment factor” would have been obvious in further view of Ebel. Gifft disclosed an air-bed system using valve assembly pressure to approximate the air chamber pressure and Mittal and Pillsbury both disclosed using additive offsets to improve accuracy. Ebel disclosed using both additive and multiplicative components to accurately measure the actual pressure in an inflating or deflating air bag.

The Board agreed with American National that it would have been obvious to combine Gifft, Mittal and Pillsbury and that the resulting combination rendered most of the claims obvious, but it also noted that the combination failed to show that a “skilled artisan would have applied Ebel’s multiplicative factors” to the prior art. However, in each proceeding Sleep Number filed a motion to amend the claims contingent on a finding that the challenged claims were unpatentable. The proposed claims included the “multiplicative pressure adjustment factor” that the Board had determined was not unpatentable along with other non-substantive changes.

American National took issue with these amendments, arguing they were legally inappropriate, non-enabled because of an error in the specification and lacked written description support. The Board disagreed. American National appealed. Sleep Number cross-appealed the Board’s finding of obviousness.

The Federal Circuit found that the proposed amendments were not improper even though some of the changes were non-substantive changes to address consistency issues. The Court pointed out that “once a proposed claim includes amendments to address a prior art ground in the trial, a patent owner also may include additional limitations to address potential § 101 or § 112 issues, if necessary.” The Court rejected American National’s argument that permitting such amendments creates an “asymmetrical” and “unfair” proceeding “by allowing the patent owner and the Board to address concerns that may be proper for [an] examination or reexamination proceeding, but that [...]

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For Inherent Anticipation, How Many Is Too Many?

by Alexandra Cavazos, PhD | Oct 13, 2022 | Patents

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) decision that prior art disclosing a class of 957 salts could not inherently anticipate claims to a salt within the class because a skilled artisan could not “at once envisage” every class member. Mylan Pharms. Inc. v. Merck Sharp & Dohme Corp., Case No. 21-2121 (Fed. Cir. Sept. 29, 2022) (Lourie, Reyna, Stoll, JJ.)

In the underlying inter partes review, Mylan alleged that Merck’s patent claims to sitagliptin dihydrogen phosphate (DHP) with 1:1 stoichiometry were anticipated by two similar Merck publications (collectively, Edmondson). Edmondson listed 33 enzyme inhibitors (including sitagliptin) and eight preferred acids for forming salts with the inhibitors. Mylan argued that the 1:1 stoichiometry between sitagliptin and DHP (which was required by the claims) was the only possible result when sitagliptin and phosphate were reacted.

In response, Merck experts declared that Edmondson did not expressly disclose any 1:1 sitagliptin DHP salts. They also declared that non-1:1 sitagliptin phosphate salts existed and had been created using conventional protocols, and that Edmondson encompassed approximately 957 predicted salts of DP-IV inhibitors.

The Board held that Edmondson did not expressly anticipate because it did not literally disclose the 1:1 sitagliptin DHP salt and Mylan could not attempt to fill in the missing claim limitation by arguing that a person of ordinary skill in the art (POSA) could “at once envisage” the “950+” salts. Merck’s evidence convinced the Board that non-1:1 sitagliptin phosphate salts “do exist and can form.”

Mylan tried to circumvent Merck’s antedation of Edmondson by asserting that it disclosed hydrates of 1:1 sitagliptin DHP, which Merck had not synthesized until months after Edmondson was published. The Board rejected this argument, noting that Edmondson only generically referred to hydrates. Since Mylan had not contested Merck’s common ownership of Edmondson’s subject matter, § 103(c)(1) applied and Edmondson became unavailable as an obviousness reference. The remaining claims to specific enantiomers and hydrates of sitagliptin DHP were deemed nonobvious because Mylan had not presented sufficient evidence to show motivation to make or reasonable expectation of success.

On appeal, the Federal Circuit found that substantial evidence supported the Board’s determinations with respect to explicit and inherent anticipation and obviousness. Mylan’s own expert had admitted that nothing in Edmondson directed a POSA to sitagliptin or to any phosphate salt. Edmondson’s disclosure of 957 potential salts was “a far cry” from the facts in the 1962 Court of Customs and Patents Appeals case In re Peterson, where a reference disclosing only 20 compounds was deemed inherently anticipatory. The Federal Circuit rejected Mylan’s antedation argument, noting that if Edmondson did not explicitly disclose 1:1 sitagliptin DHP, it could not disclose any hydrates of that compound either.

Finally, the Federal Circuit agreed with the Board that the claims to specific enantiomers or hydrates of sitagliptin DHP were nonobvious because Mylan had not shown any expected benefit to making the specific enantiomers claimed, the literature and experts for both sides reported many downsides [...]

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Sliced and Diced: PTAB Decision Remanded for Further Analysis

by Thomas DaMario | Oct 6, 2022 | Patents

In an appeal from a Patent Trial & Appeal Board final written decision, the US Court of Appeals for the Federal Circuit affirmed the Board’s decision to include certain evidence first presented in the petitioner’s Reply but vacated the Board’s obviousness decision for a failure to fully and particularly set out the bases for its decision. Provisur Technologies, Inc. v. Weber, Inc., Case Nos. 21-1942; -1975 (Fed. Cir. Sept. 27, 2022) (Prost, Reyna, Stark, JJ.)

Provisur Technologies owns a patent directed to classifying slices or portions cut from a food product according to an optical image of the slice. The patent explains that certain meat products, such as bacon or cold cuts, are sold in groups of slices according to particular weight requirements. The specification also teaches that the arrangement of the slices according to quality is desirable. The independent claims are directed to an image processing system arranged above a weigh conveyor that is capable of categorizing slices by determining the surface area and fat-to-lean ratios of the slices based on pixel-by-pixel image data.

Weber petitioned for inter partes review of the patent, alleging that the claims were obvious over various prior art references. Provisur, in its Patent Owner Response, disputed Weber’s assertion that the prior art references disclosed the claimed digital imaging receiving device capable of determining a surface area from pixel-by-pixel image data. During deposition of Weber’s expert, Provisur probed the expert’s knowledge of various camera models available as of the priority date. This prompted Weber to introduce a data sheet on redirect showing various models of cameras, including a comparison between those disclosed in the prior art references and those disclosed as exemplary in the patent. Provisur moved to exclude the datasheet, but the Board concluded that the evidence was highly probative and allowable because it was submitted in response to an argument that Provisur advanced in its Patent Owner Response. The Board also found that the independent claims and various dependent claims were invalid as obvious over the references cited by Weber.

Provisur appealed the admission of the datasheet and the Board’s determination on obviousness. Regarding the evidentiary issue, the Federal Circuit found that the Board did not abuse its discretion by considering the datasheet, noting that it was reply evidence responsive to Provisur’s arguments that the prior art did not disclose a digital camera: “Importantly, Weber’s invalidity theories did not change, nor did the reply fill any holes in Weber’s petition.” Furthermore, the Court observed that Provisur had an opportunity to respond both by cross-examining Weber’s expert and in a sur-reply to the Board.

Regarding the Board’s obviousness determination, Provisur argued that the Board erred by failing to explain its rationale for how the prior art combinations specifically taught the claim element of “determining a surface area of the top slice from the [pixel-by-pixel image] data [of a top slice of the stack].” Under the Administrative Procedure Act (APA), the Board must fully and particularly set out the basis upon which it reached its [...]

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Claim at Issue Must Be Substantively Allowable to Qualify for PTA

by Samoneh (Sammy) Schickel | Sep 22, 2022 | Patents

The US Court of Appeals for the Federal Circuit affirmed two district court decisions, finding that a patent owner who only partially prevailed in one of two appeals was not entitled to any additional patent term adjustments (PTAs) from the US Patent & Trademark Office (PTO) under 35 U.S.C. § 154(b)(1)(C) during the pendency of their district court appeals. SawStop Holding LLC v. Vidal, Case No. 2021-1537 (Fed. Cir. Sept. 14, 2022) (Newman, Linn, and Chen, JJ.)

SawStop owns two patents directed to saws with a safety feature that stops a power-saw blade upon contact with flesh. During prosecution of the application for one of the patents, SawStop appealed an obviousness rejection to the Patent Trial & Appeal Board (Board). The Board affirmed the obviousness rejection but on new grounds. The patent ultimately issued after SawStop amended the claim at issue to overcome the obviousness rejection.

Similarly, during prosecution of the application for the second patent, independent claim 1 was rejected as being anticipated and for obviousness-type double patenting while dependent claim 2 was rejected as anticipated. SawStop appealed the rejections. The Board affirmed both rejections of claim 1 but reversed the rejection of claim 2. SawStop subsequently challenged the Board’s anticipation rejection of claim 1 before the US District Court for the District of Columbia, which reversed the anticipation rejection. SawStop did not challenge the obviousness-type double patenting rejection. On remand to the Board, SawStop cancelled claim 1 and rewrote claim 2 as an independent claim. A patent subsequently issued.

Since issuance of both patents was delayed by appeals before allowance, SawStop requested PTAs under Section 154(b)(1)(C):

Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to … (iii) appellate review by the Patent Trial and Appeal Board or by a Federal Court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability, the term of the patent shall be extended 1 day for each day of the pendency of the proceeding, order, or review, as the case may be.

The Board granted PTA “for the delay incurred in the successful reversal of the rejection of claim 2” of the second patent but denied additional PTA for both patents resulting from the appeals. SawStop filed suits in the US District Court for the Eastern District of Virginia, challenging the Board’s decision. The court granted summary judgment in favor of the PTO in both suits. SawStop then appealed to the Federal Circuit.

The Federal Circuit affirmed, finding that SawStop was interpreting Section 154(b)(1)(C) too broadly. SawStop argued in part that any examiner rejection overturned on appeal qualified as “a reversal of a determination of patentability.” The Court rejected this argument, explaining that the Board’s adverse determination of unpatentability remained before and after the appeal to the Board. That is, “the reversal of a ‘determination of patentability’ requires a determination that the claim in question is substantively allowable, not just free of [...]

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CAFC Pulls Final Loose Thread in Nike-Adidas Patent Row

by Paul Devinsky | Sep 22, 2022 | Patents

Issuing a third and final decision, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) decision invalidating the last remaining claim of a Nike footwear textile patent. Nike, Inc. v. Adidas AG, Case No. 21-1903 (Fed. Cir. Sept. 1, 2022) (Prost, Chen, Stoll, JJ.) (non-precedential)

Adidas filed for inter partes review of a patent owned by Nike relating to a knitted shoe upper. After lengthy litigation, including two prior appeals to the Federal Circuit, all claims of the Nike patent were invalidated except for one substitute claim. In its second appeal, Nike successfully argued that the Board did not provide Nike an opportunity to respond to a patentability issue raised sua sponte by the Board, which included reference to a knitting textbook. On remand from the second appeal, the parties were given the opportunity to brief the Board on this new reference and argue which party bears the burden of persuasion for the patentability issue raised sua sponte by the Board.

On the merits, the Board determined that the knitting textbook did teach the disputed limitation, agreeing with adidas that a skilled artisan would have understood the textbook to teach the contested limitation, and that there was adequate reason to combine the textbook’s teachings with those of the other prior art references. The Board also concluded that the burden of persuasion must fall on the Board itself when it raised the patentability issue sua sponte. Nike appealed, arguing that the Board effectively placed the burden of persuasion on Nike.

The Federal Circuit first addressed the burden of persuasion as it relates to the grounds first raised by the Board. The Court found that the Board juxtaposed its arguments with adidas’s and that they both relied on the same disclosures and arguments. Because the Board and adidas’s arguments mirrored each other, the Court found it unnecessary to determine whether the petitioner or the Board bears the burden of persuasion. The Court also rejected Nike’s argument that the Board effectively shifted the burden to Nike by stating in its opinion that Nike’s arguments were “unpersuasive” and “inadequate.” The Court cited to its 2016 holding in In re Magnum Oil Tools International, in which it explained that the Board’s language is not the concern but rather the actual placement of the burden of persuasion. The Court found that both the Board and adidas met the burden, and that the burden was not shifted to Nike.

Turning to the Board’s obviousness determinations, the Federal Circuit rejected all of Nike’s arguments. First, Nike argued that the knitting textbook did not teach the claimed method of creating apertures in the fabric by omitting stitches. The Court found that the Board relied on specific disclosures in the reference describing the use of empty needles to product “loop displacement.” Nike also argued that there was no motivation to combine the textbook reference with the other two references and that the Board could not rely on “common sense” [...]

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Check Your Expert Skills and Standing

by Sarah J. Fischer | Sep 8, 2022 | Patents

The US Court of Appeals for the Federal Circuit dismissed a portion of an appeal from the Patent Trial & Appeal Board (Board) regarding obviousness because the patentee did not have standing to challenge the decision regarding one of the claims. The Court also affirmed-in-part because the definition of person of ordinary skill in the art applied by the Board was not unreasonable or unsupported by the evidence. Best Medical International, Inc. v. Elekta Inc., Case Nos. 21-2099; -2100 (Fed. Cir. Aug. 29, 2022) (Hughes, Linn, Stoll, JJ.)

Best Medical International (BMI) owns a patent directed to a method and apparatus for conformal radiation therapy of tumors using a pre-determined radiation dose. The Board instituted two inter partes review (IPR) petitions filed by Varian Medical Systems and Elekta. During the pendency of the IPR proceeding, a parallel ex parte re-examination was ongoing. After institution of the IPRs, the examiner in the re-examination rejected claim 1, which BMI subsequently cancelled “without prejudice or disclaimer.” After BMI cancelled claim 1, the Board issued its final written decision in the IPR proceedings. The Board noted that BMI had cancelled claim 1 during re-examination, but concluded that claim 1 had “not yet been canceled by a final action” because BMI had “not filed a statutory disclaimer of claim 1.” The Board therefore considered the merits of Elekta’s patentability challenge and determined that claim 1 was unpatentable as obvious. The Board issued a split decision as to the other claims, finding one claim patentable and the others unpatentable. BMI appealed.

The Federal Circuit began by analyzing whether BMI had standing to challenge the Board’s invalidation of the now cancelled claim 1. BMI attempted to invoke Munsingwear vacatur, which allows courts to vacate underlying decisions on issues that have become moot during their pendency. As an initial matter, the Court found that the Board had the authority to invalidate the claim because it was not finally cancelled at the time the Board issued its final written decision. Regarding BMI’s vacatur argument, Elekta argued that BMI lacked standing to challenge the decision related to the cancelled claim. BMI countered that it had suffered an injury sufficient to create Article III standing because it believed that collateral estoppel might be applied by the examiner regarding other claims in another patent subject to re-examination. The Court was unpersuaded by this argument, in part because BMI could not cite any case law where collateral estoppel was applied in that fashion. The Court found that Munsingwear vacatur was inappropriate because the mooting event did not happen during the pendency of the appeal—it happened before the appeal was filed. The Court therefore concluded that BMI lacked standing to challenge the Board’s decision regarding the now cancelled claim.

Turning to the other claims the Board found unpatentable, BMI challenged the Board’s finding that a person of ordinary skill in the art must have formal computer programming experience. The Federal Circuit recited the non-exhaustive list of factors used to determine the requisite level of [...]

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Not a Well-Crafted Housing: Product-by-Process Claim Element Isn’t Limiting

by Thomas DaMario | Aug 25, 2022 | Patents

The US Court of Appeals for the Federal Circuit affirmed a ruling that certain claims reciting a “housing . . . being cast in one piece” should be construed as a product-by-process claim element and affirmed the subsequent finding of invalidity of all challenged claims. Kamstrup A/S v. Axioma Metering UAB, Case No. 21-1923 (Aug. 12, 2022) (Reyna, Mayer, Cunningham, JJ.)

Kamstrup owns a patent directed to an ultrasonic flow meter housing in the form of a monolithic polymer structure that is cast in one piece. The patent specification explains that the invention can be fabricated with fewer steps compared to existing meters, since only a single step is used to form the monolithic polymer structure. Axioma petitioned for inter partes review of all claims of the patent, and the Patent Trial & Appeal Board (Board) found each claim unpatentable as either obvious or anticipated.

The Board construed the claim term “being cast in one piece” to be a product-by-process claim element. Kamstrup did not present any evidence showing that this claim element provided structural or functional differences distinguishing the housing itself from the prior art, and therefore the Board determined that the housing element was not entitled to patentable weight. The Board subsequently invalidated the independent claim and various dependent claims based on a prior art meter having a housing. The Board also found the remaining dependent claims to be invalid based on two additional references, which the Board determined were sufficiently analogous to flow meter technology to merit consideration in its obviousness analysis.

On appeal, Kamstrup challenged the Board’s product-by-process construction. The Federal Circuit explained that product-by-process claiming is designed to enable an applicant to claim an otherwise patentable product that resists definition other than by the process by which it is made. Where a product-by-process claim element is implicated, structural and functional differences distinguishing the claimed product from the prior art must be shown in order for that claim element to be relevant (limiting) to the anticipation or obviousness inquiry. If no structural or functional differences are shown, the element is given no patentable weight. Turning to the claim element at issue, the Court found that the plain meaning of the term “housing . . . being cast in one piece” implicated a product-by-process interpretation since it described the structure “being” cast in a particular way. The Court also affirmed the Board’s finding of invalidity because Kamstrup failed to identify any disclosure in the specification, prosecution history or extrinsic evidence of any structural or functional differences between the housing element as claimed and the prior art.

Kamstrup also argued that the two secondary prior art references were not analogous prior art because they fell within the field of “medical devices for thermodilution,” and therefore they should not be included in an obviousness analysis. The Federal Circuit disagreed, finding that the references were directed to “sensing or measuring fluid flow and fluid flow characteristics such as temperature,” which is related to “flow meters that include different types of sensors.”

Since Vacatur Seeks Equitable Relief, Clean Hands Matter

by McDermott Will & Emery | Jun 30, 2022 | Patents

In an opinion related to its 2021 ruling that a decision in earlier inter partes reexaminations of related patents had a preclusive effect that collaterally estopped the Patent Trial & Appeal Board (Board) from making new findings on the same issue, the US Court of Appeals for the Federal Circuit vacated the Board’s decision on remand since the patent at issue expired. SynQor, Inc. v. Vicor Corp, Case No. 20-1259 (Fed. Cir. Jun. 17, 2022) (Chen, Prost, JJ.), (Lourie, J., dissenting) (non-precedential).

Background

After being sued by SynQor, Vicor petitioned for reexamination of several SynQor patents (including the ’021 and ’190 patents). In the ’190 patent reexamination proceeding, Vicor successfully argued that the ’190 patent claims (including new claims sought to be added by SynQor) were unpatentable over two references. After appeals to the Board (which reversed the examiner) and Federal Circuit (which reversed-in-part, vacated-in-part), the case was remanded to the Board to consider the examiner’s obviousness rejections in light of the Court’s conclusion that prior art patents anticipated certain claims.

On remand, the Board affirmed almost all of the examiner’s rejections and applied a new ground of rejection to one of SynQor’s proposed new claims. However, before the Board issued its final decision regarding the new claims, the ’190 patent expired and SynQor appealed to the Federal Circuit to vacate the Board’s decisions regarding the new claims on the ground that the ’190 patent’s expiration rendered the Board’s patentability decision moot. The Court agreed and vacated the Board’s decisions, explaining that the inability to issue the new claims meant that “the Board’s patentability determinations were unreviewable for mootness” since the Court would be “frustrated by the vagaries of circumstance” (thereby falling under the Supreme Court’s Munsingwear doctrine) from reviewing the Board’s determinations on the merits.

Similarly, in the ’021 patent’s reexamination, the examiner rejected all challenged claims, including two new claims that SynQor proposed. The Board affirmed the examiner’s rejections, and on appeal the Federal Circuit affirmed-in-part, vacated-in-part and remanded for the Board to reconsider two obviousness grounds it deemed the Board had unjustifiably reached inconsistent conclusions on (relative to a separate reexamination proceeding for another related patent). On remand, the Board again found SynQor’s proposed new claims unpatentable, unaware that the ’021 patent had expired over a year prior. In its rehearing petition, SynQor informed the Board of the ’021 patent’s expiration and asked the Board to vacate its decision on the merits. SynQor appealed after the Board declined to do so.

Appeal on the ’021 Patent

On appeal, SynQor requested that the Federal Circuit vacate the Board’s decision (for the same reasoning as in the ’190 patent appeal). Vicor argued that the Court lacked Article III jurisdiction to consider the request, and that SynQor was not entitled to equitable relief because of its failure to inform the Board of the ’021 patent’s expiration date, which caused the remand decision to be issued. Vicor also argued that the timing of the ’021 patent expiring before [...]

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Robotic Skepticism May Not Trump Motivation to Combine

by Joshua Revilla | May 12, 2022 | Patents

The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board (Board) decision finding the challenged claims patentable because the Board impermissibly rested its motivation-to-combine analysis on evidence of general skepticism in the field of invention. Auris Health, Inc. v. Intuitive Surgical Operations, Case No. 21-1732 (Fed. Cir. Apr. 29, 2022) (Dyk, Prost, JJ.) (Reyna, J., dissenting).

Intuitive owns a patent that describes an improvement over earlier robotic surgery systems that allows surgeons to remotely manipulate surgical tools using a controller. The patent focuses on solving the problem of swapping surgical tools by implementing a pulley system that allows tools to be swapped in and out more quickly. Auris petitioned for inter partes review (IPR) of the patent, arguing that a combination of two references disclosed every limitation of the challenged claims. Auris further argued that a skilled artisan would be motivated to combine the references to decrease the number of assistants needed during surgery. While the Board agreed that the combination of the two references disclosed every limitation of the challenged claims, it found that a person of ordinary skill in the art would not be motivated to combine the references because of general skepticism from surgeons “about performing robotic surgery in the first place.” Auris appealed.

The Federal Circuit began by explaining that 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.” The Court also explained that 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.’”

The Federal Circuit concluded that generic industry skepticism about robotic surgery cannot, on its own, preclude a finding of a motivation to combine. The Court explained that although industry skepticism can play a role as a secondary consideration in an obviousness finding, such evidence must be specific to the invention and not simply the field as a whole. The Court concluded that the Board’s motivation-to-combine determination was based almost exclusively on evidence of general skepticism. Thus, the Court vacated the decision and remanded the case, directing the Board to examine the evidence using the correct obviousness criteria.

Judge Reyna issued a dissenting opinion in which he disagreed as to whether the Federal Circuit should implement a rule that general skepticism cannot support a finding of no motivation to combine. Judge Reyna expressed concern that the majority opinion could be understood to create an inflexible, rigid rule that the Board cannot consider evidence of skepticism toward the invention , including whether that skepticism would have dissuaded a skilled artisan from making the proposed combination. Judge Reyna also argued that notwithstanding the majority opinion, the Board did not rely solely on general skepticism, but rather provided additional explanation as to why the “no [...]

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