General Skepticism Does Not Negate Motivation to Combine

Surgeon’s skepticism of robot surgery doesn’t make robot surgeon patentable

In a fractured decision, the Federal Circuit ruled that relying on “generic industry skepticism to find a lack of motivation to combine” was impermissible.

The case involved a patent to a robotic surgery system. Before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) in an inter partes review, a patent challenger alleged that a robotic exoskeleton for a surgeon would have been combined with another robotic surgery system with a stand that “can support multiple surgical implements while [they] are being moved” and “can also provide support for a surgeon’s arms during long or complicated surgery.”

The PTAB found that the combination would meet the claims of the patent but concluded that there is no motivation to complicate the robotic exoskeleton system with the robotic surgery stand “when there is skepticism at the time of the invention for using robotic systems during surgery in the first place.”

The majority, Judge Prost and Judge Dyk, felt that evidence of industry skepticism may play a role in an obviousness inquiry—"but as a secondary consideration in a significantly different context” and “must be specific to the invention, not generic to the field.” What the majority found absent was “specific evidence of industry skepticism related to a specific combination of references,” which may “contribute to finding a lack of motivation to combine.” The majority could not separate the PTAB’s reliance on the generic industry skepticism from the rest of the PTAB's motivation to combine analysis and remanded the issue back to the PTAB to decide whether there was a motivation to combine.

Judge Reyna, in dissent, would have found substantial evidence to support the PTAB decision. He felt the PTAB relied on more than just general skepticism to find no motivation to combine and stated a concern “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.” Judge Reyna felt such a rigid rule would be in tension with with the central thrust of KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), which rejected the “rigid approach of the Court of Appeals” and articulated an “expansive and flexible approach” of determining obviousness. Judge Reyna also was troubled by the majority's reference to secondary considerations because he felt it “suggests, to some extent, that objective indicia are less important or less probative of obviousness or non-obviousness” than the other obviousness factors.