Auris Health, Inc. v. Intuitive Surgical Operations, Inc., No. 21-1732 (Fed. Cir. 2022)
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Intuitive’s 447 patent relates to robotic surgery systems and describes an improvement over Intuitive’s earlier robotic surgery systems, which allow surgeons to remotely manipulate surgical tools using a controller. The invention embodied by the patent attempts to address difficulties in swapping tools via a robotic system with a servo-pulley mechanism, which allows clinicians to more quickly swap out surgical instruments and thereby reduce surgery time, improve safety, and increase the reliability of the system.
Following inter partes review of all five claims of the patent, the Patent Trial and Appeal Board determined that Auris failed to demonstrate that the claims were unpatentable as obvious. 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 would not have been motivated to combine those references. The Federal Circuit vacated. The Board impermissibly rested its motivation-to-combine finding on evidence of general skepticism about the field of invention. The Board recited Auris’s evidence that combining prior art would reduce the number of assistants but also Intuitive’s evidence that such a combination would come at the expense of precision required for surgery.
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