KSR : CAFC Alert

General industry skepticism may not be sufficient by itself to preclude a finding of motivation to combine

| August 2, 2022

Auris Health, Inc. v. Intuitive Surgical Operations, Inc.

Decided: April 29, 2022

Prost (author), Dyke, and Reyna (dissenting)


The Federal Circuit rejected the PTAB’s obviousness decision by holding that general industry skepticism is not relevant to the question of obviousness.


            In 2018, Intuitive Surgical sued Auris Health for patent infringement of U.S. Patent No. 8,142,447 (“the ’447 patent”).

The ’447 patent

            This patent is directed to robotic surgery systems. 

            The ’447 patent describes “an improvement over Intuitive’s earlier robotic surgery systems, which allow surgeons to remotely manipulate surgical tools using a controller.”

            The ’447 patent attempts to solve problems (doctors must swap out various surgical instruments and this step could be tricky in a robotic surgical system where space is limited, different ranges of motion must be calibrated for different surgical instruments, and time is need to interchange those instruments) in the surgery via a robotic system with a servo-pulley mechanism so that doctors could swap out surgical instruments and reduce surgery time, improve safety, and increase reliability of the system.


            The PTAB determined that the prior art references asserted by Aurie – Smith and Faraz – disclosed each limitation of the claims in the ’447 patent.

            The only remaining issue is whether a skilled artisan would have motivated to combine these two references.

            Smith discloses “a robotic surgical system that uses an exoskeleton controller, worn by a clinician, to remotely manipulate a pair of robotic arms, each of which holds a surgical instrument.”  Smith discloses that the clinician may direct an assistant to relocate the arms as necessary.

            Faraz is directed an adjustable support stand that holds surgical instruments.  Faraz discloses that its stand “may enable a surgeon to perform surgery with fewer assistants” because its stand “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.”

            Auris argued that a skilled artisan would be motivated to combine these references to decrease the number of assistants necessary for surgery.

            Intuitive argued that a skilled artisan would not be motivated to combine these 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.”

            The PTAB agreed with Intuitive that there is no motivation to combine these references because there is skepticism at the time of the invention for using robotic systems during surgery in the first place.

Federal Circuit

            The Federal Circuit held that general industry skepticism cannot, by itself, preclude a finding of motivation to combine.

            The Federal Circuit noted that the evidence of skepticism must be specific to the invention, not generic to the field and that Intuitive provided not case law to suggest that the PTAB can rely on generic industry skepticism to find a lack of motivation of combine.

            The Federal Circuit held that the PTAB was wrong to exclusively rely on Intuitive’s expert testimony that “there was great skepticism for performing telesurgery” at the time of the invention and, as a result, a skilled artisan “would not have been compelled to complicate Smith’s system further.”

            Therefore, the Federal Circuit remand for further consideration of the parties’ motivation-to-combine evidence.


            Judge Reyna noted that the PTAB’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.

            While Judge Reyna agreed that skilled artisans’ general skepticism toward robotic surgery, by itself, could be insufficient to negate a motivation to combine, he disagreed that it could never support a finding of no motivation to combine.

            Judge Reyna believes that the majority’s inflexible and rigid rule appears to be in tension with the central thrust of KSR (rejecting the “rigid approach of the Court of Appeals” and articulating an “expansive and flexible approach” of determining obviousness).


  • General industry skepticism may not be sufficient by itself to preclude a finding of motivation to combine.
  • Specific evidence of industry skepticism related to a specific combination of references might contribute to finding a lack of motivation to combine.

The Non-Obviousness of Obviousness Determinations: Even In Simple Technologies, It Can Be Difficult to Draw a Line in Obviousness Determinations

| January 9, 2013

C.W. Zumbiel Company, Inc. v. Kappos and Graphic Packaging International, Inc.

December 27, 2012

Panel: Prost, Moore, and Wallach.  Opinion by Wallach.  Dissent byProst.


This appeal arises out of an Inter Partes Reexamination before the Board of Patent Appeals and Interferences, the decision.   Both the patentee and the third-party requester appealed the Board’s decision, which indicated that certain claims were obvious and certain claims were nonobvious.   In this case, the Federal Circuit affirmed the Board’s entire decision.  The technology at issue involved a carton for a pack of cans (such as, e.g., soda cans) having a perforated flap portion that is torn and folded down to dispensing the cans.  This case highlights that even in non-complex technologies, it can be difficult to draw a line in obviousness determinations, and how when there are little possible variations in structure, if such variations lead to predictable results obviousness may be found (such as here in, e.g., claim 1), but that when there are little possible variations in structure, if other factors such as teaching away in the art, lack of incentive for such a modification exist, nonobviousness may be found (such as here in, e.g., claim 2).

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KSR Reigned In For A Preliminary Injunction

| January 18, 2012

Celsis in Vitro, Inc. v Cellzdirect, Inc. and Invitrogen Corp.

January 9, 2012

Panel:  Rader, Gajarsa, and Prost.  Opinion by Rader; Dissent by Gajarsa.


While Rader’s majority opinion affirmed the district court’s grant of a preliminary injunction despite defendant’s obviousness challenge, Gajarsa’s dissenting opinion asserts that the majority’s decision disregards the Supreme Court’s KSR flexible guidelines regarding the finding of obviousness in the mere repetition of well-known techniques to achieve a desired result, and in the application of “obvious to try.”  Gajarsa’s dissent also notes that this is a preliminary injunction, and the standard is not whether defendant has shown obviousness by clear and convincing evidence, but rather, whether defendant has shown a “substantial question of invalidity” to defeat a preliminary injunction.  Perhaps, the strongest position for the majority opinion is its consideration of the showing of a “teaching away” in the record, as well as deference given to the district court’s determinations of credibility of the parties’ expert witnesses.

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