Background
Intuitive Surgical, Inc. is the maker of the da Vinci robotic surgery system and holds patents covering various aspects of robotic surgical technology. Auris Health (now a subsidiary of Johnson & Johnson) filed inter partes review (IPR) petitions challenging Intuitive Surgical’s patents on robotic surgical systems, arguing that the claimed inventions were obvious in light of a combination of prior art references related to minimally invasive surgical tools and robotic control systems.
The Patent Trial and Appeal Board (PTAB) upheld Intuitive Surgical’s patent claims, concluding that a person of ordinary skill in the art would not have had a sufficient motivation to combine the prior art references because there was a general skepticism in the industry at the relevant time about the feasibility and safety of using robotic systems in surgery. Auris Health appealed, arguing that the PTAB had applied an overly broad conception of “skepticism” to defeat an otherwise well-supported obviousness combination.
The Court’s Holding
The Federal Circuit reversed and remanded. Writing for the panel, Judge Dyk held that the PTAB had erred by relying on generalized industry skepticism about robotic surgery as a basis for concluding there was no motivation to combine the specific prior art references at issue. The court held that in an obviousness analysis, skepticism must be specific — it must relate to the particular problem that the claimed combination addresses, not to the broader field of technology in which the invention operates.
Widespread skepticism about whether robotic surgery could work safely in a general sense says nothing about whether a skilled artisan would have been motivated to combine the specific hardware and control system elements recited in the prior art references. If the skepticism does not directly undermine the specific combination proposed by the petitioner, it cannot serve as a complete answer to a motivation-to-combine showing. The court emphasized that KSR International v. Teleflex and the general obviousness framework require a flexible, common-sense assessment of whether a skilled artisan would have been motivated to combine prior art teachings, and generalized field-level doubt is not sufficient to override that analysis.
The Federal Circuit remanded for the PTAB to conduct the proper, targeted skepticism analysis tied to the specific combination at issue.
Key Takeaways
- Industry skepticism can be relevant to motivation to combine in obviousness analysis, but only if the skepticism is specifically directed at the combination proposed — not at the broader technology field.
- A general industry belief that a technology category is infeasible does not, by itself, negate a motivation to combine specific prior art references that together teach the claimed elements.
- PTAB panels must carefully tie secondary-consideration evidence (including skepticism) to the specific combination at issue rather than relying on a broad field-level narrative.
- Patent owners defending obviousness challenges should present targeted evidence showing that skilled artisans specifically doubted the proposed combination, not just the broader technology area.
Why It Matters
Auris Health v. Intuitive Surgical clarifies an important limitation on the use of “industry skepticism” as a secondary consideration in patent validity challenges. Secondary considerations — including long-felt need, failure of others, commercial success, and skepticism — are legitimate evidence that can support a finding of non-obviousness. But the Federal Circuit’s decision confirms that these considerations must be specifically tied to the claimed invention and the particular combination at issue, not invoked as a general shield for an entire technology category.
This matters especially in rapidly evolving industries like medical robotics, autonomous vehicles, and AI-enabled devices, where broad skepticism about new technology categories can be genuine but may not track the specific technical combinations being analyzed in any given patent dispute. After this decision, PTAB and district courts must demand more rigorous nexus between the skepticism evidence and the specific obviousness combination, rather than permitting broad field-level doubt to substitute for claim-specific analysis.