On August 23rd, the Federal Circuit upheld in part and reversed in part a decision from the Patent Trial and Appeal Board’s (PTAB or Board) concerning Ethicon’s patent on a robotic surgical tool, holding that the Board’s finding of no motivation to combine is not supported by substantial evidence. In doing so, the court determined the PTAB “went too far” in its holding of non-obviousness by requiring Intuitive to specifically identify a preexisting surgical device performing as many functions as required by the Ethicon patent; it was enough that the prior art established such a device was “at least possible.”

Ethicon and Intuitive Surgical are competitors in the surgical technology market. Ethicon owns U.S. Patent No. 8,616,431 directed to a tool mounting device for coupling a surgical tool to a robotic system with four output bodies to control five different motions or functions. Intuitive filed an inter partes review on anticipation and obviousness grounds. With respect to the obviousness grounds, Intuitive Surgical relied on the combination of two earlier patents – the “Tierney Patent” and the “Whitman Patent.”

The Tierney Patent disclosed a robotic surgical system where a number of different tool types can be coupled to a robotic manipulator. The device of the Tierney Patent comprises four rotary drive elements that control only four different motions. The Whitman Patent discloses a shifter that allows a single rotary output body to control more than one motion.

Ethicon did not dispute—either before the Board or on appeal—Intuitive’s assertion that the prior art teaches each and every limitation of all of the challenged claims. Ethicon’s sole argument before the Board was that a person of ordinary skill in the art would not have been motivated to combine the prior art references to arrive at the claimed invention. The Board agreed with Ethicon. The Board recognized that the combination of Whitman and Tierney would be able to perform more than the four functions disclosed in Tierney. However, it was unpersuaded that a person of ordinary skill would have been motivated to combine the references because Intuitive failed to identify a surgical instrument in the prior art that performed more than four functions. As a result, the PTAB determined there would be no need “to obtain a functionality for which there was no use.”

The Federal Circuit disagreed, finding, as an initial matter, the Board’s determination that Intuitive failed to identify a surgical instrument performing more than four functions was not supported by the evidence; Intuitive had, in fact, cited a third patent (the “Timm Patent”) disclosing at least five different functions. However, even without the Timm Patent, the Federal Circuit found Intuitive presented enough evidence that the combination of Whitman and Tierney rendered the challenged claims obvious.

The Federal Circuit found it was enough that the combination of Whitman and Tierney would allow for more than four functions; the prior art disclosed that a device performing more than four functions was “at least possible.” In light of this evidence, the Federal Circuit found the PTAB erred in requiring Intuitive to specifically identify a preexisting device that actually performed more than four functions.

This decision underscores that a finding of obviousness may result when a combination of prior art shows the claimed technology to be “at least possible”.

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Photo of Anisha Shenai-Khatkhate Anisha Shenai-Khatkhate

Anisha Shenai-Khatkhate is an associate in the Litigation Department. She is a commercial litigator with a particular emphasis on false advertising and consumer class actions, copyright disputes, and related intellectual property litigation. Anisha has experience representing and advising clients in a wide array…

Anisha Shenai-Khatkhate is an associate in the Litigation Department. She is a commercial litigator with a particular emphasis on false advertising and consumer class actions, copyright disputes, and related intellectual property litigation. Anisha has experience representing and advising clients in a wide array of industries including consumer products, music and entertainment, publishing, telecommunications, fashion and sports.

Anisha is an editor of and a frequent author for Proskauer’s advertising law blog, Proskauer on Advertising.

Prior to joining Proskauer, Anisha earned a B.A. in Neurobiology from Harvard University, and J.D. from Columbia Law School. While at Columbia, Anisha interned at Volunteer Lawyers for the Arts, helping to provide pro bono legal services to New York artists and arts organizations. She also served as an articles editor of the Columbia Science and Technology Law Review, and was the recipient of Columbia Law School’s Emil Schlesinger Labor Law Prize, awarded annually to the student most proficient in the subject of labor law.

Photo of Baldassare Vinti Baldassare Vinti

Baldassare (“Baldo”) Vinti co-chairs Proskauer’s Intellectual Property Litigation Group.

Baldo’s practice focuses on litigating patent, false advertising, trade secret, life sciences, trademark and contractual matters in federal and state courts and before the International Trade Commission. He is a seasoned trial attorney responsible…

Baldassare (“Baldo”) Vinti co-chairs Proskauer’s Intellectual Property Litigation Group.

Baldo’s practice focuses on litigating patent, false advertising, trade secret, life sciences, trademark and contractual matters in federal and state courts and before the International Trade Commission. He is a seasoned trial attorney responsible for all aspects of litigation, including Markman hearings, appeals before the Federal Circuit, case preparation and strategy, depositions, motion practice, and settlement negotiations. He has represented clients in high-stakes matters involving a broad range of technologies, including medical devices, diagnostics, immunoassays, prosthetics, pharmaceuticals, dental implants, electronic medical records systems, encryption technology, wound dressings, digital video compression, electronic book delivery and security systems, mobile media technologies, navigation and location-based services, bandwidth management, bar code scanning, lasers , and other technologies. Baldo has represented numerous major corporations, including Arkema S.A., British Telecommunications PLC, Church & Dwight Co., Inc., Henry Schein, Inc., Maidenform Brands Inc., Mitsubishi Electric Corp., Ossur North America Inc., Panasonic Corp., Sony Corp., Welch Foods, Inc., and Zenith Electronics LLC.

In addition, Baldo regularly handles transactional work, including intellectual property due diligence, licensing, intellectual property structural transactions, patentability studies, infringement/non-infringement opinions, and client counseling in intellectual property matters.

Baldo is an author and frequent commentator on patent issues pertaining to medical devices and a host of other intellectual property topics, and has been quoted in the National Law Journal, Bloomberg BNA, Law360, Westlaw Journal and Inside Counsel magazine. He is also a regular contributor of articles published in Medical Product Outsourcing magazine that deal with the medical device industry.

Baldo served as a judicial intern for Hon. John E. Sprizzo of the United States District Court for the Southern District of New York and for Hon. Charles A. LaTorella of the New York Supreme Court.