Federal Circuit Holds that General Industry Skepticism Cannot on its own Negate a Finding of Motivation to Combine

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

In Auris Health, Inc., v. Intuitive Surgical Operations, Inc., No. 2021-1732 (Fed. Cir. 2022), the Federal Circuit vacated and remanded a decision of the Patent Trial and Appeal Board that found there was no motivation to combine two references asserted to invalidate the claims of a challenged patent.  The Court reasoned that the Board “impermissibly rested its motivation‑to‑combine finding on evidence of general skepticism about the field of the invention.” The Court went on to explain that, “generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine.”  However, the Court did explain that evidence of industry skepticism may be relevant to an obviousness analysis as a secondary consideration.  In particular, the Court reasoned that where specific evidence of industry skepticism is presented that is related to a specific combination of references, such evidence may contribute to a lack of motivation to combine such references.