United States Court of Appeals 

for the Federal Circuit ______________________ 

AURIS HEALTH, INC.,

Appellant

v.

INTUITIVE SURGICAL OPERATIONS, INC.,

Appellee

______________________ 

2021-1732

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2019-

01533.

______________________ 

Decided: April 29, 2022

______________________ 

RYAN C. MORRIS, Sidley Austin LLP, Washington, DC, 

argued for appellant. Also represented by THOMAS 

ANTHONY BROUGHAN, III; CHING-LEE FUKUDA, New York, 

NY; PAUL J. ROGERSON, Chicago, IL. 

 BENJAMIN AARON SAIDMAN, Finnegan, Henderson, 

Farabow, Garrett & Dunner, LLP, Atlanta, GA, argued for 

appellee. Also represented by JACOB ADAM SCHROEDER, 

Palo Alto, CA; DANIEL C. TUCKER, Reston, VA. 

 ______________________ 

Before DYK, PROST, and REYNA, Circuit Judges. 

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2 AURIS HEALTH, INC. v. INTUITIVE SURGICAL OPERATIONS

Opinion for the court filed by Circuit Judge PROST. 

Dissenting opinion filed by Circuit Judge REYNA. 

PROST, Circuit Judge. 

Auris Health, Inc. (“Auris”) petitioned for inter partes 

review of all five claims of Intuitive Surgical Operations, 

Inc.’s (“Intuitive”) U.S. Patent No. 8,142,447 (“the ’447 patent”). In its final written decision, the Patent Trial and 

Appeal Board (“Board”) determined that Auris failed to 

demonstrate that the claims were unpatentable as obvious. 

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

No. IPR2019-01533, Paper 45, 2021 WL 826396 (P.T.A.B. 

Mar. 3, 2021) (“Final Written Decision”). 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 wouldn’t have 

been motivated to combine those references. Auris appeals. Because the Board impermissibly rested its motivation-to-combine finding on evidence of general skepticism 

about the field of invention, we vacate and remand.

BACKGROUND

The ’447 patent relates to robotic surgery systems. 

Specifically, the ’447 patent describes an improvement over 

Intuitive’s earlier robotic surgery systems, which allow 

surgeons to remotely manipulate surgical tools using a controller. ’447 patent col. 1 ll. 42–52. Surgery often requires 

a variety of surgical instruments like scissors, scalpels, and 

graspers, and clinicians must swap out instruments as 

they move from one surgical task to the next. Instrument 

swapping can prove tricky in a robotic surgical system 

where space is limited, different ranges of motion must be 

calibrated for different surgical instruments, and time is 

needed to interchange those instruments. The invention 

embodied by the ’447 patent attempts to address such difficulties via a robotic system with a servo-pulley mechanism, which allows clinicians to more quickly swap out

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AURIS HEALTH, INC. v. INTUITIVE SURGICAL OPERATIONS 3

surgical instruments and thereby reduce surgery time, improve safety, and increase reliability of the system. 

Id. at col. 2 ll. 50–57.

The Board determined that Auris’s asserted prior-art 

combination—Smith and Faraz—disclosed each limitation 

of the challenged claims. See U.S. Patent No. 5,624,398

(“Smith”); U.S. Patent No. 5,824,007 (“Faraz”). The only 

issue that remained was whether a skilled artisan would 

have been motivated to combine Smith and Faraz. Final 

Written Decision, 2021 WL 826396, at *8. 

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 Abstract, Fig. 1A. Smith teaches

using a servo-pulley system to mimic the clinician’s movements in the robotic arms. Id. at col. 6 ll. 46–67. However, 

Smith also provides that the clinician “may direct [an] 

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4 AURIS HEALTH, INC. v. INTUITIVE SURGICAL OPERATIONS

assistant to relocate the robot[ic] arms” as necessary. 

Id. at col. 8 ll. 48–51. 

Faraz discloses an adjustable support stand that holds 

surgical instruments. Faraz Abstract, Fig. 1. Faraz’s 

stand can be adjusted either manually or robotically. 

Id. at col. 6 ll. 23–29. Faraz provides 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.” Id. at col. 6 ll. 30–43. 

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Before the Board, Auris argued that a skilled artisan 

would be motivated to combine Smith and Faraz to decrease the number of assistants needed during surgery by 

roboticizing some of their tasks. Intuitive responded that 

a skilled artisan wouldn’t have been motivated to combine 

the 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.” Final Written Decision, 2021 WL 826396, 

at *7–8. 

The Board agreed with Intuitive and concluded that 

“the evidence . . . supports the position [that] there is no 

motivation to complicate Smith’s system when there is 

skepticism at the time of the invention for using robotic 

systems during surgery in the first place.” Id. at *9. On 

appeal, Auris challenges the Board’s reliance on general 

skepticism about the field of robotic surgery to find a lack 

of motivation to combine. We have jurisdiction under 

28 U.S.C. § 1295(a)(4)(A). 

DISCUSSION

The motivation-to-combine inquiry asks whether a 

skilled artisan “not only could have made but would have 

been motivated to make the combinations . . . of prior art 

to arrive at the claimed invention.” Belden Inc. v. Berk-Tek

LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted). As to the “would have” question, “any need or problem 

known in the field of endeavor at the time of invention and 

addressed by the patent can provide a reason for combining 

the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). It follows that generic 

industry skepticism cannot, standing alone, preclude a 

finding of motivation to combine. 

To be sure, evidence of industry skepticism may play a 

role in an obviousness inquiry—but as a secondary consideration in a significantly different context. See WBIP, 

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6 AURIS HEALTH, INC. v. INTUITIVE SURGICAL OPERATIONS

LLC v. Kohler Co., 829 F.3d 1317, 1335–36 (Fed. Cir. 2016). 

Yet even then, the evidence of skepticism must be specific 

to the invention, not generic to the field. Id. Although Intuitive suggests that the Board may consider generic industry skepticism in a motivation-to-combine analysis to 

“place [itself] in the minds of” skilled artisans, Appellee’s 

Br. 40–41 (citing Interconnect Plan. Corp. v. Feil, 774 F.2d 

1132, 1138 (Fed. Cir. 1985)), it offers no case law to suggest 

that the Board can rely on generic industry skepticism to 

find a lack of motivation to combine. And while specific

evidence of industry skepticism related to a specific combination of references might contribute to finding a lack of 

motivation to combine, that’s not what we have here. 

Here, the Board almost exclusively relied on evidence 

of general skepticism about the field of robotic surgery to 

find a lack of motivation to combine Smith and Faraz. In 

doing so, it credited Intuitive’s vague 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.” Final Written Decision, 2021 WL 826396, 

at *8. This is insufficient. 

It’s unclear how the Board would parse its impermissible reliance on general industry skepticism from the rest of 

the record evidence on motivation to combine. The Board 

recited Auris’s evidence that combining Smith and Faraz

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. It would be inappropriate for this court to weigh that evidence in the first 

instance on appeal. We therefore remand this case to the

Board to examine the sufficiency of the record evidence to 

establish that there was a motivation to combine utilizing 

the correct criteria. 

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AURIS HEALTH, INC. v. INTUITIVE SURGICAL OPERATIONS 7

CONCLUSION

We have considered the parties’ remaining arguments 

but find them unpersuasive. For the foregoing reasons, we 

vacate the Board’s Final Written Decision and remand for 

further consideration of the parties’ motivation-to-combine

evidence. 

VACATED AND REMANDED

COSTS

No costs. 

Case: 21-1732 Document: 44 Page: 7 Filed: 04/29/2022
United States Court of Appeals 

for the Federal Circuit ______________________ 

AURIS HEALTH, INC.,

Appellant

v.

INTUITIVE SURGICAL OPERATIONS, INC.,

Appellee

______________________ 

2021-1732

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2019-

01533.

______________________ 

REYNA, Circuit Judge, dissenting.

I respectfully dissent. In my view, the Board’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. See In re Magnum 

Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016)

(“We review the Board’s legal conclusion of obviousness de 

novo, and underlying factual findings for substantial evidence.”); Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 

(1938) (Substantial evidence “means such relevant evidence as a reasonable mind might accept as adequate to 

support a conclusion.”). 

I agree with the majority that skilled artisans’ general 

skepticism toward robotic surgery, by itself, could be 

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2 AURIS HEALTH, INC. v. INTUITIVE SURGICAL OPERATIONS

insufficient to negate a motivation to combine. But I disagree that it could never support a finding of no motivation 

to combine. In any event, the Board here relied on more 

than just general skepticism to find no motivation to combine. In fact, the Board dedicated several pages to explaining multiple reasons why Auris’s proffered motivation to 

combine was inadequate. 

First, the Board credited Dr. Choset’s testimony, supported by evidence, that “there was great skepticism for 

performing telesurgery, and because of this skepticism one 

of ordinary skill in the art at the time of the invention 

would not have been compelled to complicate Smith’s system further by including a robotic surgical stand.” Auris 

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

No. IPR2019-01533, 2021 WL 826396, at *8 (P.T.A.B. 

Mar. 3, 2021) (emphases added). Second, the Board found 

that the petitioner failed to “articulate how one would have 

combined Smith and Faraz to achieve the stated goal of reducing the number of assistants,” given that “Smith’s exoskeleton has no remaining input degrees of freedom to 

control Faraz’s stand.” Id. at *9. Third, the Board credited 

Dr. Choset’s testimony that the combination would be unacceptable because it “would have limited a physician’s 

ability to manipulate Smith’s servo-pulley tray and related 

components.” Id. Fourth, the Board credited Dr. Choset’s 

unrebutted testimony that adding joints to the system to 

achieve Auris’s proposed combination would “make[] it 

more difficult for the mechanical components in each joint 

to work with the amount of precision that is required for 

surgery” and would “create[] an effect known as ‘slop,’ 

which makes it increasingly difficult to track the position 

of each joint, as joint components and linkages bend or gear 

components experience backlash.” Id. The Board’s determination was therefore supported on multiple grounds and 

did not solely rest on a vague “general skepticism” of robotic surgery. 

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I am also concerned that the majority opinion may reasonably be understood to announce an inflexible and rigid 

rule, namely that it is “impermissible” for the Board to consider evidence of artisans’ skepticism toward robotic surgery in determining motivation to combine. I find no 

authority for this assertion, and indeed it appears in tension, at a minimum, with the central thrust of KSR. See 

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) (rejecting the “rigid approach of the Court of Appeals” and articulating an “expansive and flexible approach” of 

determining obviousness). This is particularly true when 

considering art in fields of endeavor that are inherently 

dangerous or risky. Indeed, in past cases, this court has 

accounted for the attitudes of medical professionals toward 

certain types of procedures when determining whether a 

motivation to combine has been adequately demonstrated. 

See, e.g., Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 

688 F.3d 1342, 1369 (Fed. Cir. 2012) (finding no motivation 

to combine where “doctors were not using the disclosed devices and methods to heal wounds with negative pressure 

because they did not believe that these devices were capable of such healing”). We have also considered whether, as 

in this case, added complexity would have dissuaded a person of ordinary skill in the art from combining references. 

See, e.g., Henny Penny Corp. v. Frymaster LLC, 938 F.3d 

1324, 1332 (Fed. Cir. 2019) (affirming the Board’s finding 

of no motivation to combine where the Board “credited Frymaster’s expert’s testimony that following Iwaguchi’s 

method of diverting and cooling the oil in Kauffman’s system would introduce ‘additional plumbing and complexity’”). These exemplary cases call into question the 

majority’s holding that it was “impermissible” for the 

Board to rely on Dr. Choset’s testimony that (i) physicians 

were skeptical of robotic surgery at the time of invention, 

and (ii) this skepticism would have dissuaded a skilled artisan from adding complexity by making the proposed combination. 

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4 AURIS HEALTH, INC. v. INTUITIVE SURGICAL OPERATIONS

I recognize that the majority states that skepticism 

“may play a role in an obviousness inquiry—but as a secondary consideration.” Maj. Op. 5. But this assertion suggests, to some extent, that objective indicia are less 

important or less probative of obviousness or non-obviousness than the other Graham factors. The majority cites no 

case in which this court has endorsed that view, and in fact 

that view appears inconsistent with a number of our opinions. See, e.g., Apple Inc. v. Samsung Elecs. Co., 839 F.3d 

1034, 1048 (Fed. Cir. 2016) (en banc) (“A determination of 

whether a patent claim is invalid as obvious under § 103 

requires consideration of all four Graham factors, and it is 

error to reach a conclusion of obviousness until all those 

factors are considered.”); Pro-Mold & Tool Co. v. Great 

Lakes Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir. 1996) (“It 

is the secondary considerations that are often most probative and determinative of the ultimate conclusion of obviousness or nonobviousness. The district court did not 

provide reasons for apparently discounting Pro-Mold’s evidence of secondary considerations; that was error as a matter of law.”); Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 

1378 (Fed. Cir. 2012) (“These objective guideposts are powerful tools for courts faced with the difficult task of avoiding subconscious reliance on hindsight.”). 

In sum, the majority overlooks multiple reasons why 

the Board found the proffered motivation to combine insufficient. It also announces a new legal principle that I believe conflicts with KSR and its progeny. For these 

reasons, I dissent.

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