J&J unit's challenge to Intuitive surgery robot patent revived

(Reuters) - A federal appeals court on Friday revived a challenge by Johnson & Johnson unit Auris Health Inc to a patent held by rival Intuitive Surgical Operations Inc on a robotic tool used to perform surgery.

In a 2-1 ruling, a panel of the U.S. Court of Appeals for the Federal Circuit ordered the U.S. Patent and Trademark Office's patent tribunal to reconsider its decision that the 2012 patent, which covers a mechanism for more easily swapping out different surgical instruments on a robotic surgical arm, was not obvious in light of two earlier patents.

Lawyers for Auris and Intuitive could not immediately be reached for comment.

Robotic surgery is performed by robotic arms manipulating surgical instruments controlled by a human surgeon. The technology is meant to allow more precise control than conventional surgery.

According to a report by Research and Markets, the global robotic surgery market generated $5.46 billion in 2020. Auris is considered a major challenger to market leader Intuitive.

Auris petitioned the U.S. Patent Trial and Appeal Board to invalidate Intuitive' s patent in 2019, claiming it was obvious in light of two earlier patents by other inventors. Those patents covered, respectively, a type of robotic surgery interface and a robotic stand that could hold multiple instruments.

The PTAB found that the two earlier patents included all the elements of Intuitive's. However, it said the patent was not obvious because a person of ordinary skill would not have been motivated to combine them because of "skepticism at the time of the invention for using robotic systems during surgery in the first place."

Circuit Judge Sharon Prost wrote Friday that under the court's precedent, any known need or problem in a field could be a motivation to combine earlier inventions. Thus, she said, "generic industry skepticism cannot, standing alone," prevent a finding that a patent is obvious in light of earlier inventions.

Judge Timothy Dyk joined in the majority opinion, which vacated the PTAB's judgment and ordered it to reconsider.

Circuit Judge Jimmie Reyna dissented, saying that the PTAB's decision had not relied solely on general industry skepticism but also on expert testimony that the combination was not obvious. He also said he was "concerned that the majority opinion may reasonably be understood to announce an inflexible and rigid rule" that industry skepticism can never play a role in evaluating obviousness.

Intuitive has claimed in a 2018 lawsuit in Delaware federal court that Auris' robotic bronchoscopy device, used to get images of patients' airways, infringed the patent in the PTAB challenge, along with others. That lawsuit is scheduled to go to trial in January 2023.

The case is Auris Health Inc v. Intuitive Surgical Operations Inc, Federal Circuit U.S. Court of Appeals, No. 2021-1732.

For Auris: Ryan Morris of Sidley Austin

For Intuitive: Benjamin Saidman of Finnegan, Henderson, Farabow, Garrett & Dunner

Read more:

Johnson & Johnson to buy surgical robotics firm Auris for $3.4 billion

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