May 2, 2022Legal
Fresh From the Bench: Latest Federal Circuit Court Case


Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc., Appeal Nos. 2020-1640, -1641 (Fed. Cir. Apr. 29, 2022)

Our Case of the Week has a little bit for everyone, including analysis concerning, lost profits, reasonable royalties, enhanced damages, claim construction, and more. However, the primary issue was application of the experimental use exception to the on-sale bar. The experimental use exception, which traces to City of Elizabeth v. Am. Nicholson Pavement Co., 97 U.S. 126, 137 (1877), negates an on-sale or public use bar to patentability, allowing an inventor extra time to file the patent after exposing the invention to the public.

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By:  Nika Aldrich


Auris Health, Inc. v. Intuitive Surgical Operations, Inc., Appeal No. 2021-1732 (Fed. Cir. Apr. 29, 2022)

In an appeal from decisions the Patent Trial and Appeal Board made during an inter partes review, the Federal Circuit vacated and remanded, finding the PTAB performed an improper “motivation to combine” analysis. The patent concerned robotic surgical systems that allow clinicians to quickly swap out surgical instruments. Auris relied on the combination of two pieces of prior art. The only issue was whether a skilled artisan would have been motivated to combine the art to yield the patented invention. The Board concluded that there was no motivation to combine “when there is skepticism at the time of the invention for using robotic systems during surgery in the first place.” The Federal Circuit disagreed, holding that generic industry skepticism was not probative of the relevant inquiry. While skepticism may be relevant to objective indicia of non-obviousness, it has to be specific to the invention, not a general skepticism about the field.

Judge Reyna dissented, opining that the Board “relied on more than just general skepticism to find no motivation to combine” and that the Board had “dedicated several pages to explaining multiple reasons why Auris’s proffered motivation to combine was inadequate.”

The opinion can be found here.

By:  Nika Aldrich

Written by: Nika Aldrich and Scott Eads, Schwabe, Williamson & Wyatt

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