This morning the Federal Circuit released two precedential opinions in patent cases. The first comes in an appeal from the Patent Trial and Appeal Board, and the court vacates and remands the Board’s decision over a dissent by Judge Reyna. The second comes in an appeal and cross-appeal from a district court decision, and the court affirms-in-part, reverses-in-part, and vacates-in-part. Here are the introductions to the opinions.

Auris Health, Inc. v. Intuitive Surgical Operations, Inc. (Precedential)

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.

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.”).

Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc. (Precedential)

U.S. Venture, Inc. and U.S. Oil Co., Inc. (collectively, “Venture”) appeal the judgment of the Northern District of Illinois that Venture infringed patents owned by Sunoco Partners Marketing & Terminals L.P. (“Sunoco”). Sunoco cross-appeals. As to Venture’s appeal, we first reverse the district court’s determination that the experimental-use doctrine insulates a subset of asserted patent claims from the on-sale bar, vacate the infringement judgment as to those claims, and remand for the district court to analyze the second prong of the on-sale bar. Second, we vacate the infringement judgment with respect to patent claims that we affirmed are invalid in a separate appeal. Third, we adopt the district court’s claim constructions and affirm its infringement judgment regarding two patent claims. Fourth, we vacate the district court’s decision to treble the damages award, remanding for further proceedings. On the cross-appeal, we affirm the district court’s decisions to deny lost-profits damages and to award a $2 million reasonable royalty