Federal Circuit Patent Watch: Experimental use doctrine and motivation to combine

Federal Circuit Patent Watch: Experimental use doctrine and motivation to combine

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Precedential Federal Circuit Opinions 

1.  SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. [OPINION]  (2020-1640, 4/29/22) (Prost, Reyna, Stoll)

Prost, J. Vacating in part a judgment of infringement because the district court erred in finding that a pre-critical date offer was experimental use. Under contract law, the offer agreement was primarily for commercial, rather than experimental reasons, at least because the seller agreed to provide the equipment at issue, a butane-blending system, in exchange for the buyer purchasing materials for the equipment, a minimum of 500,000 barrels of butane, from the seller. In addition, the testing described in the offer agreement indicates the sale was conditioned upon testing to ensure satisfactory operation or that the equipment is properly working as promised. Because the testing described in the offer agreement occurred to effectuate the sale, rather than the sale occurring to occasion the testing, the agreement was an offer for sale made to commercially exploit the invention rather than primarily for experimental purposes. The case is remanded to the district court to assess the validity of the claims in light of this offer for sale, namely whether the equipment sold anticipated or rendered obvious the claimed invention and that it was ready for patenting. 

2.  AURIS HEALTH, INC. v. INTUITIVE SURGICAL OPERATIONS [OPINION]  (2020-1640, 4/29/22) (Dyk, Prost, Reyna)

Prost, J. Vacating a final written decision finding claims not unpatentable because the Board impermissibly relied on general skepticism about the field of invention to find a lack of motivation to combine. The Board relied on expert testimony regarding skepticism toward telesurgery to find a skilled artisan would not have been compelled to further complicate the robotic surgery system of the primary reference. While evidence of industry skepticism may be a secondary consideration, the evidence must be specific to the invention, not generic to the field. And while specific evidence of industry skepticism related to a specific combination of references might contribute to finding a lack of motivation to combine, the evidence here is merely generic to the field. Because it is 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 case is remanded 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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