PTAB decision upholding patient imaging patent claims partially reversed by CAFC

PTAB decision upholding patient imaging patent claims partially reversed by CAFC

According to the CAFC, KSR [v. Teleflex] explicitly avoids such a rigid approach to obviousness

The U.S. Court of Appeals for the Federal Circuit (CAFC) has partially reversed and remanded a decision of the Patent Trial and Appeal Board (PTAB) that had found that Medivis, Inc. failed to show certain claims of Novarad Corp.’s patient imaging patent unpatentable as anticipated and also failed to show other claims unpatentable as obvious. The CAFC affirmed as to anticipation but reversed as to obviousness, holding that the Board relied on the wrong legal standard in finding no motivation to combine.

Novarad owns U.S. Patent No. 11,004,271, titled “Augmenting Real-time Views of a Patient with Three-dimensional Data.” Medivis challenged claims 1-6 and 11-20 via inter partes review (IPR) and the Board determined that none of the challenged claims were unpatentable. Medivis appealed to the CAFC, arguing that a prior art reference called “Doo” anticipated claims 1, 5 and 6 while claims 1-6 and 11-20 were obvious over the teachings of Doo and another prior art reference, “Amira”. As regards anticipation, the CAFC rejected Medivis’s argument that the Board erred in its claim construction of the phrase, “3D virtual shape,” which was not as broad as Medivis’s proposed construction, explaining that “[t]he Board is required to expressly construe claims only to the extent necessary to resolve the parties’ controversy.” The opinion further said that even under the broader construction, “substantial evidence supported the Board’s finding that Doo does not anticipate claim 1”. According to Medivis, the PTAB incorrectly interpreted the phrase “projected inner layer of the patient” to import a “volume” requirement, but the CAFC said the Board’s analysis was correct and that it did not import a volume requirement. Regarding obviousness however, the CAFC agreed with Medivis that the PTAB erred by “applying too rigid a standard in analyzing Medivis’s proposed motivation to combine Doo and Amira”. Medivis had also argued that the Board failed to consider the full record, but because the court agreed with Medivis on the first argument, it did not reach the second.

According to the PTAB, Medivis’s rationale that a person of ordinary skill in the art (POSA) would have been motivated to combine Doo and Amira “is so vague and broad that it could be applied to combine any two references because it merely asserts that one reference would ‘take advantage of the . . . technology disclosed in’ another.” According to the CAFC, the Board’s requirement that Medivis “provide a specific reason for a POSA to look to Amira, using Doo as the starting point,” was error. As per the opinion, KSR v. Teleflex, “explicitly avoids such a rigid approach to obviousness.” According to Medivis, Doo “recognized existing 3D imaging technologies faced problems with distraction and cognitive load, and Doo suggested its [augmented reality] AR system as an improvement”. Medivis also argued that combining Doo and Amira would reduce “cognitive load”. The CAFC agreed that there was substantial evidence to support both arguments and the overall motivation to combine and therefore reversed and remanded. Despite not reaching Medivis’s argument that the PTAB failed to consider all evidence, the court also instructed the Board on remand to consider the full scope of the record. The court wrote: “[W]e expect the Board will be mindful of the need to consider all relevant evidence in completing its obviousness analysis, including Medivis’s factual positions regarding the scope and content of the prior art.”