CAFC Partially Reverses PTAB Decision Upholding Patient Imaging Patent Claims

"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. The court emphasized that KSR v. Teleflex explicitly eschews such a rigid approach to obviousness, indicating the PTAB failed to properly apply flexible, common-sense reasoning when evaluating whether combining prior art references would have been obvious to one skilled in the art."

"With respect to 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.' Furthermore, even under the broader construction, substantial evidence supported the Board's finding that Doo does not anticipate claim 1."

The Federal Circuit partially reversed a PTAB decision regarding Novarad's patient imaging patent. The PTAB had found that Medivis failed to prove certain claims unpatentable as anticipated or obvious. The CAFC affirmed the anticipation findings, rejecting Medivis's arguments about claim construction for "3D virtual shape" and "projected inner layer of the patient." However, the CAFC reversed on the obviousness issue, determining that the PTAB applied an incorrect legal standard when analyzing motivation to combine the prior art references Doo and Amira. The court emphasized that KSR v. Teleflex eschews rigid approaches to obviousness analysis.

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