IP Law Daily, PATENT—Fed. Cir.: Jury’s infringement verdict against dental equipment manufacturer affirmed on appeal, (Sep 4, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Substantial evidence supported patent infringement and rejection of obviousness claims.

The United States Court of Appeals for the Federal Circuit affirmed a federal district court’s judgment holding that a dental equipment manufacturer infringed a medical imaging technology company’s asserted patents and rejecting the defendant’s claims of invalidity based on obviousness. The appellate court found that substantial evidence supported the jury's verdict on liability and invalidity (Osseo Imaging, LLC v. Planmeca USA Inc., No. 23-1627 (Fed. Cir. Sept. 4, 2024)).

Background. The plaintiff/appellee, Osseo Imaging, LLC, specializes in medical and dental imaging technology, particularly in diagnostic imaging systems that leverage X-ray and tomographic techniques. The defendant/appellant, Planmeca USA Inc., is a significant player in the dental imaging industry and develops and markets products, including the ProMax 3D imaging systems, which provide dental professionals with advanced imaging capabilities.

Osseo Imaging asserted three patents against Planmeca, all relating to orthopedic imaging systems and X-ray beam techniques for generating tomographic and densitometric models. The patents involved were U.S. Patent Nos. 6,381,301 (the ’301 patent), 6,944,262 (the ’262 patent), and 8,498,374 (the ’374 patent). These patents collectively relate to orthopedic imaging systems that use X-ray beam techniques to generate tomographic and densitometric models. Specifically, the systems allow for the quantitative calculation of bone density and the generation of three-dimensional (3D) models of anatomical structures.

Osseo filed this lawsuit alleging that Planmeca's ProMax 3D imaging systems infringed the asserted patents. Osseo argued that the accused systems used patented techniques for generating 3D models and calculating bone density, thus infringing on its intellectual property. Planmeca denied the infringement claims and argued that the patents were invalid due to obviousness.

In October 2020, the court granted Planmeca’s motion for summary judgment of noninfringement based on the doctrine of equivalents, but denied the motion as to literal infringement and the invalidity defenses. A jury trial was held in August 2022. The jury found Planmeca liable for infringement of all asserted claims but one, none of the asserted claims were invalid due to obviousness, and Planmeca was entitled to reasonable royalty of $2,300,000. After the trial, Planmeca filed a motion for judgment as a matter of law (JMOL), which the district court denied. Planmeca appealed, contesting both the infringement and non-obviousness rulings.

Expert testimony. One of the critical issues in the appeal was whether Osseo's technical expert, Dr. Omid Kia, was qualified to provide testimony. Planmeca argued that Dr. Kia did not have the requisite years of diagnostic imaging experience at the time of the patents' invention, which would disqualify him from offering expert testimony on the matter.

The appellate court rejected this argument, noting that Planmeca had not filed a motion to exclude Dr. Kia’s testimony at trial under the standards established in Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993) and instead sought to challenge the weight of his testimony post-trial. Citing Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022), the appellate court held that an expert needs only to possess ordinary skill in the art to offer testimony and that Planmeca’s proposed requirement for an expert to have specific experience at the time of invention was unsupported by law.

Infringement analysis. The appellate court also reviewed the evidence supporting the jury’s finding of infringement. Planmeca contended that its ProMax 3D systems did not practice key limitations of the asserted claims, such as densitometry (quantitative bone density calculation), tomographic modeling (merging multiple tomographic scans), and comparing 3D densitometry models.

The court upheld the jury’s findings, stating that substantial evidence supported the conclusion that the ProMax systems performed the claimed methods. The Federal Circuit noted that the systems’ use of Hounsfield Unit (HU) values, which correspond to bone density, satisfied the densitometry limitation. Similarly, Dr. Kia’s testimony established that the systems generated tomographic models by merging data from multiple scans, thus meeting the tomographic modeling requirement.

In reviewing Planmeca's arguments, the appellate court emphasized that it would not reweigh the evidence or substitute its own judgment for that of the jury. The court cited Amgen Inc. v. Hospira, Inc., 944 F.3d 1327 (Fed. Cir. 2019), stating that a jury’s factual findings are upheld if supported by substantial evidence, as they were in this case.

Obviousness claims. Planmeca’s second argument on appeal was that the district court erred in denying its JMOL on the issue of obviousness. It asserted that its expert, Dr. Norbert Pelc, had demonstrated that the claimed inventions were obvious in light of prior art references.

The appellate court, however, found that Osseo had presented sufficient evidence to support the jury’s finding of non-obviousness. Dr. Kia’s testimony refuted Planmeca’s claims, explaining that the combination of the prior art references would not have been obvious to a person of ordinary skill in the art. The court cited Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342 (Fed. Cir. 2012), noting that whether there is a reason to combine prior art references is a factual question for the jury and that substantial evidence supported the jury's conclusion in this case.

Conclusion. Finally, the Federal Circuit affirmed the district court’s ruling, upholding the jury’s verdict that Planmeca had infringed Osseo’s patents and that the patents were not invalid for obviousness.

The Case is No. 23-1627.

Judge: Stoll, K.

Attorneys: Seth O. Strow (Meister Seelig & Fein PLLC) for Osseo Imaging, LLC. Wasif Qureshi (Jackson Walker LLP) for Planmeca USA Inc.

Companies: Osseo Imaging, LLC; Planmeca USA Inc.

Cases: Patent FedCirNews DelawareNews