IP Law Daily, PATENT—Fed. Cir.: Motivation to combine reversed in surgical augmented reality system dispute, (Mar 3, 2026)

By Kevin M. Finson, J.D.

The PTAB erred in its findings on obviousness because it applied the wrong standard of law, incorrectly requiring that the party attempting to show obviousness prove a direct link from one prior art reference to the other.

A party challenging the obviousness of a competitor’s patent properly showed motivation to combine two prior art references, the U.S. Court of Appeals for the Federal Circuit has held. It was only necessary to show that one reference recognized a problem in the existing art and that the other reference addressed that problem. It was not necessary to show a direct connection between the two references (Medivis, Inc. v. Novarad Corp., No. 24-1794 (Fed. Cir. Mar. 3, 2026)).

Novarad Corp. (Novarad) was the owner of U.S. Patent No. 11,004,271 (the ’271 patent), which related to an augmented reality environment in which a surgeon could view virtual elements projected onto real-time views of a patient using a headset. The patent claimed improvement over the prior art in that prior system displayed information on a screen which would require the surgeon to shift his or her view back and forth between the screen and the patient, raising the possibility of errors. Medivis, Inc. (Medivis) petitioned for inter partes review of the’271 patent, challenging claims 1-6 and 11-20. The Patent Trial and Appeal Board (PTAB) instituted review and found that Medivis had failed to show claims 1, 5, and 6 unpatentable as anticipated or any of the challenged claims were unpatentable as obvious. Medivis appealed.

Anticipation. Medivis argued that that the board erred in finding that a prior art reference in question did not anticipate claim 1 because it did not render a 3D shape. The reference instead referred to “false 3D” or “2.5D” modalities. The court found that Medivis’s arguments were all essentially disagreements with the facts found by the board as to the teachings of the prior art, and that in each respect the board’s findings were supported by substantial evidence in the form of the plain language of the prior art reference. Arguments framed as claim construction did not change this determination because even under Medivis’s proposed construction the factual findings would not change.

Obviousness. Medivis argued that the board applied the incorrect legal standard as to motivation to combine as part of the obviousness analysis and did not consider all of the evidence in the record. The court found that the board had required Medivis to present a specific reason for a person of ordinary skill in the art to look from one prior art reference to the other, and that this was more than the law required. It was sufficient to show, as Medivis had below, that one prior art reference recognized a problem in the art and that the other reference could address that problem. Because the board had erred on the motivation to combine the court did not reach the question of whether the board had considered all of the relevant evidence.

The court affirmed the decision of the board as to anticipation and reversed as to obviousness.

The Case is No. 24-1794.

Judge: Prost, S.

Attorneys: Betty H. Chen (Desmarais LLP) for Medivis, Inc. Joseph Harmer (Thorpe North & Western, LLP) for Novarad Corp.

Companies: Medivis, Inc.; Novarad Corp.

Cases: Patent FedCirNews