IP Law Daily, PATENT—Fed. Cir.: Radiation therapy patent claims ruled invalid based on obviousness, (Aug 26, 2022)

By Brian Craig, J.D.

The Board properly concluded that a skilled artisan would have had computer programming experience and discounted an expert’s testimony.

In an appeal concerning the validity of a radiation therapy patent, the U.S. Court of Appeals for the Federal Circuit has held that the Patent Trial and Appeal Board did not err in concluding that the patent claims are unpatentable based on obviousness. The Federal Circuit ruled that the Board properly found that a skilled artisan would have had computer programming experience and that the Board had substantial evidence to find the radiation therapy patent claims are unpatentable. The Board considered but discounted the testimony of an expert without computer programming experience and gave greater weight to the testimony of another expert with computer programming experience, the Federal Circuit found (Best Medical International Inc. v. Elekta Inc., August 26, 2022, Stoll, K.).

Best Medical International Inc. (BMI) owns U.S. Patent No. 6,393,096 (the ’096 patent) which is generally directed to a method and apparatus for conformal radiation therapy of tumors using a pre-determined radiation dose. The ’096 patent purports to improve upon prior art approaches to radiation therapy by computing an optimal radiation beam arrangement that maximizes radiation of a tumor while minimizing radiation of healthy tissue. Elekta Inc. brought two inter partes review (IPR) proceedings challenging the ’096 patent. While these IPRs were underway, a parallel ex parte reexamination was ongoing. The patent examiner in the reexamination rejected claim 1 of the ’096 patent based on statutory and obviousness-type double patenting. Rather than arguing the merits of the examiner’s rejection, BMI canceled claim 1. The Board found that the other claims of the ’096 patent are unpatentable based on obviousness. The Board found that a person having ordinary skill in the art would have had formal computer programming experience. The Board accordingly discounted the testimony of BMI’s expert who lacked computer programming experience. BMI appealed the Board’s decision.

Standing. The Federal Circuit first ruled that the patent owner lacked standing to challenge claim 1. BMI admitted during oral argument that it canceled claim 1 prior to filing its notice of appeal. As a result, there was no case or controversy regarding claim 1’s patentability. BMI pointed to a statement made by the patent examiner during reexamination of one of BMI’s other patents in support of the alleged injury. But non-appealable issues and judgments are without preclusive effect and the Federal Circuit held that the potential for collateral consequences is insufficient to support standing. Therefore, BMI lacks standing to appeal the Board’s patentability determination for claim 1 and the court lacks jurisdiction over that part of the appeal.

Obviousness. Next, the Federal Circuit held that substantial evidence supports the Board’s obviousness finding. The Board properly found that a person having ordinary skill in the art would have had formal computer programming experience based on the patent claims. BMI’s expert lacked computer programming experience while Elekta’s expert had computer programming experience. The Board considered and discounted BMI’s expert testimony, who lacked computer programming experience. Thus, the Board had substantial evidence to support the finding that the patent claims are obvious based on the prior art, the expert testimony, and the other evidence.

Claim construction. Finally, the Federal Circuit held that the Board did not err in construing the claims. Based on the plain claim language and written description, the panel found no error in the Board’s determination that the claims broadly allow for a set of computers to perform the steps described in the claims. Substantial evidence—including the references themselves and expert testimony—supports the Board’s finding that the combined computer-implemented functions described in prior art references meet the recited “entering” and “using” steps. Accordingly, the Federal Circuit affirmed the Board’s decision.

The case is Nos. 2021-2099 and 2021-2100.

Attorneys: Barry J. Coyne (Webb Law Firm) for Best Medical International, Inc. Ronald S. Lemieux (Squire Patton Boggs LLP) for Elekta Inc.

Companies: Best Medical International, Inc.; Elekta Inc.

Cases: Patent FedCirNews GCNNews