FC panel reverses IPR finding of no obviousness and vacates decision as to dependent claims that the Board did not discuss separately

Canfield Scientific, Inc. v. Melanoscan, LLC

Docket No. 2019-1927 (IPR2017-02125) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1927.OPINION.2-18-2021_1735559.pdf)

NEWMAN, DYK, REYNA

February 18, 2021

Brief Summary:  Board IPR decision of no obviousness reversed as to independent claims and vacated the decision as to the dependent claims (e.g., ““[t]he Board did not discuss the dependent claims separately”). Summary:  Canfield appealed Board IPR decision finding it had not shown Melanoscan’s US 7,359,748 relating imaging devices “for the identification of maladies that effect human tissue” (e.g., skin) obvious in view of five references.  The FC panel considered the Board’s decision de novo (factual considerations for substantial evidence (Belden, FC 2015)), the “four primary factors” of Graham (US 1966) and “aspects such as the motivation to select and combine specified teachings of the prior art” described in KSR (US 2007).  It explained that the Board found that Canfield ‘failed to set forth any persuasive reason why a person of ordinary skill in the art would have further modified the combination of Voigt and Hurley (which already would have included three sets of imaging devices) to further include the ‘arrangement of arrays’ of Daanen’” and “that Canfield’s “Petition is devoid of any persuasive explanation of how Voigt’s position framework could have been modified to simultaneously employ both Hurley’s arrangement of imaging sensors and Daanen’s arrangement of arrays, or of why a person of ordinary skill in the art would have had reason to simultaneously use both Hurley’s imaging sensors and Daanen’s arrays.”  The FC panel disagreed, finding instead that the subject matter of independent claims 1 and 51 would have been obvious and reversed that decision (e.g., “‘The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.’ KSR.”)  The FC panel also explained that “[t]he Board did not discuss the dependent claims separately, on ruling that independent claims 1 and 51 are patentable” and therefore vacated and remanded the decision as to the dependent claims.