Board IPR obviousness decisions affirmed, appeal regarding canceled claim dismissed

Best Medical Int., Inc. v. Elekta Inc.

Docket No. 2021-2099, -2100 (IPR2020-0070-72) (


August 26, 2022

Brief Summary:   Board IPR obviousness decisions affirmed, appeal regarding canceled claim dismissed. Summary:  BMI appealed two IPR Board decisions finding the challenged claims of US 6,393,096 directed to methods and apparatus for radiation therapy of tumors based on the Board’s conclusion “that a person having ordinary skill in the art would have had formal computer programming experience” and discounting BMI’s expert testimony.  Two IPR petitions were filed by Varian Medical Systems and two “copycat petitions” were filed by Elekta, and the Board instituted two of those and joined Elekta as a party to Varian’s proceedings, but Varian eventually withdrew from the appeal.  While these IPRs were ongoing, a parallel ex parte reexamination of claims 1 and 18 initiated by Varian; in both the reexamination and IPR proceedings BMI canceled claim 1.  However, the Board nevertheless found claim 1 unpatentable in the IPR.  The FC panel explained that is has jurisdiction to consider the Board’s unpatentability decision regarding claims 43, 44 and 46 but not claim 1 because it became moot before BMI filed its appeal (Munsingwear, US 1950; Appeal, FC 2021 (Apple II); “no case or controversy” under Article III (Spokeo, US 2016)).  The FC panel also found the Board “reasonably concluded that it was required to address patentability of claim 1 absent any final cancelation” (SAS, US 2018; 35 USC section 318(a)), and found no error with the Board’s consideration of claim 1.  BMS argued in this appeal that “it suffered an injury in fact based on alleged collateral estoppel effects resulting from the Board’s unpatentability determination for claim 1 sufficient to confer us with Article III jurisdiction”.  The FC panel stated it saw no reason “why BMI could not challenge the Examiner’s findings and conclusions” by appealing the reexamination decision, knows of “no cases that would apply collateral estoppel in these circumstances, nor has BMI cited any” (SkyHawke, FC 2016), and “the potential for collateral consequences” is insufficient, on its own, to confer standing upon BMI” (Hyosung, FC 2019; ala. Mun., DC Cir 2002).  Regarding claims 43, 44 and 46 that were found obvious by the Board during the IPR proceedings, the FC panel first reviewed the Board’s characterization of the level of skill in the art as a question of fact for substantial evidence (Innovention Toys, FC 2011 (not “reweigh evidence”, acceptable if “reasonable mind might accept as adequate”)).  The FC panel reviewed a “non-exhaustive list of factors” for determining the level of skill in the art (e.g., educational level, type of problem, prior art solutions, rapidity of innovation, sophistication of technology, and “[t]he patent’s purpose” (Daiichi, FC 2007; DyStar, FC 2006)) and noted that “[b]efore the Board, the parties presented little evidence relating to these factors.”  The Board concluded an expert should have “computer programming experience” and that BMI’s expert did not and therefore did not credit his testimony, and the FC panel did not find this conclusion to be unreasonable or unsupported.  The FC panel also found no error with the Board’s claim construction based on the “plain claim language and written description” (Teva, US 2015 (intrinsic evidence)).  The FC panel also found no error with the Board’s conclusion of a motivation to combine the prior art with a reasonable expectation of success (“[t]he Board’s well-reasoned analysis” of Graham factors).  The Board’s decisions were therefore affirmed-in-part and dismissed-in-part.

This entry was posted in Appeal, Article III disputes, Inter Parties Review (IPR), IPR, Obviousness. Bookmark the permalink.

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