Check your skills and reputation | McDermott Will & Emery


The US Court of Appeals for the Federal Circuit dismissed part of an obviousness appeal by the Patent Trial & Appeal Board (Board) because the patentee had no authority to contest the decision relating to any of the claims. The court also did so in part because the board’s definition of a person of ordinary skill in the art was not unreasonable or unsupported by evidence. Best Medical International, Inc. v. Elekta Inc., cases #21-2099; -2100 (Federal Circ. 29 Aug 2022) (Hughes, Linn, stoleyy)

Best Medical International (BMI) holds a patent directed to a method and apparatus for conformal radiation therapy of tumors using a predetermined dose of radiation. The board has introduced two between the parties Examination Requests (IPR) submitted by Varian Medical Systems and Elekta. A parallel during the pendency of the IPR procedure ex parte a re-examination was in progress. After the introduction of intellectual property rights, the examiner in re-examination rejected claim 1, which the BMI subsequently canceled “without prejudice or disclaimer”. After BMI overturned Claim 1, the Chamber issued its final written decision in the IPR proceedings. The board found that BMI had set aside claim 1 during reconsideration, but concluded that claim 1 “had not yet been set aside by final action” because BMI “had not filed a statutory waiver of claim 1.” The board therefore examined the merits of Elekta’s patentability challenge and found claim 1 to be manifestly unpatentable. The board made a separate decision on the other claims, finding one claim patentable and the others unpatentable. BMI appealed.

The Federal Circuit began analyzing whether BMI was entitled to challenge the Chamber’s invalidation of Claim 1, now set aside. BMI tried to invoke it Munsingwear Vacation, which allows courts to overturn underlying decisions on matters that have become contentious during their pendency. First, the court found that the board had the authority to invalidate the claim because it had not been definitively set aside at the time of the board’s final written decision. Speaking of BMI Vacation Elekta argued that BMI does not have the right to appeal the decision regarding the voided claim. BMI countered that it suffered damage sufficient to establish standing under Article III because it believed that the examiner could apply a protective foreclosure with respect to other claims in another patent undergoing reexamination. The court was unconvinced by this argument, in part because BMI could not cite any case law applying collateral forfeiture in this manner. The court found that Munsingwear Vacation was unreasonable because the disputed event did not occur during the pendency of the Complaint – it occurred before the Complaint was filed. The court therefore concluded that BMI had no standing to challenge the Chamber’s decision in relation to the claim now set aside.

Regarding the other claims that the board considered unpatentable, BMI challenged the board’s finding that a person of average skill must have formal experience in computer programming. The Federal Constitutional Court listed the non-exhaustive list of factors used to determine the required skill level in the field, including “(1) the inventor’s level of education; (2) nature of problems encountered in the art; (3) prior art solutions to these problems; (4) speed with which innovations are made; (5) maturity of technology; and (6) level of education of active workers in the area.” The parties did not provide the board with evidence of these factors, so the board relied on the entire court record to reach its conclusion. Under the principle of substantial evidence, which does not permit a reconsideration of evidence, the court upheld the panel’s decision because it was not unreasonable or unsupported by evidence. The court also considered BMI’s objections to the board’s interpretation of certain claim terms, its findings on the prior art teachings, and its findings on the motivation for the combination. The court found these objections unconvincing and therefore upheld the board’s findings of obviousness.

Practical note: This case raises two important points. First, Munsingwear Vacation cannot be used to overturn decisions where the disputed event occurred prior to the filing of the appeal. Second, where there is clear disagreement about the level of expertise, the parties should present arguments based on the non-exhaustive list of factors identified by the Federal Circuit, particularly where a finding to the contrary would place a party’s expert outside of any of the stated definitions.

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