February 24, 2021
Authored and Edited by Connor M. McGregor; Amanda K. Murphy, Ph.D.; Brooke M. Wilner
In Canfield Sci., Inc. v. Melanoscan, LLC, No. 19-1927 (Fed. Cir. Feb. 18, 2021), the Federal Circuit applied KSR v. Teleflex to reverse in part the PTAB’s decision of nonobviousness.
Canfield petitioned for inter partes review of Melanoscan’s U.S. Patent No. 7,359,748 (the ’748 patent), asserting that various combinations of five prior art references rendered the claims obvious. The PTAB disagreed, finding all challenged claims nonobvious and thus patentable. Canfield appealed.
The ’748 patent “relates to the detection, diagnosis and treatment of skin cancer as well as other diseases and cosmetic conditions.” The claimed invention describes an enclosure with an arrangement of multiple cameras and lights vertically and laterally spaced on opposite sides of a centerline and adjustable to obtain an image of a person. The image can then be used to diagnose various skin diseases.
Canfield’s primary reference, Voigt, like the ’748 patent, “describe[d] an enclosure containing cameras and lights, for analyzing and measuring images on the skin of a patient.” But the Voigt reference did not indicate multiple cameras spaced out vertically and laterally on opposite sides of a centerline. Further, Voigt specifically placed the person to be imaged along a back wall, thus preventing them from being imaged from all sides at once, a key component of the ’748 patent.
Three other references asserted by Canfield described multiple camera systems used for photo-imaging, albeit with different end objectives. For example, one reference described a three-dimensional imaging device for use in made-to-measure apparel and other body measuring applications. Another described a multiple camera system for imaging a person to create their virtual avatar. The references taught several benefits of using multiple camera systems, including allowing imaging of the front, side and back of a body; enhancing an image by providing different camera angles; and increasing resolution and reducing shadowing effects of an image. And two of the references placed the person to be imaged at the center of the multiple camera system.
The PTAB held that a person of ordinary skill in the art of photo imaging would not have been motivated to combine Voigt with the other multiple camera system references. The PTAB heavily relied on Voight’s disclosure that the person to be imaged would be located along a back wall. This location, the Board found, would block the view of any cameras placed on the back side, as disclosed in the other asserted references. Holding that the ordinarily skilled artisan would not have combined the asserted references, the Board found the challenged claims patentable.
On appeal, Canfield argued that the PTAB misapplied the law of obviousness, and that the combined teachings of the prior art would reasonably have suggested all the elements of the independent claims to a person of ordinary skill in photo imaging.
The Federal Circuit agreed, citing KSR Int’l Co. v. Teleflex for the principle that “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” 550 U.S. 398, 416 (2007).
Although Voigt placed the person being imaged at a back wall, the Court emphasized that the other asserted references taught both multiple camera systems, spaced out vertically and laterally, and the known advantages of locating the person to be imaged centrally relative to the cameras. The Court thus concluded that the ’748 patent’s independent claims were obvious. Because the PTAB initially only ruled on the independent claims, the Federal Circuit vacated and remanded the remaining challenged claims for further proceedings.
Patent Trial and Appeal Board (PTAB), United States Court of Appeals for the Federal Circuit (CAFC), prior art
Copyright © 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
10th Annual Georgia Asian Pacific American Bar Association Gala
May 29, 2024
Atlanta
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.