Canfield Scientific, Inc v Melanoscan, LLC, (Fed Cir, 2019-1927)

On February 18, 2021 the U.S. Court of Appeals for the Federal Circuit (“CAFC”) released a significant opinion in an appeal brought by Canfield Scientific, Inc. (“Canfield”), overturning a finding of non-obviousness of the U.S. Patent Trial and Appeal Board (“the Board”).

Although unsuccessful before the Board, on appeal Canfield succeeded in its challenge of several key claims of U.S. Patent No. 7,359,748 (“the ‘748 patent”), a patent owned by Melanoscan, LLC (“Melanoscan”). In reversing in part and vacating in part the decision by the Board, the CAFC held that the Board erred in ruling that all the claims of the ‘748 patent were patentable.

Background

The ‘748 patent relates to the detection, diagnosis and treatment of skin cancer as well as other diseases and cosmetic conditions. More specifically, it is a device with an enclosure fitted with cameras and lights arranged to image non-occluded body surfaces to detect health conditions.

An embodiment of the disclosed invention in the ‘748 patent wherein the device is in an octagonal shape with lights and cameras surrounding and the subject in the middle.

In challenging the patentability of the ‘748 patent, Canfield filed an inter partes review (“IPR”), a proceeding that allows a party to question the patentability of the claims of a patent after its issuance by the United States Patent and Trademark Office. Canfield petitioned against claims 1-8, 11, 30, 32-34, 46 and 51 of the ‘748 patent, asserting that various combinations of several prior art references would have reasonably suggested the subject matter of the challenged claims, thus rendering them unpatentable for obviousness.

The main reference, “Voigt”, disclosed every limitation with the exception of having the subject placed along a rear wall and having cameras not spaced vertically, laterally and along a center-line. “Hurley” and “Crampton” disclosed open, three-dimensional body imaging systems where the subject was indeed placed in the center. A fourth reference disclosed an imaging system that used many cameras around the subject and a final reference was relevant to the dependent claims.

In its initial decision, the Board found Canfield’s petition to be unpersuasive, holding all of the challenged claims to be patentable. Agreeing with Melanoscan’s expert, the Board reasoned that a person of ordinary skill in the art would not have been motivated to combine the references because the physical structures in Voigt would have blocked the cameras in Hurley. [8]

Analysis

On appeal, Canfield had two points of contention. First, that the Board mistakenly refused to consider arguments and evidence that Canfield presented and second, that the Board misapplied the law of obviousness thereby erring in ruling the claims to be patentable [2].

Combination of Known Elements Is Obvious

In further considering Canfield’s evidence and arguments, the CAFC agreed 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 CAFC explained that the references show the subject having various placements i.e., against a wall or placed in the middle, and also show cameras laterally and vertically spaced to each other on a center-line [14]. Citing the U.S. Supreme Court decision of KSR Int’l Co v Teleflex, the CAFC relied on 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” [14].

As such, it was held that the subject matter described in independent claims 1 and 51 would have been obvious to a person of ordinary skill in the art. The CAFC did not rule on the challenged dependant claims, thereby remanding the case back to the Board for further proceedings.

Commentary

This decision demonstrates an example of when the court will render the claims of a patent obvious for simply combining familiar elements and is a win for Canfield in its ongoing patent dispute with Melanoscan over melanoma screening technology.

Importantly, these proceedings are also a reminder to patent litigants that that all arguments and evidence presented before the Board should be considered in obviousness determinations.

For more information on obtaining IP protection for your assets, please contact a professional at PCK Intellectual Property.

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