Two patents held obvious, "no question" that motivation to combine references existed

November 16, 2006
Post by Blog Staff

Optivus Technology sued Ion Beam Applications (IBA) for infringing its patents relating to the use of proton beams in cancer therapy, and specifically to proton beam therapy facilities with multiple treatment rooms using the same proton source. In addition to patent infringement, Optivus also claimed violations of California and Florida unfair competition laws and a Lanham Act "false statement" claim. The district court granted summary judgment of invalidity of the asserted patents as obvious and no unfair competition or Lanham Act violation. Both parties appealed. Ultimately, the Federal Circuit affirmed that both patents were invalid. More details of the case after the jump.The Federal Circuit agreed with the district court that the asserted patents were obvious, and thus invalid. Specifically, Optivus argued that there would be no motivation to combine two pieces of prior art to produce the invention, namely a neutron therapy facility at the University of Washington and a Conceptual Design Report (CDR) discussing proton beam cancer therapy from the date it was first proposed, 1946, to the date of its publication. The CDR discussed proton, neutron, and other particle therapy methods, stating that protons had advantages over neutron and other methods. Based on this evidence, the court stated that there was

no question that the CDR establishes that a person having a working familiarity with particle beam technology as it relates to cancer treatment, motivated by the need for more effective and efficient proton therapy facilities, would have been led to combine the University of Washington's neutron therapy facility with the proton beam therapy design outlined in the CDR.
Having found the necessary motivation to combine references, the court upheld the lower court's finding of obviousness. The lower court's finding of invalidity of other patent was also affirmed based on the scope of a prior art reference. The parties only disputed whether a preexisting therapy facility practiced a safety system meeting an element of the claim requiring "verifying" a beam request. The court affirmed that the facility did use such a step, and thus affirmed the lower court's invalidation of the second patent. The court reversed and remanded two of Optivus's claims, the California unfair competition claim and the Lanham Act claim. This is yet another case where the Federal Circuit has found patents obvious after the Supreme Court granted review in KSR International Co. v. Teleflex Inc., where the Supreme Court will decide whether the Federal Circuit's requirement for a teaching, suggestion, or motivation to combine or modify references is a necessary prerequisite to finding a patent obvious. One thing that is obvious: the Federal Circuit is trying to tell the Supreme Court not to reverse in KSR. The question is, is the Supreme Court listening? To read the complete decision, click here.

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