BEST MEDICAL INTERNATIONAL, INC. v. ELEKTA INC.

Varian Medical Systems, Inc. filed two IPR petitions  challenging claims of U.S. Patent No. 6,393,096 (which is generally directed to a method and apparatus for conformal radiation therapy of tumors using a pre-determined radiation dose) and, after the Board instituted review in both IPRs, Elekta filed copycat petitions and was joined as a party to Varian’s IPRs.  In one of the two IPRs, the Board determined that Elekta had proven that claim 1 was unpatentable as obvious but had not done so for claim 18. In the other IPR, the Board determined that Elekta had proven that claims 43, 44, and 46 were unpatentable as obvious. Best Medical International (BMI) appeals.  BMI first argues that the Board lacked authority to consider claim 1’s patentability because that claim was canceled before the Board issued its final written decision, rendering the patentability question moot. Because BMI had canceled claim 1 “without prejudice or disclaimer,” the CAFC finds no error in the Board addressing claim 1’s patentability. However, since BMI finally canceled claim 1 prior to filing its notice of appeal in this case, there was no case or controversy regarding claim 1’s patentability at that time, and the CAFC finds that BMI therefore lacks standing to appeal the Board’s patentability determination for claim 1, and that the CAFC lacks jurisdiction over this part of BMI’s appeal which is dismissed. With respect to the other claims, BMI challenges the Board’s findings regarding the level of skill in the art, motivation to combine, and reasonable expectation of success, as well as the Board’s claim construction. The Board, faced with competing expert testimony and little supporting evidence from either party, concluded that a skilled artisan would have had formal computer programming experience, and in view of the limited and conclusory treatment the parties gave this issue the CAFC finds this conclusion was reasonable and supported by substantial evidence. After finding no error in the Board’s claim interpretation, the CAFC concludes that the Board’s analysis for both whether there would have been a motivation to combine the prior art references and whether a skilled artisan would have had a reasonable expectation of success in doing so was well-reasoned and supported by substantial evidence. The CAFC therefore affirms the Board’s determination that claims 43, 44, and 46 are unpatentable as obvious.

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