Skin cancer scanning system found to be obvious on appeal. CANFIELD v. MELANOSCAN

Once a patent is granted, the patent is not immune from review. If a member of the public discovers prior art which would anticipate (35 U.S.C. §102) or render a patented invention obvious (35 U.S.C. §103), that member of the public can request an inter partes review (IPR). IPR is a trial proceeding conducted at the Patent Trial and Appeal Board (PTAB) to review the patentability of one or more claims in a patent. The evidence that can be submitted in an IPR is limited to patents or printed publications which would qualify under §§ 102 or 103 and expert testimony to explain those publications. At the conclusion of an IPR the PTAB may invalidate all, some or none of the claims of the patent.

Obviousness under 35 U.S. Code § 103 is a question of law, based on underlying factual findings. Whether an invention is obvious is an objective test based on the prior art and a person having ordinary skill in that art. Prior art is the sum of all knowledge in a given field of technology. Research papers, granted patents, patent applications, and other forms of printed publications are all examples of prior art. The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention.

Relevant underlying factual questions related obviousness include, whether a prior art reference teaches away, whether a skilled artisan would have been motivated to combine references, and a skilled artisan’s reasonable expectation of success in combining references.

CANFIELD SCIENTIFIC, INC. v. MELANOSCAN, LLC, 19-1927 (C.A.F.C. 2021) is an example of a case where a finding of patentability was reversed on appeal because the Federal Circuit found the invention to be obvious.

MELANOSCAN owns U.S. Patent No. 7,359,748. The ’748 patent “relates to the detection, diagnosis and treatment of skin cancer as well as other diseases and cosmetic conditions of the visible human.” The invention claimed in the ‘748 patent is an enclosure fitted with cameras and lights arranged in a manner that “allows for the imaging of total or subtotal non-occluded body surfaces in order to detect health and cosmetic conditions and involves the measurement and analysis of an optically depicted image of a patient’s surfaces.”

Canfield petitioned for Inter Partes Review of the ‘748 patent in 2017 on the grounds that the patent was obvious in light of the prior art. Canfield cited five references in its petition for review: Voigt, Hurley, Crampton, Daanen, and Dye. Each of the prior art references disclosed a method of imaging a three dimensional object, such a person to analyze and measure physical features. Voigt discloses a method of imaging a patient’s skin to measure and analyze it. However Voigt cannot image the entire surface of a patient because the patient is placed against a wall. Canfield relied on the combination of Voigt with the other items of prior art to demonstrate obviousness.

The Patent Trial and Appeal Board concluded that Canfield failed to show how combining Voigt with the other prior art references would make the ‘748 patent obvious. Specifically the Board found that Canfield failed to demonstrate that a person of ordinary skill in the art of imaging would not have been motivated to combine Voigt with the other references. Canfield appealed the Board’s decision to the Court of Appeals for the Federal Circuit.

The Federal Circuit noted that obviousness is a question of law, and receives de novo determination on appeal. On appeal Canfield argued that it would have been obvious to use known or obvious multiple imaging systems in known or obvious enclosures having the object being imaged at the center of the enclosure. In Voigt the object is placed against a wall of the enclosure, and Hurley and Crampton show the object placed at the center of the enclosure. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. The Federal Circuit held that the subject matter described in the ‘748 patent would have been obvious to a person having ordinary skill in the art because the patent was a combination of elements from the prior art the disclosed predictable results. The Federal Circuit reversed the Board’s finding of patentability and remanded the case for further proceedings.

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