2 opinions in the patent, trademark, design patent, and trade dress categories. Rule 36 affirmances and non-IP dispositions excluded.
In De Bellis v. Oracle Corporation, the Federal Circuit dismissed the appeal from a Patent Trial and Appeal Board decision in IPR2024-00221 pursuant to Federal Rule of Appellate Procedure 42(b) based on the parties' stipulation. The court ordered that each side bear its own costs and issued the order as mandate on March 3, 2026.
Panel: Prost, Clevenger, Taranto
The Federal Circuit affirmed-in-part, reversed-in-part, and remanded the Board's final written decision in an IPR involving Novarad Corp.'s U.S. Patent No. 11,004,271, which relates to augmented reality systems for projecting three-dimensional medical imaging data onto real-time views of patients during surgery. The court affirmed the Board's determination that substantial evidence supported its finding that the Doo reference did not anticipate claims 1, 5, and 6, rejecting Medivis's arguments that the Board improperly construed or failed to construe claim terms like "3D virtual shape" and "projected inner layer." The court reversed, however, on obviousness, holding that the Board applied an impermissibly rigid standard in evaluating whether a person of ordinary skill would have been motivated to combine Doo with the Amira reference.
On the motivation-to-combine analysis, the court found that the Board erred by requiring Medivis to provide overly specific reasons for combining the references in a particular order, rather than asking whether the prior art as a whole suggested the desirability of the combination. The court held that Medivis's showing—that Doo identified cognitive load problems with existing 3D imaging technologies like Amira, and that Doo's AR system would be an improvement—was sufficient under KSR to establish motivation to combine. The Board also erred in rejecting the cognitive-load rationale by misconstruing Medivis's argument as requiring further reduction when Doo already addressed the problem, rather than recognizing that implementing conventional imaging (Amira) within Doo's AR framework would itself reduce cognitive load relative to separate display screens.