Medivis, Inc. v. Novarad Corp.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MEDIVIS, INC.,
Appellant
v.
NOVARAD CORP.,
Appellee
______________________
2024-1794
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2023-
00042.
______________________
Decided: March 3, 2026
______________________
ADAM STEINMETZ, Desmarais LLP, Washington, DC,
argued for appellant. Also represented by T AEG SANG CHO,
J OHN M. D ESMARAIS , New York, NY; BETTY H. CHEN, San
Francisco, CA.
J ED H. HANSEN, Thorpe North & Western, LLP, Salt
Lake City, UT, argued for appellee. Also represented by
J OSEPH HARMER .
______________________
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MEDIVIS, INC. v. NOVARAD CORP. 2
Before P ROST , CLEVENGER , and T ARANTO, Circuit Judges.
P ROST , Circuit Judge.
Medivis, Inc. (“Medivis”) appeals a final written deci-
sion of the Patent Trial and Appeal Board (“Board”) in an
inter partes review challenging claims 1–6 and 11–20 of
U.S. Patent No. 11,004,271 (“the ’271 patent”) owned by
Novarad Corp. (“Novarad”). Medivis, Inc. v. Novarad
Corp., No. IPR2023-00042, Paper 35, 2024 WL 967381
(P.T.A.B. Mar. 6, 2024) (“Decision”). The Board found that
Medivis failed to show that (1) claims 1, 5, and 6 were un-
patentable as anticipated; and (2) claims 1–6 and 11–20
were unpatentable as obvious. We affirm as to anticipation
and reverse and remand as to obviousness.
BACKGROUND
The ’271 patent relates to augmenting real-time views
of a patient with three-dimensional (“3D”) data. ’271 pa-
tent Abstract. It describes an augmented reality (“AR”) en-
vironment in which a surgeon views, through an AR
headset, virtual elements projected onto real-time views of
the patient. The patent aims to address issues with con-
ventional medical imaging systems, which provide 3D data
on computer display screens separately disposed from the
patient. Id. at col. 2 ll. 49–55. Specifically, it describes the
problem of a surgeon operating on a patient’s internal anat-
omy having to shift her view from the patient to a computer
display and back to the patient. Accurately tracking a lo-
cation while constantly switching one’s gaze back and forth
is difficult and error-prone. Id. at col. 2 ll. 56–63. For ex-
ample, the surgeon might accidentally identify the wrong
location and make unnecessary incisions.
To avoid such errors, the ’271 patent describes methods
of automatically aligning or registering the 3D data “with
a real-time view of the actual patient” so that “images de-
rived from the 3D data may be projected onto the real-time
view of the patient.” Id. at col. 3 ll. 21–27. In one
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MEDIVIS, INC. v. NOVARAD CORP. 3
embodiment, an AR headset augments a real-time view of
the patient with a virtual box, within which one or more
inner layers, such as bones, are contained. Id. at col. 4 ll.
42–46 & Fig. 1. Claim 1 is illustrative:
1. A method for augmenting real-time, non-image
actual views of a patient with three-dimensional
(3D) data, the method comprising:
identifying 3D data for the patient, the 3D data in-
cluding an outer layer of the patient and multiple
inner layers of the patient; and
displaying, in an augmented reality (AR) headset,
one of the inner layers of the patient from the 3D
data projected onto real-time, non-image actual
views of the outer layer of the patient, the projected
inner layer of the patient from the 3D data being
confined within a volume of a virtual 3D shape.
Id. at claim 1.
Medivis filed a petition for inter partes review of the
’271 patent, challenging claims 1–6 and 11–20. Relevant
here are two of Medivis’s grounds: (1) anticipation of claims
1, 5, and 6 by prior-art reference Doo;1 and (2) obviousness
over Doo in view of Amira.2 In its final written decision,
the Board determined that none of the challenged claims
were shown to be unpatentable. Decision, 2024 WL
967381, at *13.
Medivis timely appealed, and we have jurisdiction un-
der 28 U.S.C. § 1295(a)(4)(A).
1 International Publication No. WO 2015/164402.
2 Amira 5 User’s Guide (Visage Imaging 2009) (ex-
cerpted at J.A. 1205–1321).
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MEDIVIS, INC. v. NOVARAD CORP. 4
D ISCUSSION
Medivis argues two grounds on appeal—that it pre-
sented sufficient evidence showing: (1) Doo anticipates
claims 1, 5, and 6 of the ’271 patent; and (2) claims 1–6 and
11–20 would have been obvious over the teachings of Doo
and Amira.
I
Anticipation is a question of fact reviewed for substan-
tial evidence, Synopsys, Inc. v. Mentor Graphics Corp., 814
F.3d 1309, 1317 (Fed. Cir. 2016), which is “such relevant
evidence as a reasonable mind might accept as adequate to
support a conclusion,” Novartis AG v. Torrent Pharms.
Ltd., 853 F.3d 1316, 1324 (Fed. Cir. 2017) (citation omit-
ted). We review the Board’s claim constructions, whether
implicit or explicit, de novo. Google LLC v. EcoFactor, Inc.,
92 F.4th 1049, 1057–59 (Fed. Cir. 2024).
Regarding anticipation, Medivis argues: (a) the Board
erred by not construing “3D virtual shape,” and that Doo
meets claim 1 under its preferred construction; (b) the
Board erred in its implicit construction of “projected inner
layer”; and (c) notwithstanding the Board’s constructions,
Doo’s Figure 11 also meets claim 1. We address each issue
in turn.
A
Medivis argues the Board erred by not construing “3D
virtual shape” to encompass the outer layer of the patient,
as allegedly disclosed in Doo’s figures. We disagree. The
Board is required to expressly construe claims only to the
extent necessary to resolve the parties’ controversy. Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
F.3d 1013, 1017 (Fed. Cir. 2017). The Board explained that
the parties’ different proposed constructions did not affect
the Board’s finding that Doo failed to disclose “the pro-
jected inner layer of the patient from the 3D data being
confined within a volume of a virtual 3D shape.” Decision,
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MEDIVIS, INC. v. NOVARAD CORP. 5
2024 WL 967381, at *4. Thus, the Board proceeded as our
law prescribes—deciding only the claim-construction is-
sues necessary to resolve the dispute before it.
Even under Medivis’s broader construction of “3D vir-
tual shape,” substantial evidence supports the Board’s
finding that Doo does not anticipate claim 1. In its petition,
Medivis’s anticipation argument relied on Doo’s Figure 7,
which illustrates a “false 3D” or “2.5D” modality “in which
a two-dimensional image can be wrapped around a three
dimensional structure, namely the body surface of the pa-
tient,” Doo at ¶ 75, and Figures 8 and 9, which further “il-
lustrate the concept of image wrapping as introduced in . . .
Figure 7,” id. at ¶ 76. The Board rejected this argument,
finding that Doo’s technique “avoids rendering a 3D shape
. . . (hence calling these ‘false 3D shapes’).” Decision, 2024
WL 967381, at *5 (emphasis in original). Substantial evi-
dence supports the Board’s finding that Doo’s self-de-
scribed “false 3D” or “2.5D” images are not 3D virtual
shapes. Even if the claim “encompasses virtual 3D shapes
as simple as a box and as complex as the outer layer of a
patient,” J.A. 145, Medivis has not shown how the “false
3D” images of Doo constitute the claimed “virtual 3D
shape.” Doo explains they are not 3D shapes.
B
We turn next to Medivis’s argument that the Board im-
plicitly—and incorrectly—construed “projected inner layer
of the patient” to import a “volume” requirement. We see
no error in the Board’s analysis. The Board rejected Me-
divis’s argument that the image in Doo’s Figure 7, allegedly
confined within the volume of Doo’s false 3D shape (or
“curved plane”) shown in Figure 9, could meet the claimed
“projected inner layer of the patient from the 3D data being
confined within a volume of a virtual 3D shape.” J.A. 168;
Decision, 2024 WL 967381, at *4–6. In so doing, the Board
found that “Doo’s curved plane does not, in fact, have a vol-
ume.” Decision, 2024 WL 967381, at *5. Thus, there could
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MEDIVIS, INC. v. NOVARAD CORP. 6
be no “projected inner layer” that is “confined within a vol-
ume of a virtual 3D shape,” as the claim requires. The
Board did not require the claimed “projected inner layer”
to have a volume, and indeed, did not need to reach that
issue.
C
Medivis’s final argument on anticipation is that Doo’s
Figure 11 also discloses a “projected inner layer of the pa-
tient from the 3D data being confined within a volume of a
virtual 3D shape.” We hold that substantial evidence sup-
ports the Board’s finding that Doo’s Figure 11 does not dis-
close this element.
The Board found that rather than depicting a virtual
box (i.e., a 3D shape), Figure 11 instead discloses that 2D
images may be “sequentially exhibited,” thereby producing
a “fly through 3D” modality. Decision, 2024 WL 967381,
at *7. Again, this is not a “virtual 3D shape” having a “vol-
ume,” as the claims require. Substantial evidence thus
supports the conclusion that Doo does not anticipate claims
1, 5, and 6.
In all, substantial evidence supports the Board’s deter-
mination that Doo does not anticipate the claims. Me-
divis’s claim-construction arguments discussed above are,
at heart, disagreements with the Board’s factual determi-
nations, for which we hold there is substantial evidence
support. Medivis does not otherwise demonstrate error in
the Board’s anticipation analysis.
II
We turn next to obviousness, which is a question of law
based on underlying factual determinations. Belden Inc. v.
Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015).
Whether a person of ordinary skill in the art (“POSA”)
would have been motivated to combine prior-art references
with a reasonable expectation of success is one such fact
question, which we review for substantial evidence. PAR
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MEDIVIS, INC. v. NOVARAD CORP. 7
Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1193
(Fed. Cir. 2014).
Medivis argues that the Board’s finding of no motiva-
tion should be reversed because it is predicated on the
wrong legal standard and is not supported by substantial
evidence. Medivis also argues that the Board erred by fail-
ing to consider the full record of relevant evidence. We
agree with Medivis on former, and therefore, do not reach
the latter.
A
“The motivation-to-combine analysis is a flexible one.
‘Any need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide
a reason for combining the elements in the manner
claimed.’” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th
1373, 1379 (Fed. Cir. 2023) (emphasis removed) (cleaned
up) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007)). The Board erred here by applying too rigid a
standard in analyzing Medivis’s proposed motivation to
combine Doo and Amira.
Before the Board, Medivis argued that a POSA would
have been motivated to combine the two references to “en-
able the intra-operative medical image viewing system and
method disclosed in Doo to take advantage of the visuali-
zation technology disclosed in Amira.” J.A. 172. The Board
found that “[Medivis’s] rationale is so vague and broad that
it could be applied to combine any two references because
it merely asserts that one reference would ‘take advantage
of the . . . technology disclosed in’ another.” Decision, 2024
WL 967381, at *9. The Board also rejected Medivis’s argu-
ment that the reduction of “cognitive load” is a valid reason
to take conventional imaging, which may be displayed on a
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MEDIVIS, INC. v. NOVARAD CORP. 8
computer screen as in Amira, and integrate it in an AR en-
vironment.3 Id.
The Board erred by requiring Medivis to provide a spe-
cific reason for a POSA to look to Amira, using Doo as the
starting point. KSR explicitly eschews such a rigid ap-
proach to obviousness. 550 U.S. at 418 (“[T]he analysis
need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a [POSA]
would employ.”). As we have explained, “[t]here is a moti-
vation to combine when a known technique ‘has been used
to improve one device, and a [POSA] would recognize that
it would improve similar devices in the same way.’” PACT,
61 F.4th at 1380 (quoting KSR, 550 U.S. at 417).
Here, Medivis demonstrated that Doo recognized exist-
ing 3D imaging technologies faced problems with distrac-
tion and cognitive load, and Doo suggested its AR system
as an improvement. J.A. 399. Amira is one such existing
3D imaging technology. Thus, the problems known to
those in the field at the time would appear to suggest a mo-
tivation to combine the teachings of Doo and Amira. Me-
divis also provided an explicit reason in its original petition
to combine these teachings—that Doo’s AR system would
“take advantage” of Amira’s visualization technology. J.A.
172. In other words, it would be “advantage[ous]” to com-
bine Doo and Amira, as it would enable Doo’s intra-opera-
tive medical image viewing system to benefit from the
functionality of Amira’s medical imaging. In these circum-
stances, this is sufficient to demonstrate a motivation to
combine. Rather than requiring a specific reason to modify
a particular prior-art reference with another, in a certain
order, “the question is whether there is something in the
3 Novarad does not argue that the Board erred in
considering Medivis’s arguments made in its reply to the
Board.
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MEDIVIS, INC. v. NOVARAD CORP. 9
prior art as a whole to suggest the desirability, and thus
the obviousness, of making the combination.” See In re Ful-
ton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (cleaned up).
The Board also erred in rejecting Medivis’s argument
that the combination of Doo and Amira would reduce cog-
nitive load. The Board faulted Medivis for failing to ex-
plain why a POSA would use Amira’s display to “further
reduce cognitive load,” when Doo itself already presents a
solution for the cognitive load problem. Decision, 2024 WL
967381, at *9. This misunderstands Medivis’s argument—
that a POSA, starting with a conventional 3D imaging
technology like Amira, would have been motivated to im-
plement such 3D imaging in the AR system of Doo, which
would be an “improvement.” J.A. 399.
Doo describes the problems of distraction and com-
pounding of cognitive load that result from a surgeon hav-
ing to look away from the patient toward separate display
screens. Doo at ¶¶ 3–5. Such problems would be encoun-
tered by a user of Amira’s technology, where imaging is
provided on a conventional computer screen. Thus, the AR
system of Doo presents a solution by managing the “multi-
tude of medical images needed to be viewed by a surgeon
during an operation . . . so that a surgeon is not required to
look away from the patient,” and therefore “the surgeon
does not have to sustain heavy cognitive loading.” Doo at
¶ 10. Again, this is sufficient to show that the prior art as
a whole “suggests the desirability” of the combination. Ful-
ton, 391 F.3d at 1200.
Thus, substantial evidence does not support the
Board’s finding of no motivation to combine. To the con-
trary, the record requires finding that a POSA would have
been motivated to combine Doo and Amira. We reverse the
Board’s no motivation-to-combine finding and remand for
the Board to consider the full scope of Medivis’s obvious-
ness challenge based on Doo and Amira.
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MEDIVIS, INC. v. NOVARAD CORP. 10
B
Medivis argues, in the alternative, that the Board
erred in not considering other evidence Medivis included in
its petition. Because we reverse the Board’s determination
of no motivation to combine, we need not separately reach
this issue, but on remand, we expect the Board will be
mindful of the need to consider all relevant evidence in
completing its obviousness analysis, including Medivis’s
factual positions regarding the scope and content of the
prior art.
CONCLUSION
For the foregoing reasons, we affirm the Board’s deter-
mination that claims 1, 5, and 6 were not shown to be un-
patentable for anticipation. As for obviousness of claims
1–6 and 11–20, we reverse the Board’s determination of no
motivation to combine Doo and Amira. We remand for fur-
ther proceedings consistent with this opinion.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND
REMANDED
COSTS
No costs.
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