Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Best Medical International, Inc. v. Elekta Inc., No. 2021-2099 (Fed. Cir. Aug. 26, 2022), affirming-in-part and dismissing-in-part an appeal from two IPRs involving U.S. Patent No. 6,393,096. The Court held that the Board’s obviousness determination was supported by substantial evidence.
The ʼ096 patent was the subject of two IPRs and a parallel reexamination proceeding. In the IPRs, the Board determined a person having ordinary skill in the art would have had formal computer programming experience, which BMI’s expert lacked. The Board discounted BMI’s expert testimony and credited the testimony of Elekta’s expert, who possessed the relevant experience. The Board determined that challenged claims 1, 43, 44, and 46 were unpatentable as obvious. While the IPRs were pending, BMI canceled claim 1 in the reexamination proceeding “without prejudice or disclaimer.” In its final written decision in the IPRs, the Board acknowledged the cancelation of claim 1 but determined it had “not yet been cancelled by any final action” because BMI had “not filed a statutory disclaimer.” BMI’s cancelation of claim 1 became final after the Board’s final written decision. BMI appealed.
The CAFC rejected BMI’s argument that the Board lacked authority to issue a final written decision regarding claim 1. At the time the Board issued its decision, claim 1 had not been finally canceled, and it properly remained in the IPRs. The Court held that the Supreme Court’s Munsingwear decision was inapplicable—Munsingwear addressed appeals that became moot during their pendency, but here the “mooting” event occurred before BMI filed its notice of appeal. The Court determined there was no case or controversy regarding claim 1’s patentability once the cancelation became final, and accordingly, that BMI lacked standing to appeal the Board’s patentability determination for claim 1. The Court dismissed the appeal as to that claim.
For the remaining claims, the Court held that substantial evidence supported the Board’s findings regarding the level of skill in the art. BMI challenged the Board’s findings that a person skilled in the art would have had “formal computer programming experience” and that BMI’s expert did not have this experience, resulting in the Board’s discounting of BMI’s expert’s testimony. Applying the Graham factors, the Court affirmed the Board’s obviousness determination, relying on testimony from Elekta’s expert and the Board’s analysis of “the entire trial record.”