Recently in the Federal Circuit: Reasonable Expectation of Success May Not Be So Spooky After All | Morrison & Foerster LLP – Federal Circuitry
With Halloween fast approaching, many of us are asking the age-old question: “Is this decoration too heavy to hang with this [hook/tape/blue tack/string around a too-thin tree branch]?” The Federal Circuit faced a similar conundrum in one recent case and found that an ordinary engineer would be up to the task.
Case of the (recent-ish) week: Elektra Limited v. ZAP Surgical Systems, Inc., No. 21-1985 (Sept. 21, 2023)
Panel: Judges Reyna, Stoll, and Stark, with Judge Reyna writing the opinion
You should read this case if: you have a matter involving obviousness focusing on motivations to combine and reasonable expectations of success, especially at the Board.
Elektra owns a patent claiming a radiation therapy device. The claimed device uses a linear accelerator to focus a beam of radiation into a patient. To avoid radiating sensitive tissues and organs, the device is mounted to a claimed moving pivot that allows it to be repositioned and rotated (that is, moved closer to and further from the patient and positioned at different angles).
What does this have to do with hanging Halloween decorations, you’re wondering? Well, ZAP, the manufacturer of a radiation therapy device, filed an IPR asserting that Elektra’s patent was invalid for obviousness. The Board instituted review on all grounds and found all challenged claims would have been obvious in view of three prior art references. Those references separately disclose (1) an x-ray tube mounted to a moving pivot allowing repositioning and rotation; (2) a combined CT scanner and linear accelerator that rotates around a patient; and (3) the use of a CT scanner for performing radiation therapy. Relying on expert testimony and the references themselves, the Board found a person of ordinary skill would be motivated to combine the references and that the challenged claims would have been obvious. Elektra appealed.
Okay, so really, what about those decorations? We’re getting there! On appeal, Elektra asserted that there is no motivation to combine because the prior art taught away from the claimed combination. It also argued the Board failed to make findings about whether there was a reasonable expectation of success, despite being required to do so. The Federal Circuit disagreed and affirmed.
Are we ever going to find out about what the decorations have to do with this? Yes! The Federal Circuit held that answering questions about motivation to combine teachings in the prior art often necessarily entails considering whether there’s a reasonable expectation of success in doing so, just as the intrepid home decorator considers whether that do-it-yourself decoration hanger will really hold before putting it all together. In many cases “the Board makes an implicit finding on reasonable expectation of success by considering and addressing other, intertwined arguments, including, as we hold today, a motivation to combine.”
We’ve all been there: you get ready to hang the giant plastic skeleton on the door, then you remember last year’s debacle and decide to add a holiday wreath hanger for extra support because you’re confident it will probably hold. In Elektra, the question was whether a person of ordinary skill in the art could re-engineer a prior art x-ray machine’s moving pivot to carry a much heavier prior art linear accelerator, as required for the claimed device, while maintaining critical targeting precision in view of the prior art’s cautions about device weight. The Federal Circuit held the Board’s analysis, including of purported teachings away in the references, necessarily addressed the reasonable expectation of success “in a blended manner” when it found a POSITA would have been motivated to combine prior-art teachings even if the solution would be challenging. The Federal Circuit was careful to note this “blended” analysis isn’t appropriate for every case.
We all implicitly and unconsciously combine many distinct analyses as we engineer our way through everyday problems, like making sure that skeleton doesn’t fall and crush my pumpkins again this year. As the Federal Circuit recognized in Elektra, the Board often does the same when it analyzes the patents before it. The Board can, and often does, implicitly consider the separate question of reasonable expectations of success when it analyzes whether a person of ordinary skill has a motivation to combine, especially where the prior art calls for some everyday engineering.
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