Anticipate This!™ | Patent and Trademark Law Blog

Optivus Technology, Inc., et al. v. Ion Beam Applications S.A.

Posted in Opinion Commentary by Jake Ward on November 27, 2006

Clearly, a PHOSITA Would Not Simply Fire a Death Ray at a Patient.

(Fed. Cir. 2006, 05-1518)

Among other issues not discussed herein, the CAFC affirmed the district court’s (C.D. Cal.) holdings of invalidity as obvious with respect to U.S. Pat. Nos. 4,870,287 (the ‘287 patent) and 5,260,581 (the ‘581 patent).  The patent relates to a proton beam system for use in cancer treatment.

In particular, Optivus argued that modifying the prior art (a neutron therapy facility at the University of Washington) to produce protons instead of neutrons would result in a “death ray” and thus teaches away from the invention designed to treat patients.  “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.”  However, the CAFC found this unpersuasive.    “Clearly, one of ordinary skill in the art would not simply [modify the prior art device] and direct the high intensity proton beam at a patient without further calculation or adjustment.”   Or, more simply, a PHOSITA would know to dial-down the intensity of the beam so as to not fry a patient with a “death ray.”

In affirming the finding of obviousness, the CAFC also rejected Optivus’s arguments that there was no motivation to combine the art.  In considering motivation in an obviousness analysis, courts ask “whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims.” Here, there was no question that the CDR establishes that a person having a working familiarity with particle beam technology as it relates to cancer treatment, motivated by the need for more effective and efficient proton therapy facilities, would have been led to combine the University of Washington’s neutron therapy facility with the proton beam therapy design outlined in the CDR (prior art reference). 

Accordingly, the patent claims are invalid as obvious – Affirmed. 

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