Obviousness: Skill in the Art Avoids Death Ray

Optivus and Loma Linda v. Ion Beam Apps. (Fed. Cir. 2006).

Focused proton beam therapy offers real promise to cancer victims. Optivus and Loma Linda control rights to several relevant patents including a multi-room proton therapy apparatus. The pair sued IBA for patent infringement as well as various business torts (unfair competition) based on IBA’s marketing of its devices without FDA approval.

The district court granted summary judgment in the defendant IBA’s favor on invalidity, noninfringement, and unfair competition. Optivus and Loma Linda appealed.

Appellate Practice Waiver of Arguments: In their opening brief, appellants argued a lack of motivation to combine various pieces of prior art, but did not raise an argument as to whether the prior art contained all of the claim elements.  They then attempted to raise that issue in their reply brief. The CAFC, however, dismissed that issue as a matter of procedure — holding that the argument was “waived because it was not raised in Loma Linda’s opening brief.”

Death Ray: On motivation to combine prior art, Loma Linda argued that modifying a UW Neutron therapy center by sending protons to the patient would create a “death ray” that would kill the patient. After defining “skill in the art” as familiarity with particle beam technology uses in medical treatment, the CAFC dismissed this “teaching-away” because our PHOSITA would know to turn down the intensity. 

Unfair Competition: Marketing Non-Approved Device: The CAFC reversed the dismissal of the California unfair competition claims — holding that California law provides a right of action on unfair competition even where the claim is based on violation of a law and the law does not provide for a private right of action. 

5 thoughts on “Obviousness: Skill in the Art Avoids Death Ray

  1. 5

    It can’t be more “obvious” that they are backpedaling. Thank goodness we have a general court to check the sanity of the system. Just like a good general manager to make sure the toolies/engineers don’t overkill or cross the boundary on some idea.

  2. 4

    If Loma Linda argued that modifying a UW Neutron therapy center by sending protons to the patient would create a “death ray” that would kill the patient, and the CAFC dismissed this “teaching-away” because our PHOSITA would know to turn down the intensity, doesn’t it logically follow that Loma Linda is not a PHOSITA and therefore any PHOSITA arguments made in their brief be excluded?

  3. 3


    If you look at Dystar Textilfarben v. C.H. Patrick (Oct. 3, 2006) CAFC are furiously back pedalling on TSM while complaining that they have been widely misunderstood.

  4. 2

    Paul, you are spot-on. Look at the difference in the CAFC decisions this year, before and after the Supreme Court granted cert in KSR. Pre-cert, you got your usual upholding of validity. Post-cert, the CAFC has consistently found the claims obvious, with the threshold lowering each time. Just look at Dyster. There also seems to be greater deference to the fact-finders on motivation to combine.

  5. 1

    Do you get the impression that some CAFC panels are finding 103 “obvious” easier to find with the Sup. Ct. KSR case hanging over them?

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