Notable Successes

Desmarais LLP achieved a victory on appeal at the Federal Circuit on behalf of Medivis, Inc.  The victory revives Medivis’s challenge in the Patent Trial and Appeal Board (“Board”) against a patent owned by Novarad Corp. related to augmented reality surgical technology.
 
In the original inter partes review proceedings, the Board rejected Medivis’s obviousness challenge based on its finding that a person of ordinary skill in the art (“POSA”) would not have been motivated to combine the two asserted prior art references.  On appeal, Medivis argued that the Board erred by applying an unduly rigid standard in evaluating motivation to combine, and that the Board’s finding was not supported by substantial evidence.  The Federal Circuit agreed, reversing the Board’s decision on the motivation-to-combine issue.  Specifically, the Federal Circuit stated that “the record requires finding that a POSA would have been motivated to combine” the two references.  The Court remanded to the Board “to consider the full scope of Medivis’s obviousness challenge.” 
 
The Desmarais LLP team that secured the victory includes John Desmarais, Betty Chen, Adam Steinmetz, and Tim Cho.
 
Law360 – “Fed. Circ. Revives Challenge To Augmented Reality Surgical IP” (subscription required)
Bloomberg Law – “Medivis Revives Challenge to Augmented-Reality Headset Patent” (subscription required)
 

Betty Chen

Taeg Sang (Tim) Cho Ph.D.

John M. Desmarais

Adam Steinmetz