On March 3, 2026, the United States Court of Appeals for the Federal Circuit issued a nonprecedential opinion in
Medivis, Inc. v. Novarad Corp., No. 2024-1794, affirming the Patent Trial and Appeal Board’s (“Board”) finding of no anticipation but reversing and remanding on the issue of obviousness. The decision illustrates how the Federal Circuit may decline deferential substantial evidence review of an obviousness determination where the Board’s analysis reflects application of an incorrect legal framework.
The patent at issue,
U.S. Patent No. 11,004,271, relates to methods of augmenting a surgeon’s real-time view of a patient through an augmented reality (“AR”) headset. The patent describes projecting virtual elements onto real-time views of the patient, thereby addressing the problem of surgeons constantly having to shift their gaze from the patient to a separate computer display screen—a process that is “difficult and error-prone” and can lead to unnecessary incisions.
In an
inter partes review, the appellant challenged claims 1–6 and 11–20 of the ’271 patent, arguing, inter alia, that the claims would have been obvious over the teachings of a prior-art patent publication (“Doo”) in view of a user’s guide (“Amira”). The Board found no motivation to combine these references and upheld the claims.
On appeal, the Federal Circuit reversed the Board’s obviousness determination, holding that the Board “erred by applying too rigid a standard” in analyzing appellant’s proposed motivation to combine Doo and Amira. The Board had rejected appellant’s rationale that a person of ordinary skill in the art (“POSITA”) would have been motivated to combine the references so that Doo’s intra-operative medical image viewing system could “take advantage of” Amira’s visualization technology, characterizing that rationale as “so vague and broad that it could be applied to combine any two references.”
The Federal Circuit disagreed, explaining that
KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), “explicitly eschews such a rigid approach to obviousness.” The Court emphasized that “[t]here is a motivation to combine when a known technique has been used to improve one device, and a [POSITA] would recognize that it would improve similar devices in the same way.” Here, Doo itself recognized that existing 3D imaging technologies (like Amira) faced problems with distraction and cognitive load, and Doo’s AR system was suggested as an improvement. The Court held that this was “sufficient to demonstrate a motivation to combine.”
The Federal Circuit also faulted the Board’s rejection of appellant’s cognitive-load argument. The Board had found that appellant failed to explain why a POSITA would use Amira’s display to “further reduce cognitive load” when Doo already addressed that problem. The Federal Circuit characterized this as a misunderstanding of appellant’s argument—that a POSITA, starting with a conventional 3D imaging technology like Amira, would have been motivated to implement such imaging in Doo’s AR environment as an “improvement.” Because “the prior art as a whole ‘suggests the desirability’ of the combination,” the Board’s finding of no motivation to combine lacked substantial evidentiary support when analyzed under the correct legal standard for motivation to combine.
This decision is procedurally noteworthy because it demonstrates what commentators have termed the “law/fact lever” in obviousness jurisprudence. While motivation to combine is generally a factual inquiry entitled to deferential review, the Federal Circuit treated the Board’s application of an unduly rigid motivation to combine standard as legal error, thereby permitting de novo review. This is consistent with the mixed character of obviousness under
Graham v. John Deere Co., 383 U.S. 1 (1966), where obviousness is a question of law premised on underlying factual determinations.
The Federal Circuit affirmed the Board’s anticipation determination, finding substantial evidence supported the Board’s findings that Doo’s “false 3D” or “2.5D” images do not disclose the claimed “virtual 3D shape” with a “volume.”
