PTAB partially invalidates augmented reality surgery patent
Judges determine six claims of Novarad’s AR patent to be unpatentable but uphold a further claim | Decision follows unsuccessful challenge by Medivis to another Novarad patent in March.
The Patent Trial and Appeal Board (PTAB) has declared some of the claims of a Novarad patent covering augmented reality (AR) for use in surgery to be unpatentable, but upheld a further claim of the patent.
The final written decision made on Friday (April 12) concluded a request for inter partes review (IPR) filed by Medivis, which had challenged claims 1–7 of Novarad’s US patent number 10,945,807.
Judges determined that claims 1–4, 6 and 7 of the ‘807 patent were unpatentable over prior art, but not claim 5.
They also dismissed a motion by Medivis to exclude a declaration by a Novarad expert, which the medtech firm had said lacked the relevance and reliability required for admission.
The ‘807 patent relates to “a system and method for using mixed reality or augmented reality devices to improve surgical, interventional radiologic, cardiac, or other medical procedures”.
In augmented reality surgery, 2D or 3D images are superimposed over a patient’s body, allowing for greater precision.
The PTAB found that “the plain claim language” of claim 1 did not support Novarad’s construction, and that it had not explained why a “plurality of layers” implied 3D.
Medivis cited two references for unpatentability due to prior art and obviousness; claims 1–4, 6 and 7 were found to be unpatentable under 35 USC §102 but not §103.
Judges dismissed its motion to exclude as moot, concluding that in each instance where it found for Novarad, this was due to Medivis’ own failure of proof.
AR patent upheld
On March 20, Novarad announced a “significant legal victory” in another patent dispute with Medivis, which develops AR software for use in surgery.
In Novarad v Medivis, the PTAB dismissed Medivis’ petition to invalidate another Novarad patent, US number 11,004,271, which is generally directed to the same technology as the ‘807 patent but not part of the same patent family.
The ‘271 patent covers features of Novarad’s VisAR system, including methodologies which allow physicians to view augmented reality 3D images of a patient’s anatomy overlaid on the patient on the operating table.
Commenting on that decision, Wendell Gibby, CEO of Novarad, said: “We were the first company to receive Food and Drug Administration (FDA) clearance in the AR space with 510K approval of a pre-operative system, OpenSight, in September of 2018.
“As a pioneer in the field, we made many discoveries and filed patents early and often.
“This is one of many patents received or filed in this space by Novarad. The successful vindication of its intellectual property by the PTAB underscores Novarad’s commitment to defending its technology.”
In the IPR regarding the ‘807 patent, Medivis is represented by Kia Freeman and John Curran of McCarter & English. Novarad is represented by Joseph Harmer and Jed Hansenof Thorpe North Western.
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