The Software IP Report
A Photobooth Can Screen for Skin Cancer, But Federal Circuit Says it is Unpatentable Under § 103
Can you succeed in an argument for obviousness by combining a skin cancer detection device with a device for creating made-to-measure clothing or custom avatar? The Federal Circuit says yes.
In a precedential opinion, the Federal Circuit reversed the decision of the Patent Trial and Appeal Board (PTAB), holding that a series of references related to imaging the surfaces of the human body rendered claims toward similar technology unpatentable as obvious under 35 USC § 103. Canfield Scientific, Inc., v. Melanoscan, LLC, 2019-1927 (Feb. 18, 2021; Opinion by Judge Newman, joined by Judges Dyk and Reyna).
The case was an appeal after a 2019 petition for Inter Partes Review (IPR) requesting the Patent Trials and Appeal Board (PTAB) find several claims of U.S. Patent No. 7,359,748 (“the ‘748 patent”) unpatentable. The appellant argued that the PTAB failed to consider arguments and evidence presented, and misapplied the law of obviousness. The Federal Circuit agreed with respect to the independent claims of the ‘748 patent, but remanded the dependent claims for further review as the PTAB did not analyze the dependent claims once determining the independent claims were patentable.
Relevant Law
The Court applied Graham v. John Deere, Co., 383 U.S. 1 (1966) and KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) in their review of the PTAB’s decision. Recall the four primary factors in an obviousness inquiry, as articulated in Graham and explained by MPEP 2141, are: 1) determining the scope and content of the prior art; 2) ascertaining the differences between the claimed invention and the prior art; 3) resolving the level of ordinary skill in the pertinent art; and 4) secondary considerations such as evidence of commercial success, long-felt but unresolved needs, failure of others, and unexpected results. Additionally, as specified by KSR, the Court considered the “motivation to select and combined specified teachings of the prior art.”
For an expanded explanation of the guidelines for obviousness, see MPEP 2141.
Diagnostic Imaging of Tissues
The patent and its claims relate to diagnosis of skin diseases and it is important to note that the ‘748 patent was filed in 2000. Since 2000, technology and its application for detection of skin cancer and other diseases has evolved significantly. At the time of filing, one of the premier ways of diagnosing skin conditions was through photographs (this technique remains prominent today). The goal of the invention was to provide a way for patients to have skin screenings without the need of a professional photographer and to allow the patient to capture images of skin lesions on embarrassing or sensitive locations of the body (which they may not otherwise reveal or draw attention to during a physical exam). The “Total Immersion Photography” technique of the patent was expected to be useful for initial screenings, confirmation of positive results, and even as a second opinion.
The invention, as shown in the Figure reproduced here, used multiple cameras (102) and lights (101) spaced vertically and horizontally around the subject or object (108) of the imaging.
As an aside, we’ve advanced quite far since the filing of the ‘748 patent in the field of diagnostic imaging for dermatological conditions. Today, one of the fastest growing applications of artificial intelligence in medicine is in dermatology. Computers and AI are “absolutely brilliant” at evaluating images for their differences and similarities. The cost (time and money) of obtaining photos of skin lesions from patients has never been easier with the advancement of cell phone camera capabilities and pervasive access to cell phones that has led the Supreme Court to describe it as almost a “feature of human anatomy.” Riley v. California, 134 S. Ct. 2473, 2484 (2014). For a great overview of AI applications in diagnostic medicine see Nick Polson’s AIQ: How Artificial Intelligence Works and How We Can Harness Its Power for a Better World (2018).
The ‘748 Patent Independent Claims
With a bit of background for context, the claim(s) at issue should be more easily understood. The ‘748 patent contains two independent claims, Claims 1 and 51, with Claim 1 being illustrative and reproduced below:
1. A device for the identification of maladies that effect human tissue comprising:
an enclosure configured to receive a person or portion thereof for imaging the person or portion thereof, wherein the enclosure defines a specified imaging position for placing the person or portion thereof within the enclosure for imaging, and the specified imaging position defines a centerline;
a plurality of imaging devices, wherein a plurality of the imaging devices are vertically spaced relative to each other, a plurality of the imaging devices are laterally spaced relative to each other, a plurality of the imaging devices are located on opposite sides of the centerline of the specified imaging position relative to each other, and each imaging device is located a predetermined distance relative to the specified imaging position; and
a plurality of light sources spaced relative to each other and peripheral to the plurality of imaging devices that illuminate the person or portion thereof located at the specified imaging position and generate refraction and reflectance light therefrom;
wherein each of said imaging devices generates an image of the illuminated person or portion thereof located at the specified imaging position, and defines respective coordinates and said respective predetermined distance relative to the specified imaging position, and defines a respective focal length and resolution information, allowing precise measurement of imaged features of the person or portion thereof located at the specified imaging position.
Appellant’s Prior Art
The appellant cited five references in its IPR, and the Court provided a detailed outline of all of them in the opinion. As the Court remanded all dependent claims for further review, I will outline these references inasmuch as they apply to the independent claims.
The primary reference relied on by the appellant was Voigt, non-patent literature titled “Topodermatographic Image Analysis for Melanoma Screening and the Quantitative Assessment of Tumor Dimension Parameters of the Skin.” Voigt, “describes an enclosure containing cameras and lights for analyzing and measuring images on the skin of a patient.” The parties and the PTAB agreed that Voigt had every limitation of Claim 1 of the ‘748 patent, with the exception of “the plurality of cameras spaced vertically, laterally, and on opposite sides of the centerline.”
The second and third references cited by the appellant were Hurley and Crampton, respectively. Unlike Voigt, Hurley and Crampton both disclose a multi-camera setup for capturing images of a person from multiple angles. Voigt specifically places the subject of the images against a wall, and the PTAB found this limitation to be important in their determination of obviousness. The PTAB held a person of ordinary skill in the art would not have been motivated to combine Voigt with Hurley or Crampton, in light of Voigt’s placement of the subject along a wall.
Analysis
In the Court’s reasoning that the PTAB had erred in its determination of obviousness, the Court emphasized that both Hurley and Crampton placed “the subject at the center of the multi-camera system.” Specifically, the Court noted that Claims 1 and 51 did not limit the placement of the subject within the field of the cameras. Recall from above that Claim 1 merely requires “a specified imaging position for placing the person or portion thereof within the enclosure for imaging, and the specified imaging position defines a centerline…”
The appellant argued “that it would have been obvious to use known or obvious multiple imaging systems in known or obvious enclosures having the object being imaged at the center of the enclosure.” The Court accepted this argument, quoting KSR: “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”
The Court concluded that Claims 1 and 51 “place[d] the subject within the enclosure, as in the prior art, and place[d] multiple cameras and lights within the enclosure, as in the prior art,” and thus, the claims would have been obvious to a person of ordinary skill in the field of the invention.
Commentary & Lessons for Practice
One reason I alluded to the advancement of diagnostic imaging and accessibility of high-quality cameras above, is that this case may serve as a springboard for obviousness rejections and IPR challenges using references of unrelated technologies. As the barriers of access are lowered for things such as cameras and other technologies, this case makes clear the importance of cross-discipline considerations when drafting claims and doing prior art searches.
The second and third references, Hurley and Crampton, did not remotely relate to diagnostic imaging, however they were successfully combined with Voigt to result in a determination of obviousness. In past posts, we have touched on the PTAB and Federal Circuit’s propensity to combine references without an explicit motivation or reason to combine, and that they are doing so at a greater frequency with references in unrelated fields of technology.
As a final note, I was surprised to see no mention in the Court’s opinion of whether the appellee raised an argument about the function of the wall behind the subject in Voigt. I was filled with curiosity and read the article. The requirement, as it turns out, was not that the subject be against a wall, but that the subject’s axial and transversal spinal flexion could be controlled for reliable reproducibility. To control this flexion, Voigt had sliders mounted to the wall to secure the subject in place.
I’m left wondering: without a means for controlling axial and transversal spinal flexion, is Voigt still operable as intended when modified by Hurley and/or Crampton? And should the appellee have argued that combining Voigt with Hurley and/or Crampton would also require a reference disclosing a freestanding device to control spinal flexion?