The U.S. Court of Appeals for the Federal Circuit recently affirmed a district court’s summary judgment holding that Ion Beam Applications did not infringe two patents relating to cancer therapy because the patents are invalid for obviousness. Optivus Tech., Inc. v. Ion Beam Applications S.A., Case Nos. 05-1518, -1534, -1575 (Fed. Cir., Nov. 16, 2006) (Linn, J.).

U.S. Patents Nos. 4,870,287 (the ’287 patent) and 5,260,581 (the ’581 patent), assigned to co-plaintiff Loma Linda University Medical Center, relate to the use of proton beams in cancer therapy. The ’287 patent is directed to a proton beam facility that generated a proton beam and delivered it to one of multiple treatment rooms. The rooms are equipped with moveable gantries allowing the operator to direct the beam to a patient at a specific angle. The ’581 patent is directed to a safety system for a multi-room proton beam therapy facility that verifies a treatment room selection before the proton beam is sent.

On summary judgment, the district court held the ’287 patent obvious in light of prior art consisting of a University of Washington facility in combination with a Conceptual Design Report (CDR). The University of Washington facility uses neutrons rather than protons to treat cancer by directing a proton beam at a beryllium plate, causing nuclear reactions that produce neutrons that then travel towards the patient for treatment. The CDR provides an overview of proton beam cancer therapy (since 1946) and notes that "recent technological developments in diagnostic and alignment devices had reawakened interest in proton beam therapy." Loma Linda argued that the proton beam used in the University of Washington facility is of such high intensity that, if it were modified by removing the beryllium plate, it would kill patients rather than cure them. Loma Linda also argued that because the modification would create a "death ray" such a reference may be said to teach away from an invention designed to treat patients. The Court found the argument "unpersuasive," noting that "[n]othing about the [reference] can be said to discourage a person having ordinary skill in the art from modifying it to enable proton therapy… ." With regard to the requisite motivation to combine, the panel concluded that there is no question that the CDR establishes that a person having a working familiarity with beam technology as it relates to cancer treatment, motivated by the need for more effective and efficient proton therapy facilities, would have been led to combine the University of Washington’s neutron therapy facility with the proton beam therapy design outlined in the CDR.

Turning to appellate procedure, the Court refused to consider an argument that a combination of references fails to disclose every limitation of a claim because the plaintiff-appellant did not argue the issue in its opening brief. Raising the argument in a reply brief was insufficient to cure the omission, the Court noted, writing that "[w]e consider this argument waived because it was not raised in Loma Linda’s opening brief." The Court also refused to consider an argument that contested the prior art status of a reference because it had not been raised in the proceeding below. Holding that a federal appellate court cannot consider an issue that the district court did not review, the Court dismissed the argument because Loma Linda’s submissions to the district court did not identify a genuine issue of fact regarding the publication status of the prior art reference.

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