Canfield Scientific, Inc. v. Melanoscan, LLC

C
Case: 19-1927    Document: 51    Page: 1   Filed: 02/18/2021




   United States Court of Appeals
       for the Federal Circuit
                 ______________________

            CANFIELD SCIENTIFIC, INC.,
                    Appellant

                            v.

                 MELANOSCAN, LLC,
                        Appellee
                 ______________________

                       2019-1927
                 ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2017-
 02125.
                  ______________________

                Decided: February 18, 2021
                 ______________________

     THOMAS LEE DUSTON, Marshall, Gerstein & Borun
 LLP, Chicago, IL, argued for appellant. Also represented
 by JULIANNE M. HARTZELL, JOHN J. LUCAS, SANDIP PATEL.

     MARK D. GIARRATANA, McCarter & English, LLP, Hart-
 ford, CT, argued for appellee. Also represented by KEVIN
 REINER.
                  ______________________

     Before NEWMAN, DYK, and REYNA, Circuit Judges.
 NEWMAN, Circuit Judge.
Case: 19-1927    Document: 51      Page: 2     Filed: 02/18/2021




 2              CANFIELD SCIENTIFIC, INC.   v. MELANOSCAN, LLC



      Canfield Scientific, Inc. (“Canfield”) appeals the deci-
 sion of the U.S. Patent Trial and Appeal Board (“PTAB” or
 “Board”) on inter partes review (“IPR”) of U.S. Patent No.
 7,359,748 (“the ’748 patent”) owned by Melanoscan, LLC.
 The ’748 patent “relates to the detection, diagnosis and
 treatment of skin cancer as well as other diseases and cos-
 metic conditions of the visible human.” ’748 patent, col. 1,
 ll. 22–24.
      Canfield petitioned the Board for IPR of claims 1–8, 11,
 30, 32–34, 46, and 51 of the ’748 patent, asserting un-
 patentability on the ground of obviousness. The Board
 ruled that all of the challenged claims are patentable. 1
 Canfield appeals, arguing that the Board erroneously re-
 fused to consider arguments and evidence that Canfield
 presented, and that the Board misapplied the law of obvi-
 ousness. We conclude that the Board erred in ruling that
 all the claims are patentable. That decision is reversed as
 to independent claims 1 and 51, and vacated and remanded
 as to the dependent claims in the petition.
                        BACKGROUND
     The ’748 Patent
     The ’748 patent is titled “Apparatus for Total Immer-
 sion Photography.” The apparatus, claimed as a “device,”
 is an enclosure fitted with cameras and lights arranged in
 a manner that “allows for the imaging of total or subtotal
 non-occluded body surfaces in order to detect health and
 cosmetic conditions and involves the measurement and
 analysis of an optically depicted image of a patient’s sur-
 faces . . . .” ’748 patent, col. 1, ll. 7–11.




     1   Canfield Scientific, Inc. v. Melanoscan LLC, No.
 IPR2017-02125, 

2019 WL 1407210

(P.T.A.B. Mar. 26,
 2019) (“Board Op.”).
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 CANFIELD SCIENTIFIC, INC.   v. MELANOSCAN, LLC             3



     Figure 5 is an embodiment showing the device in cross-
 section and octagonal shape, with lights and cameras on all
 sides and the subject at the center:




 Figure 3 below is an alternate embodiment “utilizing a cir-
 cular periphery” for the device:




 ’748 patent, col. 18, l. 12. The ’748 patent describes the
 arrangement of multiple cameras and lights “vertically
 spaced” and “laterally spaced” on “opposite sides of the cen-
 terline” and adjustable to obtain the desired images of “the
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 4               CANFIELD SCIENTIFIC, INC.   v. MELANOSCAN, LLC



 person or portion thereof,” placed within the enclosure.
 ’748 patent, col. 21, l. 63–col. 22, l. 25. Claims 1 and 51 are
 the only independent claims.
     1. A device for the identification of maladies that
     effect [sic] human tissue comprising:
     an enclosure configured to receive a person or por-
     tion 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 rela-
     tive to each other, a plurality of the imaging devices
     are laterally spaced relative to each other, a plural-
     ity of the imaging devices are located on opposite
     sides of the centerline of the specified imaging po-
     sition relative to each other, and each imaging de-
     vice 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 de-
     vices that illuminate the person or portion thereof
     located at the specified imaging position and gen-
     erate 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 de-
     fines 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 po-
     sition.
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 CANFIELD SCIENTIFIC, INC.   v. MELANOSCAN, LLC              5

Id. Claim 51 is

written in “means plus function” form for
 each limitation, but does not include limitations beyond
 those in claim 1.
     The Board held claims 1 and 51 to be patentable, and
 did not decide separate patentability of the dependent
 claims, all of which contain limitations in addition to those
 in claims 1 and 51.
                         DISCUSSION
     Standard of Review
     Decisions of the U.S. Patent and Trademark Office
 (“PTO”) are reviewed on the standard of the Administra-
 tive Procedure Act (“APA”). Dickinson v. Zurko, 

527 U.S. 150

, 152 (1999). This standard applies to decisions of the
 PTAB. Dell, Inc. v. Acceleron LLC, 

818 F.3d 1293

, 1298
 (Fed. Cir. 2016). In accordance with the APA, questions of
 law receive de novo review on appeal of the agency’s deci-
 sion. In re Gartside, 

203 F.3d 1305

, 1311, 1316 (Fed. Cir.
 2000).
      Patentability on the ground of obviousness is a ques-
 tion of law, see Belden, Inc. v. Berk-Tek LLC, 

805 F.3d 1064

,
 1073 (Fed. Cir. 2015), and receives de novo determination
 on appeal. Any underlying factual findings are reviewed
 on the APA standard of support by substantial evidence.

Id. The substantial evidence

inquiry requires examination
 of the “record as a whole, taking into account evidence that
 both justifies and detracts from an agency’s decision.”
 

Gartside, 203 F.3d at 1312

.
     The factual inquiries in an obviousness determination
 comprise four primary factors: the scope and content of the
 prior art; the differences between the prior art and the
 claimed invention; the level of ordinary skill in the field of
 the invention; and objective considerations such as com-
 mercial success, long-felt need, and the failure of others.
 Graham v. John Deere Co., 

383 U.S. 1

, 17 (1966). In deter-
 mining obviousness, the adjudicator also considers aspects
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 6               CANFIELD SCIENTIFIC, INC.   v. MELANOSCAN, LLC



 such as the motivation to select and combine specified
 teachings of the prior art. KSR Int’l Co. v. Teleflex, Inc.,
 

550 U.S. 398

, 400–01 (2007).
     The Prior Art
     Canfield cited five references in its petition for re-
 view—Voigt, Hurley, Crampton, Daanen, and Dye, out-
 lined as follows:
                             Voigt
     Holger Voigt and Richarda Classen, Topoder-
     matographic Image Analysis for Melanoma
     Screening and the Quantitative Assessment of
     Tumor Dimension Parameters of the Skin,
     75(4) CANCER 981 (1995) (“Voigt”)
     Canfield applied Voigt to all the challenged claims, in
 various combinations with the references to Hurley,
 Crampton, Daanen, and Dye. Voigt describes an enclosure
 containing cameras and lights, for analyzing and measur-
 ing images on the skin of a patient. The device is illus-
 trated in Figure 1, as a “schematic view”:




        Fig. 1 (annotated by Canfield to show centerline)

 Canfield states that “[t]he parties and the Board all agree
 that the only limitation of claim 1 . . . not disclosed by Voigt
 is the plurality of cameras spaced vertically, laterally, and
 on opposite sides of the centerline” within the Voigt
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 CANFIELD SCIENTIFIC, INC.   v. MELANOSCAN, LLC             7



 framework. Canfield Br. 9. Melanoscan states that since
 Voigt places the subject along a wall, the subject cannot be
 imaged from all sides, as required by the ’748 patent.
    The Board concluded that Canfield failed to show how
 combining Voigt with the other prior art references would
 make the claimed subject matter obvious.
                             Hurley
     Jeffery D. Hurley et al., Body Measurement
     System Using White Light Projected Patterns
     for Made-to-Measure Apparel, 3131 PROC.
     SPIE [Society of Photo-Optical Instrumenta-
     tion Engineers] 212 (1997) (“Hurley”)
     Canfield in its petition applied Hurley, alone to claims
 1–8, 11, 30, 33–34, and 46; in combination with Voigt to
 claims 1–5, 8, 11, 30, 33–34, 46, and 51; and in combination
 with Voigt and Daanen to claims 6 and 7.
     Hurley shows a “non-contact body measurement sys-
 tem [] under development for use in making made-to-meas-
 ure apparel, and for other applications related to body
 measurement. . . . The solution for calculating three-di-
 mensional surface points of a human body from the camera
 images is described.” Hurley at 212. Hurley illustrates its
 device as follows:
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 8              CANFIELD SCIENTIFIC, INC.   v. MELANOSCAN, LLC



     Fig. 2.1 (annotated by Canfield to show centerlines)
 Hurley describes Figure 2.1 as a three-dimensional body-
 imaging system having six imaging sensors positioned on
 three towers, each tower bearing a lower and an upper sen-
 sor. Each imaging sensor consists of a light projector and
 a camera. Two towers are placed whereby the sensors im-
 age the front and side of the body, and the third tower is
 placed to image the back of the body.
     The Board held all of the challenged claims patentable
 over combinations of Voigt, Hurley, and other references,
 finding that a person of ordinary skill in the art of imaging
 would not have been motivated to combine “the unmodified
 Voigt’s system with Hurley’s arrangement of imaging de-
 vices [for] . . . Voigt’s rear wall would have blocked the
 view of two rear-facing cameras, and Voigt’s horizontally
 adjustable sliders would have partially blocked the views
 of the remaining cameras.” Board Op. at *7.
                         Crampton
     Stephen Crampton, Avatar Kiosk, WIPO In-
     ternational Publication No. WO 98/28908,
     July 2, 1998 (“Crampton”)
     Canfield applied Crampton to claims 1–4, 8, 11, 30, and
 33–34 in combination with Voigt, citing Crampton’s show-
 ing of vertically and horizontally placed cameras. Canfield
 also applied Crampton to claims 32 and 46 in combination
 with Voigt and Dye, claim 32 reciting USB ports and claim
 46 reciting display devices as shown in Dye, infra.
     Crampton shows an apparatus for imaging the surface
 of a person and creating an avatar of that person. See
 Crampton at 5 (“Avatars, also known as virtual humans,
 are used to represent a person in a virtual environment.”).
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 CANFIELD SCIENTIFIC, INC.   v. MELANOSCAN, LLC             9




 Figure 1 of Crampton above shows the person to be imaged
 placed in a kiosk having a central area with two foot-
 stands. The kiosk is fitted with multiple cameras and
 lights that surround the subject, and may also contain la-
 ser generators and flashlights.
     Crampton states that image resolution is enhanced by
 the use of multiple cameras from various angles, as illus-
 trated in Figure 9 of Crampton.
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 10              CANFIELD SCIENTIFIC, INC.   v. MELANOSCAN, LLC



     The Board found that a person of ordinary skill would
 not have been motivated to combine Crampton with Voigt
 with a reasonable expectation of success, in view of Voigt’s
 placement of the subject along a wall.
                           Daanen
      Hein A.M. Daanen & G. Jeroen van de Water,
      Whole Body Scanners, 19 DISPLAYS 111 (1998)
      (“Daanen”)
     Canfield applied the Daanen article, entitled “Whole
 Body Scanners,” in combination with Voigt and Hurley, to
 claims 6 and 7. Claims 6 and 7 specify a third and fourth
 imaging array. Claim 6 is illustrative:
      6. A device according to claim 1 wherein the plu-
      rality of imaging devices further includes:
      a third imaging array spaced a predetermined dis-
      tance relative to the specified imaging position, and
      laterally spaced relative to the first imaging array
      on an opposite side of the first imaging array rela-
      tive to the second imaging array, wherein the third
      imaging array includes a plurality of third imaging
      devices vertically spaced relative to each other; and
      a fourth imaging array spaced a predetermined dis-
      tance relative to the specified imaging position, and
      laterally spaced relative to the second imaging ar-
      ray on an opposite side of the second imaging array
      relative to the first imaging array, wherein the
      fourth imaging array includes a plurality of fourth
      imaging devices vertically spaced relative to each
      other.
 ’748 patent, col. 22, ll. 49–64. Daanen describes the
 Vitronic® system that uses 16 to 24 cameras positioned
 around the subject, and states that the use of multiple cam-
 eras increases resolution and reduces shadowing effects.
 Canfield cites the statement in the ’748 patent, that: “The
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 CANFIELD SCIENTIFIC, INC.   v. MELANOSCAN, LLC               11



 basis for the panel-camera array is to accurately capture
 the physiological attributes desired from the subject pa-
 tient,” col. 4, ll. 39–40, and argues that Daanen teaches
 such an array surrounding the subject.
     The Board found that Canfield “failed to set forth any
 persuasive reason why a person of ordinary skill in the art
 would have further modified the combination of Voigt and
 Hurley (which already would have included three sets of
 imaging devices) to further include the ‘arrangement of ar-
 rays’ of Daanen.” Board Op. at *13. The Board further
 found that Canfield’s “Petition is devoid of any persuasive
 explanation of how Voigt’s position framework could have
 been modified to simultaneously employ both Hurley’s ar-
 rangement of imaging sensors and Daanen’s arrangement
 of arrays, or of why a person of ordinary skill in the art
 would have had reason to simultaneously use both Hurley’s
 imaging sensors and Daanen’s arrays.”

Id. The Board held

 that Canfield “failed to demonstrate by a preponderance of
 the evidence that claims 6 and 7 are unpatentable” as ob-
 vious.

Id. at *14.

                               Dye
     Thomas A. Dye, Graphics System and Method
     for Rendering Independent 2D and 3D Ob-
     jects, WIPO International Publication No. WO
     99/56249, Nov. 4, 1999 (“Dye”)
      Canfield applied the Dye reference in combination with
 Voigt and Crampton to show obviousness of dependent
 claims 32 and 46 that recite the use of display devices to
 view two- and three-dimensional images and USB ports as
 “a preferred method for connecting a computer to one or
 more display devices.” Board Op. at *14. Dye illustrates
 its system as follows:
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 12              CANFIELD SCIENTIFIC, INC.   v. MELANOSCAN, LLC




                             Fig. 5A

     The Board did not discuss the dependent claims sepa-
 rately, on ruling that independent claims 1 and 51 are pa-
 tentable.
      Analysis
     “A claimed invention is unpatentable if the differences
 between it and the prior art are such that the subject mat-
 ter as a whole would have been obvious at the time the in-
 vention was made to a person having ordinary skill in the
 pertinent art.” Tokai Corp. v. Easton Enters., Inc., 

632 F.3d 1358

, 1366 (Fed. Cir. 2011) (citing 35 U.S.C. § 103(a)).
      Both Canfield and Melanoscan presented expert wit-
 nesses, who stated opposing views on the question of obvi-
 ousness. For example, Canfield’s expert Dr. Hans-Peter
 Muller stated that “[t]he device disclosed in Voigt captured
 one side of a person’s torso . . . [and] [t]o increase the quan-
 tity and quality of skin-surface information, while avoiding
 the time and inconvenience of having to reposition the per-
 son being imaged, the camera, or both, one of ordinary skill
 in the art would have been motivated to make an obvious
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 CANFIELD SCIENTIFIC, INC.   v. MELANOSCAN, LLC               13



 modification to Voigt to employ the multiple cameras ex-
 plicitly disclosed in Hurley [] to cover more body surface
 area without having to reposition the subject.” Muller
 Decl. ¶¶ 115, 117. Melanoscan’s expert Dr. van der Weide
 stated that there was no motivation to make this change
 with a reasonable expectation of success. van der Weide
 Decl. ¶¶ 56–58.
     The Board agreed with Melanoscan’s expert, and held
 that a person of ordinary skill in the art of photo-imaging
 would not have been motivated to combine Voigt with the
 multi-camera systems of Hurley or Crampton or Daanen.
 The Board reasoned that “Voigt’s rear wall would have
 blocked the view of [Hurley’s] two rear-facing cameras, and
 Voigt’s horizontally adjustable sliders would have partially
 blocked the views of [Hurley’s] remaining cameras.” Board
 Op. at *7. The Board concluded:
     The Petition thus fails to make the evidentiary
     showings required to demonstrate obviousness un-
     der 35 U.S.C. § 103 based on combining a modified
     version of Voigt’s system and Hurley[’s] arrange-
     ment of imaging devices.

Id. The Board made

no mention of the placement of the
 subject at the center of the multi-camera system as in Hur-
 ley and Crampton.
     Claims 1 and 51 are not limited as to the location of the
 subject being imaged. Canfield argues that the combined
 teachings of the prior art would reasonably have suggested
 the subject matter of claims 1 and 51 to a person having
 ordinary skill in the field of the invention. See Intelligent
 Bio-Sys., Inc. v. Illumina Cambridge Ltd., 

821 F.3d 1359

,
 1367 (Fed. Cir. 2016) (considering whether the combina-
 tion of elements from the prior art would produce the
 claimed subject matter).
    Canfield argues that it would have been obvious to use
 known or obvious multiple imaging systems in known or
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 14             CANFIELD SCIENTIFIC, INC.   v. MELANOSCAN, LLC



 obvious enclosures having the object being imaged at the
 center of the enclosure. In Voigt the object is placed
 against a wall of the enclosure, and Hurley and Crampton
 show the object placed at the center of the enclosure. “The
 combination of familiar elements according to known meth-
 ods is likely to be obvious when it does no more than yield
 predictable results.” 

KSR, 550 U.S. at 416

.
     Here, the references show various placements of the
 subject being imaged, in Voigt placed against a wall, and
 in Hurley, Crampton, and Daanen centrally placed within
 the framework. Voigt at 982; Hurley at 212; Crampton at
 1, 6; Daanen at 113. The references show the cameras lat-
 erally and vertically spaced to each other about a center-
 line. Voigt at 981; Hurley at 212–13; Crampton at 11;
 Daanen at 115.
     Claims 1 and 51 place the subject within the enclosure,
 as in the prior art, and place multiple cameras and lights
 within the enclosure, as in the prior art. We conclude that
 the subject matter described in claims 1 and 51 would have
 been obvious to a person of ordinary skill in the field of the
 invention. The Board’s ruling of patentability as to these
 claims is reversed.
      Review of Dependent Claims
     Although Canfield’s petition argued all of the chal-
 lenged claims, the Board did not separately analyze the de-
 pendent claims, upon holding the independent claims to be
 patentable. Thus we vacate the Board’s decision as to de-
 pendent claims 2–8, 11, 30, 32–34, and 46, and remand for
 determination of patentability of these claims.
                         CONCLUSION
     The ruling of patentability of claims 1 and 51 is re-
 versed. The decision as to the other challenged claims is
 vacated; we remand for further proceedings as to these
 claims.
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 CANFIELD SCIENTIFIC, INC.   v. MELANOSCAN, LLC               15



     REVERSED IN PART, VACATED IN PART, AND
                  REMANDED

                              COSTS

 No costs.

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