In Medivis, Inc. v. Novarad Corp. (No. 24-1794, Mar. 3, 2026, nonprecedential), the Court of Appeals for the Federal Circuit (CAFC) reversed a Patent Trial and Appeal Board (PTAB) finding that challenged claims of Novarad's U.S. Patent No. 11,004,271 were not obvious. The claims recite an augmented-reality (AR) system that overlays inner 3D patient layers (e.g., bones) within a virtual 3D shape directly onto a surgeon's real-time view of the outer anatomy—eliminating the need to glance at separate screens.

The PTAB found Medivis failed to show the claims were obvious over a 2015 patent application ("Doo") in view of a 2009 user guide for 3D data visualization and analysis software ("Amira"). The Court reversed.

The PTAB rejected Medivis's motivation-to-combine rationale as "so vague and broad that it could be applied to combine any two references," where Medivis asserted Doo's AR system would "take advantage of" Amira's visualization technology.

The CAFC held the PTAB's standard was too rigid. Medivis showed Doo itself identified distraction and cognitive-load problems inherent in conventional 3D imaging (separate screens forcing surgeons to shift their gaze), offered its AR approach as the solution, and combining the references would reduce that cognitive burden. Substantial evidence supported the arguments. The court reinforced the Supreme Court's standard in KSR that "explicitly eschews such a rigid approach to obviousness."

Practical Implications for Patent Practitioners

  • ⚖️ PTAB and courts must adhere to KSR's flexible, common-sense framework rather than demanding hyper-specific motivation when the prior art itself identifies a problem and points toward a solution.
  • 🧠 When one reference identifies a known problem (e.g., distraction and cognitive load from gaze-shifting to separate screens) and another offers a solution a person of ordinary skill in the art (POSA) would recognize as an improvement, the prior art as a whole "suggests the desirability" of the combination.
  • 📋 Expert evidence is important to establish what a POSA would understand about problems identified in the prior art and recognize as an improvement—satisfying the factual inquiries underlying motivation to combine.

For those challenging patents at the PTAB in dynamic high-tech fields like surgical AR and medical imaging, this decision provides useful authority on motivation-to-combine arguments that engage the underlying technical reasoning in the art.

Full CAFC opinion: https://is.gd/hAEUXQ

IPWatchdog, Inc. coverage by Eileen M.: https://is.gd/idHTsM