Untitled case

This case, MediVis, Inc. v. Novarad Corp., Appeal No. 24-1794, is an active appeal before the Court of Appeals for the Federal Circuit (CAFC) that recently issued its decision. The appeal stems from an inter partes review (IPR) proceeding, IPR2023-00042, before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). MediVis, Inc. was the Petitioner challenging the patentability of claims, and Novarad Corp. was the Patent Owner. Novarad Corp. is an operating company that provides medical imaging solutions, including augmented reality systems for surgical navigation, such as its OpenSight system. MediVis, Inc., as the patent owner, also appears to be an operating company engaged in medical technology, specifically in areas related to augmented reality for surgical applications.

The patent at issue is U.S. Patent No. 11,004,271 (the '271 patent), titled "Augmenting real-time views of a patient with three-dimensional data." This patent claims technology that enables the projection of pre-operative or intraoperative three-dimensional (3D) imaging data, such as CT or MRI scans, onto a live view of a patient through an augmented reality (AR) headset. This allows a surgeon to view virtual internal anatomy directly superimposed on the patient during procedures, aiming to improve surgical navigation and planning. As this case originated as an IPR, there is no "accused product" in the context of patent infringement; rather, the proceedings focused on the patentability of the '271 patent's claims.

The procedural posture of this case is an appeal from a PTAB final written decision. The CAFC issued a split ruling on March 3, 2026, affirming-in-part the PTAB's finding of patentability as to anticipation, but reversing-in-part and remanding the PTAB's decision concerning obviousness for claims 1-6 and 11-20. The mandate for this decision was issued on April 9, 2026. This case is notable because it addresses patentability in the cutting-edge field of augmented reality for medical procedures, highlighting the rigorous scrutiny such innovations face. The Federal Circuit's decision, particularly its reversal on obviousness, underscores the importance of the PTAB's application of legal standards, such as "motivation to combine" prior art references, which impacts the deferential standard of review on appeal.

This case involves an appeal to the Court of Appeals for the Federal Circuit (CAFC) from a Patent Trial and Appeal Board (PTAB) decision, concerning U.S. Patent No. 11,004,271 ("the '271 patent"). A related patent infringement litigation is also ongoing in a district court.

Parallel PTAB IPR Proceeding

• IPR Petition Filing (2022-10-12): Medivis, Inc. ("Petitioner") filed a Petition for Inter Partes Review (IPR2023-00042) challenging claims 1-6 and 11-20 of U.S. Patent No. 11,004,271, owned by Novarad Corp. ("Patent Owner"). The '271 patent relates to methods for augmenting a surgeon's real-time, direct view of a patient by projecting three-dimensional (3D) medical image data onto the patient using an augmented reality (AR) headset.
• Institution Decision: The PTAB instituted an inter partes review for claims 1-6 and 11-20 (Paper 7).
• Final Written Decision (2024-03-06): In its Final Written Decision (Paper 35), the PTAB determined that Medivis, Inc. failed to demonstrate that claims 1, 5, and 6 were unpatentable as anticipated by prior art reference Doo, and also failed to show that claims 1-6 and 11-20 were unpatentable as obvious over Doo in view of Amira.
• Request for Rehearing Denied (2024-04-23): Medivis, Inc. filed a request for rehearing of the PTAB's Final Written Decision, which the PTAB denied on April 23, 2024 (Paper 37).

CAFC Appeal (24-1794)

• Appeal Filing (2024-05-07): Medivis, Inc. appealed the PTAB's Final Written Decision to the U.S. Court of Appeals for the Federal Circuit, initiating case number 24-1794.
• CAFC Opinion (2026-03-03): The Federal Circuit issued a nonprecedential opinion in Medivis, Inc. v. Novarad Corp., No. 24-1794. The court affirmed the PTAB's finding of no anticipation regarding claims 1, 5, and 6. However, the CAFC reversed the PTAB's decision on the issue of obviousness for claims 1-6 and 11-20 and remanded the case back to the PTAB for further proceedings consistent with its ruling. The CAFC agreed with Medivis that the Board's finding of no motivation to combine was predicated on the wrong legal standard.

Related District Court Litigation

• District Court Case: A co-pending patent infringement litigation, Medivis, Inc. v. Novarad Corp., Case No. 1:21-01447-GBW, is active in the U.S. District Court for the District of Delaware. As of the PTAB petition filing on October 12, 2022, claim construction had not been briefed or argued, and the case remained in its earliest stages. No other substantive pre-trial motions, claim construction outcomes (Markman), discovery milestones, trial events, or verdicts from this district court case are available or appear to have been central to the CAFC appeal, which specifically reviewed the PTAB's validity findings.

Medivis, Inc., the appellant (plaintiff) in CAFC case 24-1794, is represented by attorneys from Desmarais LLP. The counsel of record who argued for Medivis, Inc. in the Federal Circuit decision dated March 3, 2026, are:

• Adam Steinmetz

  • Role: Lead Counsel (argued for appellant)
  • Firm: Desmarais LLP, Washington, D.C.
  • Experience Note: Adam Steinmetz is a partner at Desmarais LLP and focuses on patent litigation. His experience includes representing clients in complex technology disputes before district courts and the Federal Circuit.

• Taeg Sang Cho

  • Role: Counsel
  • Firm: Desmarais LLP, New York, NY
  • Experience Note: Taeg Sang Cho is a partner at Desmarais LLP with extensive experience in patent litigation across various technologies.

• John M. Desmarais

  • Role: Counsel
  • Firm: Desmarais LLP, New York, NY
  • Experience Note: John M. Desmarais is a founding partner of Desmarais LLP and a prominent patent litigator known for handling high-stakes intellectual property disputes. He has a significant track record in patent trials and appeals.

• Betty H. Chen

  • Role: Counsel
  • Firm: Desmarais LLP, San Francisco, CA
  • Experience Note: Betty H. Chen is a partner at Desmarais LLP, specializing in patent litigation and inter partes review (IPR) proceedings. Her practice involves representing both patent owners and petitioners in complex patent disputes.

Novarad Corp., the appellee (defendant) in CAFC case 24-1794, is represented by attorneys from Thorpe North & Western, LLP.

The counsel of record who argued for Novarad Corp. in the Federal Circuit decision dated March 3, 2026, are:

• Jed H. Hansen

  • Role: Lead Counsel (argued for appellee)
  • Firm: Thorpe North & Western, LLP, Salt Lake City, UT
  • Experience Note: Jed H. Hansen is a partner at Thorpe North & Western, LLP, specializing in patent litigation and inter partes review proceedings, representing patent owners. He was also identified as Novarad's representative in the initial docketing of the appeal.

• Joseph Harmer

  • Role: Counsel
  • Firm: Thorpe North & Western, LLP
  • Experience Note: Joseph Harmer is also associated with Thorpe North & Western, LLP, and has been involved in representing Novarad in this patent dispute.

Additionally, Novarad Corp. has in-house legal and financial leadership involved in protecting their intellectual property. Michael Chandler, the CFO of Novarad, is responsible for the company's legal and regulatory efforts and has commented on the significance of these patent decisions.