Unified Patents v. Novarad Corp

Unified Patents initiated an Inter Partes Review (IPR) against Novarad Corp, challenging the validity of US Patent No. 11,004,271. Unified Patents is a member-based organization dedicated to deterring frivolous patent litigation by Non-Practicing Entities (NPEs), often referred to as patent trolls. They achieve this by proactively challenging the validity of patents owned by NPEs through IPR proceedings, crowdsourcing prior art, and seeking no-money settlements. Conversely, Novarad Corp is an operating health tech company specializing in medical imaging software and enterprise imaging solutions for healthcare providers worldwide, with products including augmented reality (AR) surgical navigation systems, radiology, and cardiology imaging platforms.

The patent at the heart of this IPR, US Patent No. 11,004,271, is titled "Systems and methods for using augmented reality during medical procedures." It technically describes augmenting real-time views of a patient with three-dimensional (3D) data, particularly for surgical navigation. The patent aims to enhance surgical precision and efficiency by projecting virtual elements directly onto a surgeon's real-time view of the patient through an AR headset, thereby addressing limitations of traditional medical imaging displays.

This IPR, designated IPR2023-00042, was heard by the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office, with Administrative Patent Judges Miriam L. Quinn, Michael R. Zecher, and Scott Raevsky presiding. The procedural posture of the case is notable: the PTAB initially issued a Final Written Decision on March 6, 2024, finding that no challenged claims of the '271 patent were unpatentable. Following this, a request for rehearing was denied on April 23, 2024. However, the petitioner subsequently appealed the PTAB's decision to the U.S. Court of Appeals for the Federal Circuit. On March 3, 2026, the Federal Circuit affirmed the PTAB's finding regarding anticipation but reversed and remanded the decision concerning obviousness, indicating a partial win for the patent challenger on appeal. It is important to note a discrepancy between the provided prompt and public records: while the prompt identifies Unified Patents as the plaintiff, official PTAB and Federal Circuit documents consistently name Medivis, Inc. as the Petitioner in IPR2023-00042 against Novarad Corp.

This case involves an Inter Partes Review (IPR) proceeding, IPR2023-00042, initiated by Medivis, Inc. (not Unified Patents, as initially stated) against Novarad Corp., the patent owner, challenging U.S. Patent No. 11,004,271. The patent at issue, U.S. Patent No. 11,004,271, is titled "Augmenting Real-time Views of a Patient with Three-dimensional Data" and relates to augmented reality (AR) environments for medical procedures.

Here's a chronological overview of the key legal developments and outcomes:

1. Parallel District Court Litigation (Pre-IPR Filing)

• 2021-10-13: Novarad Corp. filed a civil lawsuit asserting U.S. Patent Nos. 11,004,271 and 10,945,807 against Medivis, Inc. in the U.S. District Court for the District of Delaware, case no. 21-1447-GBW. At the time Medivis filed its IPR petition, claim construction in the district court case had not been briefed or argued, indicating the case was in its early stages.

2. IPR Petition Filing

• 2022-10-11 / 2022-10-12: Medivis, Inc. filed its petition for Inter Partes Review (IPR2023-00042) against Novarad Corp., challenging claims 1-6 and 11-20 of U.S. Patent No. 11,004,271. The grounds for challenge included anticipation of claims 1, 5, and 6 by a prior-art reference identified as "Doo," and obviousness of claims 1-6 and 11-20 over Doo in view of another reference called "Amira."

3. Initial Pleadings and Motions (within IPR)

• 2022-11-02: Novarad Corp. submitted its mandatory notices as Patent Owner.
• Undated (prior to FWD): Novarad Corp. filed objections to Medivis's evidence, including Exhibits 1005, 1007, 1010, and 1014, as well as parts of Dr. Kazanzides's Declaration (Ex. 1012). The objections related to relevance, hearsay, and lack of authentication or public accessibility for certain prior art documents.

4. Institution Decision

• The exact date of the institution decision is not explicitly stated in the provided snippets, but it preceded the Final Written Decision, which is typical for IPRs. The PTAB would have decided whether there was a reasonable likelihood that Medivis would prevail on its challenges to institute the review.

5. Final Written Decision (PTAB)

• 2024-03-06: The Patent Trial and Appeal Board (PTAB) issued its Final Written Decision (Paper 35), determining that Medivis, Inc. failed to show that any of the challenged claims (claims 1-6 and 11-20) were unpatentable. Specifically, the Board found that Medivis failed to establish the public accessibility of a key prior art reference.
  • The Board found that claims 1, 5, and 6 were not unpatentable as anticipated.
  • The Board also found that claims 1-6 and 11-20 were not unpatentable as obvious.
  • Novarad characterized this outcome as a "significant legal victory," with the PTAB dismissing the petition to invalidate its patent.

6. Request for Rehearing

• Undated (timely filed after FWD): Medivis, Inc. filed a Request for Rehearing (Paper 36) of the Final Written Decision.
• 2024-04-23: The PTAB denied Medivis's Request for Rehearing. The Board noted that a request for rehearing is not an opportunity to present new arguments or evidence.

7. Appeal to the Federal Circuit

• 2024-05-07: Medivis, Inc. appealed the PTAB's Final Written Decision to the U.S. Court of Appeals for the Federal Circuit (Case No. 2024-1794). Medivis was the appellant and Novarad Corp. was the appellee.
• 2026-03-03: The Federal Circuit issued its decision, partially reversing and affirming the PTAB's ruling.
  • The Federal Circuit affirmed the PTAB's finding that claims 1, 5, and 6 were not unpatentable as anticipated by Doo.
  • The Federal Circuit reversed and remanded the PTAB's finding that claims 1-6 and 11-20 were not unpatentable as obvious over Doo in view of Amira. The court held that the Board relied on the wrong legal standard in finding no motivation to combine the prior art references.

8. Current Posture

• As of the Federal Circuit's decision on March 3, 2026, the case is remanded back to the PTAB for further proceedings consistent with the Federal Circuit's opinion regarding the obviousness claims. This means the PTAB will need to re-evaluate the obviousness arguments for claims 1-6 and 11-20 under the correct legal standard for motivation to combine. The patentability of claims 1, 5, and 6 as to anticipation stands affirmed.

The plaintiff(s) in the IPR2023-00042 case, Medivis, Inc., were represented by different counsel during the Patent Trial and Appeal Board (PTAB) proceedings and the subsequent appeal to the U.S. Court of Appeals for the Federal Circuit.

Counsel for Medivis, Inc. (Petitioner) at the PTAB:

• Kia L. Freeman

  • Role: Lead Counsel
  • Firm: McCarter & English, LLP, Boston, MA
  • Experience: Ms. Freeman has 27 years of experience in intellectual property law and has been recognized as a Super Lawyer. She served as the lead attorney for Medivis, Inc. in the inter partes review proceeding.

• Erik Paul Belt

  • Role: Back-up Counsel (admitted pro hac vice)
  • Firm: McCarter & English, LLP, Boston, MA
  • Experience: Mr. Belt is a trial attorney with over 30 years of experience, focusing on patent, trademark, and licensing disputes in federal and state courts, arbitrations, and the USPTO. He has handled a broad array of technology cases, including those involving medical devices. He was also identified as lead counsel for Medivis in a co-pending patent infringement litigation in the District of Delaware (C.A. No. 21-1447-GBW) and was instrumental in drafting the IPR petition and shaping the case strategy. Mr. Belt is a former president of the Boston Patent Law Association.

• John S. Curran

  • Role: Back-up Counsel
  • Firm: McCarter & English, LLP, Boston, MA
  • Experience: Mr. Curran has over 20 years of experience in intellectual property matters, including patent prosecution, portfolio development, trademark registration, and IP licensing. His practice focuses on computer-related inventions, alternative energy, and mobile communication technologies, and he has experience with medical devices.

Counsel for Medivis, Inc. (Appellant) at the Federal Circuit:

• Betty H. Chen
  • Role: Counsel
  • Firm: Desmarais LLP, San Francisco, CA
  • Experience: Ms. Chen has two decades of experience successfully representing technology companies in high-stakes intellectual property cases, including patent, trade secret, antitrust, and breach of contract disputes, with experience taking approximately 20 cases to trial in various forums. She is recognized by Best Lawyers and Super Lawyers for her work in intellectual property litigation.

In the Inter Partes Review (IPR) proceeding IPR2023-00042, Novarad Corp. was represented by counsel from Thorpe North Western LLP. It is important to note the discrepancy from the prompt: while the prompt identifies Unified Patents as the plaintiff, official PTAB and Federal Circuit documents consistently name Medivis, Inc. as the Petitioner in IPR2023-00042 against Novarad Corp..

The counsel of record representing Novarad Corp. (Patent Owner/Defendant) are:

• Jed Hansen

  • Role: Lead Counsel
  • Firm: Thorpe North Western LLP
  • Office Location: Salt Lake City, UT (175 South Main St., Suite 900, Salt Lake City, UT 84111)
  • Experience Note: Hansen served as lead counsel for Novarad Corp. in this IPR proceeding and was also identified as lead counsel in a co-pending patent litigation involving the '271 patent and other related patents before the U.S. District Court for the District of Delaware (C.A. No. 21-1447-GBW).

• Joseph Harmer

  • Role: Attorney for Patent Owner
  • Firm: Thorpe North Western LLP (inferred, as he co-signed filings with Jed Hansen, lead counsel from Thorpe North Western LLP)
  • Office Location: Salt Lake City, UT (inferred, based on firm's primary office)
  • Experience Note: Harmer is listed as an attorney for Novarad Corp. in filings related to the IPR.