Optivus and Loma Linda are the purported exclusive licensee and assignee, respectively, of the ’287 and ’581 patents, which relate to the use of proton beams in cancer therapy. The ’287 patent is directed to a proton beam therapy facility that generates a proton beam and delivers it to one of multiple treatment rooms. The treatment rooms are equipped with movable gantries that enable an operator to direct the beam to a patient at a specific angle.

Optivus lost a contract for a Florida state cancer treatment installation to IBA; hence the lawsuits.

As to non-patent matters, the CAFC ruled: "the district court erred in dismissing the California unfair competition law claim for failure to exhaust administrative remedies;" "the district court did not err in awarding summary judgment to IBA on" the Florida and intentional interference claims; with regard to the Lanham Act, "because Optivus has presented evidence that creates a question of fact as to the materiality of that statement, we conclude that the court erred in granting summary judgment to IBA on the issue of the financing statement."

IBA had persuaded the district court to grant summary judgment of invalidity on both patents.

As to the '287 patent,  IBA cited a §103(a) prior art combination of "a neutron therapy facility at the University of Washington and a Conceptual Design Report reference (the “CDR”)."

Loma Linda argues that modifying the University of Washington facility as described by the district court would result in a “death ray” and thus teaches away from an invention designed to treat patients.

Loma Linda’s argument that the University of Washington facility teaches away from modification is unpersuasive. The University of Washington facility uses neutrons, rather than protons, to treat cancer. The facility directs a proton beam at a beryllium plate to cause nuclear reactions that produce neutrons, which then travel towards the patient. Loma Linda makes much of the fact 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. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Kahn, 441 F.3d at 990 (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). As the district court noted, “the common denominator among the individuals listed [by the parties as demonstrating ordinary skill] is a working familiarity with particle beam technology, particularly as it applies to cancer treatment.” Patent Claims Order, slip op. at 10. Clearly, one of ordinary skill in the art would not simply remove the beryllium plate and direct the high intensity proton beam at a patient without further calculation or adjustment. Nothing about the University of Washington facility can be said to discourage a person having ordinary skill in the art from modifying it to enable proton therapy or to lead the skilled artisan in a path divergent from the path taken by Loma Linda.

Loma Linda’s argument that there is an issue of fact regarding the motivation to combine is unpersuasive. The CDR provides an overview of proton beam cancer therapy from its first proposal in 1946 to the state of the art at the time of the study and notes that recent technological developments in diagnostic and alignment devices had reawakened interest in proton beam therapy. A stated design goal of the proposed facility in the CDR was to create a facility with more treatment rooms, more advanced beam control, and the availability of different energies to treat different tissue depths. The study discusses proton, neutron, and other particle therapy methods and specifically notes that a neutron therapy facility was in operation at the time of the study. However, the CDR argues that protons have important advantages over neutron and other particle therapy methods. In considering motivation in an obviousness analysis, we ask “whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims.” Kahn, 441 F.3d at 988. Here, there is no question that the CDR establishes that a person having a working familiarity with particle 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. We see no error in the district court’s conclusion that a motivation to combine the two references exists as a matter of law.

As to the '581 patent, IBM cited the Fermilab National Accelerator Laboratory Neutron Facility (the “Fermilab” facility). Lima Linda was loopy in arguing the order of a verifying step, ignoring claim language.

IBA presented evidence demonstrating that the Fermilab facility authenticated a beam request signal before sending the signal. Loma Linda’s arguments and expert testimony assert that the “verifying” step requires authentication after the signal has been sent, focusing on the proposition that a signal cannot be confirmed as genuine until it has been made. Such an analysis, however, ignores that the court interpreted the “verifying” step as to confirm or establish authentication. Authenticating a signal before it is sent establishes the genuine nature of the signal. As the district court noted in response to the same argument below: “The word ‘after’ appears nowhere in claim 1. There are no such limitations on the terminology in the ’581 patent. The patent at issue is written with expansive and highly inclusive language.” Patent Claims Order, slip op. at 43 n.31. Because Loma Linda’s evidence failed to address the entirety of the court’s construction, it did not properly rebut IBA’s evidence demonstrating that the Fermilab facility possessed the “verifying” step. We therefore conclude that the district court did not err in holding that the Fermilab facility employed a safety system with the “verifying” step.