# United States **Court of Appeals**  **for the Federal Circuit**

______________________ OSSEO IMAGING, LLC, Plaintiff

- Appellee

v.

PLANMECA USA INC., Defendant

- Appellant

______________________

2023

- 1627

______________________ Appeal from the United States District Court for the District of Delaware in No. 1:17

- cv

- 01386

- JFB, Senior Judge Joseph F. Bataillon.

______________________
Decided: September 4, 2024

______________________
S ETH O STROW , Meister Seelig & Fein PLLC, New York, NY, argued for plaintiff

- appellee. Also represented by R OBERT F EINLAND

.

W ASIF Q URESHI , Jackson Walker LLP, Houston, TX, argued for defendant

- appellant. Also represented by L EISA T ALBERT P ESCHEL ; B LAKE D IETRICH , Dallas, TX; M ICHAEL J. F LYNN , Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE.

______________________ Case: 23-1627 Document: 34 Page: 1 Filed: 09/04/2024OSSEO IMAGING , LLC v. PLANMECA USA INC

. 2

Before D YK , C LEVENGER , and S TOLL , Circuit Judges

. S TOLL , Circuit Judge

. This case presents a question about the qualifications necessary to provide expert testimony from the perspective of one of ordinary skill in the art.

Planmeca USA Inc. (“Planmeca”) appeals the District of Delaware’s denial of its motion for judgment as a matter of law (JMOL) upholding the jury’s verdict that: (1) Planmeca infringe s Osseo Imaging, LLC ’s (“ Osseo ”) U.S. P atent Nos. 6,381,301, 6,944, 262, and 8,498,374 ; and (2) certain claims of the ’301 p atent , ’262 p atent , and ’374 p atent are not invalid for obviousness

. T he district court did not err in holding that Osseo’s expert testimony and other evidence provide substantial evidence supporting the jury’s verdict of infringement . Likewise, substantial evidence supports the jury’s verdict of nonobviousness of the challenged patent claims

. We thus affirm.

B ACKGROUND Planmeca develops and manufactures ProMax 3D imaging systems that generate and display , with Planmeca’s Romexis software, a 3D model to a user. Osseo sued Planmeca alleging that its ProMax 3D imaging systems ( the “Accused Systems”) infringe the ’301 patent , ’262 patent , and ’374 patent (collectively , the “Asserted P atent s” ). The Asserted P atent s relate to orthopedic imaging systems that use X

- ray beam techniques to create tomographic and/or densitometric models of a scanned object.
A jury trial was held in August 2022

. The jury was instructed to determine the requisite level of ordinary skill and was told that a person of ordinary skill in the art wouldhave a bachelor’s degree in electrical or computer engineering, plus 3 to 5 years working in a diagnostic imaging environment that uses the techniques described in the Asserted P atents. During cross

- examination of Osseo’s technical expert, Dr. Omid Kia, Planmeca sought to demonstrate that Case: 23-1627 Document: 34 Page: 2 Filed: 09/04/2024OSSEO IMAGING , LLC v. PLANMECA USA INC

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Dr. Kia did not have the requisite 3 to 5 years of diagnostic imaging experience in 1999, the patents’ alleged date of invention . Instead, Planmeca asserted that Dr. Kia did not acquire such experience until nearly 10 years after the time of the invention. 1

Planmeca moved for JMOL as to invalidity and noninfringement under Federal Rule of Civil Procedure Rule 50(a) , which the court took under advisement before submitt ing the issues to the jury

. T he jury then rendered its verdict , fi nding that Planmeca directly infringed all asserted claims except claim 6 of the ’374 patent

. The juryalso determined that none of the asserted claims were invalid for obviousness. After the verdict, the district court denied Planmeca’s Rule 50(a) motions for JMOL as moot. Planmeca then renewed its motions for JMOL under Rule 50(b) as to, inter alia , noninfringement of claims 1 and 7 of the ’301 patent , claim 1 of the ’262 patent , and claim 1 of the ’374 patent
, and invalidity for obviousness as to claims 1 and 7 of the ’301 patent , claim 1 of the ’262 patent
, and claim s 1 and 6 of the ’374 pate nt

. The district court determined that Planmeca was not entitled to JMOL on any issue because substantial evidence supported the jury’s verdict

. With respect to Planmeca’s argument that

1 The parties dispute when Dr. Kia acquired the requisite 3 to 5 years of diagnostic imaging experience , and thus became qualified as a person of ordinary skill in the
art . On appeal, Osseo maintains Dr. Kia acquired this requisite experience as of 1999 “ through his work studying and building dental imaging systems .” Appellee’s Br. 17. Planmeca contends Dr. Kia did not acquire the requisite diagnostic imaging experience until 8 to 10 years after 1999. See Appellant’s Br. 21

. The district court did not resolve th is factual dispute , and instead resolved whether Dr. Kia was qualified as a person of ordinary skill in the
art regardless of timing as a matter of law. Case: 23-1627 Document: 34 Page: 3 Filed: 09/04/2024OSSEO IMAGING , LLC v. PLANMECA USA INC

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Dr. Kia’s testimony should be disregarded in its entirety because he was not a person of ordinary skill in the art at the time of the patents’ alleged date of invention in 1999, the district court rejected it as legally incorrect

. T he district court explained that “[Planmeca] points to no legal support for the supposed requirement that an expert attain his or her expertise prior to a patent’s effective date. ” Osseo Imaging, LLC v. Planmeca USA Inc.

, No. 1:17

- cv

- 01386, 2023 WL 1815975, at *3 (D. Del. Feb. 8
, 2023) . As such, the district court concluded that “[t] he jury was free to credit Dr. Kia’s testimony in reaching its conclusions on infringement.” Id.

Planmeca timely appealed the district court’s decision

. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

D ISCUSSION Planmeca raises three issues on appeal. In particular, Planmeca argues that the district court erred in den yi ng JMOL of noninfringement for two reasons : (1) although Dr. Kia became a person of ordinary skill 8 to 10 years after the time of the invention, he was not so skilled at the time of the invention , and thus the verdict cannot be supported by his testimony ; and (2) even with Dr. Kia’s testimony, thejury’s verdict of infringement is not supported by substantial evidence

. Planmeca also contends the district court ’s denial of JMOL of obviousness constitutes legal error because no evidence supports the jury’s verdict. We address each issue in turn.

We review the denial of JMOL under the law of the regional circuit , here

, the Third Circuit

. Ironburg Inventions Ltd. v. Valve Corp. , 64 F.4th 1274, 1291 (Fed. Cir. 2023). “In the Third Circuit, review of denial of JMOL is plenary.” Finjan, Inc. v. Secure Computing Corp. , 626 F.3d 1197, 1202 (Fed. Cir. 2010). J MOL “ is a sparingly invoked remedy, granted only if, viewing the evidence in the light most favorable to the nonmovant and giving it the advantage of every fair and reasonable inference, there is insufficient Case: 23-1627 Document: 34 Page: 4 Filed: 09/04/2024OSSEO IMAGING , LLC v. PLANMECA USA INC

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evidence from which a jury reasonably could find liability.” Marra v. Phila. Hous

. Auth

. , 497 F.3d 286, 300 (3d Cir. 2007), as amended (Aug. 28, 2007) (internal quotation marks and citations omitted). JMOL “is appropriate where ‘the record is critically deficient of the minimum quantum of evidence’ in support of the verdict.” TI Grp. Auto. Sys. (N. Am.), Inc. v. VDO N. Am., L.L.C. , 375 F.3d 1126, 1133 (Fed. Cir. 2004) (quoting Gomez v. Allegheny Health Servs., Inc. , 71 F.3d 1079, 1083 (3d Cir. 1995) ) . “ The question is not whether there is literally no evidence supporting the unsuccessful party, but whether there is evidence upon which a reasonable jury could have found its verdict.” Id. (quoting Gomez , 71 F.3d at 1083). “ In performing this narrow inquiry, we must refrain from weighing the evidence, determining the credibility of witnesses, or substituting our own version of the facts for that of the jury.” Marra

, 497 F.3d at 300.

I
At the outset, we not e the unusual procedural posture of Planmeca’s challenge regarding Dr. Kia’s technical expert testimony. Planmeca did not file a Daubert motion seeking to exclude Dr. Kia’s testimony because he was not a person of ordinary skill in the art . Nor did Planmeca appeal the denial of a motion to exclude Dr. Kia’s testimony

or a denial of an objection to that testimony at trial . Instead, consistent with its Rule 50 motions for JMOL filed during and after trial , Planmeca assert s that Dr. Kia’s testimony cannot constitute substantial evidence to support the jury verdict of infringement. The district court held that Planmeca’s argument found no support i n precedent and rejected it as a matter of law. We review the district court’s legal determination de novo

. See Finjan , 626 F.3d
at 1202 (quoting McKenna v. City of Phila. , 582 F.3d 447, 460 (3d Cir. 2009) ).
“To offer expert testimony from the perspective of a skilled artisan in a patent case

— like for claim Case: 23-1627 Document: 34 Page: 5 Filed: 09/04/2024OSSEO IMAGING , LLC v. PLANMECA USA INC

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construction, validity, or infringement

— a witness must at least have ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n , 22 F.4th 1369, 13 76 –77 (Fed. Cir. 2022)

. All that is required “to be qualified to offerexpert testimony on issues from the vantage point of an ordinarily skilled artisan in a patent case” is that “an expert must at a minimum possess ordinary skill in the art.” Id.
at 1377. Our precedent is clear —n othing more is required

. Planmeca urges us to add a timing requirement to theminimum qualifications necessary to offer expert testimony from the perspective of a person of ordinary skill

. Planmeca contends that a technical expert opining on infringement must possess the requisite ordinary skill in the art “ at the time of the alleged invention .” Appell ant ’s Br. 16 (emphasis added)

. Planmeca relies on language in Kyocera and our court’s precedent on claim construction for support. Neither persuades us here

. First, Planmeca asserts that while “ Kyocera does not specifically state that an expert must be a [person of ordinary skill ] at the time of the invention, Kyocera does hold that an expert witness must ‘be qualified to offer expert testimony on issues from the vantage point of an ordinarily skilled artisan in a patent case.’” Appellant’s Br. 17 (quoting Kyocera , 22 F.4th at 1377 (emphasis added) ). Planmeca infers too much from this language in Kyocera

. To start, t here is no direct support for Planmeca’s pr oposed timing requirement in Kyocera

. Indeed, the court in Kyocera did not even consider the requirement Planmeca asks this court to impose. The issue presented in Kyocera was simply whether an expert who did not qualify as a person of ordinary skill in the art

— at any time

— could present reliable testimony as a technical expert. The court in Kyocera said no. A s stated above, a ll that Kyocera requir es “[t] o offer expert testimony from the perspective of a skilled artisan in a patent case ” is that “a witness must at least have ordinary skill in the art.” Kyocera , 22 F.4th at 137 6–77

. Kyocera does not state that an expert must be a person of Case: 23-1627 Document: 34 Page: 6 Filed: 09/04/2024OSSEO IMAGING , LLC v. PLANMECA USA INC

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ordinary skill in the art at the time of the invention to offer expert testimony from the vantage point of a skilled artisan

.Nor do we think that we should impose such a requirement. It is undisputed that Dr. Kia’s qualifications meet that of a person of ordinary skill in the art in this case. See J.A. 5472 ; J.A. 4116

– 24 at 309:19

– 317:25; J.A. 4128
at 321:7

– 12

. While Planmeca correctly notes that claim interpretation ( step one of the infringement analysis ) require s knowledge of a person of ordinary skill “at the time of the invention

, ” Appellant’s Br. 17 (quoting Phillips

v. AWH Corp. , 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) ) , we are reluctant to conclude that an expert’s subsequent acquisition of the requisite level of skill per se renders an expert’s infringement testimony unreliable such that it should be excluded

. Even assuming Planmeca is correct in asserting that that Dr. Kia did not have the requisite 3 to 5 years of diagnostic imaging experience until 8 to 10 years after the time of the invention, we are not convinced that Dr. Kia’s infringement analysis was un reliablesuch that it cannot form a basis for supporting the jury verdict.
Indeed, i t makes little sense to add Planmeca’s suggested timing requirement. An expert need not have acquired that skill level prior to the time of the invention to be able to testify from the vantage point of a person of ordinary skill in the art

. Rather, a n expert can acquire the necessary skill level later and develop an understanding of what a person of ordinary skill knew at the time of the invention. In practice , t he fact that the expert was not a person of ordinary skill at the time of the invention may well be used during cross examination to undermine the credibility of the expert

. Relatedly, an expert who later acquires the requisite knowledge could avoid such potential damage
to her credibility by explaining to the judge and jury how

s he gained the perspective of a person of ordinary skill at the time of the invention

. In fact, Dr. Kia did something Case: 23-1627 Document: 34 Page: 7 Filed: 09/04/2024OSSEO IMAGING , LLC v. PLANMECA USA INC

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similar here. Contrary to Planmeca’s assertion that “Dr. Kia offered no trial evidence or testimony that his opinions reflected the views of a [person of ordinary skill in the art] in 1999,” Appellant’s Br. 21, Dr. Kia test ified about what was known in the field at the relevant time. See, e.g.

, J.A. 4254

– 57 at 447:22

– 450:25; J.A. 4140

– 41 at 333:4

– 334:15

. Accordingly

, we see no reversible error. W e agree with the district court that the proposed timing requirement is not a basis for excluding Dr. Kia’s expert testimony as a matter of law

. II

“

A determination of infringement, both literal and under the doctrine of equivalents, is a question of fact, reviewed for substantial evidence when tried to a jury. ” TI Grp. , 375 F.3d at 1133. “ A factual finding is supported by substantial evidence if a reasonable jury could have foundin favor of the prevailing party in light of the evidence presented at trial.” Amgen Inc. v. Hospira, Inc. , 944 F.3d 1327, 1335 (Fed. Cir. 2019) (citing Tec Air, Inc. v. Denso Mfg. Mich

. Inc. , 192 F.3d 1353, 1357

– 58 (Fed. Cir. 1999) ).

Planmeca contends that , even with Dr. Kia’s test imony, no reasonable jury could have found infringement of claims 1 and 7 of the ’301 patent
, claim 1 of the ’262 patent
, or claim 1 of the ’ 374 patent because Planmeca’s A ccused S ystems did not practice the densitometry

, tomographic modeling , or comparing limitations in the asserted claims. We address each limitation in succession.
Densitometry

The district court construed densitometry as “quantitatively calculated bone density.” J.A. 1207

– 08. Planmecaargues that, under the district court’s construction, no reasonable jury could have found infringement of the densitometry limitation because “Osseo provided no evidence at trial that the Accused Systems quantitatively calculated Case: 23-1627 Document: 34 Page: 8 Filed: 09/04/2024OSSEO IMAGING , LLC v. PLANMECA USA INC

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bone density (e.g., by calculating mass divided by volume) as required by all asserted claims. ” Appellant’s Br. 26 (emphasis omitt ed). Instead, Planmeca is of the view that “ Osseo did nothing more than show that [Hounsfield Unit (HU) ] values used by the Accused Systems may indicate relative density, which is not the same as performing or showing ‘ quantitatively calculated bone density. ’ ” Appellant’s Br. 27. To Planmeca, the presentation of HU values did not satisfy the densitometry limitation because “t he Accused Systems used HU values for gray

- scale representations that a person could use to merely qualitatively (or relatively) assess bone density based on the HU values. ” Appellant’s Br. 31 (emphasis in original)

. Osseo responds that the evidence at trial showed that Planmeca’s Accused Systems calculated HU values which

, in fact , represent bone density , thus satisfying the densitometry limitation

. Appellee’s Br. 30

– 31.

Substantial evidence supports the jury’s infringement verdict

. To start, the Accused Systems’ user manual states that HU values are calculated by the Accused System s in operation. J.A. 5352

. And Osseo’s expert , Dr. Kia, explain ed that HU values correspond to bone densities. J.A. 417 5– 76 at 368:3

– 369:2 ( discussing J.A. 5376 ). Thus, taken together, the jury heard evidence on which it could reasonably rely to find that Planmeca’s Accused Systems met the densitometry limitation.
Tomographic Model

The district court construed tomographic model as “merging information from multiple tomographic scans. ” See J.A. 1204

– 07. Planmeca argues that the evidence at trial showed that the tomographic model generated by the

“

Accused S ystems was created using individual, non

- tomographic images from a single scan of the patient.” Appellant’s Br. 37 (emphasis omitted )

. Planmeca stresses that Dr. Kia’s testimony showed that the tomographic model was not created by merging multiple tomographic scans, Case: 23-1627 Document: 34 Page: 9 Filed: 09/04/2024OSSEO IMAGING , LLC v. PLANMECA USA INC

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but rather by using multiple single 2D images obtained from a single scan of the patient ’s head

. Osseo responds that Planmeca misconstrues the district court’s construction of tomographic model

, “contort [s] Dr. Kia’s testimony ,” and ignores Dr. Kia’s further testimony that confirms each of the 2D image s were in fact 2D projections that each constitute tomographic scans. Appellee’s Br. 37

– 38. We agree with Osseo

— substantial evidence supports the jury’s infringement verdict

.The Court’s construction does not require that information be merged from tomographic images, but rather that information be merged from multiple tomographic

scans. To that end, although Dr. Kia testified that the 2D projections themselves were not tomographic images, hedid confirm that each of those 2D projections were tomographic scans. J.A. 4361 at 518:15

– 25 . Dr. Kia also clarified that the Accused Systems merged information from multiple tomographic scans. J.A. 4362 at 519:7

– 23

. Thus

, the jury hea rd evidence on which it could reasonably rely to find that the Accused Systems satisfied the tomographic model limitation

. Comparing

The district court determined that no construction was necessary for th e comparing term in the larger phrase “said computer creating, storing and comparing three

- dimensional digital densitometry models without the use of fiducial markers of patient dental or orthopedic structure .” See J.A. 1213 . Still, Planmeca continues to assert on appeal that c laim 1 of the ’262 p atent requires a computer of the Accused System s to do a comparison of the densitometry models and that Osseo put on no evidence that a computer performed the comparison of the densitometry models. See Appellant’s Br. 41

– 42 . Instead, Planmeca asserts, there was only evidence of a human performing the comparison after the computer presented at least two images (i.e., two densitometry models). See Appellant’s Br. 42

– 43

. Osseo Case: 23-1627 Document: 34 Page: 10 Filed: 09/04/2024OSSEO IMAGING , LLC v. PLANMECA USA INC

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responds that it was not required to present evidence th at a computer of the Accused System , and not the users themselves, compared the created and stored dental models. Appellee’s Br. 41. Rather, Osseo asserts that it “presented ample evidence to the jury that the Romexis software of the Accused Systems facilitates the comparison of two imagesby registering and displaying them such that the corresponding parts of the patient’s anatomy are aligned.” Appellee’s Br. 42. Substantial evidence supports the jury’s verdict of infringement. First, we do not read this claim to require the absence of human involvement in the comparison step. That is, the comparing limitation may be satisfied if a computer of the Accused Systems displays two densitometry models in a manner that invites the comparison of the two densitometry models. For instance, the presentation of a side

- by

- side arrangement or the presentation of two images layered on e on top of the o ther would suffice because any differences between the two densitometry models would be discernable. Dr. Kia explained that the Accused Systems perform this type of presentation to the jury. J.A. 4200

– 04 at 393:12

– 397:17 ; J.A. 4217

– 18 at 410:1 3– 411:21

. As such, the jury reasonably found that Planmeca’s Accused Systems met the comparing limitation.
We conclude that substantial evidence supports the jury’s verdict of infringement of claims 1 and 7 of the ’301 patent , claim 1 of the ’262 patent , and claim 1 of the ’374 patent

. Accordingly, we affirm the district court’s denial of JMOL.

IIIAs to obviousness, “[t]his court reviews a jury’s conclusions on obviousness, a question of law, without deference,and the underlying findings of fact, whether explicit or implicit within the verdict, for substantial evidence.” LNP Eng’g Plastics, Inc. v. Miller Waste Mills, Inc. , 275 F.3d Case: 23-1627 Document: 34 Page: 11 Filed: 09/04/2024OSSEO IMAGING , LLC v. PLANMECA USA INC

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1347, 1353 (Fed. Cir. 2001); see also TI Grp. , 375 F.3d
at 1133. “Where, as here, the jury made no explicit factual findings regarding obviousness, we must determinewhether the implicit findings necessary to support the verdict are supported by substantial evidence.” Fresenius USA, Inc. v. Baxter Int’l, Inc. , 582 F.3d 1288, 1294 (Fed. Cir. 2009); see J.A. 3574

. “ [W] hether there is a reason to combine prior art references is a question of fact” that we review for substantial evidence. Kinetic Concepts, Inc.

v. Smith & Nephew, Inc. , 688 F.3d 1342, 1367 (Fed. Cir. 2012).

Planmeca argues that the evidence at trial demonstrated that eac h limitation of the asserted claims was shown in the prior art and that its expert, Dr. Norbert Pelc

, “diligently presented a combination of prior art references [

, Guenther, Mazess, Fontevraud, and DIMAXIS

, ] thatdemonstrated by clear and convincing evidence the obviousness of the patent claims at trial.” Appellant’s Br. 51

– 52

. In addition , Planmeca asserts that Osseo’s expert, “Dr. Kia[,] did not at all challenge the disclosure in Guenther, Mazess, Fontevraud, and DIMAXIS that Dr. Pelc relied on to reach his obviousness opinion .” 2 Appellant’s Br. 54. Thus, Planmeca concludes that no reasonable jury could have found the asserted claims of the A sserted P atents nonobvious

. Osseo responds that it presented evidence

— Dr. Kia’s testimony

— that it would not have been obvious to combine the teachings of the primary prior art references Guenther, Mazess, and Fontevraud

. Planmeca

2 Oddly, Planmeca does not appear to argue that the district court should have give n no weight to Dr. Kia’s testimony regarding obviousness. In any event, as noted above, we reject Planmeca’s argument the Dr. Kia’s testimony cannot constitute substantial evidence because he
was not a person of ordinary skill in the art until after the time of the invention. Case: 23-1627 Document: 34 Page: 12 Filed: 09/04/2024OSSEO IMAGING , LLC v. PLANMECA USA INC

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essentially asks us to reweigh the evidence presented to the jury, which we will not do.
Substantial evidence supports the jury’s findings necessary to support the verdict that the A sserted P atent s are not invalid as obvious

. First, Dr. Kia disputed Dr. Pelc’s conclusions regarding obviousness. J.A. 5056 at 1127:3

– 22. Dr. Kia then testified on the differences between tomosynthesis and computed tomograph y. J.A. 5057

– 60 at 1128:1 0– 1131:13

. This discussion served as a backdrop against which Dr. Kia explain ed that densitometry

, or bone density data, and tomosynthesis are incompatible with each other because tomosynthesis scans can produce blurry
anatom ical images

. J.A. 506 0– 63 at 113 1: 14

– 1134:6

. Based on this entire discussion , Dr. Kia conclude d it would not have been obvious to a person of ordinary skill in the art to combin e the tomosynthesis concept in Guenther with the densitometry concepts in Mazess and Fontevraud

. See J.A. 5056 at 1127:3

– 22 (noting “ one of ordinary skill in the art would not look to bone general density for a solution for a problem related to tomosynthesis ”) ; J.A. 5068 at 1139:9

– 18 ; J.A. 5064 –6 9 at 1135:13

– 1140:13

. Thus, the jury heard evidence demonstrating that it would not have been obvious to a skilled artisan to combine the prior art references

. The jury could reasonably rely on such evidence to find that Planmeca did not meet its burden to establish by clear and convincing evidence that the asserted claims of the A sserted P atents are invalid for obviousness

. Accordingly, we affirm the district court’s denial of JMOL.

C ONCLUSION We have considered Planmeca’s remaining arguments and find them unpersuasive. For the reasons above, we affirm the district court’s denial of judgment as a matter of law with respect to infringement and invalidity.

AFFIRMED Case: 23-1627 Document: 34 Page: 13 Filed: 09/04/2024