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

______________________ 

SETH OSTROW, Meister Seelig & Fein PLLC, New York, 

NY, argued for plaintiff-appellee. Also represented by 

ROBERT FEINLAND. 

 WASIF QURESHI, Jackson Walker LLP, Houston, TX, argued for defendant-appellant. Also represented by LEISA 

TALBERT PESCHEL; BLAKE DIETRICH, Dallas, TX; MICHAEL 

J. FLYNN, Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE.

______________________ 

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

Before DYK, CLEVENGER, and STOLL, Circuit Judges.

STOLL, 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 infringes Osseo Imaging, LLC’s (“Osseo”) U.S. Patent Nos. 6,381,301, 6,944,262, and 8,498,374; 

and (2) certain claims of the ’301 patent, ’262 patent, and 

’374 patent are not invalid for obviousness. The 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.

BACKGROUND

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 Patents”). 

The Asserted Patents 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 would 

have 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 

Patents. During cross-examination of Osseo’s technical expert, Dr. Omid Kia, Planmeca sought to demonstrate that 

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OSSEO IMAGING, LLC v. PLANMECA USA INC. 3

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 submitting the issues to the jury. The jury then rendered its 

verdict, finding that Planmeca directly infringed all asserted claims except claim 6 of the ’374 patent. The jury 

also 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 claims 1 and 6 of the ’374 patent. 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 this 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.

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4 OSSEO IMAGING, LLC v. PLANMECA USA INC. 

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. The 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).

DISCUSSION

Planmeca raises three issues on appeal. In particular, 

Planmeca argues that the district court erred in denying

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, the 

jury’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). JMOL “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 

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OSSEO IMAGING, LLC v. PLANMECA USA INC. 5

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 note 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 asserts 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 in 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 

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6 OSSEO IMAGING, LLC v. PLANMECA USA INC. 

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, 1376–77 

(Fed. Cir. 2022). All that is required “to be qualified to offer 

expert 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—nothing more is required. 

Planmeca urges us to add a timing requirement to the 

minimum 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.” Appellant’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, there is no direct support for Planmeca’s proposed 

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. As stated above, all that Kyocera requires “[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 1376–77. 

Kyocera does not state that an expert must be a person of 

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OSSEO IMAGING, LLC v. PLANMECA USA INC. 7

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) requires 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 unreliable

such that it cannot form a basis for supporting the jury verdict.

Indeed, it 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, an 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, the 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 

she gained the perspective of a person of ordinary skill at 

the time of the invention. In fact, Dr. Kia did something 

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8 OSSEO IMAGING, LLC v. PLANMECA USA INC. 

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 testified 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. We 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 found 

in 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 testimony, 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 Accused 

Systems 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. Planmeca 

argues 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 

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OSSEO IMAGING, LLC v. PLANMECA USA INC. 9

bone density (e.g., by calculating mass divided by volume)

as required by all asserted claims.” Appellant’s Br. 26 (emphasis omitted). 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 “the 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 Systems in 

operation. J.A. 5352. And Osseo’s expert, Dr. Kia, explained that HU values correspond to bone densities. 

J.A. 4175–76 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 Systems 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, 

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10 OSSEO IMAGING, LLC v. PLANMECA USA INC. 

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 images 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, he 

did 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 heard 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 the 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 claim 1 of the ’262 patent requires a computer of the 

Accused Systems 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 

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OSSEO IMAGING, LLC v. PLANMECA USA INC. 11

responds that it was not required to present evidence that 

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 images 

by 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 one on top of the other 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 410:13–

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.

III

As 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 

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12 OSSEO IMAGING, LLC v. PLANMECA USA INC. 

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 determine 

whether 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 each 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,] that 

demonstrated 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 Asserted Patents 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 given 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.

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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 Asserted Patents 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 tomography. J.A. 5057–60 

at 1128:10–1131:13. This discussion served as a backdrop 

against which Dr. Kia explained that densitometry, or bone 

density data, and tomosynthesis are incompatible with 

each other because tomosynthesis scans can produce blurry

anatomical images. J.A. 5060–63 at 1131:14–1134:6. 

Based on this entire discussion, Dr. Kia concluded it would 

not have been obvious to a person of ordinary skill in the 

art to combine 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. 5064–69 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 Asserted Patents are invalid for obviousness. Accordingly, we 

affirm the district court’s denial of JMOL.

CONCLUSION

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

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