Canfield Scientific Inc v. MelANoScan LLC

1. Case Identification

• Case #: IPR: 2017-02125
• Patent #: 7,359,748
• Filed: September 21, 2017
• Petitioner(s): Canfield Scientific, Inc.
• Patent Owner(s): Melanoscan, LLC
• Challenged Claims: 1-8, 11, 30, 32-34, 46, and 51

2. Patent Overview

• Title: Multi-Camera Body Imaging Enclosure
• Brief Description: The ’748 patent describes a device for imaging a person using a multi-camera enclosure. The system is intended for medical and cosmetic screening and analysis by defining a specified imaging position and using a plurality of imaging devices and light sources to capture a subject's image.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 8, 11, 30, 32-34, 46, and 51 are obvious over Voigt in view of Hurley.

• Prior Art Relied Upon: Voigt (a 1995 journal article on melanoma screening) and Hurley (a 1997 paper on a body measurement system for apparel).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Voigt taught a foundational system for medical imaging, including an enclosure, a specified imaging position defining a centerline, peripheral lighting, and a single camera capable of precise measurements based on its position, focal length, and resolution. Hurley was argued to teach a multi-camera system for full-body scanning with cameras spaced vertically, laterally, and on opposite sides of a subject. Petitioner contended that combining these references supplied all limitations of independent claims 1 and 51, with Hurley's multi-camera array supplementing Voigt's single-camera setup.
  • Motivation to Combine: A person of ordinary skill in the art (POSA) would have been motivated to modify Voigt’s medical imaging system with Hurley’s multi-camera arrangement to achieve the known benefits of full-body photography without repositioning, increased resolution, and reduced shadowing. Petitioner argued the shared context of body measurement made the combination logical and intuitive for a POSA.
  • Expectation of Success: The integration of multiple known cameras and light sources into an imaging enclosure was presented as a predictable design choice with a high expectation of success.

Ground 2: Claims 1-4, 8, 11, 30, 32-34, and 51 are obvious over Voigt in view of Crampton.

• Prior Art Relied Upon: Voigt (a 1995 journal article) and Crampton (International Publication No. WO 98/28908).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an argument similar to Ground 1, with Crampton substituting for Hurley as the secondary reference. Petitioner asserted that Voigt provided the base system for precise lesion measurement, while Crampton provided the teaching of a multi-camera kiosk with cameras arranged in vertical columns and on all sides of a subject to create high-detail 3D avatars.
  • Motivation to Combine: A POSA would combine the references to gain the advantages taught by Crampton, such as capturing the entire body from multiple angles in a single pose and achieving higher resolution. Petitioner highlighted that both the ’748 patent and Crampton shared applications in medical and beauty treatments, providing a direct motivation to combine their teachings to improve upon Voigt's system.

Ground 3: Claims 1-8, 11, 30, 33-34, and 46 are obvious over Hurley alone.

• Prior Art Relied Upon: Hurley (a 1997 paper on a body measurement system).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Hurley, by itself, disclosed nearly every element of the challenged claims. Hurley described a "non-contact measurement system" for apparel using an enclosure with six sensors (camera and projector) on three towers, with cameras spaced vertically, laterally, and on opposite sides of a centerline. The primary disputed element was the "wherein" clause requiring precise measurements. Petitioner argued that standard photogrammetry techniques, which the ’748 patent applicant acknowledged as "standard," would allow a POSA to derive precise measurements from the data provided by Hurley's system (e.g., camera position, focal length, resolution).
  • Motivation to Combine (Implicit): The motivation was argued to be inherent in Hurley's stated purpose to "accurately obtain[ ] human body measurements." A POSA would have found it obvious to apply standard measurement algorithms to the captured data to achieve this goal.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 6-7 over Voigt, Hurley, and Daanen (a 1998 survey of body scanners) and claims 32 and 46 over Voigt, Crampton, and Dye (a 1999 PCT application on displaying 3D data). These grounds relied on similar modification theories, with Daanen providing further examples of multi-camera arrangements and Dye teaching the use of PDAs and USB hubs for displaying and connecting imaging systems.

4. Key Claim Construction Positions

• Preamble: The Petitioner argued that the preamble term "a device for identification of maladies that affect human tissue" is a non-limiting statement of intended use because the claim body recites a structurally complete device.
• "Wherein Clause" (Claims 1 and 51): This clause recites defining coordinates, distance, focal length, and resolution to allow for "precise measurement." Petitioner argued this was a key limitation added during prosecution and should be construed to describe a standard photogrammetry calculation. This construction was central to their argument that the prior art’s description of camera systems with known parameters rendered this limitation obvious.
• Means-Plus-Function Terms (Claim 51): Petitioner proposed constructions for "first means for receiving and enclosing" (a fully surrounding structure like one made of plywood) and "second means for specifying an imaging position" (a shield or equivalent structure, like adjustable sliders, that physically confines the person). These constructions were critical to mapping Voigt's "position framework" to the claimed means.

5. Key Technical Contentions (Beyond Claim Construction)

• Photogrammetry as a Standard Technique: A central technical contention was that calculating real-world dimensions from a 2D image using known camera parameters (focal length, resolution) and distance is a fundamental principle of photogrammetry. Petitioner argued a POSA would have inherently understood that the systems in Voigt and Hurley, which specified these parameters, were capable of performing the "precise measurement" recited in the claims, making the invention obvious.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-8, 11, 30, 32-34, 46, and 51 of the ’748 patent as unpatentable.