United States Court of Appeals for the Federal Circuit ______________________

ELEKTA LIMITED, Appellant

v.

ZAP SURGICAL SYSTEMS, INC., Appellee ______________________

2021-1985 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2019- 01659. ______________________

Decided: September 21, 2023 ______________________

JENNIFER LIBRACH NALL, DLA Piper US LLP, Austin, TX, argued for appellant. Also represented by STANLEY JO- SEPH PANIKOWSKI, III, San Diego, CA; AARON PATRICK BOWLING, Arnold & Porter Kaye Scholer LLP, Chicago, IL.

APRIL ELIZABETH ISAACSON, Kilpatrick Townsend & Stockton LLP, San Francisco, CA, argued for appellee. Also represented by ANDREW JAMES ISBESTER; MATTHEW MEYER, Menlo Park, CA. ______________________

Before REYNA, STOLL, and STARK, Circuit Judges. Case: 21-1985 Document: 64 Page: 2 Filed: 09/21/2023

2 ELEKTA LIMITED v. ZAP SURGICAL SYSTEMS, INC.

REYNA, Circuit Judge. Appellant Elekta Limited appeals from a Final Written Decision of the United States Patent Trial and Appeal Board that found certain claims of U.S. Patent No. 7,295,648 unpatentable as obvious. Elekta challenges the Board’s findings related to motivation to combine and rea- sonable expectation of success. We affirm. BACKGROUND U.S. Patent No. 7,295,648 Elekta Limited (“Elekta”) is the owner of U.S. Patent No. 7,295,648 (the “’648 patent”), titled “Method and appa- ratus for treatment by ionizing radiation.” J.A. 2–3. The ’648 patent discloses a device for treating a patient with ionizing radiation for certain types of radiosurgery and ra- diation therapy. ’648 patent, 1:6–8. The invention uses a radiation source, e.g., a linear accelerator (referred to as a “linac”), mounted on a pair of concentric rings to deliver a beam of ionizing radiation to the targeted area on the pa- tient. See id. at 4:4–13; see also id. at 4:33–34; see also id at 7:24–25. Figures 5 and 7 illustrate the claimed device features. Id. at Figs. 5 & 7.

Figure 5 shows the claimed apparatus’ interior struc- ture from the foot end with the patient table [18] and all exterior covers removed. Id. at 5:8–9; id. at 7:5–6. Figure Case: 21-1985 Document: 64 Page: 3 Filed: 09/21/2023

ELEKTA LIMITED v. ZAP SURGICAL SYSTEMS, INC. 3

7 shows the claimed apparatus’ interior structure from the head end. See id. at 5:10–12. A rotatable ring [24] is sup- ported by a mounting ring [20]. Id. at 7:12–13. The rotat- able ring [24] rotates around the patient [18]. Id. at 7:13– 14. Extending out of the rotatable ring [24] are two mount- ing brackets [26, 28], which provide a pivotal mounting point [30]. Id. at 7:14–23. A linac [32] is mounted to the pivotal mounting point [30], and a motor [36] is used around the linac housing [34] to assist in rotating the linac [32] around the pivotal mounting point [30]. Id. at 7:24– 27. The apparatus allows the linac to be manipulated such that it can move closer to and further from the patient and approach the patient at various angles. Id. at 7:31–34. This movement allows for the delivery of ionizing radiation to different target areas from different angles on the pa- tient, as well as in differing intensities. See id. at 7:41–49. The ’648 patent contains apparatus and method claims. There is one independent, apparatus claim (Claim 1) and one independent, method claim (Claim 18). We do not find it necessary to reach Claim 18. The parties agree that Claim 1 is illustrative. Claim 1 recites: 1. A device for treating a patient with ionising