One More Bite at Overcoming a Denial of a Motion to Amend
| June 22, 2018
Sirona Dental Systems GmbH v. Institut Straumann AG, Dental Wings Inc.
June 19, 2018
Before Prost, Moore and Stoll. Opinion by Moore.
Summary
This precedential opinion highlights some of the complicated issues which can arise in an IPR, particularly in light of recent precedent of SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018) and Aqua Products Inc. V. Matal, 872 F. 3d 1290 (Fed. Cir. 2017). The decision also lets us know that there will be more developments with IPR practice down the road, such as whether the Board may consider combinations of references not argued by the petitioner in opposing a motion to amend, and if so, what procedures consistent with the APA are required to do so.
Background
An Inter Partes Review (IPR) was instituted on claims 1-10 of Sirona Dental Systems’ (Sirona) U.S. Patent No. 6,319,006 (the ‘006 patent) based on two of four grounds set forth in the petition. The Patent Trial and Appeal Board (PTAB) held that claims 1-8 are unpatentable as obvious based on Bannuscher and Truppe (ground 3 in the petition), held claims 9 and 10 are not unpatentable, and denied Sirona’s contingent motion to amend. Sirona appealed the obviousness determination and the denial of the contingent motion to amend, and Institut Straumann and Dental Wings (Petitioners) appealed the holding of patentability. The Federal Circuit affirms that claims 1-8 are unpatentable, affirms that Petitioners failed to demonstrate that claims 9 and 10 are unpatentable, vacates the denial of the contingent motion to amend, and remands for further proceedings.
Discussion
- Obviousness of claims 1-8
The PTAB’s legal determination of obviousness is reviewed de novo and factual findings are reviewed for substantial evidence. Claim 1 recites:
1. Method for producing a drill assistance device for a tooth implant in a person’s jaw, comprising the following process steps:
taking an x-ray picture of the jaw and compiling a corresponding measured data record,
carrying out a three-dimensional optical measuring of the visible surfaces of the jaw and of the teeth and compiling a corresponding measured data record,
correlating the measured data records from the x-ray picture and from the measured data records of the three-dimensional optical measuring,
determinating the optimal bore hole for the implant, based on the x-ray picture, and
determinating a pilot hole in a drill template relative to surfaces of the neighboring teeth based on the x-ray picture and optical measurement.
Bannuscher is a German language reference in which each party filed different translations. In the petitioners’ translation, plaster models are transferred into a skull-based simulator in a 3-D relationship “using a recording sheet” whereas Sirona’s translation indicated the plaster models are transferred into a skull-referenced simulation device with the aid of “a recording bow.” Sirona did not challenge the PTAB’s legal analysis. As such, the CAFC reviewed: 1) whether substantial evidence supports the PTAB’s findings that the combination of Bannuscher and Truppe discloses “carrying out a three-dimensional optical measuring of the visible surfaces of the jaw and of the teeth and compiling a corresponding measured data record”, and 2) whether a person of ordinary skill in the art would have been motivated to combine the references.
The PTAB construed “carrying out a three-dimensional optical measuring of the visible surfaces of the jaw and of the teeth and compiling a corresponding measured data record” as “using light to measure the visible surfaces of the jaw and teeth in three dimensions” which the parties do not dispute. The CAFC concluded that the substantial evidence supports the PTAB’s findings with respect to obviousness. However, Sirona argued that the PTAB relied on legal theories that first appeared in the final written decision, namely that the petition relied on a “recording sheet” to input surface structures whereas the proper translation of “recording bow” cannot digitally input surface structures. As such, Sirona argues that the PTAB violated the APA when it determined that Sirona’s recording bow argument was not relevant and put together its own obviousness theory that does not appear in the petition.
As set forth in SAS, an inter partes review must proceed “in accordance with or in conformance to the petition.” As such, Sirona argues it would not be proper for the PTAB to deviate from the grounds in the petition and raise its own obviousness theory. The CAFC, however, found that the PTAB’s obviousness determination did not deviate from the grounds raised in the petition. The PTAB used the term “geometry data” to refer to the digitized plaster models that were expressly cited in the petition. The petition had noted Bannuscher’s 3-D plaster models being input into a computer as disclosing the claimed “measured data record.”
- Contingent Motion to Amend
Sirona challenged the denial of its contingent motion to amend as 1) the PTAB improperly placed the burden on Sirona to prove that the proposed substitute claims were patentable, 2) the PTAB improperly rejected the proposed substitute claims on a combination of references not raised by the Petitioners, and 3) even if the PTAB could rely on a combination of references not raised by Petitioners, Sirona did not receive notice and an opportunity to respond to the combination, as required under the APA.
The final written decision was issued prior to the en banc Aqua Products decision which held that the petitioner bears the burden of proving that the proposed amended claims are unpatentable. Accordingly, the denial of the contingent motion to amend is vacated and remanded in view of Aqua Products Inc. Due to the remand on this point, the CAFC did not address the other alleged errors, stating “we leave it to the Board to determine in the first instance, in light of recent precedent including SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018) whether it may consider combinations of references not argued by the petitioner in opposing the motion to amend claims, and, if so, what procedures consistent with the APA are required to do so.”
- Patentability of Claims 9 and 10
Claim 9 recites:
The method according to claim 1, wherein the drill assistance device is ground out from a dimension-stable material, and said material represents the form of occlusal surfaces of neighboring teeth as a negative with respect to an implant position.
The PTAB found that Bannuscher did not satisfy the drill assistance device since the plaster model was not ground out and was a positive representation of the teeth, not a negative representation. Petitioners inconsistently cited Bannuscher’s operation template as “the drill assistance device” in claim 1, but cited the plaster models for the same term in claim 9. Petitioners argued that the PTAB should have applied findings from the analysis of Sirona’s contingent motion to amend to its analysis of claims 9 and 10. This, however, would be attempting to add references to the ground of unpatentability put forth in the petition. The CAFC finds that there is no error in the PTAB’s decision not to decide grounds of unpatentability not raised in the petition.
Takeaway
This decision highlights that there will be more to come with respect to how IPR trials are conducted by the PTAB.
