Docket No. 2017-2259 (IPR2015-01786)
PROST, LOURIE, CHEN
September 13, 2018
Brief summary: Board IPR decision finding Nobel’s claims relating to dental implants are invalid for anticipation affirmed, based in part on finding that trade show catalog was publicly available under §102(b).
Summary: Nobel appealed USPTO Board IPR decision (and rehearing) that claims 1-5 and 19 of Nobel’s US 8,714,977 relating to dental implants are invalid for anticipation. Nobel acquired the ‘977 patent from Alpha-Bio Tech Ltd. (ABT), and alleged infringement by Instradent’s importation of dental implants in front of the International Trade Commission (ITC). Instradent failed to convince the ITC “by clear and convincing evidence” that an ABT catalog dated March 2003 disclosed the “SPI implant” at a trade show and was “used in connection with training courses and provided to attendees without requiring them to sign a confidentiality agreement” (based on ABT’s founder Fromovich testified, and an email by ‘977 inventor Karmon) is prior art under pre-AIA 102(b) (the critical date for the ‘977 patent being May 23, 2003). This was because the implant disclosed in the catalog did not include a “coronal region having a frustoconical shape” as in ‘977 claim 1, which the ITC construed to mean “the coronal region has partly or entirely, a frustoconical shape”. An FC panel affirmed the ITC’s decision in 2017 without opinion (Instradent, FC 2017). Instradent’s IPR petition, filed before the ITC decision, alleged anticipation over the ABT catalog and obviousness over other references not at issue here (Board found obviousness but those issues were not appealed). “[T]he Board considered evidence that had been presented to the ITC” as well as “new evidence not considered by the ITC, including the declaration and deposition testimony” of dental supply distributors who were at the trade show (e.g., “it was a specific goal of mine to collect materials from the March 2003 IDS trade show describing the SPI implant…I am certain that the 2003 [ABT] Catalog was publicly accessible to the dental industry, including competitors….”) “The Board ‘determine[d] that a preponderance of the evidence establishe[d] that the ABT Catalog qualifies as a prior art printed publication under pre-AIA 35 U.S.C. 102(b)” and found claim 1 anticipated based on its construction of the “coronal region”. The FC panel first explained that since no party appealed any issues under SAS (prohibiting the Board from institution on fewer than all the challenged claims), it was “not obliged to reopen non-instituted claims or grounds” and “no reason to exercise any discretion to remand the non-instituted claims or grounds sua sponte.” The FC panel reviewed the Board’s “legal determinations de novo” (In re Elsner, FC 2004; In re Rambus, FC 2014; Husky Inj., FC 2016) and its “factual findings underlying those determinations for substantial evidence” (In re Gartside, FC 2000; Consol. Edison, US 1938 (evidence that “a reasonable mind might accept”)). The FC panel also noted that it was “not bound by [its] prior affirmance of the ITC’s holding” since, e.g., “the evidentiary standard” in the ITC proceedings is “clear and convincing evidence” while that of an IPR is the less restrictive “preponderance of the evidence”. Under the “preponderance of the evidence” standard, the FC panel found “substantial evidence supports the Board’s decision that the ABT Catalog was publicly accessible prior to the critical date” (e.g., ABT’s founder “did not mention confidentiality restrictions or any expectation that the disclosure would not be shared” (Cordis, FC 2009; In re Klopfenstein, FC 2004); Finnigan, FC 1999 (corroboration testimony); e.g., “the asserted reference has a date before the critical date printed on it”)). The FC panel also found the Board’s claim construction to be “reasonable” (broadest reasonable construction (Cuozzo, US 2016; § 42.199(b); e.g., “[w]e interpret ‘having’ in light of the claim language context and the specification to determine whether it is open or closed”, finding here that it “is open-ended” (Lampi, FC 2000)). The FC panel therefore affirmed the Board’s decision.