Nobel Biocare Services Ag v. Instradent USA, Inc.
903 F.3d 1365
| Fed. Cir. | 2018Background
- Nobel Biocare owns U.S. Patent No. 8,714,977 directed to a dental implant with a coronal (top) region described as "having a frustoconical shape" and a tapered coronal region 0.5–4 mm high that permits bone "relapse."
- Instradent petitioned for inter partes review (IPR) challenging claims 1–5 and 19 as anticipated by an ABT product catalog dated "March 2003" (the ABT Catalog), allegedly distributed at the March 2003 IDS trade show.
- The PTO Patent Trial and Appeal Board (Board) adopted a claim construction treating "having a frustoconical shape" as open-ended (i.e., the coronal region may be partly or wholly frustoconical), found the ABT Catalog publicly accessible before the critical date, and held claims 1–5 and 19 anticipated.
- Nobel argued on appeal that (1) the ABT Catalog was not a prior-art printed publication (no public accessibility and insufficient corroboration), and (2) the Board’s claim construction was too broad (should require the coronal region as a whole be frustoconical).
- The Federal Circuit reviewed the Board’s factual findings for substantial evidence and its claim construction de novo, and affirmed the Board’s findings as supported by the record.
Issues
| Issue | Nobel's Argument | Instradent's Argument | Held |
|---|---|---|---|
| Public accessibility of ABT Catalog as a §102(b) printed publication | Testimony insufficient and uncorroborated; evidence does not show public distribution at March 2003 IDS | Witness testimony, an actual March 2003-dated catalog, and other evidence show free distribution at IDS | Affirmed: substantial evidence supports public accessibility finding |
| Corroboration of witnesses who said catalog was obtained at IDS | Testimony of Hantman and Chakir is not adequately corroborated | Corroboration by each other, the catalog (dated March 2003), and Fromovich’s testimony about an ABT booth suffices | Affirmed: corroboration adequate under rule-of-reason analysis |
| Claim construction of "the coronal region having a frustoconical shape" | Must require the coronal region as a whole to be frustoconical; Board’s construction is overly broad and captures trivial bevels | "Having" is open-ended; specification shows embodiments with partly frustoconical regions; Board limited out inconsequential variations | Affirmed: open-ended construction reasonable and consistent with specification |
| Anticipation of dependent claim claiming surface for bone contact (claim 2) | ABT Catalog does not show the bevel has surface treatment to enhance osseointegration | Catalog discloses acid etching of top third; expert testimony that etching applies to bevel supports anticipation | Affirmed: substantial evidence that claim 2 anticipated |
Key Cases Cited
- SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (Sup. Ct.) (Board must institute on all challenged claims under §318(a))
- PGS Geophysical AS v. Iancu, 891 F.3d 1354 (Fed. Cir.) (SAS-related waiver and jurisdiction principles)
- Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347 (Fed. Cir.) (same)
- In re Elsner, 381 F.3d 1125 (Fed. Cir.) (standard of review for Board legal determinations)
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (substantial-evidence review of factual findings)
- Consol. Edison Co. v. NLRB, 305 U.S. 197 (U.S.) (substantial-evidence standard allows inconsistent inferences)
- In re Rambus, Inc., 753 F.3d 1253 (Fed. Cir.) (anticipation as factual question)
- Husky Injection Molding Sys. Ltd. v. Athena Automation Ltd., 838 F.3d 1236 (Fed. Cir.) (anticipation may be inherent or express)
- Medtronic, Inc. v. Barry, 891 F.3d 1368 (Fed. Cir.) (petitioner’s preponderance burden to prove printed publication in IPR)
- In re Hall, 781 F.2d 897 (Fed. Cir.) (public accessibility as touchstone for printed publication)
- In re Lister, 583 F.3d 1307 (Fed. Cir.) (undated references and public accessibility)
- In re Klopfenstein, 380 F.3d 1345 (Fed. Cir.) (case-by-case public accessibility factors)
- TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151 (Fed. Cir.) (trade-show distribution testimony can support prior-art finding)
- Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319 (Fed. Cir.) (confidentiality expectations can defeat public-access finding)
- Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354 (Fed. Cir.) (corroboration requirement for witness testimony)
- TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 1295 (Fed. Cir.) (circumstantial evidence may corroborate)
- Woodland Tr. v. Flowertree Nursery, Inc., 148 F.3d 1368 (Fed. Cir.) (corroboration factors and rule of reason)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (U.S.) (BRC—broadest reasonable construction in IPR)
- Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014 (Fed. Cir.) (review standards for Board claim construction)
- Shire Dev., LLC v. Watson Pharm., Inc., 787 F.3d 1359 (Fed. Cir.) (deference rules when extrinsic evidence at issue)
- Teva Pharm. USA Inc. v. Sandoz, Inc., 135 S. Ct. 831 (U.S.) (when factual findings underlie claim construction)
- Lampi Corp. v. Am. Power Prods., Inc., 228 F.3d 1365 (Fed. Cir.) (interpretation of open-ended claim language)
- PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747 (Fed. Cir.) (construction covering more embodiments not per se unreasonable)
- In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed. Cir.) (presumption against excluding disclosed embodiments)
- Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379 (Fed. Cir.) (avoid construing claims to exclude disclosed embodiments)
- Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295 (Fed. Cir.) (specification examples normally not excluded by claim construction)
- Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir.) (courts need not credit unspecific expert testimony)
- In re Warsaw Orthopedic, Inc., 832 F.3d 1327 (Fed. Cir.) (dependent claims stand or fall with independent claim when not separately argued)