892 F.3d 1349
Fed. Cir.2018Background
- The ’006 patent claims a method for producing a drill-assistance device (drill template) that aligns a pilot hole for a dental implant by correlating an X‑ray 3‑D image with a three-dimensional optical measurement of visible tooth/jaw surfaces.
- Petitioners (Institut Straumann AG and Dental Wings Inc.) filed inter partes review (IPR) challenging claims 1–10: grounds included anticipation by Musha‑bec and Fortin and obviousness based on combinations including Bannuscher (German patent) and Truppe (U.S. patent).
- The Patent Trial and Appeal Board (Board) instituted review on grounds including Bannuscher+Truppe and ultimately found claims 1–8 obvious over Bannuscher+Truppe, but found Petitioners failed to prove claims 9–10 unpatentable on that ground; the Board also denied Patent Owner Sirona’s contingent motion to amend (claims 11–18).
- Key technical dispute: whether Bannuscher discloses digitally inputting 3‑D surface geometry from plaster models (vs. merely jaw movement via a "recording bow") and whether Truppe supplies three‑dimensional optical surface measurement usable to supplement Bannuscher.
- The Board concluded Bannuscher discloses digitized 3‑D model geometry and Truppe supplies 3‑D optical measurement; a person of ordinary skill would have been motivated to combine them, so claims 1–8 are obvious.
- The Federal Circuit affirmed the Board as to claims 1–8 and claims 9–10, but vacated and remanded the Board’s denial of Sirona’s contingent motion to amend because the Board had applied an improper burden and must reconsider in light of Aqua Products and related APA/SAS Institute considerations.
Issues
| Issue | Sirona's Argument | Petitioners' Argument | Held |
|---|---|---|---|
| Whether claims 1–8 are obvious over Bannuscher + Truppe | Bannuscher does not disclose digitized 3‑D surface geometry from plaster models; Truppe only measures 2‑D optical data and uses sensors for 3‑D position | Bannuscher discloses digitized 3‑D model geometry; Truppe provides 3‑D optical representations that can be combined; skilled artisan would be motivated to combine | Affirmed: substantial evidence supports Board that Bannuscher provides geometry, Truppe provides 3‑D optical measurement, and motivation to combine → claims 1–8 obvious |
| Whether the Board deviated from petition grounds (APA/SAS issue) | Board relied on a different theory ("geometry data") not in petition and improperly introduced new theory in final decision | Petition cited same Bannuscher passages; Board relied on same portions and did not change the scope of the petition | Rejected: Board did not depart from petition; use of term "geometry data" tracked petition citations and provided notice |
| Whether denial of Sirona’s contingent motion to amend was proper | Board shifted burden to Sirona to prove patentability and relied on combinations not raised by petition without giving notice | Petitioners argued proposed claims are obvious based on references (including Poirier, Klein) cited in opposition | Vacated and remanded: Board erred by placing burden on Patent Owner; must reconsider motion to amend consistent with Aqua Products and APA requirements |
| Whether claims 9–10 are unpatentable over Bannuscher + Truppe (Petitioners’ cross-appeal) | Petitioners contend findings from motion-to-amend analysis (which considered additional refs) support unpatentability of claims 9–10 | Bannuscher’s plaster model is a positive molded model, not a ground/milled negative; Petitioners never argued required combos in the petition | Affirmed: substantial evidence supports Board that Petitioners failed to show a "drill assistance device" as claimed; Board properly refused to decide unraised grounds |
Key Cases Cited
- Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364 (Fed. Cir.) (standard of review: obviousness legal issues de novo; factual findings for substantial evidence)
- EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341 (Fed. Cir.) (APA standard for reviewing Board procedures)
- Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir.) (petitioner bears burden to prove amended claims unpatentable)
- Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350 (Fed. Cir.) (§103 obviousness framework)
- SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (Sup. Ct.) (institution and scope of IPR proceedings governed by petition)