Takeaway: Patent drawings do not define precise proportions of depicted elements and thus may not be relied upon to show particular sizes if the specification is completely silent on the issue.

In its Decision, the Board denied the Petition for inter partes review. In the course of doing so, the Board found that Petitioner had not shown a reasonable likelihood that it would succeed in proving any of the challenged claims of the ‘443 patent to have been obvious.

In a related proceeding, the International Trade Commission (ITC) had issued an Initial Determination in which “[t]he ITC’s Administrative Law Judge determined that Petitioner failed to prove invalidity of the ’443 patent, and made specific findings that the ’443 patent was not invalid for anticipation or obviousness over some of the prior art that has been raised in the Petition.” The Board in the instant proceeding took note of this ruling, but elected to conduct its own independent patentability analysis using applicable inter partes review standards as applied to the facts before it.

The ‘443 patent relates to a dental implant. Petitioner had challenged claims 15, 17-19, 21, 25-27, and 30-32 of the ‘443 patent on the following grounds: (1) obviousness under 35 U.S.C. § 103(a) in view of Bono and Dinkelacker; (2) obviousness under 35 U.S.C. § 103(a) in view of Libbey and Dinkelacker; (3) obviousness under 35 U.S.C. § 103(a) in view of Papafotiou and Dinkelacker; (4) anticipation under 35 U.S.C. § 102(b) in view of Weiss; and (5) obviousness under 35 U.S.C. § 103(a) in view of Weiss and Dinkelacker.

The Board began its analysis by concluding that none of the claim terms required explicit claim construction. It then focused on the above-mentioned asserted grounds of unpatentability.

As for ground (1), Petitioner had acknowledged that Bono does not teach the recited bone screw threads having a groove depth of 25-200 μm, and therefore relied upon Dinkelacker, which suggests a groove depth overlapping the claimed range, for this limitation. The Board sided with Patent Owner, finding that Petitioner’s assertions were conclusory and insufficient because: Petitioner had not demonstrated how or why one skilled in the art “would have applied Dinkelacker’s teaching regarding groove depths that correspond to the dimensions of osteons, i.e., on the order of microns[;]” because “[t]here is no teaching in Bono regarding a need for enhanced osseointegration[;]” and because “Petitioner [had] not identified any criteria from the references or elsewhere that would guide the skilled artisan to optimize the thread depth to within the claimed range of 25–200 μm, while still achieving a desirable level of pullout resistance.”

With respect to ground (2), the Board found that “Petitioner [had] not explained sufficiently why a skilled artisan would have either a) applied the dimensions of Dinkelacker’s grooves, which are optimized to promote osseointegration, to a wood screw, or b) use the thread structure taught by Libbey, which is designed to prevent wood from splitting, for a dental implant.” According to the Board, “Petitioner’s arguments [lacked] the requisite articulated reasoning with rational underpinning to support a conclusion of obviousness.” The Board was also not persuaded by Petitioner’s arguments with respect to ground (3), for essentially the same reasons why the Board found in favor of Patent Owner in regard to ground (2).

In regard to ground (4), the Board agreed with Patent Owner that “Petitioner [had] improperly relied upon patent figure measurements from Weiss.” According to the Board, “Petitioner [had not presented] any evidence that the drawings of the Weiss patent are to scale, such that a reliable measurement of groove depth can be made based on the figure itself.” Instead, “Patent Owner [had] pointed to testimony from one of Weiss’s co-inventors indicating that he did not know if Figure 1 of Weiss is drawn to scale.” The Board went on to rely on this deficiency as a basis for its finding for Patent Owner with respect to ground (5).

Instradent USA, INC. v. Nobel Biocare Services AG, IPR2015-01784

Paper 14: Decision Denying Institution of Inter Partes Review

Dated: February 17, 2016

Patent: 8,764,443 B2

Before: William V. Saindon, Tina E. Hulse, and Christopher G. Paulraj

Written by: Paulraj

Related Proceedings: Certain Dental Implants, Inv. No. 337-TA-934 (ITC); Nobel Biocare Services AG and Nobel Biocare USA, LLC, v. Neodent USA, Inc., Civil Action No. 14-1322 DOC (DFMx) (C.D. Cal.)