Federal Circuit Summaries

Before Prost, Moore, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: An IPR petitioner bears the burden of persuasion concerning the patentability of proposed substitute claims.

Institut Straumann AG and Dental Wings Inc. (“Petitioners”) petitioned for inter partes review of a patent owned by Sirona Dental Systems. Petitioners asserted that Claims 1-4 and 9-10 were anticipated, and that Claims 1-10 were obvious in view of a German reference. The Board rejected Petitioner’s anticipation arguments, but found that Claims 1-8 were obvious in view of the cited art. The Board denied Sirona’s contingent motion to amend because Sirona failed to demonstrate that the proposed substitute claims were patentable. Sirona appealed to the Federal Circuit.

The Federal Circuit affirmed the Board’s findings concerning obviousness and anticipation, but vacated the Board’s denial of Sirona’s contingent motion to amend because the Board improperly placed the burden of establishing the patentability of the proposed substitute claims on Sirona. Rather, in view of Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc), the burden of persuasion properly rests with Petitioners to establish that the proposed substitute claims are not patentable. Accordingly, the Federal Circuit remanded the case for reconsideration in view of its decision in Aqua Products, leaving the Board to determine in the first instance whether it can consider combinations of references not argued by Petitioners in opposing the motion to amend.