In Sirona Dental Systems GmbH v. Institut Straumann AG, Appeal Nos. 2017-1341, 2017-1403, the Federal Circuit held that the Patent Trial and Appeal Board erred in an IPR by placing the burden on the patent owner to prove that proposed substitute claims were patentable.
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. The Board denied Sirona’s contingent motion to amend because Sirona failed to affirmatively demonstrate that the proposed substitute claims were patentable. Sirona appealed to the Federal Circuit.
The Federal Circuit affirmed the Board’s findings about 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 patentability 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. The Federal Circuit remanded the case for reconsideration, leaving the Board to determine whether it can consider combinations of references not argued by a Petitioner’s opposition to a motion to amend.