On August 1, 2013, District Judge Naomi Reice granted defendant Nobel Biocare’s motions for summary judgment of invalidity of U.S. Patent No. 5,580,246 (“the ’246 patent”) and U.S. Rexam No. RE38,945 (“the reissue patent”). The ’246 patent and the reissue patent are directed to methods for securing or rehabilitating dental implants. The court found that the invention had been reduced to practice and publically used when plaintiff performed a clinical procedure at a NYU clinic. The clinical procedure did not qualify as an experimental use because it was clear to the patient that the procedure was within the normal course of his paid visit to the clinic, and there was no follow up to assess whether the procedure served its intended purpose. The court also held that the original disclosure did not enable the new matter in the reissue application. Additionally, the court invalidated the reissue patent claims that contained the same subject matter that had been previously deliberately canceled, citing Federal Circuit precedent that recapture is not available in circumstances where competitors have relied on a patentee’s abandonment.

Case: Small v. Nobel Biocare USA, No. 05 Civ. 3225 (NRB), 2013 BL 206565 (S.D.N.Y. August 1, 2013)