Federal Circuit Affirms PTAB Invalidation of Claims Federal Circuit Previously Upheld as Valid

The United States Court of Appeals for the Federal Circuit recently affirmed a decision by the Patent Trial and Appeal Board (Board) in an inter partesreview (IPR) filed by Instradent against Nobel. The Board found that claims 1–5 and 19 of U.S. Patent No. 8,714,977 were anticipated by a product catalog made available at an industry conference. In reaching its decision, the Federal Circuit held that it was not bound by its previous affirmance of a contradicting International Trade Commission (ITC) opinion, which applies a different evidentiary standard from the Board, and that the Board did not err in its claim construction or in finding that the product catalog qualified as a “printed publication” under pre-AIA § 102(b). See Nobel Biocare Srvcs. AG v. Instradent USA, Inc., No.2017-2256, 2018 U.S. App. LEXIS 25926, 2018 WL 4354227 (Fed. Cir. Sept. 13, 2018) (Before Prost, Lourie, and Chen, C.J.) (Opinion for the court, Lourie, J.).

The ’977 patent is directed to a dental implant comprising, inter alia, “a coronal region of the body, the coronal region having a frustoconical shape wherein a diameter of an apical end of the coronal region is larger than a diameter of acoronelend of the coronal region” (frustoconical limitation). The ’977 is governed under pre-AIA laws, and the undisputed critical date for purposed of pre-AIA 35 U.S.C. § 102(b) is May 23, 2003.

Previously, the ITC instituted an investigation of Instradentdental implants based on a complaint filed by Nobel alleging violations of 19 U.S.C. § 1337 by reason of importation of an implant product infringing the ’977 patent and another patent. Instradentalleged, inter alia, that claims 1–5 and 19 of the ’977 patent were anticipated by a product catalog issued by Alpha-Bio Tech Ltd. (ABT), which was later acquired by Nobel. The ABT catalog offers the date “March 2003” on its cover and includes an illustration and description of an SPI dental implant screw meeting the frustoconical limitation.

Ophir Fromovich, a named inventor of the ’977 patent and CEO of ABT prior to the acquisition, testified at the ITC proceedings. Fromovich often attended industry trade shows and conferences, including the International Dental Show (IDS) Conference held in Cologne, Germany. During the proceedings, Fromovich “estimated” that the catalog was labeled with “March 2003” because the IDS was normally held “in the end of March 2003,” and he further testified that the did not recall if brought the ABT catalog to the IDS, but that it was “unlikely.” He explained that if he had brought the ABT catalog, it would have been a “small amount” of catalogs because it would have been a first version of the document. The ITC’s Administrative Law Judge issued an Initial Determination finding claims 1–5 and 19 anticipated by the ABT catalog but the ITC later issued a Commission Opinion finding that Instradent failed to show by clear and convincing evidence, the standard applied by the ITC, that the ABT catalog is prior art under § 102(b). A Federal Circuit panel affirmed the ITC’s decision without opinion.

Subsequently, Instradent petitioned for IPR of claims 1–7, 9, and 13–20 of the ’977 patent, and Nobel filed a statutory disclaimer of claims 9 and 13–18. The Board instituted IPR of claims 1–5, 19, and 20 on the grounds of unpatentability under § 102 over the ABT and/or § 103 over references, not at issue on appeal. The Board declined to institute IPR on other claims over other grounds. The Board adopted the same construction of the frustoconical limitation as the ITC—“the coronal region has, partly or entirely, a frustoconical shape”—explaining that the term “having” does not preclude an implant in which a portion of the coronal region is frustoconical in shape while another portion of the coronal region is not. That is, the frustoconical limitation is met if the coronal region has a frustoconical shape in its entirety or if the coronal region includes only a portion that has a frustoconical shape.

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Regarding public accessibility of the ABT catalog, the Board considered evidence presented during the ITC proceedings, including Fromovich’s testimony, and new evidence not yet considered, including the declarations and deposition testimony of Yechiam Hantman and Zvi Chakir, who were, in March 2003, co-owners of Chakir Implants, Ltd, a dental supply distributor in Israel. Hantman’s “specific goal” during the March 2003 IDS conference was “to collect materials . . . describing the SPI implant.” But because Hantman could not attend the conference, he asked Chakir to collect catalogs from competitors at the 2003 IDS conference. Chakir collected several catalogs and other materials from competitors and later gave them to Hantman. Chakir testified that he did not recall the specific literature he brought back from the conference, that the 2003 IDS conference was the only time he collected dental implant literature, and that brochures were available to everyone and not distributed in secret.

The Board determined that a preponderance of the evidence established that the ABT qualifies as a prior art printed publication under pre-AIA § 102(b). The Board also found that the ABT catalog disclosed an SPI 5mm implant with a frustoconical bevel at the coronal-most portion, which anticipated claims 1 and 2, and because Nobel did not present separate arguments for claims 3–5 and 19, the Board held those claims anticipated as well. Subsequently, the Board denied Nobel’s request for rehearing based on alleged errors in the Board’s construction of the frustoconical limitation.

On appeal, the Federal Circuit first established that it is not bound by its prior affirmance of the ITC’s holding that there was insufficient evidence to find public accessibility before the critical data. The Court held, and the parties agreed, that its prior decision is not binding because the evidentiary standard before the Board is a preponderance of the evidence, as compared to the higher standard of clear and convincing evidence used in ITC proceedings.

Turning to the issue of public accessibility of the ABT catalog prior to the critical data, the Court found that substantial evidence supported the Board’s holding. Among other reasons, the Court pointed to the Board’s reliance on Chakir and Hantman’s testimony that Chakir obtained a copy of the ABT catalog at the March 2003 IDS conference and Hantman retained that copy in his records. Indeed, Hantman’s declaration included exceptsof his copy of the ABT catalog. Chakir and Hantman’s testimony also provided specific details as to why the catalog and other literature was collected. The Court was not persuaded by Nobel’s argument that Chakir and Hantman’s testimony was corroborated, which is required of any witness whose testimony alone is asserted to invalidate a patent. The Court found that under the applicable “rule of reason” analysis, Chakir and Hantman’s separate testimonies corroborated one another, and was also corroborated by Hantman’s physical copy of the ABT catalog dated March 2003 and Fromovich’s testimony that ABT operated a booth at the March 2003 IDS conference.

Turning next to Nobel’s contention that the Board applied an erroneous claim construction of the frustoconical limitation, the Board found the intrinsic record alone determines the proper construction. Nobel argued that the proper construction “the coronal region having a frustoconical shape” is limited to implants in which the entirety of the coronal region is frustoconical in shape. Contrary to Nobel’s contention, the Board found that, in this case, the term “having” is an open term, similar to the construction of “comprising.” The Court explained that “having,” as used in claim 1, does not modify “coronal region” to require that the whole region have that shape. Indeed, another independent claim not at issue in this casespecified that the entire coronal region has a frustoconical shape. Thus, to read on claim 1, “[t]he coronal region must contain a frustoconical shape, but other shapes are not excluded.”

Take Away

The Federal Circuit’s decision reiterates that use of “having” as a transitional phrase can be construed as either an open or closed term and is determined on a case-by-case basis. Indeed, the MPEP explains, “[t]ransitional phrases such as ‘having’ must be interpreted in light of the specification to determine whether open or closed claim language is intended.” This case also reiterates that corroboration of testimony in a patent case can be in the form of documentary, testimonial, or even circumstantial evidence, and for corroboration too, “there are no hard and fast rules” and “each case must be decided on its own facts.”

 

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Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 2 Comments comments.

  1. Josh Malone September 24, 2018 10:31 am

    This is 100% factual dispute. How can this pass the 7th amendment?

  2. Anon September 24, 2018 1:08 pm

    Not sure I understand your question Josh, but keep in mind that a significant “delta” exists between the two decisions:

    Regarding public accessibility of the ABT catalog, the Board considered evidence presented during the ITC proceedings, including Fromovich’s testimony, and new evidence not yet considered, including the declarations and deposition testimony of Yechiam Hantman and Zvi Chakir