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Sirona Dental Systems Gmbh v. Institut Straumann Ag

United States Court of Appeals, Federal Circuit

June 19, 2018

SIRONA DENTAL SYSTEMS GMBH, Appellant
v.
INSTITUT STRAUMANN AG, DENTAL WINGS INC., Cross-Appellants

          Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2015-01190.

          Justin J. Oliver, Fitzpatrick, Cella, Harper & Scinto, Washington, DC, argued for appellant. Also represented by Jason M. Dorsky; John D. Carlin, Michael P. Sandonato, New York, NY.

          Wesley Otto Mueller, Leydig, Voit & Mayer, Ltd., Chicago, IL, argued for cross-appellants. Also represented by David Airan, Thomas Canty, Aaron Ross Feigelson.

          Before Prost, Chief Judge, Moore and Stoll, Circuit Judges.

          MOORE, CIRCUIT JUDGE.

         Sirona Dental Systems GmbH appeals the final written decision of the Patent Trial and Appeal Board ("Board") holding claims 1-8 of U.S. Patent No. 6, 319, 006 unpatentable as obvious over the combination of German Patent No. 195 10 294 ("Bannuscher") and U.S. Patent No. 5, 842, 858 ("Truppe"), and denying Sirona's contingent motion to amend the claims. Institut Straumann AG and Dental Wings Inc. (collectively, "Petitioners") cross-appeal the Board's decision holding patentable claims 9-10 of the '006 patent. For the following reasons, we affirm-in-part, vacate-in-part, and remand-in-part.

         Background

         The '006 patent "relates to a method for producing a drill assistance device, " i.e., a drill template, "to precisely place a pilot hole for a tooth implant, wherein the pilot hole for the tooth implant is aligned relative to the teeth that still remain in the jaw." '006 patent at 1:6-9. The specification discloses taking X-ray images of the jaw and taking a three-dimensional optical image of the visible surfaces of the jaw and teeth. Id. at 2:15-20, 3:50-59. These images are compiled into "measured data records" and correlated. Id. at 2:21-23, 2:58-3:11. One way to correlate the images is by placing markers at fixed points that are visible in both images and superimposing the images based on the locations of the markers. Id. at 2:58- 65, 3:63-4:3. From this correlation, the position for the implant is determined and a drill template is prepared. Id. at 2:33-45, 2:51-57, 4:17-36, 4:55-62.

         Petitioners sought inter partes review of claims 1-10 of the '006 patent. Ground 1 argued claims 1-4 and 9-10 were anticipated by U.S. Patent No. 5, 562, 448 ("Mushabec"); ground 2 argued claims 1-4 and 9-10 were anticipated by a printed publication titled "Computer-Assisted Dental Implant Surgery Using Computed Tomography" ("Fortin"); ground 3 argued claims 1-10 would have been obvious based on Bannuscher and Truppe; and ground 4 argued claims 1-10 would have been obvious based on Fortin and Truppe. The Board instituted inter partes review based on grounds 1 and 3. After institution, Sirona filed a contingent motion to amend the claims pursuant to 37 C.F.R. § 42.121. Petitioners opposed the motion, arguing that the proposed substitute claims would have been obvious based on Mushabec, U.S. Patent No. 5, 725, 376 ("Poirer"), a printed publication titled "Computer-Assisted Milling of Dental Restorations Using a New CAD/CAM Data Acquisition System" ("Willer"), and U.S. Patent No. 5, 967, 777 ("Klein"), as well as obvious based on Mushabec, International Publication No. WO 95/28688 ("Swaelens"), and Klein.

         The Board held that claims 1-8 would have been obvious based on Bannuscher and Truppe. It held that Petitioners had not met their burden of demonstrating claims 9-10 would have been obvious based on Bannuscher and Truppe, or that claims 1-4 and 9-10 were anticipated by Mushabec. The Board denied Sirona's contingent motion to amend because Sirona failed to meet its burden of demonstrating that proposed substitute claims 11-18 would not have been obvious over Bannuscher and Truppe in view of Klein and Poirier.

         Sirona appeals the determination that claims 1-8 are unpatentable and the denial of its contingent motion to amend. Petitioners cross-appeal the determination that claims 9-10 are patentable. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

         Discussion

         We review the Board's legal determination of obviousness de novo and its factual findings for substantial evidence. Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1367 (Fed. Cir. 2017). We review its procedures for compliance with the Administrative Procedure Act ("APA") de novo, and we must set aside Board decisions if they are "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law." 5 U.S.C. § 706; EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1345 (Fed. Cir. 2017).

         I. Sirona's Appeal

         A

         Sirona appeals the Board's obviousness determination regarding claims 1-8 based on the combination of Bannuscher and Truppe. Claim 1 of the '006 patent recites:

1. Method for producing a drill assistance device for a tooth implant in a person's jaw, comprising the ...

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