Appeals from the United States Patent and Trademark Office,
Patent Trial and Appeal Board in No. IPR2015-01190.
J. Oliver, Fitzpatrick, Cella, Harper & Scinto,
Washington, DC, argued for appellant. Also represented by
Jason M. Dorsky; John D. Carlin, Michael P. Sandonato, New
Otto Mueller, Leydig, Voit & Mayer, Ltd., Chicago, IL,
argued for cross-appellants. Also represented by David Airan,
Thomas Canty, Aaron Ross Feigelson.
Prost, Chief Judge, Moore and Stoll, Circuit Judges.
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
'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.
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.
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.
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. §
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.
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 ...