Nobel Biocare Servs. AG v. Instradent USA, Inc.

• Decision Date: 13 September 2018
• Docket Number: 2017-2256
• Citation: 903 F.3d 1365
• Parties: NOBEL BIOCARE SERVICES AG, Appellant v. INSTRADENT USA, INC., Appellee
• Court: U.S. Court of Appeals — Federal Circuit

903 F.3d 1365

NOBEL BIOCARE SERVICES AG, Appellant

v.INSTRADENT USA, INC., Appellee

2017-2256

United States Court of Appeals, Federal Circuit.

Decided: September 13, 2018

John B. Sganga, Jr., Knobbe, Martens, Olson & Bear, LLP, Irvine, CA, argued for appellant. Also represented by Michelle Armond, Sheila N. Swaroop.

Justin Edwin Gray, Foley & Lardner LLP, San Diego, CA, argued for appellee. Also represented by Nicola Anthony Pisano, Jose L. Patino.

Before Prost, Chief Judge, Lourie and Chen, Circuit Judges.

Lourie, Circuit Judge.

Nobel Biocare Services AG ("Nobel") appeals from the decision of the U.S. Patent and Trademark Office ("PTO") Patent Trial and Appeal Board ("the Board") in an inter partes review ("IPR") holding claims 1–5 and 19 of U.S. Patent 8,714,977 ("the '977 patent") unpatentable. See Instradent USA, Inc. v. Nobel Biocare Servs. AG , No. IPR2015-01786, 2017 WL 10242133, 2017 Pat. App. LEXIS 8329 (P.T.A.B. Feb. 15, 2017) ("Board Decision ") ; Instradent USA, Inc. v. Nobel Biocare Servs. AG , No. IPR2015-01786, 2017 WL 1969639 (P.T.A.B. May 10, 2017) ("Rehearing Decision "). Because the Board did not err in its anticipation finding, we affirm.

BACKGROUND

I

Nobel owns the '977 patent directed to dental implants

. The '977 patent explains that a "feature of the invention" is that "the coronally tapered aspect [of the implant] is designed to allow elastic expansion of the bone while inserting the wider area of the coronally tapered aspect inside the bone and after insertion of the narrow area of the coronally tapered aspect the bone relapses to cover the coronally tapered aspect." '977 patent col. 5 l. 66–col. 6 l. 4; see also id. col. 2 ll. 62–66, col. 12 ll. 51–57. The '977 patent further states:

In another preferred embodiment illustrated in FIG. 12 the coronally tapered region 85 is placed inside the bone so the bone can grow above this region. The tapered region 90 is below the bone level 91 . The height of the coronally tapered region 85 is 0.5–4 mm . Preferably the height is 1–3 mm and for most cases 1.3–2.5 mm depending on the diameter of the implant.

Id. col. 12 ll. 10–16 (emphasis added).

Claim 1 is illustrative and reads as follows:

A dental implant

comprising:

a body;

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 a coronal end of the coronal region ;

an apical region of the body, the apical region having a core with a tapered region wherein a diameter of an apical end of the core is smaller than a diameter of a coronal end of the core and the apical end of the core is substantially flat; and

a pair of helical threads extending from the body along at least a portion of the apical region, each of the threads comprising

an apical side, a coronal side, and a lateral edge connecting the apical side and the coronal side, a base connecting the threads to the core, a thread height defined between the lateral edge and the base, the lateral edge having a variable width that is expanded along a segment in the direction of the coronal end of the apical region, so that a least width of the lateral edge of the threads is adjacent the apical end of the apical region and a greatest width of the lateral edge of the threads is adjacent the coronal end of the apical region, and the threads having a variable height that is expanded substantially along the segment of the implant in the direction of the apical end of the apical region, so that a least height of the threads is adjacent the coronal end of the apical region and a greatest height at apical end of the apical region; and

a bone tap, wherein the helical threads starts at said bone tap and said substantially flat apical end of the core;

wherein each of the helical threads have a thread step that is defined as a distance along a longitudinal axis of the dental implant

covered by a complete rotation of the dental implant, the thread step is between 1.5-2.5 mm.

Id. col. 17 l. 51–col. 18 l. 18 (emphasis added). Claim 2 depends from claim 1 and contains the additional limitation "wherein the coronal region has a surface configured to be in contact with bone." Id. col. 18 ll. 19–20.

The application that led to the '977 patent claims priority from, inter alia , a PCT application filed on May 23, 2004. The undisputed critical date for purposes of pre-AIA 35 U.S.C. § 102(b) (2006)¹ is May 23, 2003. The '977 patent lists Ophir Fromovich, Yuval Jacoby, Nitzan Bichacho, and Ben-Zion Karmon as the inventors.

II

In or about the early 1990s, named inventor Fromovich founded Alpha-Bio Tech Ltd. ("ABT"), which sold dental implants

and related goods. He also served as ABT's CEO. In his capacity at ABT, Fromovich conducted dentist trainings and attended industry trade shows and conferences, including the International Dental Show ("IDS") Conference held in Cologne, Germany. At the IDS Conference dental manufacturers would showcase their products and distribute written materials describing their products. Nobel acquired ABT and its intellectual property rights in 2008.

III

On October 27, 2014, the U.S. International Trade Commission ("ITC") instituted an investigation of Instradent USA, Inc.'s ("Instradent") Drive CM dental implants

based on a complaint filed by Nobel alleging violations of 19 U.S.C. § 1337 by reason of importation of an implant product that infringes the '977 patent and U.S. Patent 8,764,443. Instradent alleged, inter alia , that claims 1–5 and 19 of the '977 patent were not infringed and were anticipated by an ABT "Product Catalog" with the date "March 2003" on the cover ("ABT Catalog"). J.A. 1718–75.

The ABT Catalog discloses SPI dental implant

screws of various sizes, including a 5 mm implant. J.A. 1732. The 5 mm SPI implant is illustrated as follows:

Id. Below the illustration of the 5 mm SPI screw is the following description: "Implant surface: 'Hybrid' design 2/3 apically S.L.A. (macro) 20-40μ + (micro) 2μ, 1/3 coronary Acid Etched 5-10μ. Increases clot retention and is conducive to bone healing ." Id. (emphases added).

Another portion of the ABT Catalog with the heading "Wide platform implant analog for ø5 and ø6mmd" states: "It is possible to use the normal platform on all implants incloding [sic] the ø5 or ø6mmd implants. See illustration above." J.A. 1746. The illustration above includes:

Id.

Fromovich testified about the ABT Catalog during the ITC proceedings. When asked why the catalog says "March 2003" on the cover, Fromovich indicated that he "estimated" it was because "in the end of March 2003, normally it's IDS in Cologne, Germany, [which] is a big exposition. And in this exposition we go in looking for distributor[s]." J.A. 3485. Fromovich testified that ABT had a small booth at and he attended the March 2003 IDS Conference. According to Fromovich, the IDS Conference is "one of the biggest for distribution in Europe" with possibly a thousand attendees. J.A. 3490. He further testified that he did not recall if he brought the ABT Catalog to the conference, but that it was "unlikely." J.A. 3488. He explained that if he brought the ABT Catalog, it would have been a "small amount" of catalogs because it would have been a first version of a 62-page document, and ABT did not send a shipment so it would have had to fit in his luggage. J.A. 3489. Fromovich did not recall the number of ABT Catalogs printed, but estimated between 200 and 500.

Fromovich also testified that the ABT Catalog was used in connection with training courses and provided to attendees without requiring them to sign a confidentiality agreement. Instradent introduced additional evidence, including emails from '977 patent inventor Karmon, that it alleged established the ABT Catalog's publication prior to the May 2003 critical date.

On October 27, 2015, the ITC's Administrative Law Judge ("ALJ") issued an Initial Determination finding claims 1–5 and 19 of the '977 patent anticipated by the ABT Catalog. On May 11, 2016, the ITC issued a Commission Opinion which determined, inter alia , that Instradent had failed to show by clear and convincing evidence that the ABT Catalog is prior art under § 102(b). The ITC construed the phrase "the coronal region having a frustoconical shape" in claim 1 ("frustoconical limitation") as "the coronal region has partly or entirely, a frustoconical shape," J.A. 4797, and held claims 1–5 and 19 not anticipated, but infringed. A panel of this court affirmed without opinion. See Instradent USA, Inc. v. Int'l Trade Comm'n , 693 F. App'x 908, 909 (Fed. Cir. 2017).

IV

On August 20, 2015, Instradent petitioned for IPR of claims 1–7, 9, and 13–20 of the '977 patent. Nobel subsequently filed a statutory disclaimer of claims 9 and 13–18 of the '977 patent under 35 U.S.C. § 253(a). The Board instituted IPR of claims 1–5, 19, and 20 on the grounds of unpatentability under 35 U.S.C. § 102 over the ABT Catalog and/or 35 U.S.C. § 103 over other references not at issue on appeal. Instradent USA, Inc. v. Nobel Biocare Servs. AG , No. IPR2015-01786, slip op. (P.T.A.B. Feb. 19, 2016), Paper No. 14 ("Institution Decision "). In accordance with its then existing regulations, the Board declined to institute IPR over certain other grounds and claims, including the disclaimed claims. Id. at *6-7, 27; see 37 C.F.R. § 42.108(a) ; 37 C.F.R. § 42.107(e) ("The patent owner may file a statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.").

The Board adopted the same construction of the frustoconical limitation as the ITC, i.e. , "the coronal region has, partly or entirely, a frustoconical shape." Board Decision, 2017 WL 10242133, at *5-6, 2017 Pat. App. LEXIS 8329, at *20. It explained that "there is nothing that physically or logically prevents the coronal region from 'having' a portion that is frustoconical in shape and a...