{"id":2072,"date":"2018-06-19T10:59:59","date_gmt":"2018-06-19T14:59:59","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2072"},"modified":"2018-07-01T13:10:37","modified_gmt":"2018-07-01T17:10:37","slug":"boards-decision-did-not-change-theories-simply-because-it-used-different-language-than-the-petition","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2072","title":{"rendered":"Board’s Decision Did not Change Theories Simply Because\u00a0it Used Different Language than the Petition"},"content":{"rendered":"

In Sirona Dental Systems GmbH v. Institut Straumann AG<\/a>, [2017-1341, 2017-1403](June 19, 2018), the Federal Circuit\u00a0affirmed-in-part,\u00a0vacated-in-part, and remanded-in-part, the PTAB’s determination that claims 1-8 of\u00a0U.S. Patent No. 6,319,006 were unpatentable, while claims 9-10 were patentable.<\/p>\n

The patent related to a drill template, to precisely\u00a0place a pilot hole for a tooth implant. The parties each provided their own translation of the primary references, and based upon these different translations disputed whether the reference digitally inputs structures of the mouth or movements of the mouth into the simulation.\u00a0 Sirona focused on the references disclosure of a \u201crecording\u00a0bow,\u201d which only measures movement of the jaw joint, not\u00a0surface structures.\u00a0 However, the Federal Circuit agreed with the district court that this was not dispositive in light of\u00a0the reference’s other disclosures.<\/p>\n

In addition to agreeing with the Board about the content of the prior art, the Federal Circuit also found\u00a0substantial evidence also supported the Board\u2019s finding\u00a0that a person of ordinary skill in the art would have been\u00a0motivated to combine the references, and affirmed the determination that claims 1-8 would have been obvious.<\/p>\n

Sirona also complained that the Board violated the APA\u00a0when it\u00a0determined that Sirona\u2019s recording bow argument was not\u00a0relevant and put together its own obviousness theory\u00a0based on Bannuscher\u2019s input of \u201cgeometry data,\u201d which
\ndoes not appear in the petition.\u00a0 While the Federal Circuit agreed that it would not be proper for the Board to deviate\u00a0from the grounds in the petition and raise its own obviousness\u00a0theory, it held that the Board\u2019s unpatentability determination did not
\ndeviate from the grounds alleged in the petition.\u00a0 The Federal Circuit noted that the Board cited the same portions of the reference as the Petition, and said the Board “did not change theories simply because\u00a0the petition did not use the exact words.”\u00a0 The Federal Circuit also noted that Sirona spent much of its response addressing the very argument that it complained was new.<\/p>\n

Sirona also challenged the denial of its contingent motion to amend.\u00a0 On this point, the Federal Circuit agreed. The final written decision,\u00a0which issued prior to Aqua Products<\/em>,
\nimproperly placed the burden on Sirona to demonstrate\u00a0that the proposed substitute claims were\u00a0patentable. The Federal Circuit vacated the Board\u2019s denial of\u00a0Sirona\u2019s contingent motion to amend and remand for the\u00a0Board to reconsider in light of Aqua Products.<\/p>\n

On the cross appeal, the Federal Circuit affirmed the finding that claims 9 and 10 were patentable, noting that there was\u00a0no error in the Board\u2019s decision not to\u00a0decide grounds of unpatentability not raised in the petition.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Sirona Dental Systems GmbH v. Institut Straumann AG, [2017-1341, 2017-1403](June 19, 2018), the Federal Circuit\u00a0affirmed-in-part,\u00a0vacated-in-part, and remanded-in-part, the PTAB’s determination that claims 1-8 of\u00a0U.S. Patent No. 6,319,006 were unpatentable, while claims 9-10 were patentable. The patent related to a … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-2072","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2072","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2072"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2072\/revisions"}],"predecessor-version":[{"id":2073,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2072\/revisions\/2073"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2072"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2072"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2072"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}