{"id":2196,"date":"2018-09-13T12:17:16","date_gmt":"2018-09-13T16:17:16","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2196"},"modified":"2018-09-15T12:57:39","modified_gmt":"2018-09-15T16:57:39","slug":"do-over-different-evidence-and-different-evidentiary-standard-allow-ipr-to-reach-different-conclusion-of-validity-than-itc","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2196","title":{"rendered":"Do Over — Different Evidence and Different Evidentiary Standard Allow IPR to Reach Different Conclusion of Validity than ITC"},"content":{"rendered":"

in Nobel Biocare Services AG v. Instradent USA, Inc.<\/a>, [2017-2256] (September 13, 2018), the Federal Circuit affirmed the PTAB’s determination that claims 1-5 and 19 of U. S. Patent No.\u00a08,714,977,directed to dental implants, were anticipated.<\/p>\n

The undisputed critical date of the ‘977 patent was May 23, 2003, and Instradent alleged that the claims were anticipated by an ABT \u201cProduct Catalog\u201d with the date
\n\u201cMarch 2003\u201d on the cover.\u00a0 The ITC, applying a clear and convincing evidentiary standard, had previously determined that the claims were not anticipated, and the Federal Circuit affirmed.<\/p>\n

Meanwhile, Instradent\u00a0petitioned for IPR.\u00a0 While the Board\u00a0adopted the same claim construction as the ITC, and considered the same evidence presented to the ITC, the Board\u00a0also considered new\u00a0evidence not considered by the ITC, including the declarations\u00a0and deposition testimony of Hantman and\u00a0Chakir that the catalog was available to the industry in March 2003.\u00a0 The Board determined that a preponderance of the\u00a0evidence establishes that the ABT Catalog qualifies as a\u00a0prior art printed publication under 35 U.S.C.\u00a0\u00a7 102(b).<\/p>\n

On appeal, the parties disputed\u00a0whether the ABT Catalog qualifies
\nas a \u201cprinted publication\u201d under \u00a7 102(b).\u00a0 The Federal Circuit said that whether a reference qualifies as a \u201cprinted publication\u201d is\u00a0a legal conclusion based on underlying factual findings, including\u00a0The parties dispute whether the ABT Catalog qualifies
\nas a \u201cprinted publication\u201d under pre-AIA \u00a7 102(b).\u00a0Whether a reference qualifies as a \u201cprinted publication\u201d is\u00a0a legal conclusion based on underlying factual findings, including whether a reference was publicly accessible. Public\u00a0accessibility has been called the touchstone in determining\u00a0whether a reference constitutes a “printed publication.”\u00a0 A\u00a0reference will be considered publicly accessible if it was\u00a0disseminated or otherwise made available to the extent\u00a0that persons interested and ordinarily skilled in the\u00a0subject matter or art exercising reasonable diligence can\u00a0locate it.<\/p>\n

The Federal Circuit noted that it was not bound by its prior affirmance\u00a0of the ITC\u2019s holding that there was insufficient\u00a0evidence to find pre-critical date public accessibility, observing that the evidentiary standard in IPRs, “preponderance of the evidence” is different\u00a0from the higher standard applicable in ITC proceedings.\u00a0 The Federal Circuit further noted that\u00a0the Board also had\u00a0more evidence on this issue than what was before the ITC.\u00a0 Finally the Federal Circuit said that under the\u00a0substantial evidence standard, the\u00a0inconsistent conclusions from the evidence does not prevent an administrative agency\u2019s finding from being supported by substantial evidence.<\/p>\n

The Federal\u00a0Circuit agreed with Instradent that substantial evidence\u00a0supported the Board\u2019s finding that the ABT Catalog was\u00a0publicly accessible prior to the critical date. The Board\u00a0credited Chakir and Hantman\u2019s testimony that Chakir\u00a0obtained a copy of the ABT Catalog at the March 2003\u00a0IDS Conference and that Hantman retained that copy in
\nhis records thereafter. Furthermore, Hantman\u2019s declaration included\u00a0excerpts of his copy of the ABT Catalog taken from his\u00a0files. The Board found that Hantman\u2019s copy of the ABT\u00a0Catalog and the copy offered as prior art by Instradent in\u00a0the IPR had identical pages except for some handwriting\u00a0on the cover of Hantman\u2019s copy.<\/p>\n

The Federal Circuit noted that\u00a0corroboration is required of any witness\u00a0whose testimony alone is asserted to invalidate a patent,\u00a0regardless of his or her level of interest.\u00a0 Corroborating evidence may include documentary\u00a0or testimonial evidence, and circumstantial evidence can be sufficient corroboration.\u00a0 The Federal Circuit listed eight factors to be considered in evaluating corroboration:<\/p>\n

(1) the relationship between the corroborating witness and the alleged prior user,
\n(2) the time period between the event and trial,
\n(3) the interest of the corroborating witness in the\u00a0subject matter in suit,
\n(4) contradiction or impeachment of the witness\u2019\u00a0testimony,
\n(5) the extent and details of the corroborating testimony,
\n(6) the witness\u2019 familiarity with the subject matter\u00a0of the patented invention and the prior use,
\n(7) probability that a prior use could occur considering\u00a0the state of the art at the time,
\n(8) impact of the invention on the industry, and\u00a0the commercial value of its practice.<\/p>\n

Applying a \u201crule of reason\u201d analysis\u00a0to the corroboration requirement, which\u00a0\u201cinvolves an assessment of the totality of the circumstances\u00a0including an evaluation of all pertinent evidence, the Federal Circuit held the corroboration to be sufficient, noting\u00a0\u201cthere are no hard and\u00a0fast rules as to what constitutes sufficient corroboration,\u00a0and each case must be decided on its own facts.\u201d<\/p>\n

The Federal Circuit rejected the challenges to the claim construction, and affirmed the Board.<\/p>\n

 <\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

in Nobel Biocare Services AG v. Instradent USA, Inc., [2017-2256] (September 13, 2018), the Federal Circuit affirmed the PTAB’s determination that claims 1-5 and 19 of U. S. Patent No.\u00a08,714,977,directed to dental implants, were anticipated. The undisputed critical date of … 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":[42,26,81],"tags":[],"class_list":["post-2196","post","type-post","status-publish","format-standard","hentry","category-anticipation","category-inter-partes-review","category-printed-publication"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2196","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=2196"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2196\/revisions"}],"predecessor-version":[{"id":2197,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2196\/revisions\/2197"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2196"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2196"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2196"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}