from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2015-01786.
B. Sganga, Jr., Knobbe, Martens, Olson & Bear, LLP,
Irvine, CA, argued for appellant. Also represented by
Michelle Armond, Sheila N. Swaroop.
Edwin Gray, Foley & Lardner LLP, San Diego, CA, argued
for appellee. Also represented by Nicola Anthony Pisano, Jose
Prost, Chief Judge, Lourie and Chen, Circuit Judges.
Lourie, Circuit Judge.
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 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.
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).
is illustrative and reads as follows:
A dental implant comprising:
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;
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.
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) is May 23, 2003. The '977
patent lists Ophir Fromovich, Yuval Jacoby, Nitzan Bichacho,
and Ben-Zion Karmon as the inventors.
about the early 1990s, named inventor Fromo-vich 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.
October 27, 2014, the U.S. International Trade Commission
("ITC") instituted an investigation of Instra-dent
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.
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 5-10ji.
Increases clot retention and is conducive to bone
healing." Id. (emphases added).
portion of the ABT Catalog with the heading "Wide
platform implant analog for ѳ5 and 06mmd" states:
"It is possible to use the normal platform on all
implants incloding [sic] the ѳ5 or ѳ6mmd
implants. See illustration above." J.A. 1746. The
illustration above includes: