June 29, 2018Newsletter

This Week at the Board - June 27, 2018

Federal Circuit Grants Patent Owner Another Chance at Amending Claims

In Sirona Dental Systems GMBH v. Institut Straumann AG, Dental Wings Inc., Sirona appealed the Board’s decision invalidating claims 1-8 of its patent and the denial of its motion to amend. The Board denied the amendments on the grounds that Sirona failed to meet its burden of demonstrating that the substitute claims were non-obvious.   The Federal Circuit upheld the Board’s decision to invalidate the claims, but found that the Board erred in denying Sirona’s motion to amend.  Citing the en banc decision in Anaqua Products, which held that the burden was on the Petitioner to demonstrate that the substitute claims were unpatentable, the Federal Circuit found that the Board improperly placed the burden on Sirona. The case was remanded to the Board for further consideration.

A link to the decision is found here.


Federal Circuit Remands IPR to Fully Consider Evidence on Presentation as Prior Art

In Medtronic, Inc. v. Mark A. Barry, the Federal Circuit determined that the Board did not properly consider all of the facts surrounding a video and slide presentation offered by Medtronic as prior art in an IPR.  Medtronic had distributed the video presentation and the related slide presentation at three different industry conferences.  The Board held that the presentations were not publicly accessible and therefore the materials were not “printed publications.”  The video was distributed at three separate programs in 2003.  The first program was directed to a meeting of the “Spinal Deformity Study Group” (SDSG), which is a select group of experts in the field.  The other two meetings were generally open to surgeons in the field.  Because the materials were not stored or archived in publicly accessible location, the Court determined that the question was whether the materials “were sufficiently disseminated at the time of their distribution at the conferences.”  The Court identified common considerations in this scenario as: 1) “the size and nature of the meetings”; 2) whether the meetings are “open to people interested in the subject matter”; and 3) “whether there is an expectation of confidentiality between the distributor and the recipients of the materials.”  Instead of considering all the evidence, the Board focused only on the expertise of the audience.  The Court found that while the expertise of the intended audience is an important factor, it is not dispositive.  The Court remanded the case to the Board to fully consider the evidence and determine if the video and slides were publicly accessible printed publications.

A link to the decision is found here.


Federal Circuit Upholds Board Decisions Despite Not Having Instituted On All Claims

In PGS Geophysical AS v. Iancu, the Federal Circuit recently addressed a series of PTAB final decisions where the Board had not addressed all challenged claims.  Rather than remanding the cases back to the Board for consideration of the non-instituted claims based on the recent SAS decision, the Federal Circuit instead moved forward with reviewing the claims that were instituted and the final written decisions, and upheld the Board’s decisions.  The Federal Circuit noted that no party had actually requested SAS-based relief, and that the Federal Circuit had no obligation to act sua sponte to treat the Board’s incorrect denial of institution as to some of the claims.  The Federal Circuit noted that there was a clear private and public interest in moving forward and deciding the patentability of the claims that had been instituted.

A link to the decision is found here.

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