By Phil Shelton and Carl Kukkonen

On September 13, 2018, the U.S. Court of Appeals for the Federal Circuit affirmed a decision by the USPTO Patent Trial and Appeal Board (PTAB) that the claims in U.S. Patent 8,714,977 (the ‘977 patent) are unpatentable as being anticipated by a product catalog made publicly available at a dental conference outside the 35 U.S.C. §102 (b) one-year statutory bar. According to 35 U.S.C. §102 (b) an applicant is barred from obtaining a patent if the public has access to the invention more than one-year before the filing of the patent application. The basis for a 35 U.S.C. §102(b) prior art rejection includes printed publications available to the public more than one-year prior to the date of a patent application.

In Nobel Biocare Services AG v. Instradent USA, Inc., United States Court of Appeals, Federal Circuit, No. 17-2256, 13 September 2018, Nobel Biocare Services AG (“Nobel”) appealed from a decision of the “PTAB” in an inter partes review (“IPR”) that held claims of the ‘977 patent unpatentable. Nobel acquired Alpha-Bio Tech Ltd. (“ABT”) and its intellectual property rights, including the ‘977 patent directed to dental implants, in 2008. A complaint alleging infringement on the ‘977 patent was filed by Nobel on October 27, 2014, with the U.S. International Trade Commission (“ITC”) against dental implants made by Instradent USA, Inc.’s (“Instradent”). Instradent responded by alleging that claims 1-5 and 19 of the ‘977 patent were anticipated by an ABT “Product Catalog” dated March 2003, and thus invalid. Using the standard of “clear and convincing”, the ITC found that Instradent had failed to show that the catalog was prior art under 102(b). However, in an IPR petitioned by Instradent on August 20, 2015, the PTAB found that the ABT catalog was prior art. The PTAB considered evidence presented to the ITC, as well as new evidence, and found that a preponderance of evidence demonstrated that the ABT catalog was publically available in March 2003. The PTAB’s construction of the claims found that the ABT catalog disclosed the dental implants claimed in the ‘977 patent, thereby making the claims anticipated.

In the appeal before the Federal Circuit, the court first addressed whether it had jurisdiction over the appeal in light of the Supreme Court’s recent decision that the PTAB cannot institute an IPR on fewer than all claims challenged in a petition. SAS Institute, Inc., v. Iancu. The court found that where no party requests any SAS-based relief that there is jurisdiction. In applying the substantial evidence standard, the Federal Circuit found that substantial evidence supported the PTAB’s finding that the ABT Catalog was publically accessible prior to the critical date. The corroborating testimony of two witnesses, the actual copy of a March 2003 product catalog, and testimony from the inventor that ABT operated a booth at the March 2003 conference demonstrated substantial evidence of the catalog as prior art.

This precedential decision demonstrates that a catalog published at a trade conference may be considered to be publicly accessible and can qualify as prior art. Further, in citing two recent precedential decisions, the court found that where no party has requested any SAS-based relief, the Federal Circuit has jurisdiction over the appeal.

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An acknowledged leader in the profession, Carl Kukkonen has nearly 20 years of experience in strategic intellectual property counseling. He advises clients on patent infringement and validity, preparation and prosecution of patent applications, and brand protection matters.