Takeaway:  In order to rely upon the dimensions of drawings in a prior art patent as a disclosure of a certain depth or length, the patent must affirmatively state that the drawings are drawn to scale.

In its Decision, the Board determined that Petitioner had not shown that there is a reasonable likelihood that it would prevail with respect to any of the challenged claims (15, 17-19, 21, 25-27, and 30-32) of the ’443 Patent. The ’443 Patent generally relates to a surface structure produced on an outer surface of a dental implant or fixture for a range of implants related to different types of qualities of jaw bone.

The Board determined that no explicit construction of any claim term is necessary to make a decision on institution. The Board then reviewed whether the challenged claims are obvious over Bono and Dinkelacker. Patent Owner argued that this ground fails because Bono does not disclose the claimed “dental implant” and “wave pattern.” The Board agreed that Petitioner had not shown that it would have been obvious to combine Dinkelacker’s teaching of groove-shaped recesses to the threads of the bone implant screw taught by Bono in order to arrive at the claimed “wave pattern having a respective trough depth in the range of between approximately 25 to 200 μm.” Specifically, the Board found that Petitioner did not identify any criteria from the references or elsewhere that would guide the skilled artisan to optimize the thread depth to within the claimed range, while still achieving a desirable level of pullout resistance.

The Board then reviewed whether the challenged claims are obvious based on Libbey and Dinkelacker. Patent Owner argued that Libbey is not analogous art because it is not reasonably pertinent to the problem of implant stability or osseonitegration. The Board agreed that Petitioner only offered the conclusory testimony of its expert to support this ground.

Next, the Board reviewed whether the challenged claims are obvious over Papafotiou and Dinkelacker. The arguments regarding this ground were similar to that of the prior ground, and the Board found for similar reasons that Petitioner had not demonstrated a likelihood to prevail on this ground.

The Board then reviewed whether claims 15, 17, 30, and 32 are anticipated by Weiss. Patent Owner argued that Petitioner improperly relied upon patent figure measurements from Weiss, and the Board agreed, stating that there is no evidence that the Weiss patent drawings are to scale such that a reliable measurement of the groove depth can be made based on the figure itself. For similar reasons, the Board also denied review of the last ground of unpatentability – obviousness of claims 18, 19, 21, 25, and 26 based on Weiss and Dinkelacker.

Instradent USA, Inc. v. Nobel Biocare Services AG, IPR2015-01784
Paper 14: Decision Denying Institution of Inter Partes Review
Dated: February 17, 2016
Patent 8,764,443 B2
Before: William v. Saindon, Tina E. Hulse, and Christopher G. Paulraj
Written by: Paulraj
Related Proceedings: Certain Dental Implants, Inv. No. 337-TA-934 (ITC); Nobel Biocare Services AG and Nobel Biocare USA, LLC v. Neodent USA, Inc., No. 14-1322 (C.D. Cal.)