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Federal Circuit Confirms that New Evidence Before PTAB Sinks Claims that Survived ITC Action

A Federal Circuit opinion issued September 13, 2018, has affirmed a decision by the Patent Trial and Appeal Board (“PTAB” or “the Board”) that claims of U.S. Patent No. 8,714,977 (“the ’977 patent”) covering certain dental implants are unpatentable. The ’977 patent, assigned to Nobel Biocare Services AG (“Nobel”), was challenged by Instradent USA, Inc. and related parties (“Instradent”) in an inter partes review (“IPR”) filed August 20, 2015. The PTAB instituted trial on 7 of the 9 challenged (and not disclaimed) claims, and ultimately concluded that 6 of the 7 instituted claims were unpatentable based on prior art whose public accessibility had been challenged before both the PTAB and the International Trade Commission (“ITC”). A request for rehearing before the PTAB was denied.

This is far from the first time we have written about the necessity for IPR petitioners to demonstrate that asserted references qualify as prior art printed publications. However, such inquiries as applied by the PTAB are typically very fact intensive, and as such, clear lessons on how evidence is weighed in such cases before the PTAB are sometimes difficult to find. In this case, different conclusions were reached regarding the prior art status of the same reference on largely similar, but not identical, evidence before the PTAB and the International Trade Commission. This situation may give some insight to petitioners and patent owners alike.

Prior to the filing of the IPR petition, the ’977 patent was the subject of a Section 337 investigation before the ITC and was also asserted in a district court case which was stayed pending the ITC investigation. The Initial Determination in the ITC investigation found the claims of the ’977 patent anticipated by a 2003 Product Catalog (“Catalog”) published by a company acquired by Nobel and asserted to be distributed by at least one of the patent’s inventors. Following Nobel’s petition for review regarding whether the Catalog constituted prior art under 35 U.S.C. § 102(b), the ITC determined that the Catalog was not shown by clear and convincing evidence to be publicly accessible prior to the critical date of the ’977 patent.

The ITC Commission Opinion contained a lengthy analysis of whether the Catalog was shown to be prior art under §102, considering evidence such as: (a) the copyright date and printed date of the Catalog, (b) contemporaneous sales overseas of the products described in the Catalog, (c) a prior art journal disclosing some product models from the Catalog, but not necessarily the model relied upon for anticipation, (d) whether the Catalog was shown at a trade show held before the critical date, (e) whether and when the Catalog was distributed to doctors who attended training courses, (f) emails between patent counsel and an inventor during prosecution of the ’977 patent, and (g) the disclosure of the Catalog in an IDS disclosure filed in the prosecution of the ’977 patent. Upon consideration of this evidence, the Commission Opinion stated that it had not been shown by clear and convincing evidence that the Catalog was a printed publication as of the critical date of the patent. The ITC’s determination was affirmed by the Federal Circuit by a Rule 36 judgment.

Following the hearing in the ITC investigation, but before the Initial Determination was issued, Instradent filed its IPR petition. The IPR was instituted as to a §102 ground of anticipation by the Catalog and a §103 ground of obviousness over two other references. As such, similar to the path of the ITC investigation, the IPR was also largely focused on the prior art status of the Catalog, with Nobel receiving authorization to file a Sur-Reply concerning the public accessibility of the Catalog, to which Instradent filed a Sur-Sur-Reply. By the time of the Final Written Decision in the IPR, the Commission Opinion finding the Catalog to not be prior art had been issued by the ITC and was pending appeal to the Federal Circuit.

Although the ITC Commission Opinion found the Catalog not to be shown to be prior art, the Board stated that it was “not bound by the ITC’s fact finding or conclusions.” In coming to the opposite conclusion regarding the availability of the Catalog and its status as §102(b) prior art, the PTAB noted that the ITC has different standards of review (clear and convincing evidence) than proceedings before the PTAB (preponderance of evidence), and stated that the Board had “more evidence on this issue than what was before the ITC.”

Regarding the evidence of the prior art status of the Catalog, the IPR Petition itself relied on evidence that was generally the same as that before the ITC, namely: a) the use of the Catalog in training courses, b) the journal disclosing implants described in the Catalog, c) the IDS disclosing the Catalog during prosecution of the ’977 patent, and d) a brief by the Commission Investigative Staff arguing that the Catalog was publicly accessible. The PTAB in its institution decision stated that this met a sufficient “threshold showing” of availability, but that its availability as of the critical date would require addressing during trial.

Following institution, Instradent submitted two third-party witness declarations, a copy of a website from the Internet Archive indicating that the company did have a catalog prior to the critical date, and emails from one of the inventors of the ’977 patent. In rendering its decision that the Catalog was available before the critical date, the PTAB both made different determinations than the ITC regarding common evidence (such as finding deposition testimony taken from an inventor for the ITC investigation to lack credibility) and relied on the new evidence before it. For example, the two new declarations stated that a copy of the Catalog was obtained at a trade show held before the critical date.

It seems clear that it is the quality of supporting evidence, rather than the quantity, that is most useful to demonstrate the printed publication status of asserted art. Seven categories of evidence before the ITC were insufficient, as none went to the specific question of whether the actual asserted reference was available prior to the critical date. The copyright date, for example, was possibly probative of the year the Catalog was published, but not the month. The sale of the products described in the Catalog was not evidence of the publication of the Catalog itself. Description of the products in contemporaneous journals, potential distribution of the Catalog where testimony failed to establish the timing, and other evidence which also made the publication more likely, at least from a common sense point of view, were also insufficient.

Instead, it took declarations from two individuals describing the same event of acquiring the specific Catalog from a specific trade show held before the critical date to establish to the Board’s satisfaction that the reference was a printed publication under §102(b). Indeed, the Federal Circuit, in affirming the Board’s decision, focused not only on the third-party declarations, but on the credibility of the declarants and the corroboration of their testimony: by each other, by testimony of an inventor, and by production of the physical copy of the Catalog they asserted to be acquired prior to the critical date. While such a showing will not be necessary in all cases, evidence regarding the circumstances associated with, but not directly regarding, the publication of a reference may not be enough—even when it is offered in a multitude of forms.