Biting into PTAB decisions

Sirona Dental Systems GMBH v. Institut Strauman AG (Fed. Cir. 2018)

In its Final Written Decision, the PTAB partially invalidated Sirona Dental Systems U.S. Patent No. 6,319,006 (claims 1-8 obvious over two prior art references; claims 9-10 patentable). Following cross-appeals, the Federal Circuit the Federal Circuit found no error in these ultimate conclusions, but did vacate the decision based upon the Board’s refusal to allow the patentee to amend its claims.

The ‘006 patent covers the use of x-rays and optical scans of teeth to determine an “optimal bore hole” location for a tooth implant.

Rather than simply requesting an amendment to the claims, Sirona filed a “contingent motion to amend” — essentially asking for two-simultaneous-trips through the whirly ball known as inter partes review.  The basic request: If the original claims are found invalid, please amend them to this narrower form.  The PTAB does allow these contingent motions, but did not allow it this particular PRE-Aqua decision.   In Aqua, the Federal Circuit held that the PTAB had been improperly requiring patentees to prove the patentability of their proposed claim amendments before allowing them to be amended. Rather, under Aqua, it is the petitioner who “bears the burden of proving that proposed amended claims are unpatentable.”

Here, the court writes:

The final written decision, which issued prior to our en banc decision in Aqua Products, improperly placed the burden on Sirona to demonstrate that the proposed substitute claims were patentable. Thus, we must vacate the Board’s denial of Sirona’s contingent motion to amend and remand for the Board to reconsider in light of Aqua Products.

On remand, the PTAB will reconsider whether to allow the amendment and, if so, whether the amendment is sufficient to overcome the prior art.

New Grounds: The Federal Circuit also suggested that the Board consider “in light of recent precedent including SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), whether it may consider combinations of references not argued by the petitioner in opposing the motion to amend claims, and, if so, what procedures consistent with the
APA are required to do so.”

Side note: The PTAB decision here is the one IPRO where then PTO Director Michelle K. Lee took-up her statutory role as a PTAB Judge.

13 thoughts on “Biting into PTAB decisions

    1. 2.1

      gotta love the punch line:

      In sum, “2016” could make a logical sequel to “1984.”

  1. 1

    It is an interesting “paradox” to provide that the PTAB can “go beyond” the art provided in the IPR – for the claim amendments – and yet, for the IPR itself, earlier in the opinion (pages 9-10):

    An inter partes review must proceed “in accordance
    with or in conformance to the petition.” SAS Inst., Inc. v.
    Iancu, 138 S. Ct. 1348, 1356 (2018) (internal quotations
    omitted). “Nothing suggests the Director enjoys a license
    to depart from the petition and institute a different inter
    partes review of his own design.” Id. (emphasis in original).

    “The rest of the statute confirms, too, that the
    petitioner’s petition, not the Director’s discretion, is
    supposed to guide the life of the litigation.” Id. “[T]he
    statute tells us that the petitioner’s contentions, not the
    Director’s discretion, define the scope of the litigation all
    the way from institution through to conclusion.” Id. at
    1357. It would thus not be proper for the Board to deviate
    from the grounds in the petition and raise its own obviousness
    theory, as Sirona contends.


    We hold that the Board’s unpatentability determination
    regarding claims 1–8 did not, as Sirona contends,
    deviate from the grounds alleged in the petition.

    We conclude that the Board did not deviate from the
    grounds in the petition by relying upon the geometry data
    and citing for support the same portions of Bannuscher
    that the petition cited.

    1. 1.1

      … one part of the paradox is that the Article III Court is telling the PTAB that they are the neutral party in a litigation setting and the scope of that setting is set by the contentions in the petition (note that this is not “petition and any additional art supplied by the petitioner once the ‘litigation’ has started).

      It’s as if the Article III Court is reminding the PTAB that they are NOT ‘super-examiners’ in the “litigation” battle.

      But then one realizes that the petitioner is not “the examiner” either.

      In reality, there is NO true designated examiner involved; thus, the notion of ‘amendment’ (or perhaps more accurately, ‘examined amendment ready for grant’***) can ONLY be an ill-fit to the mechanism created by the AIA.

      This is not an error in execution.

      This is an error in design.

      And as such, no amount of attempted band-aids by either (or both) the judicial and executive branches can suffice to resolve the design problem.+++

      *** NO amendment – no matter how constrained – should be permitted into a state of a granted patent without a proper examination.

      I touched on this in earlier conversations, pointing out the fallacy of “but the amendment is of lesser scope than the original claim.” As noted, this “less than” is to a scope being deemed Not Proper, and to which (once that metric is thrown away), there is no ‘safe’ metric by which the amendment can be gauged (without said proper examination).

      +++ and abiding by the APA is not a substitute for an actual proper examination.

      1. 1.1.1

        “NO amendment – no matter how constrained – should be permitted into a state of a granted patent without a proper examination.”
        Indeed, and you make effective arguments here that since the statute allows amendments in IPRs, allowing adding claim limitations for which the petitioner had no reason to cite prior art in the petition an opportunity to cite art as to that added limitation.


          P.S. I admit there would be a real problem in the rare* situation where IPR claim amendments [actually, “substitutions” under the IPR statute and only proposed by the patent owner] would render all claims no longer of any infringement concern to the Petitioner, and the Petitioner then just drops out of the IPR without opposing the claim substitutions.

          *why would any rational patent owner ever do that and thus give up even an infringement damages settlement agreement opportunity? Especially before the claim substitutions are approved by the Board since otherwise the original claims are still there?


          allowing adding claim limitations for which the petitioner had no reason to cite prior art in the petition [provides] an opportunity to cite art as to that added limitation

          Except that is NOT what the judges say here (specifically on pages 9-10).

          Such is NOT what the AIA – as written – provides either.

          It “sounds” all well and good, but you have to change the law to provide such.

          Note as well, that your comment plays to the petitioner as being some type of “pseudo-examiner.”

          That too is an aspect NOT provided by the AIA as written. As written, the petitioner gets their shot – their ONLY shot – with the original petition.

          A plain reading here is that if the petitioner wants to “attack” any claim amendment, they need to “foresee” the possible amendments (based on the published specification) and include art in their petition that would knock out possible amendments.

          IPR in the AIA is simply not designed for the type of examination that occurs prior to grant.

          As I stated: this is not an execution error – this is a design error.


            But realistically one has to figure out how to deal with statutory “design errors” unless and until Congress changes the statute.
            In view of all the prior complaints made in Cuozo briefs [much less blogs] about not having ENOUGH IPR claim amendment opportunities [and the inconsistently very small number of even attempted amendments] how likely is that?


              Any sense of “realism” must be by proper means.

              Your desired Ends may be ever so noble…


              The statute says the petitioner asks to cancel claims, the patent owner can cancel claims and propose substitute claims, and the Board needs to make a final decision regarding the claims challenged by the petitioner and the substitute claims. If there is a problem, I don’t see it in the statute. The problem may be in the PTO rules, or in the Aqua Products decision.


                The problem is that the statute provides for substitute claims that are never genuinely examined.

                1. I think you are right. IPR need an Office action examining the patentability of substitute claims, before the final decision of the Board.

Comments are closed.