Opinion hosted by Court of Appeals for the Federal Circuit.
On September 13, 2018, the Federal Circuit held that six of Nobel’s claims within U.S. Patent 8,714,977 ("the ‘977 patent") were invalid as anticipated under 35 U.S.C. § 102(b). The decision affirmed that of the Patent Trial and Appeal Board after an inter partes review (IPR).
The ‘977 patent was filed by Nobel with a critical date of May 2003. In 2014, Nobel asked the International Trade Commission (ITC) to investigate Instradent’s dental implants, alleging that they imported a dental implant screw which infringed the ‘977 patent under 19 U.S.C. § 1337. Instradent countered that the six claims were not infringed, but were anticipated by an Alpha-Bio Tech (ABT) product catalog dated March 2003. Included in the catalog was a dental implant screw which Intradent used in their implants.
Ophir Fromovich, listed as an inventor on the ‘977 patent, was the founder and CEO of ABT until the company and its IP rights were acquired by Nobel in 2008. While Fromovich was CEO, he attended industry trade shows where dental manufacturers exchanged information about their products. Of particular interest in this case was the 2003 International Dental Show Conference (IDS) in Germany, where ABT had a booth. Fromovich attended the conference and testified that he was unsure if he brought copies of the March 2003 ABT catalog, but believed it was “unlikely.”
Instradent attempted to established that the ABT catalog was distributed at the conference and thus accessible prior to the patent’s critical date. However, the ITC issued an initial finding in 2015 that Instradent did not have enough evidence to prove that the catalog was prior art. Thus, claims by Instradent that imported Nobel’s product were infringed. The Federal Circuit affirmed in 2016.
Instradent petitioned for IPR of these claims. Upon review, the Patent Trial and Appeal Board considered new evidence, including deposition testimony of conference attendees. The Board reversed in favor of Instradent, citing that it was shown by “a preponderance of the evidence” that the ABT catalog was a printed publication falling under prior art, making the ‘977 patent invalid as anticipated. Upon appeal from Nobel, the Federal Circuit affirmed.
In their decision, the Federal Circuit principally considered the issue of anticipation based on public accessibility. The court stated that “A prior art document may anticipate a claim if it describes every element of the claimed invention, either expressly or inherently.” Husky Injection Molding Sys. Ltd. v. Athena Automation Ltd., 838 F.3d 1236, 1248 (Fed. Cir. 2016). The court stated that determining whether a work qualifies as a “publicly accessible printed publication” requires a case-by-case analysis. Thus, it was able to rely on additional evidence in reaching a different conclusion, and was not bound by their prior ruling in favor of Nobel.
The new evidence the court considered primarily included the testimony of Yechiam Hantman and Zvi Chakir. Chakir said he attended the 2003 IDS conference and collected a March 2003 catalog from ABT. He also testified that anyone present at the conference could have taken a catalog from the ABT booth. Hantman stated that Chakir later provided him with the catalog. This catalog was introduced as evidence, and matched the copy Instradent offered as prior art.
The court was sufficiently persuaded by both testimonies and supporting evidence. The court concluded that the catalog had been freely distributed at the IDS conference, and therefore ABT had not shown a desire to keep the information confidential. Thus, the catalog was an accessible “printed publication.” Further details about the opinion are described by Cozen O’Connor. This approach is consistent with recent Federal Circuit cases that have taken a more flexible approach to printed publications offered at trade shows and other public events, described by Sterne Kessler.