The Federal Circuit issued only one precedential patent decision last week. However, on Friday, the Supreme Court issued its long-awaited decision on extraterritorial damages in WesternGeco LLC v. ION Geophysical Corp., Appeal No. 16-1011 (June 22, 2018).  Read our write-up on that case here.

Sirona Dental Systems GMBH v. Institut Straumann AG, Appeal Nos. 2017-1341, -1403 (Fed. Cir. June 19, 2018)

In an appeal from an inter partes review, the Federal Circuit addressed a motion to amend in one of its first precedential opinions since its en banc opinion in Aqua Products, Inc. v. Matal.

Petitioners Insitut Straumann AG and Dental Wings, Inc. sought inter partes review of patent claims relating to “a method for producing a drill assistance device,” used to place a pilot hole for a tooth implant. 

Petitioners asserted four grounds of unpatentability, including that claims 1-10 of the patent-at-issue were obvious based on the combination of two prior art references. The Board determined that claims 1-8 were obvious, and Patent Owner Sirona Dental Systems GMBH appealed. Petitioner cross-appealed regarding the unpatentability of the remaining claims.  The Federal Circuit affirmed the unpatentability of claims 1-8, and it concluded that Petitioners failed to demonstrate that claims 9-10 were unpatentable.

After institution, Sirona filed a contingent motion to amend the claims pursuant to 37 C.F.R. § 42.121. The Board denied Sirona’s contingent motion to amend because Sirona failed to meet its burden of demonstrating that the proposed substitute claims would not have been obvious over the prior art.

On appeal, the Federal Circuit vacated the Board’s denial of Sirona’s contingent motion to amend because the Board improperly placed the burden of establishing the patentability of the proposed substitute claims on Sirona.  Rather, in view of Aqua Products, Inc. v. Matal, the petitioner bears the burden of proving that proposed amended claims are unpatentable.  Accordingly, the Federal Circuit vacated the Board’s denial of Sirona’s contingent motion to amend and remanded for reconsideration in light of Aqua Products.  The Federal Circuit also instructed the Board to determine whether it may consider combinations of references not argued in the petitioner’s opposition to the motion to amend—in light of recent precedent including SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).  See our write-up of Aqua Products here, and our write-up of SAS here.

Opinion can be found here.