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Sirona Dental Sys. GmbH v. Institut Straumann AG

In IPR, PTAB Has No Obligation to Consider Obviousness Grounds Not Tendered in Petition

Sirona Dental Sys. GmbH v. Institut Straumann AG, __ F.3d __, 2018 WL 3028693 (Fed. Cir. June 19, 2018) (Prost, MOORE, Stoll) (PTAB) (2 of 5 stars)

Fed Cir part affirms, part vacates IPR decision finding some claims patentable, others not. Sirona’s patent related to a method for making a “drill template,” for use in guiding drilling for a particular patient. Substantial evidence supported the Board’s determination that Sirona’s claims 1–8 were obvious, and the opinion discusses the cited references. The opinion rejects Sirona’s argument that the Board’s final decision improperly deviated from Straumann’s petition, and discusses how the decision relied on the same portions of a key reference that the petition had cited.

The Board erred in denying Sirona’s contingent motion to substitute new claims for the challenged ones. Per Aqua Products (872 F.3d 1290), it was improper for the Board to place the burden of proving patentability on Sirona.

As to Straumann’s cross-appeal, substantial evidence supported the Board’s decision that two dependent claims had not been proved unpatentable. The opinion rejects Straumann’s argument that, in assessing these claims, the Board should have taken up obviousness theories that were not in the petition, but surfaced in connection with Sirona’s contingent motion to amend. Per SAS, the Board was under no obligation to decide grounds of unpatentability not raised in the petition.

KEYWORDS: INTER PARTES REVIEW; OBVIOUSNESS; CONTINGENT MOTION TO AMEND