The Federal Circuit’s recent decision in Sirona Dental Systems GMBH v. Institut Straumann AG, Appeals 2017-1341, 2017-1403 (Fed. Cir. June 19, 2018) tasked the PTAB with reconciling the Supreme Court’s SAS Institute decision (discussed here) with its en banc decision in Aqua Products regarding the burden of proof on motions to amend (discussed here).

The patent at issue concerned a method for producing a drill template for placement of a tooth implant. One of the steps in the independent claim was directed to “carrying out a three-dimensional optical measuring of the visible surfaces of the jaw and of the teeth and compiling a corresponding measured data record.” The Board held that claims 1-8 would have been obvious based on a combination of two prior art references. One of the references was a German patent for which the parties had offered differing translations. Sidestepping the disputed portions of those translations, the Board found that the undisputed disclosures of the German patent, when combined with another reference, disclosed the measuring and compiling steps. The Board determined that a person of ordinary skill in the art would have been motivated to combine the references. Accordingly, the Board’s held claims 1-8 unpatentable as obvious.

The Federal Circuit affirmed this determination. The patent owner complained that the Board had violated the Administrative Procedure Act (APA) by disregarding petitioner’s obviousness arguments, based on disputed portions of the German Patent, and instead finding obviousness of claims 1-8 on alternative grounds fashioned from the undisputed disclosures. While the Federal Circuit agreed that, based on SAS Institute, the Board may not deviate from the grounds in the petition and raise its own obviousness theory, the court nevertheless determined that the Board had not deviated from the petition, properly grounding its obviousness determination on portions of the German reference cited in the petition.

The Federal Circuit  similarly saw no error in the Board’s refusal to consider prior art combinations offered in opposition to a contingent motion to amend when it determined that claims 9 and 10 were not unpatentable. Petitioner had argued that claims 9 and 10 shared similarities with the proposed substitute claim, and that combinations which Board concluded rendered that proposed claim unpatentable should also have been applied to invalidate clams 9 and 10. The Court noted that these combinations had not been asserted in the petition. The Court found no error in the Board’s decision not to consider grounds of unpatentability not raised in the petition.

The Federal Circuit, however, reversed and remanded the Board’s denial of the Patent Owner’s contingent motion to amend claim 1. Noting that the Board’s decision issued prior to the Court’s en banc decision in Aqua Products, the Court concluded that the Board had wrongly placed the burden on the Patent Owner to demonstrate that the proposed substitute claims were patentable. In remanding to the Board, the Court directed the Board to consider the implications of the Supreme Court’s recent decision in SAS Institute on whether it may consider combinations of references not argued by the Petitioner in opposing the motion to amend and, if so, what procedures would be required to comply with the provisions of the APA.

Accordingly, patent practitioners will have to stay tuned to find out whether the application of the new burden of proof changes the Board’s decision on the amended claims, as well as how the Board applies SAS Institute to the issue of whether and how it may consider combinations of references not argued by the petitioner in opposing a motion to amend claims.