Federal Circuit Considers PTAB Decision Following SAS and Aqua Products

In Sirona Dental Systems GmbH v. Institut Straumann AG, the Federal Circuit affirmed-in-part, vacated-in-part, and remanded-in-part the PTAB’s decision. In an IPR proceeding, the PTAB found certain claims of Sirona’s patent obvious over the prior art and denied Sirona’s contingent motion to amend. Sirona appealed, arguing (1) the PTAB improperly deviated from the petition’s presented grounds and (2) the PTAB erred in placing the burden of proof of patentability of the proposed amended claims on Sirona.

The Court first held that it would not be proper for the PTAB to deviate from the petition’s grounds, because the Administrative Procedure Act (“APA”)—which prescribes standards for administrative adjudication— and the Supreme Court’s holding in SAS allows the PTAB to proceed in an IPR only in accordance with the petition. The Court held, however, that in this case, the PTAB did not deviate. Rather, while not using the exact language of the petition, the PTAB nonetheless cited the same portions of references as the petition, and Sirona therefore received adequate notice of the grounds, preempting Sirona’s argument that the APA was violated.

Additionally, the Court vacated and remanded the PTAB’s decision on Sirona’s motion to amend, holding that the burden of proving that the proposed amended claims are unpatentable falls on petitioner, citing the Aqua Products decision. The Court, however, left the PTAB to determine whether it may consider combinations of references not argued by Petitioner in its opposition to the motion to amend and what procedures are required by the APA and SAS in doing so.