July 9, 2018
Authored and Edited by Brooke M. Wilner; Kara Specht; Elizabeth D. Ferrill
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.
Patent Trial and Appeal Board (PTAB), jurisdiction, patentability, combining references, Administrative Procedure Act (APA)
Copyright © 2018 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Webinar
May 9, 2024
Webinar
Workshop
Life Sciences Workshop: Updates and Key Trends in Pharmaceutical and Biotechnology IP Law
May 2, 2024
Cambridge
At the PTAB Blog
USPTO Releases Notice of Proposed Rule Making Codifying Several Precedential Case Factors
April 25, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.