Instradent USA, Inc.v.Nobel Biocare Services AG

Patent Trial and Appeal Board

Feb 17, 2016

10499430 (P.T.A.B. Feb. 17, 2016)

Trials@uspto.gov Paper No. 14
571-272-7822 Entered: February 17, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INSTRADENT USA, INC.,
Petitioner

v.

NOBEL BIOCARE SERVICES AG,
Patent Owner.
____________

Case IPR2015-01784
Patent 8,764,443 B2
____________

Before WILLIAM V. SAINDON, TINA E. HULSE, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

PAULRAJ, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Instradent USA, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”),
requesting institution of an inter partes review of claims 15, 17–19, 21, 25–
27, and 30–32 of U.S. Patent No. 8,764,443 B2 (Ex. 1001, “the ’443
patent”). Nobel Biocare Services AG (“Patent Owner”) timely filed a
Preliminary Response (Paper 6, “Prelim. Resp.”). We have jurisdiction
under 35 U.S.C. § 314, which provides that an inter partes review may not
be instituted “unless . . . there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.”
Upon consideration of the Petition and the Preliminary Response, and
for the reasons explained below, we determine that Petitioner has not shown
that there is a reasonable likelihood that it would prevail with respect to any
of the challenged claims of the ’443 patent. Accordingly, the Petition for an
inter partes review is denied.
A. Related Proceedings
The parties have identified concurrent proceedings related to the ’443
patent before the International Trade Commission (“ITC”) (Certain Dental
Implants, Inv. No. 337-TA-934) and in the Central District of California
(Nobel Biocare Services AG and Nobel Biocare USA, LLC, v. Neodent USA,
Inc., Civil Action No. 14-1322 DOC (DFMx) (C.D. Cal.), which is stayed
pending resolution of the ITC investigation. Pet. 1–2, Prelim. Resp. 1–2, 9–
11.
On October 27, 2015, the ITC issued an Initial Determination finding
the ’443 patent to be infringed. Ex. 2001. The ITC’s Administrative Law
Judge determined that Petitioner failed to prove invalidity of the ’443 patent,
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and made specific findings that the ’443 patent was not invalid for
anticipation or obviousness over some of the prior art that has been raised in
the Petition. Id. at 113–21.1 Although we have taken the ITC’s Initial
Determination into account, we make an independent determination of
patentability of the challenged claims based on the evidence before us and
the standards applicable to an inter partes review.
B. The ’443 Patent (Ex. 1001)
The ’443 patent issued on July 1, 2014, and claims a priority filing
date of December 21, 2001. See Ex. 1001, Title Page. It names Jan Hall as
the sole inventor. Id.
The ’443 patent relates generally to a surface structure produced on an
outer surface of a dental implant or fixture for a range of implants related to
different types and qualities of jaw bone. See id., Abstract. Figure 2 of the
’443 patent, illustrates the surface structure and is reproduced below:

1 The ITC has indicated that it will review in part the Initial Determination,
but not with respect to any aspect of the ’443 patent. Ex. 1029.
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Specifically, as depicted in Figure 2 of the ’443 patent, the surface structure
comprises a wave pattern (indicated by 5, 6, and 7) with at least one trough
(indicated by 8 and 9) that substantially follows the spiral trajectory of a
thread defining an outer surface. See, e.g., id. at 7:33–45 (claim 15). The
trough depth (indicated by “B” in Fig. 2) ranges between approximately 25
to 250 µm. Id. at 4:33–35. According to the specification, the outer surface
structure is “designed so that effective growth of the surrounding bone onto
the outer surface can take place and can be stabilized in a relatively short
time.” Id. at 4:16–18. The specification also discloses that “[t]he present
invention is based on the idea of achieving substantial stability of the
implant incorporation in the bone in a short time, for example after just 1 to
5 days.” Id. at 2:35–37.
C. Illustrative Claims
Petitioner challenges claims 15, 17–19, 21, 25–27, and 30–32 of the
’443 patent. Independent claim 15 is illustrative, and reproduced below:
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15. A dental implant comprising:
an implant body defining a longitudinal axis and an
exterior surface; and
a thread extending about the implant body in a spiral
trajectory, the thread defining an outer surface, wherein
when seen in side view, the outer surface of the thread
comprises a wave pattern with at least one trough, the
wave pattern extending generally in the direction of the
longitudinal axis of the implant body, the trough
extending in a course that substantially follows the spiral
trajectory of the thread, the wave pattern having a
respective trough depth in the range of between
approximately 25 to 200 µm.
D. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of the claims of the ’443 patent
on the following grounds:

References Basis Claims challenged
Bono2 and Dinkelacker3 § 103(a) 15, 17–19, 21, 25–27,
and 30–32
Libbey4 and Dinkelacker § 103(a) 15, 17–19, 21, 25–27,
and 30–32
Papafotiou5 and Dinkelacker § 103(a) 15, 17–19, 21, 25–27,
and 30–32
Weiss6 § 102(b) 15, 17, 30, and 32

2 Bono et al., U.S. Patent No. 6,129,730 (iss. Oct. 10, 2000) (Ex. 1004).
3 Dinkelacker, U.S. Patent No. 6,364,663 B1 (iss. Apr. 2, 2002) (Ex. 1003).
4 Libbey, U.S. Patent No. 422,307 (iss. Feb. 25, 1890) (Ex. 1010).
5 Papafotiou et al., U.S. Patent No. 6,371,709 B1 (iss. Apr. 16, 2002) (Ex.
1012).
6 Weiss et al., U.S. Patent No. 4,103,422 (iss. Aug. 1, 1978) (Ex. 1013).
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References Basis Claims challenged
Weiss and Dinkelacker § 103(a) 18, 19, 21, 25, and 26

II. DISCUSSION
A. Claim Construction
We interpret claims using the “broadest reasonable construction in
light of the specification of the patent in which [they] appear[].” 37 C.F.R.
§ 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–
79 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable
interpretation standard in enacting the AIA,” 7 and “the standard was
properly adopted by PTO regulation.”), cert. granted, Cuozzo Speed Techs.
LLC v. Lee, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under the
broadest reasonable construction standard, claim terms are given their
ordinary and customary meaning, as would be understood by one of ordinary
skill in the art at the time of the invention. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007). “Absent claim language carrying a
narrow meaning, the PTO should only limit the claim based on the
specification . . . when [it] expressly disclaim[s] the broader definition.” In
re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004). “Although an inventor is
indeed free to define the specific terms used to describe his or her invention,
this must be done with reasonable clarity, deliberateness, and precision.” In
re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).

7 The Leahy-Smith America Invents Act, Pub. L. No. 112−29, 125 Stat. 284
(2011) (“AIA”).
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We determine that no explicit construction of any claim term is
necessary to determine whether to institute a trial in this case. See, e.g.,
Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
(“[C]laim terms need only be construed ‘to the extent necessary to resolve
the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999)).
B. Principles of Law
We analyze the proposed grounds of unpatentability in accordance
with the following stated principles.
An inter partes review may be instituted only if “the information
presented in the [Petition and Preliminary Response] shows that there is a
reasonable likelihood that the petitioner would prevail with respect to at least
1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
1. Law of Anticipation
The Court of Appeals for the Federal Circuit summarized the
analytical framework for determining whether prior art anticipates a claim as
follows:
To anticipate a claim, a single prior art reference must expressly
or inherently disclose each claim limitation. Celeritas Techs.,
Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir.
1998). But disclosure of each element is not quite enough—this
court has long held that “[a]nticipation requires the presence in a
single prior art disclosure of all elements of a claimed invention
arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722
F.2d 1542, 1548 (Fed. Cir. 1983) (citing Soundscriber Corp. v.
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United States, 175 Ct. Cl. 644, 360 F.2d 954, 960 (1966)
(emphasis added)).
Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334–35 (Fed. Cir.
2008). “Thus, it is not enough that the prior art reference discloses part of
the claimed invention, which an ordinary artisan might supplement to make
the whole, or that it includes multiple, distinct teachings that the artisan
might somehow combine to achieve the claimed invention.” Net MoneyIN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 n.5, 1371 (Fed. Cir. 2008). “The
requirement that the prior art elements themselves be ‘arranged as in the
claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate
parts, in disregard of the part-to-part relationships set forth in the claims and
that give the claims their meaning.’” Therasense, Inc. v. Becton, Dickinson
& Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Lindemann
Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459
(Fed.Cir.1984)).
In assessing the prior art, “[i]t is well established that patent drawings
do not define the precise proportions of the elements and may not be relied
on to show particular sizes if the specification is completely silent on the
issue.” Nystrom v. TREX Co., 424 F.3d 1136, 1149 (Fed. Cir. 2005)
(quoting Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l. Inc., 222 F.3d 951,
956 (Fed. Cir. 2000)); see also MPEP § 2125 (“When the reference does not
disclose that the drawings are to scale and is silent as to dimensions,
arguments based on measurement of the drawing features are of little
value.”).
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2. Law of Obviousness
A patent may not be obtained if the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which the subject matter pertains.
35 U.S.C. § 103(a). The legal question of obviousness is resolved on the
basis of underlying factual determinations, including: (1) the scope and
content of the prior art; (2) any differences between the claimed subject
matter and the prior art; (3) the level of skill in the art; and (4) objective
evidence of nonobviousness, i.e., secondary considerations. See Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966).
In KSR Int’l Co. v. Teleflex Inc., the Supreme Court stated:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
550 U.S. 398, 421 (2007). In this regard, “[o]bviousness does not require
absolute predictability of success . . . all that is required is a reasonable
expectation of success.” In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)
(citing In re O'Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988)).
Obviousness does not require an explicit teaching, suggestion, or
motivation in the prior art. KSR, 550 U.S. at 402. Nonetheless, “there must
be some articulated reasoning with some rational underpinning to support
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the legal conclusion of obviousness.” Id. at 418 (citing In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
For a prior art reference to be considered in an obviousness challenge,
it must be analogous to the claimed invention. Bigio, 381 F.3d at 1325. A
reference is analogous art vis-à-vis the claimed invention if: (1) the reference
is from the same field of endeavor as the claimed invention (even if it
addresses a different problem); or (2) the reference is reasonably pertinent to
the problem faced by the inventor (even if it is not in the same field of
endeavor as the claimed invention). Id. In order for a reference to be
“reasonably pertinent” to the problem, it must “logically . . . have
commended itself to an inventor's attention in considering his problem.” In
re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007)
(quoting In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)).
C. Prior Art Relied Upon
Petitioner relies upon the following prior art in its challenges.
1. Dinkelacker (Ex. 1003).
Dinkelacker is directed to a cylindrical, conical or stepped tooth
implant comprising numerous “groove-shaped recesses” along its lengthwise
axis or at a sharp angle to it. Ex. 1003, Abstract, Fig. 1 (element 20); see
also id. at Fig. 12 (element 63) Fig. 13 (element 66). Figure 1 of
Dinkelacker is reproduced below:

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Figure 1 illustrates a cylindrical tooth implant with axial groove-shaped
recesses (indicated by 20). Id. at 2:58. The groove-shaped recesses “offer[]
favorable conditions for osteons to collect during the healing phase and
additionally secure against axial shifting and rotation of the implant after
healing.” Id. at 2:16–19. Dinkelacker teaches that “[t]he groove-shaped
recesses are 20–300 µm wide and 10–150 µm deep.” Id. at 3:41:43.
According to Dinkelacker, the entire surface of the implant body is
also provided with numerous small troughs or lagoons whose average
diameter is around 3 µm and whose depth is advantageously around 1 µm.
Id. at 3:46–49; Fig. 6. Dinkelacker teaches that “[t]he troughs or lagoons 23
assist the anchoring of the implant in the jawbone by allowing a large
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number of osteocytes to collect on the surface of the body area.” Id. at 4:27–
29.
2. Bono (Ex. 1004).
Bono is directed to a bone screw with a “dual lead thread.” Ex. 1004,
Abstract. Figure 4 of Bono is reproduced below:

Bono explains:
[R]eferring to FIG. 4, bone screw 10 has a large groove 36 and a
small groove 37. Large groove 36 of bone screw 10 has a thread
depth d1. Thread depth d1 is the radial distance from a peak
position 35 to a position at a trough 33 of lead 13. Small groove
37 has a thread depth d2, which is the radial distance from peak
position 35 to a position at a trough 34 of lead 12. In the
illustrative embodiment, thread depth d1 is at least twice thread
depth d2.

Id. at 3:39–46. The dual lead thread (22, 24) of Bono’s bone screw is
described as providing enhanced pullout resistance by overcoming
machining limitations to produce a bone screw with increased thread depth
while maintaining or decreasing thread pitch. Id. at 3:47-60.
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3. Libbey (Ex. 1010).
Libbey is directed to a wood screw, as depicted in Figure 2, which is
reproduced below:

Figure 2 depicts a thread that is slightly thicker and divided at its
periphery by a V-shaped groove (a), so as to present two cutting edges (b) on
each thread (C). Ex. 1010 at 1:13–15. The specification discloses that
“[t]he object of [the] invention is to produce a wood-screw that can be
inserted with less liability of splitting the material than screws now in use.”
Id. at 1:9–12.

4. Papafotiou (Ex. 1012).
Papafotiou is directed generally to wood screws, with particular
application to fasteners for attaching railway track to timber sleepers. Ex.
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1012 1:7–10. Figure 9 of Papafotiou illustrates the screw thread and is
reproduced below:

As depicted in Figure 9, the screw thread comprises two peaks 57 and 55
with trough 59 between them. Id. at 4:35–46. Papafotiou discloses that:
[t]he higher ridge 51 rises 2.5 mm from the root while the lower
ridge 61 rises 1.25 mm. The higher trough 59 is 0.7 mm deep
while the lower trough 69 is 0.25 mm deep. The lower ridge is
thus 50% of the height of the higher ridge, and thus within the
preferred range of 30% to 70%. Also, the higher trough is 28%
of the height of the higher ridge, while the lower trough is 20%
of the height of the lower ridge, thus within the more preferred
range of 15% to 35%.

Id. at 4:48–56. By reducing the degree to which wood fibers are cut,
Papafotiou explains that the threadform penetrates into the timber more by
way of compression, strengthening the timber and leaving the wood fiber
intact, which causes less weakening of the timber’s structure. Id. at 6:7–21.

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5. Weiss (Ex. 1013).
Weiss is directed to a self-tapping endodontic stabilizer to stabilize the
tooth. Ex. 1013, Abstract. Figure 1 of Weiss illustrates the stabilizer and is
reproduced below:

As depicted in Figure 1, the stabilizer comprises a threaded shaft defining a
plurality of shallow recesses (32) along the peripheral edge of the threads
and grooves (28) between threads. Id. at 3:40–46, 6:7–21. The groove has a
longitudinal height (designated by label “A” in Fig. 1) of least 0.20
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millimeters, and preferably about 0.2 to 0.38 millimeters. Id. at 3:40–46.
The recesses and grooves “exercise[] and work[]” the ligament, which
promote generation of the ligament. Id. at 2:37–48, 4:46–55.
D. Analysis of Petitioner’s Patentability Challenges
1. Obviousness of Claims 15, 17–19, 21, 25–27, and 30–32
Based on Bono and Dinkelacker
Petitioner contends that claims 15, 17–19, 21, 25–27, and 30–32 are
obvious based on the combination of Bono and Dinkelacker. Pet. 12–23. In
addition to the teachings of the references, Petitioner relies upon the
Declaration of Michael M. Dard, DDS, MS, Ph.D. Ex. 1002. Petitioner also
includes claim charts for claims 15, 17–19, 26, 27, and 30–32. Pet. 16–22.
Petitioner asserts that “Bono discloses a threaded bone screw having a
groove disposed in the outer edge of the thread.” Id. at 12. Petitioner points
to the testimony of Patent Owner’s expert in the related ITC action as an
admission that the grooves taught by Bono have a “wave pattern” as recited
in independent claim 15. Id. (citing Ex. 1005, Figure 4 (as annotated); Ex.
1006, Dep. Tr. of Dr. Sinan Müftü, 66:24–67:11).8 Petitioner acknowledges
that Bono does not explicitly teach that the threads of its bone screw have a
groove depth of 25–200 μm as claimed, and therefore relies upon
Dinkelacker’s teachings of grooves on the surface of a dental implant,

8 On this record, we do not consider the deposition testimony of Patent
Owner’s expert, Sinan Müftü, Ph.D., to be an admission that Bono discloses
a “wave pattern” that includes a “trough” in the manner claimed. Pet. 11–12
(citing Ex. 1006, 66:24–67:11). The quoted testimony relates only to an
annotated version of Bono’s Figure 4, and we are not persuaded that Dr.
Müftü would have come to the same conclusion based on the figure as it
appears in the reference itself. Id.
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“which grooves are sized to correspond with the osteons in the bone to
promote the bone to grow directly into the implant.” Id. (citing Ex. 1003,
3:42–45).
Petitioner asserts that the trough depth limitation is suggested by
Dinkelacker’s teaching of grooves with a depth of between 10–150 μm,
which overlaps the claimed range. Id. at 9. Further, Petitioner argues that
Dinkelacker’s grooves facilitate bone growth and enhance dental implant
stability. Id. at 9–10. Petitioner contends that “the osteons of the bone are
‘agnostic’ as to the location of the groove, and Dinkelacker’s teachings to
provide a specific groove depth are readily applicable to Bono.” Pet. 14
(citing Ex. 1003, 6:23–27). Accordingly, Petitioner contends that the skilled
artisan would have found that the grooves disclosed by Dinkelacker could be
applied to other portions of an implant, such as to the outer surface of the
thread of Bono’s bone screw. Id. at 16.
Patent Owner argues that this obviousness ground fails because Bono
does not disclose the claimed “dental implant” and “wave pattern.” Prelim.
Resp. 30–34.9 More particularly, Patent Owner contends that “Bono does
not teach that its thread design was to promote osseointegration[10] or bone
growth,” and “[t]hus, Bono’s bone screw addresses a fundamentally

9 Petitioner contends that the preamble of claim 15 is not a limitation. Pet.
6–7. We need not address this issue because even assuming arguendo that
the claims are not limited to a “dental implant,” Petitioner has not
demonstrated a reasonable likelihood of establishing obviousness for the
reasons discussed herein.
10 Patent Owner contends that “osseointegration” is the process by which an
implant will “integrate into the surrounding bone tissue.” Prelim. Resp. 5.
This appears to be consistent with Petitioner’s use of that term. See Pet. 46–
47.
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different problem than the ’443 Patent, and skilled artisans would not have
looked to Bono devise [sic] the invention of the ’443 Patent.” Id. at 32.
Patent Owner also argues that the grooves in Dinkelacker’s
unthreaded implant would not have been applied by skilled artisans to
threads. Id. at 34–38. According to Patent Owner, the purpose of
Dinkelacker’s grooves, unlike the structure taught by the ’443 patent, is to
prevent “micromotion” in unthreaded dental implants. Id. at 35–37.
Further, because Dinkelacker later filed a separate patent application that
included grooves on threads, Patent Owner contends that skilled artisans
“did not consider placing grooves on a dental implant thread to be obvious at
the time of the invention of the ’443 Patent.” Id. at 37.
Based on the current record, we determine that Petitioner has not
demonstrated a reasonable likelihood of establishing that it would have been
obvious to combine Dinkelacker’s teaching of groove-shaped recesses to the
threads of the bone implant screw taught by Bono in order to arrive at the
claimed “wave pattern having a respective trough depth in the range of
between approximately 25 to 200 μm.”
We recognize that the grooves of Dinkelacker are designed to promote
bone growth and thereby enhance “osseointegration.” Ex. 1003, 1:39–41,
2:16–19 (“Such a surface structure [e.g., grooves] offers favorable
conditions for osteons to collect during the healing phase . . . .”). As such,
contrary to Patent Owner’s arguments, the grooves taught by Dinkelacker
and troughs taught by the ’443 patent serve essentially the same purpose.
Cf. Ex. 1001, 4:15–18 (noting that “[t]he outer surface structure must be
designed so that effective growth of the surrounding bone onto the outer
surface can take place and can be stabilized in a relatively short time”). On
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the other hand, the dual lead thread design of Bono’s screws are designed to
increase mechanical “pullout resistance.” Ex. 1004, 1:25–29, 3:47–60. In
order to provide greater pullout resistance, Bono teaches a dual lead thread
that maximizes average thread depth while maintaining or even decreasing
thread pitch. Id. at 3:47-60. The average thread depth that Bono seeks to
maximize is the average of depths d1 and d2, as depicted in Fig. 4 of Bono.
Id. at 3:50.
Petitioner relies upon Dr. Dard’s Declaration to support the
desirability of minimizing Bono’s thread depth in order to promote
osseointegration. Pet. 14 (citing Ex. 1002 ¶ 27). In particular, Dr. Dard
asserts that the skilled artisan “would have been motivated to modify the
grooves formed in the outer surface of the threads of the Bono bone screw to
have a similar depth as that taught by Dinkelacker.” Ex. 1002 ¶ 27.
However, in view of Bono’s stated desirability to maximize thread depth in
the bone screw, Petitioner has failed to demonstrate how or why the skilled
artisan would have applied Dinkelacker’s teaching regarding groove depths
that correspond to the dimensions of osteons, i.e., on the order of microns.
There is no teaching in Bono regarding a need for enhanced
osseointegration. But even assuming that the skilled artisan would have
considered osseointegration to be relevant for Bono’s screw, Petitioner has
not identified any criteria from the references or elsewhere that would guide
the skilled artisan to optimize the thread depth to within the claimed range of
25–200 µm, while still achieving a desirable level of pullout resistance.
Because Petitioner does not account for Bono’s contrary goal of maximizing
thread depth, we determine that Petitioner’s stated reasons for incorporating
the groove depths taught by Dinkelacker are conclusory and insufficient.
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See KSR, 550 U.S. at 418 (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements.”) (quoting Kahn, 441 F.3d at 988).
We are also unpersuaded by Petitioner’s reliance on the Board’s
Decision on Appeal in In re Jorneus, Appeal No. 2012-005116 (PTAB Nov.
15, 2013) (non-precedential), in which the Board affirmed the Examiner’s
rejection of claims in an unrelated application over the combination of
Dinkelacker with another reference (Ricci). Pet. 14–16. In Jorneus, the
Board concluded that the skilled artisan “would have found it obvious to
combine the teachings of Ricci and Dinkelacker such that the lower portion
152 of the implant of Ricci (which is in contact with bone and which bear a
pattern of grooves) is modified with the grooves of Dinkelacker.” Ex. 1007,
6–7. That decision, however, is distinguishable insofar as the Board did not
address the obviousness of applying Dinkelacker’s grooves to a bone screw
with thread depths that are to be maximized.
We, therefore, determine that Petitioner has failed to demonstrate a
reasonable likelihood of prevailing with respect to this obviousness
challenge.
2. Obviousness of Claims 15, 17–19, 21, 25–27, and 30–32
Based on Libbey and Dinkelacker
Petitioner contends that claims 15, 17–19, 21, 25–27, and 30–32 are
obvious based on the combination of Libbey and Dinkelacker. Pet. 23–33.
In addition to the teachings of the references, Petitioner also relies upon Dr.
Dard’s Declaration in support of this challenge. Ex. 1002. Petitioner
provides claim charts for claims 15, 17–19, 26, 27, and 30–32. Pet. 27–32.
Petitioner relies upon Libbey’s teaching of a wood screw with a “V-
shaped groove” on the threads, but acknowledges that “Libbey does not
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explicitly teach that its thread groove has a depth within the range of 25 to
200 μm claimed.” Id. at 26, 29. To make up for this deficiency, Petitioner
relies upon Dinkelacker, in the same manner as discussed above with regard
to the obviousness challenge based on Bono, and asserts that Dinkelacker’s
teachings regarding groove depth “are equally applicable to the threaded
structure disclosed in Libbey.” Id. at 26–27. Relying on Dr. Dard’s
testimony, Petitioner argues that the skilled artisan would recognize that the
behavior of dental implants can be modelled using wood. Id. at 25 (citing
Ex. 1002 ¶ 67). Petitioner also asserts that, during oral arguments before the
Board in the appeal that led to issuance of the ’443 patent, Patent Owner’s
counsel acknowledged that the claims would cover Libbey’s improved
screw, stating, “I’m just claiming a thread and then a groove on top of the
thread that is spiral.” Id. at 24–25 (citing Ex. 1011, 12).
Patent Owner argues that Libbey is not analogous art. Prelim. Resp.
38–40. According to Patent Owner, Libbey is not reasonably pertinent to
the problem of implant stability or osseointegration that the inventor of the
’443 patent was trying to solve and, instead, Libbey is directed to a different
problem of preventing wood splitting. Id. at 40–41 (citing Ex. 1001, 2:35–
37; Ex. 1010, 1:9–12). Further, according to Patent Owner, the Dard
Declaration simply parrots the Petition and provides no independent
evidence that skilled artisans would have considered wood screws for
solving problems relating to integrating implants in living tissue. Id. at 41.
We are not persuaded that Petitioner has demonstrated a reasonable
likelihood that it would have been obvious for the skilled artisan to apply
Dinkelacker’s grooves to Libbey’s threads. Petitioner has not explained
sufficiently why a skilled artisan would have either a) applied the
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dimensions of Dinkelacker’s grooves, which are optimized to promote
osseointegration, to a wood screw, or b) use the thread structure taught by
Libbey, which is designed to prevent wood from splitting, for a dental
implant. Petitioner’s only rationale is that skilled artisans would recognize
that dental implant behavior can be modeled using wood. Pet. 25; Ex. 1002
¶ 67. Other than the conclusory testimony of Dr. Dard, Petitioner offers no
evidence to support this rationale. Even so, the fact that dental implant
behavior can be modeled using wood does not suggest that the specific
thread structure taught for a wood screw would have been considered
relevant when designing a dental implant; nor does it suggest that groove
dimensions taught for a dental implant would have been considered relevant
for a wood screw. Therefore, Petitioner’s arguments lack the requisite
articulated reasoning with rational underpinning to support a conclusion of
obviousness. We are also unpersuaded by Petitioner’s assertion that Patent
Owner previously admitted before the Board that the claims at issue are
directed precisely to Libbey’s improved wood screw. Pet. 24–25. The
quoted portions of the oral hearing transcript are, at best, ambiguous in this
regard; indeed, they do not mention wood screws at all. Ex. 1011, 12.
Regardless, Libbey does not teach a groove depth between 25–200 µm, and
there is an insufficient basis on this record to apply Dinkelacker’s teachings
regarding groove dimensions for a tooth implant to Libbey’s wood screw.
Accordingly, based on the current record, we determine that Petitioner
has not demonstrated a reasonable likelihood of prevailing with respect to
this obviousness challenge.
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3. Obviousness of Claims 15, 17–19, 21, 25–27, and 30–32
Based on Papafotiou and Dinkelacker
Petitioner contends that claims 15, 17–19, 21, 25–27, and 30–32 are
obvious based on the combination of Papafotiou and Dinkelacker. Pet. 33–
42. In addition to the teachings of the references, Petitioner also relies upon
Dr. Dard’s testimony in support of this challenge. Ex. 1002. Petitioner
provides claim charts for claims 15, 17–19, 26, 27, and 30–32. Pet. 35–41.
Petitioner’s arguments for this obviousness challenge are similar to
those presented with respect to the challenge based on the Libbey/
Dinkelacker combination. In particular, Petitioner contends that “[s]imilar
to Libbey, Papafotiou discloses a fastener that is a particularly useful for
fastening to wood or timber,” and asserts that the skilled artisan “would seek
to combine Papafotiou with Dinkelacker for the same reasons provided for
the combination of Libbey with Dinkelacker.” Id. at 35. Using a “well-
known range of dental implant diameters” (3.5 mm to 5.0 mm), Petitioner
calculates that the skilled artisan “could readily [modify] the groove depths
of Papafotiou to arrive at the ranges of 49 – 136 microns when scaling to a
3.5mm implant, and 69 – 194 microns when scaling to a 5.0mm implant.”
Id. (citing Ex. 1002 ¶¶ 104–106).
Patent Owner argues that Papafotiou is also not analogous art. Prelim.
Resp. 39–40. As with Libbey, Patent Owner contends that skilled artisans
would not have looked to Papafotiou’s wood screw to solve problems
relating to osseointegration and dental implant stability. Id. at 41. Rather,
Patent Owner points out that Papafotiou designed his screw to achieve
“significant advantages during installation and in [railroad] track operation
performance.” Id. (citing Ex. 1012 1:19–21).
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For reasons similar to our conclusion regarding the challenge based on
the Libbey–Dinkelacker combination, we determine that Petitioner has not
demonstrated a reasonable likelihood that it would have been obvious for the
skilled artisan to combine Dinkelacker’s groove dimensions with
Papafotiou’s thread design to arrive at the claimed invention. In particular,
Petitioner has not articulated a sufficient rationale as to why a skilled artisan
would look to Papafotiou’s teachings regarding a wood screw designed for
railroad track installation in order to improve Dinkelacker’s dental implant,
or vice versa. Moreover, Petitioner’s assertion that the dimensions of
Papafotiou’s groove depths could simply be scaled to fall within the claimed
range of 25 to 200 µm based on “well-known” diameters of dental implants
is conclusory and unpersuasive. Although mere changes in size may not
render a claim patentable, that is only true where “the dimensional
limitations did not specify a device which performed and operated any
differently from the prior art.” Gardner v. TEC Systems, Inc., 725 F.2d
1338, 1349 (Fed. Cir. 1984) (emphasis added). That is not the case here.
Accordingly, based on the current record, we determine that Petitioner
has not demonstrated a reasonable likelihood of prevailing with respect to
this obviousness challenge.
4. Anticipation of Claims 15, 17, 30, and 32 Based on Weiss
Petitioner contends that claims 15, 17, 30, and 32 are anticipated by
Weiss (as evidenced by the Implant Dentistry text (Ex. 1014), Christensen
(Ex. 1015), or Tosti (Ex. 1016)). Pet. 42–54. In addition to the teachings of
the references, Petitioner also relies upon Dr. Dard’s testimony in support of
this challenge. Ex. 1002.
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Petitioner argues that Weiss’s endodontic stabilizer is a “dental
implant” with recesses or grooves (Fig. 1 (element 32)) that promote
osseointegration. Pet. 44–47. Additionally, based on certain measurements
taken by Dr. Dard, Petitioner contends that Figure 1 of Weiss reliably
discloses a trough with a depth of between 25 to 200 µm. Id. at 48 (citing
Ex. 1002 ¶¶ 149, 159–163). Specifically, relying upon Weiss’s disclosure
that the dimension “A” (i.e., the longitudinal height between threads) is at
least 0.2 mm, and preferably about 0.25–0.38 mm (Ex. 1013, 3:41–44), Dr.
Dard calculated the range of the depth of the recess/groove illustrated in
Figure 1 as between 28–53 microns. Ex. 1002 ¶ 162.
Patent Owner argues, inter alia, that Petitioner has improperly relied
upon patent figure measurements from Weiss. Prelim. Resp. 48–50. We
agree. “[I]t is well established that patent drawings do not define the precise
proportions of the elements and may not be relied on to show particular sizes
if the specification is completely silent on the issue.” Nystrom v. TREX Co.,
424 F.3d at 1149 (citations omitted). Petitioner does not present any
evidence that the drawings of the Weiss patent are to scale, such that a
reliable measurement of groove depth can be made based on the figure itself.
To the contrary, Patent Owner has pointed to testimony from one of Weiss’s
co-inventors indicating that he did not know if Figure 1 of Weiss is drawn to
scale. Prelim. Resp. 49–50 (citing Ex. 2025 (Judy Depo.), 126:14–16).
Therefore, based on the current record, we determine that Petitioner
has not demonstrated a reasonable likelihood of prevailing with respect to
this anticipation challenge.
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5. Obviousness of Claims 18, 19, 21, 25, and 26 Based on
Weiss and Dinkelacker
Petitioner contends that claims 18, 19, 21, 25, and 26 are obvious
based on Weiss and Dinkelacker. Pet. 55–59. In addition to the teachings of
the references, Petitioner also relies upon Dr. Dard’s testimony in support of
this challenge. Ex. 1002. Petitioner provides claim charts for claims 18, 19
and 26. Pet. 57–58.
With respect to the dependent claims challenged on this ground,
Petitioner argues that it would have been obvious for the skilled artisan to
combine Weiss with Dinkelacker because Dinkelacker teaches advantages of
providing varying grooved structures. Id. at 56–57. Petitioner, however,
does not rely upon Dinkelacker’s teachings regarding groove depths of
between 10–150 µm. Rather, Petitioner only refers back to the anticipation
analysis based on measurements taken of Weiss’s Figure 1. Id. at 57. As
noted above, Petitioner’s reliance on patent figure measurements cannot
establish that the claimed dimensional limitation was known in the prior art.
Accordingly, based on the current record, we determine that Petitioner
has not demonstrated a reasonable likelihood of prevailing with respect to
this obviousness challenge.

III. CONCLUSION
For the foregoing reasons, we determine that Petitioner has not
demonstrated that the information presented in the Petition and in the
Preliminary Response shows that there is a reasonable likelihood that it
would prevail in proving the unpatentability of claims 15, 17–19, 21, 25–27,
or 30–32 of the ’443 patent.
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition for inter
partes review is denied as to all challenged claims of the ’443 patent.

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PETITIONERS:
Paul Hunter
Nicola Pisano
Andrew Cheslock
FOLEY & LARDNER LLP
phunter@foley.com
npisano@foley.com
acheslock@foley.com

PATENT OWNERS:
Michelle E. Armond
John B. Sganga, Jr.
Rabinder N. Narula
Sheila N. Swaroop
KNOBBE, MARTENS, OLSON & BEAR LLP
2mea@knobbe.com
2jbs@knobbe.com
2rnn@knobbe.com
2sns@knobbe.com
boxnobelbl@knobbe.com