By Joseph Herndon —

Nobel Biocare Services AG appealed from the decision of the U.S. Patent and Trademark Office's Patent Trial and Appeal Board in an inter partes review (IPR) holding claims 1–5 and 19 of U.S. Patent No. 8,714,977 invalid based on an ABT Catalog.  Many issues were presented, and here, we review the opinion with respect to whether the ABT Catalog qualifies as a prior art printed publication under pre-AIA 35 U.S.C. § 102(b).

This case started on October 27, 2014, by Nobel filing a complaint with the U.S. International Trade Commission (ITC) for investigation of Instradent USA, Inc.'s Drive CM dental implants as allegedly violating 19 U.S.C. § 1337 by reason of importation of an implant product that infringes the '977 patent and U.S. Patent No. 8,764,443.  The ITC found claims of the '977 patent anticipated by an ABT "Product Catalog" with the date "March 2003" on the cover.  However, later, the ITC issued a Commission Opinion which determined that Instradent had failed to show by clear and convincing evidence that the ABT Catalog is prior art under § 102(b).

In the interim, on August 20, 2015, Instradent petitioned for IPR of claims 1–7, 9, and 13–20 of the '977 patent with invalidity challenges based on the ABT Catalog.  The Board determined that a preponderance of the evidence establishes that the ABT Catalog qualifies as a prior art printed publication under pre-AIA 35 U.S.C. § 102(b), and ultimately found the claims invalid.

Thus, the appeal largely turns on whether the ABT Catalog is prior art under § 102(b).

The ABT Catalog

In or about the early 1990s, named inventor Fromovich founded Alpha-Bio Tech Ltd. ("ABT"), which sold dental implants and related goods.  He also served as ABT's CEO.  In his capacity at ABT, Fromovich conducted dentist trainings and attended industry trade shows and conferences, including the International Dental Show (IDS) Conference held in Cologne, Germany.  At the IDS Conference, dental manufacturers would showcase their products and distribute written materials describing their products.  Nobel acquired ABT and its intellectual property rights in 2008.

The ABT Catalog included a data of March 2003 on its cover and discloses dental implant screws and other details of implants as claimed in the '977 patent.  The ABT Catalog was produced by Instradent and alleged to be prior art to the '977 patent.

Fromovich testified about the ABT Catalog during the ITC proceedings.  When asked why the catalog says "March 2003" on the cover, Fromovich indicated that he "estimated" it was because it was created in the end of March 2003 for the IDS in Cologne, Germany.  Fromovich testified that ABT had a small booth and he attended the March 2003 IDS Conference.  According to Fromovich, the IDS Conference is "one of the biggest for distribution in Europe" with possibly a thousand attendees.  He further testified that he did not recall if he brought the ABT Catalog to the conference, but that it was "unlikely."  He explained that if he brought the ABT Catalog, it would have been a "small amount" of catalogs because it would have been a first version of a 62-page document, and ABT did not send a shipment so it would have had to fit in his luggage.

Fromovich also testified that the ABT Catalog was used in connection with training courses and provided to attendees without requiring them to sign a confidentiality agreement.

The parties dispute whether the ABT Catalog qualifies as a "printed publication" under pre-AIA § 102(b).  Whether a reference qualifies as a "printed publication" is a legal conclusion based on underlying factual findings, and the underlying factual findings include whether a reference was publicly accessible.  The case law indicates that a reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.

In addressing public accessibility of the ABT Catalog, the Board considered evidence that had been presented to the ITC, including Fromovich's testimony, and new evidence not considered by the ITC, including the declarations and deposition testimony of Yechiam Hantman and Zvi Chakir.  In March 2003, Hantman and Chakir coowned Chakir Implants, Ltd., a dental supply distributor located in Israel.  Hantman was unable to attend the conference, and he requested that Chakir collect catalogs from competitors at the 2003 IDS Conference and give them to him upon his return.  Hantman's declaration stated:  "Based upon my review of the attached materials and my specific recollections of conversations with customer [sic] in later 2002 and early 2003, and examination of the 2003 [ABT] Catalog after receiving it after the IDS trade show, I am certain that the 2003 [ABT] Catalog was publically accessible to the dental industry, including competitors, in March 2003, after the IDS show that year."

Chakir's declaration stated that he collected catalogs and other materials from competitors, including ABT at the 2003 IDS Conference and gave the materials relating to dental implants to Mr. Hantman.

The Federal Circuit found that substantial evidence supported the Board's finding that the ABT Catalog was publicly accessible prior to the critical date.  The Federal Circuit credited Chakir and Hantman's testimony that Chakir obtained a copy of the ABT Catalog at the March 2003 IDS Conference and that Hantman retained that copy in his records thereafter.  Hantman's declaration included excerpts of his copy of the ABT Catalog taken from his files.  The Board found that Hantman's copy of the ABT Catalog and the copy offered as prior art by Instradent in the IPR had identical pages except for some handwriting on the cover of Hantman's copy.  Nobel did not dispute this finding.

Additionally, the ABT Catalog has the date "March 2003" on its cover.  Although the ABT Catalog's date is not dispositive of the date of public accessibility, its date is relevant evidence that supports the Board's finding of public accessibility at the March 2003 IDS Conference.

Moreover, the Board found, and Nobel did not dispute on appeal, that the ABT Catalog is the type of document normally intended for public dissemination.  It is undisputed on appeal that the ABT Catalog is the type of document intended for public dissemination, and it bears no designations, such as "draft" or "confidential," that might suggest that it was not intended for public distribution.

The Federal Circuit gave much weight to Chakir's testimony regarding his habitual practice in obtaining product literature, including brochures, at the IDS Conference.  Nobel's suggestion that Chakir could have obtained the ABT Catalog confidentially or under other circumstances that would not legally constitute public accessibility lacked any evidentiary basis.

Additionally, Nobel pointed to no evidence that ABT ever distributed the ABT Catalog with an expectation that it would be kept confidential or not disseminated.

The Federal Circuit addressed the sufficiency of the corroboration of the testimony and found the testimony of Messrs. Hantman and Chakir not only to be corroborated by each other, but also by a) the actual copy of the ABT Catalog, dated March 2003, submitted as evidence and b) Dr. Fromovich's testimony that ABT operated a booth at the March 2003 IDS conference.

The fact that Hantman had a copy of the ABT Catalog in his files further corroborates his testimony that he obtained a copy of the same document asserted to be prior art in the IPR.

Thus, although much of the evidence relied upon was based on testimony of biased witnesses regarding events that took place over 10-15 years ago, the Federal Circuit found no reason that the testimony was problematic.  As a result, the ABT Catalog was found to be prior art.

Nobel Biocare Services AG v. Instradent USA, Inc. (Fed. Cir. 2018)
Panel: Chief Judge Prost and Circuit Judges Lourie and Chen
Opinion by Circuit Judge Lourie