Paper 10
`Entered: October 13, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ZIMMER BIOMET HOLDINGS, INC. and
`ZIMMER DENTAL INC.,
`Petitioner,
`
`v.
`
`FOUR MILE BAY, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01058
`Patent 8,684,734 B1
`_______________
`
`
`
`Before BENJAMIN D. M. WOOD, RICHARD E. RICE, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`
`
`RICE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Entered: October 13, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ZIMMER BIOMET HOLDINGS, INC. and
`ZIMMER DENTAL INC.,
`Petitioner,
`
`v.
`
`FOUR MILE BAY, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01058
`Patent 8,684,734 B1
`_______________
`
`
`
`Before BENJAMIN D. M. WOOD, RICHARD E. RICE, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`
`
`RICE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
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`I. INTRODUCTION
`Zimmer Biomet Holdings, Inc. and Zimmer Dental Inc. (collectively,
`“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting an inter partes
`review of claims 1–3, 5–10, 12–15, and 17–27 (“the challenged claims”) of
`U.S. Patent No. 8,684,734 B1 (Ex. 1001, “the ’734 Patent”). Four Mile Bay,
`LLC (“Patent Owner”) filed a Preliminary Response (Paper 8, “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.” 35 U.S.C. § 314(a). Petitioner has shown
`a reasonable likelihood that it would prevail with respect to all of the
`challenged claims, and, accordingly, we institute an inter partes review with
`respect to those claims.
`
`A. Related Proceedings
`We are informed that Petitioner is named in a federal district court
`case involving the ’734 Patent (Four Mile Bay LLC v. Zimmer Holdings, Inc.
`et al., No. 3:14-CV-1300 (N.D. Ind.) (JVB)-(JEM)). Pet. 1; Paper 5, 2. We
`also are informed that Petitioner has filed a second Petition seeking inter
`partes review with respect to the ’734 Patent. Pet. 1; Paper 5, 2; see Case
`IPR2015-01059, Paper 1.
`
`B. The ’734 Patent
`The ’734 Patent, titled “Dental Implant with Porous Body,” issued
`from U.S. Application No. 13/571,375, filed August 10, 2012. Ex. 1001, at
`[54], [21], [22]. The ’734 Patent states that it is a continuation-in-part of
`U.S. Application No. 13/195,872, filed on August 2, 2011, now U.S. Patent
`No. 8,297,974 B1, which is a continuation of a number of earlier-filed
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`applications, including U.S. Application No. 10/375,343, filed on February
`27, 2003, now U.S. Patent No. 7,291,012 (“the ’012 Patent”). Id. at [63].
`Petitioner’s annotated version of Figure 2 of the ’734 Patent is reproduced
`below.
`
`
`
`Pet. 4.
`As illustrated in Petitioner’s annotated Figure 2, dental implant 10,
`which comprises coronal body 14 and bone fixation body 16, is embedded in
`jawbone 34 of a patient. Ex. 1001, 2:34–37, 62–63, Fig. 2. As described in
`the Specification, “bone fixation body 16 has a porous structure that extends
`from the outer surface and throughout the body.” Id. at 3:1–2. The
`Specification further describes the porous structure as follows:
`Preferably, the average pore diameter of body 16 is about
`40 μm to about 800 μm with a porosity from about 45% to
`65%. Further, the interconnections between pores can have a
`diameter larger than 50–60 microns. In short, the geometric
`configuration of the porous structure should encourage natural
`bone to migrate and grow into and throughout the entire body
`16.
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`Id. at 3:11–17. The Specification describes various materials and processes
`for forming the porous structure. Id. at 12:45–13:11. In one example, the
`porous structure is formed by coating a solid or hollow skeleton with a
`polymer, a metal, and/or a metal alloy, for example, coating a carbon
`skeleton with tantalum using a vapor deposition process. Id. at 13:1–4. The
`Specification additionally describes that “the porosity of the porous structure
`can be constant throughout the porous structure or change within the porous
`structure.” Id. at 13:16–18.
`
`C. Illustrative Claim
`Claims 1, 8, 14, 20, 25, and 27 are independent. Claims 2, 3, and 5–7
`depend directly from claim 1; claims 9, 10, 12, and 13 depend directly from
`claim 8; claims 15 and 17–19 depend directly from claim 14; claims 21–24
`depend directly from claim 20; and claim 26 depends directly from claim 25.
`Claim 1 is illustrative of the claimed subject matter, and is reproduced
`below:
`
`A dental implant, comprising:
`1.
`a coronal body having a proximal end with a
`connection shaped as a polygon to receive a dental
`component, having a distal end surface with an
`elongated protrusion
`that extends outwardly
`therefrom, and being formed of solid metal; and
`an elongated cylindrical porous body formed
`as a porous metal structure that is uniform and that
`includes a proximal end that engages the distal end
`surface of the coronal body at an interface,
`wherein the distal end surface of the coronal
`body has a circular shape, the proximal end of the
`porous body has a circular shape, and the solid
`metal of the circular shape of the coronal body
`interfaces with the porous metal structure of the
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`
`circular shape of the porous body at the interface,
`and
`
`wherein the elongated protrusion of the
`coronal body includes a polygonal shape that
`extends into an opening of the porous body such
`that
`the porous metal structure completely
`surrounds and engages an exterior surface of the
`elongated protrusion that extends into the porous
`body.
`
`Id. at 13:49–14:3.
`
`
`
`D. The Asserted References
`Petitioner relies upon the following references (Pet. 3):
`
`Reference
`Lomicka
`Bhaduri
`
`Date
`Publication No.
`US 2011/0123951 A1 May 26, 2011
`US 2002/0106611 A1
`Aug. 8, 2002
`
`Exhibit No.
`Ex. 1006
`Ex. 1007
`
`E. The Asserted Grounds
`Petitioner challenges claims 1–3, 5–10, 12–15, and 17–27 of the ’734
`Patent on the following grounds (Pet. 3):
` Reference(s)
` Basis
`
`Lomicka
`
`Lomicka
`Lomicka and Bhaduri
`
`
`
`§ 102(b)
`
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`1–3, 5–10, 12–15, 17–21,
`23, 24, and 27
`22
`25 and 26
`
`II. ANALYSIS
`We turn now to Petitioner’s asserted grounds of unpatentability to
`
`determine whether Petitioner has met the threshold standard of 35 U.S.C.
`§ 314(a) for instituting review.
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`
`A. Claim Construction
`As a first step in our analysis, we determine the meaning of the
`claims. In an inter partes review, the Board gives claim terms in an
`unexpired patent their broadest reasonable interpretation 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, 1279 (Fed. Cir.
`2015) (“We conclude that Congress implicitly approved the broadest
`reasonable interpretation standard in enacting the AIA” and “the standard
`was properly adopted by PTO regulation.”). Under the broadest reasonable
`interpretation standard, and absent any special definition, claim terms are
`given their ordinary and customary meaning, as would be understood by one
`of ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`definition for a claim term must be set forth with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`Petitioner contends that a person of ordinary skill in the art
`would have had an undergraduate degree in a relevant
`engineering field (e.g., Mechanical Engineering, Materials
`Science Engineering, Biomedical Engineering) with 3–5 years
`of experience with dental implants or similar implants or a
`graduate degree in a relevant field with 1–3 years of experience
`with dental implants or similar implants.
`Pet. 12–13 n.2 (citing Ex. 1002 ¶ 10). Patent Owner agrees. Prelim. Resp. 5
`n.2. For purposes of this Decision, we adopt Petitioner’s definition.
`
`1. “porous” and “porosity”
`The Specification provides the following lexicographical definition of
`“porous”: “By ‘porous,’ it is meant that the material at and under the surface
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`is permeated with interconnected interstitial pores that communicate with the
`surface.” Ex. 1001, 3:3–5. For purposes of this Decision, we regard this
`definition as the broadest reasonable interpretation of the term “porous.”
`The Specification uses the term “porosity” in accordance with its
`ordinary meaning as the ratio or percentage of the volume of interstices of a
`material relative to the volume of its mass. See id. at 3:11–13 (stating that
`the “porosity” of the porous structure of body 16 is preferably “from about
`45% to 65%”); EX. 3001(MERRIAM WEBSTER’S COLLEGIATE DICTIONARY
`(10th ed. 1993)), 907 (porosity: “the ratio of the volume of interstices of a
`material to the volume of its mass”).
`
`2. “a porous . . . structure that is uniform,” “a uniform
`porosity,” and “a uniform porous . . . structure”
`
`Claim 1 recites “a porous . . . structure that is uniform” (Ex. 1001,
`13:55–56); claims 8 and 14 each recite “a uniform porosity” (id. at 14:46–
`47, 15:9–10); and claims 20, 25, and 27 each recite “a uniform porous . . .
`structure” (id. at 16:5, 32, 58–59). Petitioner refers collectively to these
`claim terms as the “uniform porosity features,” and contends that they
`“should be construed together to have the same meaning,” i.e., to require “a
`porous body or structure having a constant porosity throughout the body or
`structure.” Pet. 13–14.
`In support of its proposed claim construction, Petitioner argues that
`“[t]he plain and ordinary meaning of ‘uniform’ is ‘not varying or changing’
`or ‘constant.’” Pet. 14 (citing Ex. 1010, 1368; Ex. 1014, 1561). Although
`the term “uniform” is not used in the Specification outside of the claims,
`Petitioner argues that the Specification supports its construction where it
`“contrasts the porous structure having ‘constant’ porosity with a porous
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`structure in which the porosity ‘change[s] within the porous structure.’” Id.
`at 15 (quoting Ex. 1001, 13:16–18).
`Petitioner acknowledges that the Board reached a different
`interpretation of the term “uniform” during prosecution of the ’012 Patent
`Application (to which the ’734 Patent Application claims priority as a
`continuation-in-part, as noted above), but argues that the Board’s decision in
`the previous case is inapplicable here because the disclosure of the ’734
`Patent Application is different from the disclosure of the ’012 Patent
`Specification:
`The Board previously determined that a “completely uniform
`porous structure” simply refers to a structure in which no part is
`non-porous. Though the construed phrase has similarities to the
`uniform porosity features of the ’734 patent claims, the Board’s
`finding was made in view of the different disclosure of the
`original patent and thus does not apply here.
`
`Id. at 18 n.4 (citing Ex. 1003, 39–40). Petitioner asserts that the Board, in
`the previous case, found no support in the ’012 Patent Application for the
`appellant’s argument that the claim term “completely uniform porous
`structure” required constant porosity and pore size throughout the porous
`structure. Id. at 9. Petitioner argues that the disclosure of the ’734 Patent
`Specification, in contrast, fully supports Petitioner’s proposed construction
`requiring a porous structure having a constant porosity throughout the
`structure. Id. at 15 (quoting Ex. 1001, 13:16–18).
`
`Further, Petitioner argues that the doctrine of prosecution history
`disclaimer supports its proposed claim construction. Id. at 15–17.
`According to Petitioner, the applicant amended the claims of the ’734 Patent
`Application during prosecution to recite the uniform porosity features, and
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`relied on those features to overcome the Examiner’s rejection based on the
`Otani prior art reference. Id. at 16–17. Petitioner particularly relies on the
`following statement in the applicant’s Response to the Examiner’s Office
`Action mailed June 19, 2013:
`Independent claim 21 recites a porous metal structure
`that is uniform. Independent claim 28 recites a porous body
`with a uniform porosity. Independent claim 34 recites a porous
`body with a uniform porosity. Independent claim 40 recites a
`bone fixation body with a uniform porous metal structure. By
`contrast, Otani teaches a dental implant with a porous coating
`that has a “pore distribution such that the interior of the fiber
`material i.e. the core material side, is most dense and the
`porosity gradually increases toward the external surface” (col.
`3, lines 35–38).
`
`Id. at 16 (quoting Ex. 1004, 38–39).1 Petitioner additionally relies on an
`Applicant-Initiated Interview Summary memorializing the Examiner’s
`agreement that “requiring the porous structure to be ‘uniform’” would
`overcome the rejections based on Otani because “the porosity of the porous
`layer [of Otani] changes.” Ex. 1004, 51, cited in Pet. 16; see Ex. 1008,
`3:35–39 (disclosing “a pore distribution such that the interior of the fiber
`material i.e. the core material side, is most dense and the porosity gradually
`increases towards the external surface layer”). Petitioner argues that “the
`Applicant clearly and unmistakably distinguished Otani’s changing porosity
`within the porous body from the claimed ‘uniform’ porous body of the
`claims.” Pet. 17 (italics omitted).
`
`
`1 We have corrected the quotation to conform with Exhibit 1004, while
`maintaining Petitioner’s emphasis (shown in italics).
`
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`
`In response, Patent Owner argues that “the ‘uniform porosity’
`limitations of the bone fixation body” should be construed to mean “a
`porous structure having a porosity that extends throughout the body or
`structure and that does not gradually increase or decrease from the interior of
`the body or structure to the external surface.” Prelim. Resp. 10. Patent
`Owner relies on the disclosure in the Specification of “a completely porous
`structure that extends throughout the entire body from the proximal to distal
`ends” and an “average pore diameter of . . . about 40 μm to about 800 μm
`with a porosity from about 45% to 65%.” Id. at 2–3 (citing Ex. 1001, 2:56–
`58, 3:9–17). Patent Owner also argues that, “based on the prosecution file
`history, uniform porosity (and equivalent terms) means the entire structure is
`porous, the porosity of the porous layer does not change, but there is no
`requirement that porosity or pore size be identical throughout the body.” Id.
`at 7.
`Upon consideration of the competing arguments, we determine at this
`stage of the proceeding that the broadest reasonable interpretation consistent
`with the Specification of “a uniform porosity” is a porosity that is constant
`throughout a porous structure. We similarly determine that the broadest
`reasonable construction consistent with the Specification of both “a porous
`. . . structure that is uniform” and “a uniform porous . . . structure” is a
`porous structure having a constant porosity throughout the structure. As
`Petitioner argues, the Specification contrasts a porous structure having
`constant or uniform porosity with a porous structure in which the porosity
`changes. Ex. 1001, 13:16–18; see Pet. 15.
`
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`
`3. Other claim terms
`At this stage of the proceeding, none of our determinations regarding
`Petitioner’s proposed grounds of unpatentability requires us to interpret
`expressly any other claim term.
`
`B. Asserted Anticipation by Lomicka
`Anticipation requires all features of a claim to be disclosed within a
`single reference. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323,
`1334 (Fed. Cir. 2008) (holding that, for anticipation, “a single prior art
`reference must expressly or inherently disclose each claim limitation”).
`Here, Petitioner contends that claims 1–3, 5–10, 12–15, 17–21, 23, 24, and
`27 are unpatentable as anticipated by Lomicka. See Pet. 3, 23–48.
`
`1. Overview of Lomicka
`Lomicka discloses dental implant 10, which includes head 20, exterior
`portion 12 made of porous material 14, core 16, and apical portion 22.
`Ex. 1006 ¶¶ 16, 17. Figure 2 of Lomicka is reproduced below.
`
`
`Id. at Fig. 2. As shown in Figure 2, exterior portion 12 is placed on or
`around core 16, and apical portion 22 engages core 16 such that exterior
`
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`portion 12 is retained between head 20 and apical portion 22. Id. ¶¶ 16, 17.
`The porous material forming the exterior portion may be a porous tantalum
`structure fabricated to a uniform porosity. Id. ¶¶ 23, 29. Lomicka states:
`[T]he porous tantalum may be fabricated to virtually any
`desired porosity and pore size, whether uniform or varying, and
`can thus be matched with the surrounding natural bone in order
`to provide an improved matrix for bone in-growth and
`mineralization.
`
`Id. ¶ 29.
`
`2. Dispute over Effective Filing Date
`Petitioner contends that the uniform porosity features of the
`challenged claims were first introduced in the ’734 Patent Application and,
`therefore, the earliest-possible effective filing date of the challenged claims
`is August 10, 2012, which is the actual filing date of the ’734 Patent
`Application. Pet. 20 (citing Ex. 1004, 122:7–8; Ex. 1003, 160–174); see
`35 U.S.C. § 120; Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed.
`Cir. 1997) (holding that “to gain the benefit of the filing date of an earlier
`application under 35 U.S.C. § 120, each application in the chain leading
`back to the earlier application must comply with the written description
`requirement”). Petitioner argues:
`The ’734 patent explicitly states that “the porosity of the porous
`structure can be constant throughout the porous structure.” Ex.
`1001 at 13:16–18. By contrast, the earlier-filed applications
`describe a bone fixation body that is “completely porous,” but
`with varying pore diameter and porosity throughout. See e.g.,
`Ex. 1003 at 165 (“Preferably, the average pore diameter of body
`16 is about 40μm to about 800μm with a porosity from about
`45% to 65%.”). The earlier applications do not describe or
`show a bone fixation body with the “uniform porosity” features.
`
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`See generally Ex. 1003 at 160–174, Ex. 1011 at 94–107, Ex.
`1012 at 238–252; see also Ex. 1002 at ¶ 28.
`
`Pet. 20. At this stage of the proceeding, we are persuaded by Petitioner’s
`arguments that the earliest-possible effective filing date of the challenged
`claims is August 10, 2012.
`Patent Owner has not persuaded us that the ’012 Patent Application,
`to which the ’734 Patent claims priority (see supra Section I.B), describes
`the uniform porosity features, as construed above. Prelim. Resp. 14–16; see
`supra Section II.A.2. Patent Owner’s argument that the ’012 Patent
`Application “describ[es] the size and shape of the porous structure as
`emulating the size and shape of the porous structure of natural bone” is
`insufficient to show that the porous structure has a constant porosity
`throughout the structure as required by the claims. Prelim. Resp. 15.
`Further, Patent Owner’s argument that Figures 1 and 2 of the ’012 Patent
`Application show the uniform porosity features also is unpersuasive. See
`id.; see also Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d
`951, 956 (Fed. Cir. 2000) (holding 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”).
`
`3. Anticipation Analysis
`Petitioner contends that Lomicka, which was published on May 26,
`2011, is prior art to the challenged claims under 35 U.S.C. § 102(b). Pet. 21.
`On the record at this stage of the proceeding, we agree. As discussed above,
`Patent Owner has not persuaded us that the challenged claims are entitled to
`the benefit of the earlier filing date of the ’012 Patent Application. See
`supra Section II.B.2; Prelim. Resp. 8.
`
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`Petitioner argues that Lomicka discloses the limitations of each of
`claims 1–3, 5–10, 12–15, 17–21, 23, 24, and 27. Pet. 23–48. As to claim 1,
`for example, Petitioner argues that Lomicka’s implant 10 has a “coronal
`body” comprising head 20 and core 16 and “an elongated cylindrical porous
`body” comprising exterior portion 12 and porous tantalum portion 40
`fabricated to a uniform porosity. Id. at 24–26. With respect to the first
`“wherein” clause of claim 1, Petitioner argues that apical end surface 28 of
`head 20 has a “circular shape,” coronal end 32 of exterior portion 12 has a
`“circular shape,” and the solid metal of the circular shape of head 20
`“interfaces” with the porous metal structure 40 of the circular shape of
`exterior portion 12. Id. at 26–27. With respect to the second “wherein”
`clause of claim 1, Petitioner argues that core 16 may have a “polygon shape”
`that “extends into” bore 30 of exterior portion 12 such that interior wall 62
`of exterior portion 12 “engages” core 16. Id. at 28–29.
`Having considered the Petition, the Preliminary Response, and the
`evidence of record, we are persuaded that Petitioner has demonstrated a
`reasonable likelihood of prevailing with respect to its challenge to claims 1–
`3, 5–10, 12–15, 17–21, 23, 24, and 27 as anticipated by Lomicka.
`
`C. Asserted Obviousness
`A claim is unpatentable for obviousness “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 said subject
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`matter pertains.” 35 U.S.C. § 103(a).2 A patent claim composed of several
`elements, however, is not proved obvious merely by demonstrating that each
`of its elements was known, independently, in the prior art. KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418 (2007). In analyzing the obviousness of a
`combination of prior art elements, it can be important to identify a reason
`that would have prompted one of skill in the art to combine the elements in
`the way the claimed invention does. Id. A precise teaching directed to the
`specific subject matter of a challenged claim is not necessary to establish
`obviousness. Id. Rather, “any need or problem known in the field of
`endeavor at the time of invention and addressed by the patent can provide a
`reason for combining the elements in the manner claimed.” Id. at 420. The
`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, when in evidence. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`In the present case, Petitioner contends that claim 22 is unpatentable
`as obvious over Lomicka and that claims 25 and 26 are unpatentable as
`obvious over Lomicka and Bhaduri. See Pet. 3.
`
`
`2 Pub. L. No. 112-29, effective March 16, 2013, changed § 103. Because the
`’077 Patent has an effective filing date before March 16, 2013, we have
`quoted the unchanged version of § 103.
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`1. Claim 22 as Obvious over Lomicka
`Petitioner asserts that claim 22 of the ’734 Patent would have been
`obvious over Lomicka. Pet. 48–49. Claim 22 recites: “The dental implant
`of claim 20, wherein the coronal body is fabricated independently from the
`bone fixation body and is subsequently fused to the bone fixation body.”
`Ex. 1001, 16:13–15.
`Petitioner acknowledges that Lomicka does not disclose fusing
`exterior portion 12 to head 20, but argues that one skilled in the art would
`have been motivated to weld or fuse apical end surface 28 of head 20 to
`coronal end 32 of exterior portion 12 in order “to prevent rotation of exterior
`portion 12 relative to head 20.” Pet. 48 (citing Ex. 1002 ¶ 80). In support of
`that rationale, Petitioner’s declarant, James Earthman, Ph.D., testifies that
`preventing relative rotation “minimizes wear damage and fatigue at the
`interface between the exterior portion 12 and head 20, prolonging the life of
`the implant.” Ex. 1002 ¶ 80. Dr. Earthman also testifies that “[w]elding or
`fusing two components was well-known and within the skill of [the] art at
`the time of the alleged invention.” Id.
`Having considered the Petition, the Preliminary Response, and the
`evidence of record, we are persuaded that Petitioner has demonstrated a
`reasonable likelihood of prevailing with respect to its challenge to claim 22
`as obvious over Lomicka.
`
`2. Claims 25 and 26 as Obvious over Lomicka and Bhaduri
`Petitioner asserts that claims 25 and 26 of the ’734 Patent would have
`been obvious over Lomicka and Bhaduri. Pet. 49–52. For essentially the
`same reasons as discussed above regarding Lomicka, we are persuaded at
`this stage of the proceeding that Bhaduri (which was published on August 8,
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`IPR2015-01058
`Patent 8,684,734 B1
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`2002) is prior art to the challenged claims under 35 U.S.C. § 102(b). See
`supra Sections II.B.2 and II.B.3; Pet. 21.
`Claim 25 recites, inter alia, “machining a coronal body of a dental
`implant that is formed of solid metal to include a proximal end with a
`connection shaped to receive a dental component and a distal end surface
`with an elongated protrusion that extends outwardly therefrom.” Ex. 1001,
`16:25–29. Claim 26 depends from claim 25 and recites “fusing the porous
`body to the coronal body after the porous body is separately fabricated from
`the coronal body.” Id. at 48–50.
`Petitioner argues that Lomicka discloses all limitations of claim 25
`except “machining” head 20, and that Bhaduri remedies that deficiency. Pet.
`49–50. Bhaduri teaches machining dental implants out of titanium and
`titanium alloys. Ex. 1007 ¶ 6. Petitioner’s declarant, Dr. Earthman, testifies
`that “machining head 20 would have amounted to nothing more than
`applying known techniques to a known method to yield predictable results.”
`Ex. 1002 ¶ 83. Petitioner argues that Lomicka and Bhaduri also teach the
`limitations of claim 26, for the reasons discussed above in connection with
`claims 22 and 25. Pet. 52.
`Having reviewed the Petition, the Preliminary Response, and the
`evidence of record, we are persuaded that Petitioner has demonstrated a
`reasonable likelihood of prevailing with respect to its challenges to claims
`25 and 26 as obvious over Lomicka and Bhaduri.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has
`established a reasonable likelihood of prevailing on its challenges to: claims
`1–3, 5–10, 12–15, 17–21, 23, 24, and 27 as anticipated by Lomicka; claim
`
`17
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`IPR2015-01058
`Patent 8,684,734 B1
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`22 as obvious over Lomicka; and claims 25 and 26 as obvious over Lomicka
`and Bhaduri. The Board has not made a final determination concerning
`patentability of any of the challenged claims.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that an inter partes review of claims 1–3, 5–10, 12–15,
`and 17–27 of the ’734 Patent is granted;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), an inter
`partes review of the ’734 Patent is hereby instituted commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; and
`FURTHER ORDERED that the trial is limited to the following
`grounds: claims 1–3, 5–10, 12–15, 17–21, 23, 24, and 27 as anticipated by
`Lomicka; claim 22 as obvious over Lomicka; and claims 25 and 26 as
`obvious over Lomicka and Bhaduri.
`
`18
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`IPR2015-01058
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`PETITIONER:
`Naveen Modi
`Paromita Chatterjee
`Paul Hastings LLP
`naveenmodi@paulhastings.com
`mitachatterjee@paulhastings.com
`
`PATENT OWNER:
`Patrick Richards
`Richards Patent Law P.C.
`patrick@richardspatentlaw.com
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