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 IPR2015-01059
`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 IPR2015-01059
`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
`
`
`
`
`
`
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`
`I. INTRODUCTION
`Zimmer Biomet Holdings, Inc. and Zimmer Dental Inc. (collectively,
`“Petitioner”) filed a Petition (Paper 1, “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
`IPR2015-01058, Paper 2.
`
`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
`
`2
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`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.
`
`
`3
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`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
`
`4
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`
`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. 2–3):
`
`Reference
`Otani
`Wagner
`Kaplan
`
`Patent No.
`US 5,049,074
`US 6,095,817
`US 5,282,861
`
`Date
`Sept. 17, 1991
`Aug. 1, 2000
`Feb. 1, 1994
`
`Exhibit No.
`Ex. 1008
`Ex. 1009
`Ex. 1013
`
`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
`
`Otani and Kaplan
`
`Otani, Kaplan, and Wagner
`
`§ 103(a)
`
`§ 103(a)
`
`
`
`Claims Challenged
`1, 2, 5–10, 13–15, 17–23,
`and 25–27
`3, 12, and 24
`
`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.
`
`5
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`
`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
`(“POSITA”)
`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. 11 n.2 (citing Ex. 1002 ¶ 10). Patent Owner does not oppose
`Petitioner’s contention. See Prelim. Resp. 1–12. For purposes of this
`Decision, we adopt Petitioner’s definition of a POSITA.
`
`6
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`
`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
`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. 12–13.
`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. 13 (citing Ex. 1010, 1368; Ex. 1014, 1561). Although
`
`7
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`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
`structure in which the porosity ‘change[s] within the porous structure.’” Id.
`at 14 (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 (of which the ’734 Patent Application is 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 17 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 8. 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 14 (quoting Ex. 1001, 13:16–18).
`
`Further, Petitioner argues that the doctrine of prosecution history
`disclaimer supports its proposed claim construction. Id. at 14–17.
`
`8
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`According to Petitioner, the applicant amended the claims of the ’734 Patent
`Application during prosecution to recite the uniform porosity features, and
`relied on those features to overcome the Examiner’s rejection based on the
`Otani prior art reference. Id. at 15–16. 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 15 (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. 15–16; 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
`
`
`1 We have corrected the quotation to conform with Exhibit 1004, while
`maintaining Petitioner’s emphasis (shown in italics).
`
`9
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`within the porous body from the claimed ‘uniform’ porous body of the
`claims.” Pet. 16 (italics omitted).
`In response, Patent Owner argues that “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.” Prelim. Resp. 7. 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); see id. at 4–5.
`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. 14.
`
`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.
`
`10
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`
`B. 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
`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).
`
`
`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.
`
`11
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`
`In the present case, Petitioner contends that claims 1, 2, 5–10, 13–15,
`17–23, and 25–27 are unpatentable as obvious over Otani and Kaplan and
`that claims 3, 12, and 24 are unpatentable as obvious over Otani, Kaplan,
`and Wagner. See Pet. 3.
`
`1. Overview of Otani
`Otani discloses a dental implant comprising a core material and a
`porous layer formed on the surface of the core material. Ex. 1008, 2:50–53.
`Figure 10 of Otani is reproduced below.
`
`
`
`
`
`Figure 10 illustrates an embodiment of a dental implant. Id. at 6:23–
`24. A titanium rod was ground to form neck portion 14 and porous layer
`base portion 13. Id. at 6:24–26. Neck portion 14 includes hexagonal hole 4
`“for fixing a crown base.” Id. at 6:29–31. Figure 13 of Otani is reproduced
`below.
`
`12
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`
`
`Figure 13 is a cross-sectional view illustrating crown 9 mounted on
`crown base 5, which is received in hole 4 of neck portion 14 (identified by
`element number in Figure 10 but not in Figure 13). Id. at 6:56–66. Also
`shown in Figure 13 are threads 3, porous layer 8, sponge bone 10, dense
`bone 11, and gingival epithelium 12. Id. at 6:27, 56–66. Otani teaches
`making the porous layer by depositing carbon among carbon fibers wound
`on the porous layer base portion. Id. at 6:36–41. The porous layer made in
`this manner has a porosity that “increase[s] towards the surface.” Id. at
`6:50–52.
`
`2. Overview of Kaplan
`Kaplan discloses a porous metal biomaterial for use in dental
`implants. Ex. 1013, 3:43–65. According to Kaplan, “[t]he open cell metal
`structure of the present invention offers highly interconnected, three-
`dimensional porosity that is uniform and consistent, a structure exceptionally
`similar to that of natural cancellous bone.” Id. at 6:1–4. Kaplan’s metal
`structure is made by chemical vapor deposition of a metallic material, such
`
`13
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`as tantalum or niobium, into reticulated (porous) vitreous carbon foam. Id.
`at 7:20–25.
`
`3. Overview of Wagner
`Wagner discloses dental implants having different surface regions.
`Ex. 1009, 7:13–14, Figs. 8, 9. Figure 9 of Wagner is reproduced below.
`
`
`As illustrated in Figure 9, implant 90 has three distinct surface regions
`numbered 100, 102, and 104. Id. at 7:13–14. Surface region 100, which is
`adjacent to engaging interface 96, is composed of non-porous, biocompatible
`metal that is substantially smooth. Id. at 4:65–66 (describing region 28 of
`Figure 1), 7:13–14 (describing surface region 100 as similar to region 28).
`Surface region 102, which is adjacent to region 100, is composed non-
`porous, biocompatible metal that is sufficiently rough to permit bone to
`attach thereto. Id. at 4:42–44 (describing region 26 of Figure 1), 7:19–20
`(describing surface region 102 as similar to region 26). Surface region 104,
`which is adjacent to region 102 and extends to apical end 92, is coated with
`biocompatible material 80. Id. at 6:18–7:2 (describing region 74 of Figures
`6A and 7A), 7:21–22 (describing surface region 104 as similar to region 74).
`
`14
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`
`4. Analysis—Otani and Kaplan
`Petitioner argues that Otani teaches all the limitations of independent
`claims 1, 8, 14, 20, 25, and 27, except the uniform porosity features, for
`which Petitioner relies on the teachings of Kaplan. Pet. 26–57. Petitioner
`contends that a POSITA would have been motivated to modify the dental
`implant of Otani to utilize the uniform, open cell metal structure of Kaplan
`for the benefits taught by Kaplan, including a structure similar to natural
`cancellous bone that promotes bone ingrowth. Pet. 24–25 (citing Ex. 1013,
`6:1–6). Petitioner’s contentions are supported by the Declaration of James
`Earthman, Ph.D. Ex. 1002 ¶¶ 31–34. We are persuaded that Petitioner has
`provided sufficient reasoning to support a legal conclusion of obviousness
`and that, on the record at this stage of the proceeding, the combination of
`Otani and Kaplan teaches all the limitations of independent claims 1, 8, 14,
`20, 25, and 27.
`Patent Owner’s argument that Kaplan “teaches away from the metal
`porous structure claimed in the ’734 Patent” is unpersuasive. Prelim. Resp.
`10. Patent Owner selectively quotes from Kaplan’s discussion of prior art
`and fails to acknowledge or address Kaplan’s disclosure with respect to the
`uniform, open cell metal structure on which Petitioner relies. Compare id. at
`11 (quoting Ex. 1013, 2:63–65: “Many existing metallic biomaterials,
`however, do not easily lend themselves to fabrication into the porous
`structures that are most desirable for bone implants.”), with Pet. 23 (quoting
`Ex. 1013, 6:1–4: “[t]he open cell metal structure of the present invention
`offers highly interconnected, three-dimensional porosity that is uniform and
`consistent, a structure exceptionally similar to that of natural cancellous
`bone.”).
`
`15
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`
`Petitioner also argues persuasively that the combination of Otani and
`Kaplan teaches all the additional limitations of dependent claims 2, 5–7, 9,
`10, 13, 15, 17–19, 21–23, and 26. Pet. 33–55. Patent Owner does not
`challenge Petitioner’s contentions with respect to those dependent claims.
`Prelim. Resp. 1–12.
`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 challenge to claims 1,
`2, 5–10, 13–15, 17–23, and 25–27 as obvious over Otani and Kaplan.
`
`5. Analysis—Otani, Kaplan, and Wagner
`Petitioner asserts that claims 3, 12, and 24 are unpatentable as obvious
`over Otani, Kaplan, and Wagner. Pet. 3. Claim 3 depends from claim 1 and
`recites that “the coronal body includes an exterior surface that is
`microtextured and an exterior surface that is smooth.” Claim 12 depends
`from claim 8 and recites that “an exterior surface of the coronal body
`includes a first region with a smooth outer surface and a second region with
`a microtextured surface that is contiguous and adjacent the first region.”
`Claim 24 depends from claim 20 and recites “the coronal body has an outer
`surface with a first region adjacent a second region in which the first region
`is smooth and the second region is non-porous and micro-textured.”
`Petitioner contends that a POSITA would have been motivated, for
`the purpose of providing “optimum hygiene,” to modify the core material of
`Otani’s dental implant such that an external surface portion at the coronal
`end is non-porous and smooth as taught by Wagner. Id. at 59 (citing Ex.
`1009, 2:41–42; Ex. 1002 ¶ 102); see Ex. 1009, 2:65–3:2, 4:66–5:5. Patent
`Owner does not argue the patentability of dependent claims 3, 12, and 24
`
`16
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`separate from the independent claims. Prelim. Resp. 12. We are persuaded
`that Petitioner has provided sufficient reasoning to support a legal
`conclusion of obviousness and that, on the record at this stage of the
`proceeding, the combination of Otani, Kaplan, and Wagner teaches all the
`limitations of claims 3, 12, and 24.
`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 challenge to claims 3,
`12, and 24 as obvious over Otani, Kaplan, and Wagner.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has
`established a reasonable likelihood of prevailing on its challenges to claims
`1, 2, 5–10, 13–15, 17–23, and 25–27 as obvious over Otani and Kaplan; and
`claims 3, 12, and 24 as obvious over Otani, Kaplan, and Wagner. 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;
`
`17
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`
`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, 2, 5–10, 13–15, 17–23, and 25–27 as obvious over Otani
`and Kaplan; and claims 3, 12, and 24 as obvious over Otani, Kaplan, and
`Wagner.
`
`18
`
`
`
`19
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`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
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
