`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`US ENDODONTICS, LLC,
`Petitioner
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner
`
`Case No. IPR2015-00632
`U.S. Patent No. 8,727,773 B2
`
`PETITION FOR INTER PARTES REVIEW
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronicai!J via the Patent Review Processing System
`
`GOLD STANDARD EXHIBIT 2023
`US ENDODONTICS v. GOLD STANDARD
`CASE IPR2015-01476
`
`
`
`
`
`A. Prior Applications in the ’773 Patent Family Do Not Support Heat
`Treatment in a Reactive Atmosphere
`
`If the Board concludes that the “heat-treating” step of claims 1 and 13 includes
`
`treatment in any environment, including environments reactive with nickel titanium,
`
`then claims 1-17 are not entitled to an effective filing date earlier than April 25, 2012.
`
`The first disclosure, in any application related to the ’773 patent, of heat-
`
`treating in an atmosphere other than one in which nickel titanium is unreactive ap-
`
`peared in the original claims of the’841 app., which was filed on April 25, 2012. The
`
`disclosure of every earlier continuation application is limited to conducting the “heat-
`
`treating” step in an atmosphere consisting essentially of a gas unreactive with nickel
`
`titanium, and no other atmosphere. Every discussion of heat treatment in the earlier
`
`applications, except in the context of optionally heat treating coated instruments (Ex.
`
`1009 at 32), specifies that an unreactive atmosphere is used, such that one of ordinary
`
`skill would understand the unreactive atmosphere to be a requirement, not an option.
`
`Ex. 1002 at ¶¶ 47-58. And earlier applications distinguish coated instruments (includ-
`
`ing ones with an “inherent heat treatment”) from the claimed, heat-treated instru-
`
`ments. Id. at ¶ 52; See, e.g., Ex. 1009 at 33-36. Thus, one of ordinary skill would have
`
`understood the heat-treating step disclosed by every priority application to the ’773
`
`patent to require heat-treating in an unreactive atmosphere. Ex. 1002 at ¶¶ 57-58.5
`
`5
`GSI’s licensee argued in the pending district court litigation that a passing ref-
`
`erence to chemical vapor deposition (CVD) in earlier-filed applications supports
`
`
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`- 16 -
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`
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`ting edge is defined by “helical flutes,” (ii) the shank is “in accordance with ISO
`
`Standard 3630-1,” and (iii) the temperature of treatment is 475-525°C. Regarding (ii),
`
`it would have been obvious to construct the shanks in accordance with ISO Standard
`
`3630-1, whose goal—like that of any standard—was standardization.8 Ex. 1002 at
`
`¶ 140. Regarding (i), files in accordance with the standard would have helical cutting
`
`flutes, and would otherwise satisfy the structural limitations of the shank provided in
`
`step (a). Id.; see Ex. 1016 at 4-5; Ex. 1017 at 4. Regarding (iii), Kuhn discloses heat
`
`treatment at 510°C, among other temperatures. Ex. 1019 at 717. The 510°C treatment
`
`did not produce a transformation temperature above 37°C, nor did the resulting in-
`
`strument show significant permanent deformation—most likely as a result of the
`
`short treatment time. See Ex. 1006 at 113, Fig. 9 (“At the highest ageing temperature,
`
`550°C, there is an initial decrease in Af and then a rapid increase.”). But, because the
`
`“wherein” clause is not limiting (see supra section IV-C-2), claim 13 is also unpatenta-
`
`ble as obvious over Kuhn in view of ISO Standard 3630-1.
`
`
`8
`If the Board determines that claim 13 requires compliance with the 2008 edi-
`
`tion of ISO 3630-1, then claims 13-17 cannot have been described or enabled by the
`
`priority applications filed before 2008. In that case, the priority date of claims 13-17
`
`could be no earlier than December 23, 2010, the filing date of the first application in
`
`the ’773 patent family dated after 2008, and the 2008 edition of ISO 3630-1 would be
`
`prior art. It would have been equally obvious to comply with that edition.
`
`
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`- 32 -
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