UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`US ENDODONTICS, LLC,
`Petitioner
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner
`
`Case No. IPR20 15-00632
`U.S. Patent No. 8,727,773 B2
`
`PETITIONER'S REQUEST FOR PARTIAL REHEARING OF THE
`BOARD'S DECISION INSTITUTING 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 Electronically via the Patent Review Processing System
`
`GOLD STANDARD EXHIBIT 2016
`US ENDODONTICS v. GOLD STANDARD
`CASE PGR2015-00019
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`US ENDODONTICS, LLC,
`Petitioner
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner
`
`Case No. IPR20 15-00632
`U.S. Patent No. 8,727,773 B2
`
`PETITIONER'S REQUEST FOR PARTIAL REHEARING OF THE
`BOARD'S DECISION INSTITUTING 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 Electronically via the Patent Review Processing System
`
`GOLD STANDARD EXHIBIT 2016
`US ENDODONTICS v. GOLD STANDARD
`CASE PGR2015-00019
`
`
`
`Table of Contents
`
`Page(s)
`
`
`I.
`II.
`
`STANDARD FOR REHEARING ................................................................. 2
`THE EFFECTIVE FILING DATE OF THE ’773 PATENT ......................... 3
`A. US Endo’s Petition ............................................................................... 3
`B.
`Patent Owner’s Preliminary Response ................................................. 5
`C.
`The Board’s Institution Decision ......................................................... 7
`III. THE BOARD SHOULD GRANT PARTIAL REHEARING ....................... 7
`A.
`The Board Abused Its Discretion in Concluding that the
`Challenged Claims Are Entitled to Claim Priority to the PCT
`Application ........................................................................................... 7
`1.
`The PCT Application’s Disclosure of “Coating” Does
`Not Show Possession of the Claimed Heat-Treating in an
`Atmosphere Reactive with Nickel-Titanium Shank .................. 7
`The Board Overlooked Petitioner’s Argument that Earlier
`Applications Do Not Show Possession of the
`Combination of Elements Recited in the Challenged
`Claims ...................................................................................... 14
`The Board Abused its Discretion by Not Instituting Grounds 1
`Through 4 on the Basis that Luebke 2008 and Gao Are Not
`Prior Art .............................................................................................. 14
`IV. CONCLUSION ............................................................................................. 15
`
`2.
`
`B.
`
`i
`
`
`
`
`Table of Authorities
`
`
`Page(s)
`
`
`Cases
`
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) ............................................................ 10
`
`Daciel Corp. v. Celanese Int’l Corp.,
`IPR2015-00173, Paper 15 ..................................................................................3, 9
`
`McDavid, Inc. v. Stirling Mouldings Ltd.,
`892 F. Supp. 2d 970 (N.D. Ill. 2012) ................................................................... 10
`
`Merial Ltd. v. Virbac,
`IPR2014-01279, Paper 18 ..................................................................................3, 9
`
`Statutes
`
`35 U.S.C. § 112 .......................................................................................................... 4
`
`Rules
`
`37 C.F.R. § 42.71(c) ...............................................................................................1, 3
`
`37 C.F.R. § 42.71(d) ..............................................................................................1, 3
`
`
`
`ii
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`
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`
`
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`Pursuant to 37 C.F.R. § 42.71(c) and (d), US Endodontics, LLC
`
`(“Petitioner” or “US Endo”) respectfully requests partial rehearing of the Board’s
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`August 5, 2015 decision instituting Inter Partes Review in IPR2015-00632 (Paper
`
`29). In particular, US Endo requests rehearing of the Board’s determinations that
`
`(1) U.S. Patent No. 8,727,773 (“the ’773 patent”) is “entitled to an effective filing
`
`date that is the filing date of the PCT application,” and (2) US Endo has not shown
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`a reasonable likelihood of prevailing on proposed grounds of unpatentability 1
`
`through 4 because the Luebke 2008 and Gao references are not properly
`
`considered prior art. Paper 29 at 13-15.
`
`The Petition provides two reasons why the ’773 patent claims are not
`
`entitled to priority to earlier-filed applications: (1) the earlier applications do not
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`demonstrate that the inventor possessed “heat-treating” in an atmosphere reactive
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`with the nickel-titanium (“Ni-Ti”) shank, and (2) the earlier applications do not
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`disclose the claimed combination of elements. Paper 2 at 15-20.
`
`The Board rejected the first argument, finding that the PCT application’s
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`disclosure of applying a titanium-nitride coating to a shank by physical vapor
`
`deposition (“PVD”) showed possession of heat-treating in a reactive atmosphere.
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`In doing so, the Board was apparently misled by Patent Owner’s arguments
`
`regarding the nature and extent of the PCT application’s disclosure of such PVD
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`coating process. That disclosure does not describe heat-treating in a reactive
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`- 1 -
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`atmosphere at a temperature within the ranges recited in the ’773 patent claims. It
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`discloses no temperature whatsoever for the PVD coating procedure. Thus, even if
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`the PCT application discloses heat-treating in a reactive atmosphere, which
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`Petitioner disputes, it does not disclose the claimed heat-treating in a reactive
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`atmosphere, which requires heat-treating at temperatures from at least 400ºC.
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`Moreover, the reaction that Patent Owner asserts occurs during the PVD
`
`coating process is between nitrogen and a titanium rod used for the coating; the
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`reaction is not with the Ni-Ti shank itself. It therefore does not expand the PCT
`
`application’s explicitly limited disclosure of heat-treatment in an atmosphere
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`“unreactive with the shank.” Because the claimed “heat-treating” encompasses,
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`under the broadest reasonable construction standard, heat-treating in “any
`
`atmosphere,” including one reactive with the shank, the PCT application’s
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`disclosure does not demonstrate that the inventor possessed the full scope of the
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`’773 patent claims.
`
`Regarding Petitioner’s second priority date argument—i.e., the earlier
`
`applications do not disclose the claimed combination of elements—the Board
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`apparently overlooked this argument altogether.
`
`I.
`
`STANDARD FOR REHEARING
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`A party may seek rehearing of a Board decision by filing a request that
`
`identifies
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`the “matters
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`the party believes
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`the Board misapprehended or
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`- 2 -
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`overlooked.” 37 C.F.R. § 42.71(d). In considering a request to rehear a decision to
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`institute a trial, the Board reviews the decision for an abuse of discretion. 37
`
`C.F.R. § 42.71(c). “An abuse of discretion may arise if a decision is based on an
`
`erroneous interpretation of law, if a factual finding is not supported by substantial
`
`evidence, or if an unreasonable judgment is made in weighing relevant factors.”
`
`Daciel Corp. v. Celanese Int’l Corp., IPR2015-00173, Paper 15 at 2 (citations
`
`omitted). The Board also can find it abused its discretion under Rule 42.71(c)
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`merely upon “recogniz[ing] that [it has] misapprehended or overlooked a
`
`significant fact.” Merial Ltd. v. Virbac, IPR2014-01279, Paper 18 at 7-8.
`
`II. THE EFFECTIVE FILING DATE OF THE ’773 PATENT
`A. US Endo’s Petition
`
`Petitioner provided two reasons why Patent Owner cannot demonstrate that
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`claims 1-17 (the “Challenged Claims”) of the ’773 patent are entitled to an
`
`effective filing date earlier than April 25, 2012, the filing date of the U.S. Patent
`
`Appl. No. 13/455,841 (“the ’841 application”). Paper 2 at 15-20.
`
`First, earlier applications related to the ’773 patent do not demonstrate that
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`the inventor possessed the claimed “heat-treating” step occurring in an atmosphere
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`other than one that is unreactive with the Ni-Ti shank. Id. at 16-18. The two
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`independent claims of the ’773 patent, claims 1 and 13, recite “heat-treating the
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`entire shank” and “heat-treating the entire instrument shank,” respectively. Ex.
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`- 3 -
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`1001. The Board and the parties all agreed that the broadest reasonable
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`construction of these terms “permit the step of heat-treating the shank in any
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`atmosphere or environment.” Paper 29 at 9-10; Paper 2 at 6-7; Paper 9 at 10. At
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`the same time, however, the Board noted that “the Specification of the ’773 patent
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`describes heat treating of an endodontic instrument’s shank only in connection
`
`with an atmosphere that is ‘unreactive with the shank.’” Paper 29 at 9-10
`
`(emphasis added) (citing Ex. 1001 at 2:62–65).
`
`Based on the repeated and consistent disclosure of heat-treating taking place
`
`exclusively in an atmosphere that is unreactive with the shank, Petitioner argued
`
`that the earlier applications did not demonstrate possession of the claimed heat-
`
`treating (which requires heat-treating at from at least “400ºC”) occurring in any
`
`other atmosphere. Paper 2 at 16. Petitioner also noted that the claims of the ’773
`
`patent “represent the first disclosure, in any of the applications to which the ’773
`
`[patent] claims priority, of heat treatment in anything other than ‘an atmosphere
`
`consisting essentially of a gas unreactive with the shank.’” Id. at 7 n.3.
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`Accordingly, Petitioner argued that the earlier applications lack support
`
`under 35 U.S.C. § 112 for heat treatment in an atmosphere reactive with the shank,
`
`and therefore the Challenged Claims (which encompass heat-treating in such an
`
`atmosphere) do not have priority to the filing date of any earlier applications. See
`
`id. at 15-17. The Petition also explains that during prosecution of an earlier
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`- 4 -
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`application related to the ’773 patent, the applicant disparaged heat-treating in
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`atmospheres reactive with the Ni-Ti shank, further demonstrating his lack of
`
`possession of heat-treating in a reactive atmosphere. Id. at 17-19.
`
`The second reason the Challenged Claims do not have an effective filing
`
`date earlier than the filing date of the ’841 application is that the earlier
`
`applications do not disclose the combination of elements recited in the Challenged
`
`Claims, even if the earlier applications disclose the elements individually. See id.
`
`at 19-20. The only treatment conditions disclosed in each of the earlier
`
`applications that are shown to result in the claimed permanent deformation are heat
`
`treatment at 500°C for 75 minutes in an argon atmosphere. Id. Therefore, the
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`earlier applications do not describe achievement of the claimed permanent
`
`deformation using heat treatments recited in the Challenged Claims, including their
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`claimed time and temperature ranges. Id.
`
`Based on its effective filing date arguments, US Endo included grounds of
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`unpatentability based on the U.S. Patent Appl. Publ. Nos. 2008/0032260 A1
`
`(“Luebke 2008”) and 2011/0271529 A1 (“Gao”). Paper 2 at 21-28.
`
`B.
`
`Patent Owner’s Preliminary Response
`
`In response to Petitioner’s effective filing date arguments, Patent Owner
`
`asserts that the PCT application provides support for the claimed heat-treating in a
`
`reactive atmosphere. The Preliminary Response states that the PCT application
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`- 5 -
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`discloses “superelastic nickel titanium files that were coated by heat-treatment at
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`500 ºC in a non-inert, or reactive, atmosphere—nitrogen gas and titanium.” Paper
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`9 at 16 (emphasis added). This is plainly wrong, as explained below.
`
`Based on its mischaracterization of the PCT application’s disclosure, Patent
`
`Owner repeatedly asserts that the application discloses heat-treating in a “reactive
`
`atmosphere.” Id.at 16 (“non-inert, or reactive, atmosphere—nitrogen gas and
`
`titanium”); 17 (“coated files heated in the reactive nitrogen/ titanium atmosphere . .
`
`. coating process is performed in a reactive atmosphere . . . heat-treatment in
`
`reactive atmospheres”); 18 (“reactive atmosphere (nitrogen and titanium)”); 18-19
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`(“heat-treating a superelastic nickel titanium instrument shank in a reactive
`
`atmosphere”); 20 (“the PCT application describes heat treatment in a reactive
`
`atmosphere”); and 21 (“the PCT application . . . identifies other heat treatment
`
`methods that utilize reactive atmospheres”). But, Patent Owner never contends
`
`that the PCT application discloses heat-treating in an atmosphere that is reactive
`
`with the Ni-Ti shank. As explained below, reactivity with the shank is the relevant
`
`issue. The fact that the coating disclosed by the PCT application may take place in
`
`a reactive atmosphere, i.e., one in which nitrogen gas reacts with the titanium
`
`material to be deposited onto the shank via a coating process (which titanium
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`material is separate and distinct from the Ni-Ti shank) does not demonstrate that
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`the atmosphere is reactive with the Ni-Ti shank itself.
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`- 6 -
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`C. The Board’s Institution Decision
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`The Board determined “that the ’773 patent is entitled to an effective filing
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`date that is the filing date of the PCT application.” Paper 29 at 14. In reaching
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`that conclusion, the Board relied on Patent Owner’s misrepresentation of what the
`
`PCT application discloses. See id. at 13. Specifically, the Board quotes Patent
`
`Owner’s misrepresentation in the Preliminary Response that the PCT application
`
`discloses a coating procedure involving heat-treating at 500ºC in a non-inert, or
`
`reactive, atmosphere—nitrogen gas and titanium, and then “observe[s] that US
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`Endo seemingly recognizes that the PCT application describes a heat treatment
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`process performed in an environment that is reactive.” Id. (emphasis added).
`
`Based on its filing date determination, the Board dismissed proposed
`
`grounds 1 through 4 based on Luebke 2008 and Gao because those references “are
`
`not considered properly as prior art to the ’773 patent.” Paper 29 at 14-15.
`
`III. THE BOARD SHOULD GRANT PARTIAL REHEARING
`A. The Board Abused Its Discretion in Concluding That the
`Challenged Claims Are Entitled to Claim Priority to the PCT
`Application
`
`1.
`
`The PCT Application’s Disclosure of “Coating” Does Not
`Show Possession of
`the Claimed Heat-Treating
`in an
`Atmosphere Reactive with the Nickel-Titanium Shank
`
`The Board should reconsider its effective filing date determination because
`
`it apparently did not appreciate that: (1) the 2005 PCT application does not
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`- 7 -
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`disclose heat treatment of the shank “at 500ºC in a non-inert, or reactive,
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`atmosphere—nitrogen gas and titanium,” or (2) even if the 2005 PCT application
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`supports a disclosure of a titanium-nitride, PVD coating process that involves a
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`reaction between nitrogen and the titanium material used to coat the shank, such
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`disclosure is not a disclosure of performing the claimed heat-treating step in an
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`atmosphere reactive with the Ni-Ti shank.
`
`(a) The 2005 PCT application does not disclose any
`treatment conditions for the PVD coating process,
`including the temperature at which it is performed
`
`The Institution Decision correctly describes the written description standard
`
`
`
`that an earlier application in the ’773 patent family must satisfy in order for the
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`Challenged Claims to have priority to it:
`
`To satisfy 35 U.S.C. § 112, the written description must convey with
`reasonable clarity to those skilled in the art that the inventor was in
`possession of the claimed invention. See Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555, 1563–64 (Fed. Cir. 1991). One shows “possession” of
`the invention by describing the invention using such descriptive
`means as words, structures, figures, diagrams, formulas, etc. that fully
`set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107
`F.3d 1565, 1572 (Fed. Cir. 1997).
`Paper 29 at 14. Therefore, in finding that the claims have priority to the PCT
`
`application, the Board must have concluded that such application describes the
`
`claimed invention recited in the Challenged Claims. However, the substantial
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`- 8 -
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`evidence does not support that finding. See Daciel Corp., IPR2015-00173, Paper
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`15 at 2; see also Merial Ltd, IPR2014-01279, Paper 18 at 7-8 (overlooking or
`
`misapprehending a significant fact amounts to an abuse of discretion).
`
`
`
`The PCT application discloses using PVD with an inherent heat-treatment,
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`to apply a titanium-nitride “coating” to a nickel titanium shank, and shows bend-
`
`test permanent deformation data for such coated instruments. Ex. 2003 ¶¶ 33, 36-
`
`40, Fig. 6. That is the entirety of that application’s disclosure related to such PVD
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`coating. The application does not provide any disclosure related to the treatment
`
`conditions for the PVD coating; e.g., there is no disclosure of the temperature at
`
`which the PVD coating is applied. See Ex. 2003 ¶¶ 33, 36-40. Therefore, contrary
`
`to the Patent Owner’s assertions and the Board’s apparent understanding, the PCT
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`application does not disclose applying the PVD coating at 500°C, or any specific
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`temperature for that matter, nor does it disclose applying the PVD coating “in a
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`non-inert, or reactive, atmosphere—nitrogen gas and titanium.” See Paper 29 at
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`13. The only basis for those treatment parameters is the inventor’s recent, self-
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`interested testimony in the pending district court litigation in which the exclusive
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`licensee of his company, Patent Owner GSI, has asserted the ’773 patent against
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`Petitioner. See Paper 9 at 16-17 (citing Exs. 2001 and 2004); Paper 4 at 3.
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`As such, even if the PCT application supports a disclosure of a titanium-
`
`nitride, PVD coating process with an inherent heat treatment in which a reaction
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`- 9 -
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`occurs between nitrogen and the titanium material used to coat the shank, the PCT
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`application does not show possession of heat-treating a shank in the claimed
`
`temperature range in an atmosphere reactive with the shank (i.e., from 400°C up to
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`the melting point of Ni-Ti, from 400°C to 575°C, from 475°C to 525°C, or 500°C).
`
`The Board’s misunderstanding
`
`that
`
`the PCT application discloses
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`performing the coating procedure within the claimed temperature ranges, i.e., at
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`500°C, likely stems from Patent Owner’s misrepresentation in its Preliminary
`
`Response. Paper 9 at 16. The Board apparently relied on this misrepresentation in
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`finding written description support in the PCT application. See Paper 29 at 13-14.
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`On the other hand, if the Board appreciated that the temperature and
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`atmospheric details of the coating process were not disclosed in the PCT
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`application, but still considered that information in finding priority, doing so was
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`an abuse of discretion. See McDavid, Inc. v. Stirling Mouldings Ltd., 892 F. Supp.
`
`2d 970 (N.D. Ill. 2012) (granting summary judgment for lack of written description
`
`and finding inventor testimony concerning what “he subjectively considered … at
`
`the time of his initial patent application” to be “immaterial if [the inventor] did not
`
`also disclose his ideas in the specification, for ‘the hallmark of written description
`
`is disclosure’ and ‘the test requires an objective inquiry into the four corners of the
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`specification from the perspective of a person of ordinary skill in the art’” (quoting
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`Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc))).
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`- 10 -
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`(b)
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`Patent Owner did not assert, and the Board did not find,
`that the 2005 PCT application discloses heat-treating in
`an atmosphere reactive with the nickel-titanium shank
`
`The Board was “not persuaded that the inventors of the ’773 patent did not
`
`demonstrate that they possessed the use of a heat treatment process employing a
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`reactive atmosphere at the time of the filing of the PCT application.” Paper 29 at
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`14 (emphasis added). Petitioner submits that this finding does not address the
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`relevant inquiry—whether the PCT application shows that the inventor possessed
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`heat-treating in an atmosphere reactive with the Ni-Ti shank. That is, even if the
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`PCT application supports a disclosure of a titanium-nitride, PVD coating process
`
`with an inherent heat treatment in which a reaction occurs between nitrogen and
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`the titanium material used to coat the shank, it does not follow that the inventor
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`possessed the full scope of “heat-treating” recited in the Challenged Claims, which
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`requires heat-treating in an atmosphere reactive with the shank.
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`The inventor’s litigation testimony, on which Patent Owner relies for the
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`treatment conditions used in the PVD coating process, including the allegation that
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`it occurs in a reactive atmosphere, describes an experiment in which instruments
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`were allegedly coated with titanium-nitride. Ex. 2001 at 38-39, 141; Ex. 2004 at
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`110-11. That testimony explains that the reaction that occurs during the PVD
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`coating process is between the nitrogen gas atmosphere and a titanium rod. It is
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`this reaction that results in the titanium-nitride being coated onto the Ni-Ti shank.
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`- 11 -
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`See Ex. 2001 at 39 (“They put nitrogen around the instrument they’re working on,
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`in this case it’s my dental instrument, and then there’s a titanium rod that they put a
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`current across and atomize it, and the nitrogen and the titanium glob onto the
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`whatever is inside.”); Ex. 2004 at 110-11 (“And we did the titanium nitride, which
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`is placing the files in a furnace, evacuating the atmosphere and replacing it with
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`nitrogen, having a pure titanium rod, put electricity across it, it atomizes and it
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`deposits on the files. And that’s how you TIN [titanium-nitride] coat them.”). The
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`inventor never testified, and there is no evidence in the record (including in the
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`PCT application), that the coating process and its inherent heat treatment are
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`performed in an atmosphere that reacts with the Ni-Ti shank itself, which is
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`different than the titanium rod used for the coating.
`
`Given that the disclosures of heat-treating in the PCT application other than
`
`coating are expressly limited to occurring in an atmosphere unreactive with the
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`shank, Paper 2 at 16, and the applicant’s disparagement of heat-treating in an
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`atmosphere reactive with shank due to its detrimental effects on the shank, id. at
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`17-19, the relevant inquiry is whether the coating disclosure in the PCT application
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`showed possession of heat-treating in an atmosphere reactive with the Ni-Ti shank
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`itself.1 However, Patent Owner did not argue, and the Board did not find, that the
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`1
`In its petition, US Endo explained that every discussion of heat treatment in
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`the PCT application expressly specifies that an unreactive atmosphere is used
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`- 12 -
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`“reactive atmosphere” disclosed in the PCT application is an atmosphere reactive
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`with the shank. At most, the PCT application discloses heat-treating the shank in
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`an atmosphere in which a reaction occurs between nitrogen and a titanium rod.
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`But that does not show possession of an atmosphere that reacts with the shank,
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`which the inventor expressly excluded from acceptable heat-treatment conditions
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`prior to filing the ’841 application on April 25, 2012.
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`*
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`*
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`*
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`Based on the foregoing, the Board’s effective filing date decision rests on a
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`factual understanding that lacks evidentiary support, inventor testimony that is
`
`irrelevant to the priority date analysis, or both. The Board should rehear its
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`decision, and hold that the Challenged Claims have an effective filing date of April
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`25, 2012, when the ’841 application was filed and the applicant first provided
`
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`“except in the context of optionally heat treating coated instruments.” Paper 2 at
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`16. The Board took this as an admission that, in the context of coated instruments,
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`the application does disclose heat-treatment in reactive atmospheres. See Paper 29
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`at 16. This is incorrect; US Endo merely meant that the PCT applications’ cursory
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`discussions of optionally heat-treating coated instruments did not repeat the
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`requirement of an unreactive atmosphere. See., e.g., Ex. 2003 ¶ 31. No reference
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`to the atmosphere is made in such discussions.
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`- 13 -
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`disclosure of performing the claimed “heat-treating” in an atmosphere reactive
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`with the Ni-Ti shank.
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`2.
`
`The Board Overlooked Petitioner’s Argument That Earlier
`Applications Do Not Show Possession of the Combination of
`Elements Recited in the Challenged Claims
`
`The Petition argues that the Challenged Claims do not have an effective
`
`filing date earlier than the filing date of the ’841 application because earlier
`
`applications do not disclose the combination of elements recited in the Challenged
`
`Claims. Paper 2 at 19-20. As explained in the Petition, even if the earlier
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`applications disclose the claimed elements individually (such as, e.g., in claim 1,
`
`the element of heat-treating a shank at 400°C and the separate the element of heat-
`
`treating a shank to achieve the permanent deformation recited in the “wherein”
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`clause), the earlier applications do not show possession of the combination, i.e.,
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`heat-treating at 400°C to obtain the claimed permanent deformation.
`
`The Institution Decision does not address this argument. Because the
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`argument was overlooked, and it is an independent reason that Patent Owner
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`cannot show that the Challenged Claims are entitled to claim priority to earlier-
`
`filed applications, Petitioner respectfully requests that the Board revisit its effective
`
`filing date decision and consider this argument.
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`B.
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`
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`
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`The Board Abused Its Discretion by Not Instituting Grounds 1
`Through 4 on the Basis That Luebke 2008 and Gao Are Not Prior
`Art
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`- 14 -
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`The sole reason provided in the Institution Decision for not instituting on
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`grounds 1 through 4 is that the references on which those grounds are based,
`
`Luebke 2008 and Gao, are not prior art because the Challenged Claims are entitled
`
`to claim priority to the 2005 PCT application. Paper 29 at 14-15. Because, for the
`
`reasons stated above, the Board should grant rehearing on the effective filing date
`
`issue, the Board should also grant rehearing on its decision not to institute grounds
`
`1 through 4 based on the erroneous priority determination. As explained in the
`
`Petition, these grounds are not redundant of those already instituted. Paper 2 at 58.
`
`IV. CONCLUSION
`
`
`For the foregoing reasons, the Board should grant partial rehearing of its
`
`Institution Decision, and (1) reverse its determination that the Challenged Claims
`
`have priority to the PCT application, and (2) institute trial on grounds 1 through 4.
`
`
`Dated: August 19, 2015
`
`
`
`
`
`
`/Jeffrey S. Ginsberg /
`Jeffrey S. Ginsberg (Reg. No. 36,148)
`Lead counsel for Petitioner US Endodontics, LLC
`
`Matthew G. Berkowitz (Reg. No. 57,215)
`Eric T. Schreiber (Reg. No. 58,771)
`Back-up counsel for Petitioner US Endodontics,
`LLC
`
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
`
`
`
`- 15 -
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on August 19,
`
`2015, the foregoing Petitioner’s Request for Partial Rehearing of the Board’s Decision
`
`Instituting Inter Partes Review was served via electronic mail upon the following
`
`counsel of record for the Patent Owner:
`
`Joseph A. Hynds
`R. Elizabeth Brenner-Leifer
`Steven Lieberman
`Jason M. Nolan
`Derek F. Dahlgren
`jhynds@rothwellfigg.com
`ebrenner@rothwellfigg.com
`slieberman@rothwellfigg.com
`jnolan@rothwellfigg.com
`ddahlgren@rothwellfigg.com
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`
`
`/Eric T. Schreiber/
`Eric T. Schreiber (Reg. No. 58,771)
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
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