Trials@uspto.gov
`571-272-7822
`
`Paper 41
`Date: September 29, 2015
`
`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 IPR2015-00632
`Patent 8,727,773 B2
`
`Before JOSIAH C. COCKS, HYUN J. JUNG, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`DECISION
`Petitioner's Request for Rehearing
`37 CFR § 42.71
`
`GOLD STANDARD EXHIBIT 2021
`US ENDODONTICS v. GOLD STANDARD
`CASE PGR2015-00019
`
`

`
`
`
`IPR2015-00632
`Patent 8,727,773 B2
`
`
`
`I. INTRODUCTION
`Petitioner, US Endodontics, LLC (“US Endo” or “Petitioner”), filed a
`
`“Petitioner’s Request for Partial Rehearing of the Board’s Decision Instituting
`Inter Partes Review.” Paper 32 (“Request” or “Req.”). In particular, US Endo
`requests partial rehearing of the Decision on Institution (Paper 29, “Decision” or
`“Dec.”) concerning the panel’s determination not to institute trial with respect to
`claims of U.S. Patent No. 8,727,773 B2 (“the ’773 patent”) in connection with
`proposed grounds of unpatentability based on Luebke1 and Gao2.
`For the reasons stated below, US Endo’s Request is denied.
`
`
`II. DISCUSSION
` In determining whether to institute an inter partes review, the Board may
`
`“deny some or all grounds for unpatentability for some or all of the challenged
`claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on petition, the Board
`will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The
`party requesting rehearing has the burden of showing the decision should be
`modified, and “[t]he request must specifically identify all matters the party
`believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).
`
`Here, US Endo contends that the panel “abused its discretion in concluding
`that the challenged claims are entitled to claim priority to the PCT Application”[3];
`and, in doing so, “abused its direction by not instituting Grounds 1 through 4 on
`the basis that Luebke 2008 and Gao are not prior art.” Req. 7, 14.
`
`
`1 US 2008/0032260 A1 published February 7, 2008 (Ex. 1012)
`2 US 2011/0271529 A1 published November 10, 2011 (Ex. 1014)
`3 The referenced “PCT application” is PCT/US2005/019947 filed June 7, 2005 and
`published as WO2005/122942 A1 on December 29, 2005. That PCT application
`appears in the record as a part of Exhibit 1009, and also as Exhibit 2003.
`2
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`IPR2015-00632
`Patent 8,727,773 B2
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`As set forth in the Decision, we were not persuaded by US Endo’s Petition
`
`that the ’773 patent should be deprived of an effective filing date stemming from
`the filing date of the PCT application. See Dec. 13–14. Because we were not
`persuaded in that regard, we also were not persuaded that Luebke 2008 or Gao
`constituted prior art to the ’773 patent. Id. at 14–15.
`
`In reaching our conclusion with respect to the prior art status of Luebke
`2008 and Gao, we took note of GSI’s contentions that the PCT application
`describes heat treatment as a part of a coating process “in a non-inert, or reactive,
`atmosphere—nitrogen gas and titanium,” and the citation to various portions of the
`PCT application, including paragraphs 35–42, and Figures 3–7. Id. at 13. In that
`regard, the portions of the PCT application referenced by GSI describe examples of
`heat treatment of medical instruments, such as files, made of nickel and titanium
`“at 500ºC for 75 minutes.” See, e.g., Ex. 2003 ¶ 36. Although that particular
`exemplary heating temperature and duration is offered expressly in the context of a
`particular reactive atmosphere, i.e., argon, the PCT application also describes that
`files are coated with titanium nitride “using physical vapor deposition with an
`inherent heat-treatment.” Id. There is no apparent dispute that such disclosed
`process in the context of physical vapor deposition is accomplished in an
`atmosphere that is reactive with a file made from nickel and titanium.4
`
`Thus, the record before us conveys that examples of specific heat treatments
`of nickel-titanium files include temperatures at 500 ºC for 75 minutes, and that
`
`
`4 As we observed previously (Dec. 13), US Endo relayed in its Petition that the
`heat treating process with respect to the coated instrument is understood as a
`reactive atmosphere for the involved instrument. See Pet. 16 (“Every discussion of
`heat treatment in the earlier applications, except in the context of optionally heat
`treating coated instruments, specifies that an unreactive atmosphere is used.”)
`(emphasis added).
`
`3
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`IPR2015-00632
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`when coated files are involved, the coating process results in additional “inherent
`heat treatment” of those files in atmospheres recognized as reactive to the files.
`The logical inference from the disclosure of the PCT application is that the
`“inherent heat treatment” resulting from the coating process occurs at the
`temperatures and durations discussed with respect to “heat treatment” generally.
`Indeed, the PCT application equates heat-treatment provided “separately” or “as
`[used] in the coating process,” and describes that each of those techniques provides
`particular benefits to an instrument such as “higher resistance to heat degradation,”
`and “reliev[ing] stress in the instrument.” Ex. 2003 ¶ 32. Moreover, we observe
`that elsewhere, the PCT application conveys that various heat treatment
`temperatures and durations where contemplated by the inventors, including “400ºC
`up to but not equal to the melting point of the titanium alloy, “from 475ºC to
`525ºC,” and “approximately 1 to 2 hours.” Id. at ¶ 25.
`
`As a part of its Request for Rehearing, US Endo also contends that we
`overlooked an argument in the Petition that earlier applications, including the PCT
`application “do not disclose the combination of elements recited in the Challenged
`Claims,” citing to the Petition at pages 19–20. Req. 14. We, however, did not, and
`do not, find the argument persuasive. US Endo’s position generally amounts to an
`assertion that a single example, i.e., Example 4, set forth in earlier applications,
`including the PCT application, does not account for the “combination” of all the
`features of the claims of the ’773 patent. Yet, that position does not, in our view,
`account adequately for what the totality of the prior applications, including the
`PCT application, convey with respect to the inventors’ knowledge or possession of
`the claimed invention.
`
`Accordingly, we have considered US Endo’s position that we “should grant
`rehearing on the effective filing date issue,” and also on our “decision not to
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`institute grounds 1 through 4” based on Luebke 2008 and Gao. Req. 15. Although
`US Endo may disagree with our course of action in that regard as set forth in the
`Decision, we are not persuaded that we misapprehended or overlooked any matter
`in taking that action.
`
`In any event, as we noted in the Decision:
`There is no requirement that an inter partes review proceeding must
`proceed on all grounds of unpatentability asserted by a petition. See
`37 C.F.R. § 42.108(a) (“When instituting inter partes review, the
`Board may authorize the review to proceed on all or some of the
`challenged claims and on all or some of the grounds of unpatentability
`asserted for each claim.”). Furthermore, we construe our rules “to
`secure
`the
`just, speedy, and
`inexpensive resolution of every
`proceeding.” 37 C.F.R. § 42.1(b); see also 35 U.S.C. § 316(b)
`(regulations for post-grant proceedings take into account “the efficient
`administration of the Office” and “the ability of the Office to timely
`complete [instituted] proceedings”).
`Dec. 31.
`
`We instituted trial on all of the claims of the ’773 patent to which the
`grounds based on Luebke 2008 and Gao are directed based on other prior art. US
`Endo has not shown that, in the circumstances presented here, our decision not to
`institute on the additional grounds based on Luebke 2008 and Gao constituted an
`abuse of discretion.
`
`III. ORDER
`
`It is
`ORDERED that US Endo’s Request for Rehearing is denied.
`
`
`
`
`
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`IPR2015-00632
`Patent 8,727,773 B2
`
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`For PETITIONER:
`
`Jeffrey S. Ginsberg
`PATTERSON BELKNAP WEBB & TYLER LLP
`jginsberg@pbwt.com
`
`
`
`
`
`For PATENT OWNER:
`Joseph A. Hynds
`R. Elizabeth Brenner-Leifer
`Jason M. Nolan
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`jhynds@rfem.com
`ebrenner@rothwellfigg.com
`jnolan@rothwellfigg.com
`
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