Sirona Dental Systems GMBH v. Institut Straumann AG, No. 17-1341 (Fed. Cir. 2018)Annotate this Case
Sirona’s 006 patent “relates to a method for producing a drill assistance device,” a drill template, “to precisely place a pilot hole for a tooth implant, wherein the pilot hole for the tooth implant is aligned relative to the teeth that still remain in the jaw.” The specification discloses taking X-ray images of the jaw and taking a three-dimensional optical image of the visible surfaces of the jaw and teeth. These images are compiled into “measured data records” and correlated. From this correlation, the position for the implant is determined and a drill template is prepared. On inter partes review, the Patent Trial and Appeal Board found claims 1–8 of unpatentable as obvious, 35 U.S.C. 103, over the combination of a German Patent (Bannuscher) and a U.S. Patent (Truppe), and denied Sirona’s contingent motion to amend the claims. The Board found patentable claims 9–10. The Federal Circuit affirmed in part. Substantial evidence supports that claims 1–8 would have been obvious over the combination of Bannuscher and Truppe; the Board’s unpatentability determination did not deviate from the grounds alleged in the petition. Petitioners failed to demonstrate claims 9–10 were unpatentable. The court vacated the denial of the contingent motion to amend and remanded.