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Consistent Witness Testimony Gives Teeth to Assertion of Public Availability

In an opinion addressing the sufficiency of corroborating evidence regarding public availability of a catalog, the US Court of Appeals for the Federal Circuit concluded that prior art status was established based on testimonial evidence presented to the Patent Trial and Appeal Board (PTAB) regarding public availability of the catalog in issue. Nobel Biocare Servs. AG v. Instradent USA Inc.Case No. 17-2256(Fed. Cir. Sept. 13, 2018) (Lourie, J).

Nobel and Instradent initially crossed paths at the International Trade Commission (ITC), which instituted an investigation based on Nobel’s complaint alleging that Instradent infringed the claims of the patent at issue, which are directed to dental implants. Instradent alleged the claims were invalid based on a product catalog from the inventor’s company with the date March 2003 on the cover, while the patent at issue claims a priority date from an application filed May 23, 2004. Although the administrative law judge found the claims anticipated by the catalog, the ITC determined that Instradent failed to show that the catalog was prior art by clear and convincing evidence, and held the claims not anticipated but infringed. The Federal Circuit affirmed without opinion.    

Instradent petitioned for inter partes review of Nobel’s patent on the grounds that the patent at issue was anticipated by the catalog, and the PTAB instituted review. The PTAB considered the evidence presented in the ITC investigation, along with additional declarations and deposition testimony, and concluded that the catalog was prior art under the preponderance of the evidence standard. The PTAB found the challenged claims unpatentable as anticipated by the catalog. Nobel appealed.

Before the Federal Circuit, the parties chiefly disputed whether the catalog qualified as a public disclosure. This time, the Federal Circuit agreed with Instradent that substantial evidence supported the PTAB’s finding that the catalog was publicly accessible prior to the critical date. The PTAB credited witness testimony that the witnesses obtained copies of the catalog at a conference in March 2003, and the witnesses provided the catalogs they had obtained. Moreover, the catalog included the date March 2003 on its cover. Nobel argued that Instradent’s evidence lacked sufficient corroboration, but the Federal Circuit disagreed. The Court explained that it applies a “rule of reason” analysis to the sufficiency of the evidence, which involves an assessment of the totality of the circumstances. In this case, two witnesses corroborated each other’s testimony, and this evidence was further corroborated by the date on the catalog itself. While an undated reference alone is not prima facie evidence that it was available prior to the applicant’s critical date, the date on the reference here matched the date that witnesses testified to obtaining it. Hence, the Court affirmed the PTAB’s finding that the claims were anticipated.

© 2020 McDermott Will & Emery


About this Author

Joseph Speyer, Intellectual Property Attorney, McDermott Emery Will Law firm

Joseph Speyer, PhD, focuses on patent prosecution, including drafting and prosecuting patent applications related to electronics, chemistry, materials science, mechanical devices and telecommunications. He also provides freedom-to-operate opinions and litigates in district court and at the US International Trade Commission, where he has provided counsel regarding technologies such as telecommunications, electronics and mechanical devices.

Previously, Joseph was a law clerk at the US International Trade Commission, where he gained experience...