- Jason W. Rhodes
The Federal Circuit recently affirmed a decision by the Patent Trial and Appeal Board (PTAB) in an Inter Partes Review (IPR) where the PTAB found, under the preponderance of the evidence standard, that various claims in Nobel Biocare’s ‘977 patent were anticipated under 35 USC § 102 by a listing in a catalog prepared by Alpha-Bio Tech. Ltd. (ABT). In 2017, the Federal Circuit had previously affirmed a Commission Opinion by the U.S. International Trade Commission (ITC) holding that some of those claims were not anticipated under § 102 because Instradent had failed to show, under the clear and convincing evidence standard, that the ABT catalog was prior art under § 102(b). In affirming the PTAB decision, the Federal Circuit noted it was not bound to its earlier affirmance of the ITC decision because (1) the standard of proof in the IPR is different, and (2) additional evidence was presented to the PTAB not considered by the ITC. Thus, even though Nobel Biocare’s claims had previously been adjudicated as valid, they were subsequently invalid when challenged in a different forum with a lower evidentiary standard.