The different standards between the PTAB and the ITC came to bear in a recent Federal Circuit appeal between Nobel Biocare Services AG and Instradent USA, Inc. (Appeal No. 2017-2256 ). The decision came on an appeal from an IPR where Instradent sought to invalidate Nobel’s patent relating to dental implants with a critical date of May 23, 2003. The original patent holder (Alpha-Bio Tech. Ltd) brought an estimated 200-500 catalogs describing the material to a 2003 trade show, which usually occurred in March and corresponds to the ‘March 2003’ date printed on the catalog cover.
In 2015, the ITC ruled that the testimony from the Patent Owner that the trade show usually occurred in March and the March 2003 date on the catalog was insufficient to establish the available date. In the underlying 2015 IPR, the PTAB, considering new testimony from a competitor corroborating the March 2003 date for the catalog, found sufficient evidence that it was publicly available in March of 2003, before the critical May 23, 2003 date. This allowed the anticipation rejection to stand and invalidated the subject claims. Both decisions were appealed to the Federal Circuit.
The ITC appeal was decided first, where the Federal Circuit upheld the insufficiency of the evidence for the March 2003 catalog, followed by the appeal of the IPR sufficient evidence finding which was also upheld.
In explanation of affirming the two seemingly conflicting decisions, the Federal Circuit highlighted two things. First, the panel pointed to the additional evidence of corroborating testimony from their competitors. Secondly, and more significant for decision making purposes, the panel emphasized that the standards of evidence are different between the ITC and the PTAB. In support of the IPR decision, the panel explained, “As the Board correctly observed, the evidentiary standard in its proceedings, preponderance of the evidence, is different from the higher standard applicable in ITC proceedings, clear and convincing evidence”. The panel then cited to its 1966 decision in Consolo v. Fed. Mar. Comm’n which stated that “the possibility of drawing two inconsistent conclusions from the evidence does not prevent an administrative agency’s finding from being supported by substantial evidence.”
The Federal Circuit’s endorsement that the different standards hold weight in application of prior art eligibility highlights the necessity of proper strategic planning when deciding how to proceed with any patent disputes.
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