Paper 10
`Trials@uspto.gov
`571-272-7822
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`Date Entered: August 3, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLUE BELT TECHNOLOGIES, INC.,
`Petitioner,
`v.
`ALL-OF-INNOVATION GMBH,
`Patent Owner.
`____________
`
`Case IPR2015-00765
`Patent 7,346,417 B2
`____________
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`Petitioner, Blue Belt Technologies, filed a Petition requesting an inter
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`partes review of claims 1, 3, 5–7, 9, 10, 16, 17, 21, 26, 40, 45, 56, and 57 of
`U.S. Patent No. 7,346,417 B2 (Ex. 1001, “the ’417 patent”). Paper 1
`(“Pet.”). Patent Owner, All-Of-Innovation GmbH, filed a Preliminary
`
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`Trials@uspto.gov
`571-272-7822
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`Date Entered: August 3, 2015
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLUE BELT TECHNOLOGIES, INC.,
`Petitioner,
`v.
`ALL-OF-INNOVATION GMBH,
`Patent Owner.
`____________
`
`Case IPR2015-00765
`Patent 7,346,417 B2
`____________
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`Petitioner, Blue Belt Technologies, filed a Petition requesting an inter
`
`partes review of claims 1, 3, 5–7, 9, 10, 16, 17, 21, 26, 40, 45, 56, and 57 of
`U.S. Patent No. 7,346,417 B2 (Ex. 1001, “the ’417 patent”). Paper 1
`(“Pet.”). Patent Owner, All-Of-Innovation GmbH, filed a Preliminary
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`Response. Paper 9 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
`§ 314, which provides that an inter partes review may not be instituted
`“unless . . . the information presented in the petition . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.”
`For the reasons that follow, we institute an inter partes review of
`
`claims 1, 3, 5–7, 9, 10, 16, 17, 21, 26, 40, 45, 56, and 57 of the ’417 patent.
`
`A. Related Proceeding
`According to Petitioner, the ’417 patent is involved in at least the
`following lawsuit: Mako Surgical Corp. v. Blue Belt Techs., Inc., Case No.
`14-cv-61263 (S.D. Fla.), filed May 30, 2014. Pet. 1–2.
`
`B. The ’417 Patent
`The ’417 patent relates to a method and system for removing tissue or
`other material in dentistry or surgery. Ex. 1001, 1:7–10, 6:12–19. Figure 1
`is reproduced below:
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`Figure 1 illustrates a medical instrument with a tissue-removing
`effector 2 in a position and orientation relative to a reference position of
`tissue object 5, in accordance with the invention. Ex. 1001, 8:50–53. The
`effector can be implemented as a saw blade, cutter, drill, laser, etc., which
`can be powered on or off according to the position of the effector relative to
`the reference position of the tissue object. Id. at 8:53–65. The effector may
`have one or more markers 7, such as glass spheres, secured in a fixed
`position relative to the effector on marker support 6. Id. at 8:65–9:5. In
`general, the markers are a set of points whose position relative to a position
`coordinate system can be determined. Id. at 9:5–10. Various measurement
`methods, including optical, acoustical, electromagnetic, etc., can be used.
`Id. at 9:10–15. A physician or dentist uses information obtained from, e.g.,
`an X-RAY or CT-image, to plan a cut volume to allow fitted pieces to be
`integrated within the fitted shape of the residual tissue volume. Id. at 9:33–
`60; 10:8–12; 12:60–65. Importantly, the invention prevents accidental tissue
`removal outside the fitted shape by powering off the effector when its
`position is outside of the cutting geometry. Id. at 13:17–28.
`
`C. Illustrative Claim
`Claims 1 and 40 are independent claims. Claims 3, 5–7, 9, 10, 16, 17,
`21, and 26 directly or indirectly depend from claim 1, and claims 45, 56, and
`57 directly or indirectly depend from claim 40. Claim 1 is reproduced
`below.
`
`1. A method for removing and processing material with
`at least one effector, wherein the effector defines a volume and
`has a predetermined geometry, the method comprising:
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`removing and processing material from an object with
`the effector, wherein the removing and processing
`comprises:
`manually guiding the effector in relation to the
`object;
`determining, using a navigation system, position
`and orientation of the effector in relation to at least
`one reference body as
`the effector removes
`material from the object;
`storing data representative of the position and
`orientation of the effector in relation to the
`reference body as the effector removes the material
`from the object; and
`and
`power
`of
`one
`supplying
`at
`least
`parameterization control commands to the effector
`as a function of at least one of a predetermined
`work volume for the object, volume of the material
`removed from the object and volume of residual
`material in the work volume, wherein the removed
`material volume and the residual material volume
`are determined based on the volume and the
`geometry of the effector and the position and
`orientation of the effector data.
`Ex. 1001, 17:40–63.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1, 3, 5–7, 9, 10, 16, 17, 21, 26, 40, 45,
`56, and 57 are unpatentable based on the following grounds (Pet. 7):
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`References
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`Mushabac1 and Klimek2
`
`Harris3
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`Harris and Taylor4
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`Harris, Taylor, and Klimek
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`Basis
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Challenged Claims
`1, 3, 5–7, 9, 10,
`16, 17, 21, 26, 40,
`45, 56, and 57
`1, 3, and 21
`1, 3, 5–7, 9, 10,
`16, 17, 21, 26, 40,
`45, 56, and 57
`45
`
`II. ANALYSIS
`A. Claim Interpretation
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
`Speed Techs., LLC, No. 2014–1301, 2015 WL 4097949, at *7–8 (Fed. Cir.
`July 8, 2015) (“Congress implicitly approved the broadest reasonable
`interpretation standard in enacting the AIA,” and “the standard was properly
`adopted by PTO regulation.”). Under the broadest reasonable construction
`standard, claim terms are given their ordinary and customary meaning, as
`
`
`1 U.S. Patent No. 5,562,448, issued Oct. 8, 1996 (Ex. 1004) (“Mushabac”).
`2 Klimek, et al., “A Passive-Marker-Based Optical System for Computer-
`Aided Surgery in Otorhinolaryngology: Development and First Clinical
`Experiences,” The Laryngoscope, Vol. 109, pp. 1509–1515, Sept. 1999 (Ex.
`1005) (“Klimek”).
`3 Harris, et al., “Experiences with Robotic Systems for Knee Surgery,”
`Lecture Notes in Computer Science, Vol. 1205, pp. 757-766, 1997 (Ex.
`1006) (“Harris”).
`4 Taylor, et al., “An Image-Directed Robotic System for Precise
`Orthopaedic Surgery,” IEEE Transactions on Robotics and Automation, Vol.
`10, No. 3, pp. 261-275, June 1994 (Ex. 1007) (“Taylor”).
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`would be understood by one of ordinary skill in the art in the context of the
`entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). Thus, the claims are read in light of the specification and
`“prosecution history in proceedings in which the patent has been brought
`back to the agency for a second review.” Microsoft Corp. v. Proxyconn,
`Inc., No. 2014–1542, 2015 WL 3747257, at *3 (Fed. Cir. June 16, 2015).
`Only those terms that are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner proposes constructions for the following claim terms:
`“manually guided” or “manually guiding”; “orientation of the effector”;
`“power and parameterization control commands”; and “predetermined work
`volume,” which are recited at least in independent claims 1 and 40. Pet. 10–
`13. Patent Owner challenges Petitioner’s proposed construction of
`“manually guided” or “manually guiding.” Prelim. Resp. 12–19. Patent
`Owner also proposes construction for the term “handpiece” recited in claims
`27–30, 34, 36, 37, 40, 41, 46–51, 53, and 54. Id. at 19–21.
`“manually guided” or “manually guiding”
`Petitioner argues the broadest reasonable construction of “manually
`guided” (or “manually guiding”)5 is “moved/moving by hand.” Pet. 10.
`According to Petitioner, the specification explains “an effector, such as a
`manually guided drill, ‘can also be kinematically supported, braked, damped
`or driven,’ and therefore . . . must allow for and must not exclude kinematic
`support, braking, damping or driving.” Id. at 10–11 (citing Ex. 1001, 12:22–
`
`
`5 For purposes of brevity, we will hereinafter refer only to “manually
`guiding” in our analysis of both terms.
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`25, cl. 26). Petitioner argues its construction also accords with portions of
`the specification that distinguish between moving the effector manually from
`moving the effector automatically “(e.g. with a robot).” Id. at 11 (citing Ex.
`1001, 10:36–38).
`Patent Owner argues manually guiding “should be construed in
`accordance with the ’417 patent specification and file history to mean
`‘moved/moving by hand without moving restrictions.’” Prelim. Resp. 12.
`According to Patent Owner, “the background section of the ’417 patent
`explains the problems with the robot-based and interactively guided systems
`and the need for technology to evolve from such prior art systems with
`restricted movement to the patented manually guided instrument without
`such [moving] restrictions.” Id. at 14 (citing Ex. 1001, 1:41-65; 2:1-9). By
`contrast, Patent Owner contends, the present invention is described as
`allowing comparable results “without expensive mechanical assemblies,
`such as interactively guided systems or robot-based systems.” Id. at 15
`(citing Ex. 1001, 7:10–13).
`Patent Owner further contends the file history of the ’417 patent
`supports its construction. Prelim. Resp. at 16. According to Patent Owner,
`claims of the ’417 patent were rejected during prosecution as obvious over
`U.S. Patent No. 5,408,409 (“Glassman”) based on the Examiner’s finding
`that “Glassman teaches a robotic surgical system that includes a manipulator
`arm that has a surgical tool.’” Id. at 16–17 (citing Ex. 1003, 51–52).
`Consequently, Patent Owner contends, the claims were amended to add the
`recited “manually guiding” requirement to the claims based on the
`applicant’s representation that “[n]owhere does Glassman et al. teach or
`suggest manually guiding an effector to remove material from an object, in
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`the absence of robotic control of the positioning of the effector [while the
`effector is removing material].” Id. at 17 (citing Ex. 1003, 26–39, 42–43).
`We agree with Patent Owner that the Specification and file history
`require a construction of the term “manually guiding” that is narrower than
`that advanced by Petitioner, i.e., “moved/moving by hand.” The
`Specification does not state, as Petitioner contends, that a manually guided
`effector can also be kinematically supported. Rather, the Specification,
`including the claims, indicates that “kinematic support” (including robot-
`based movement) is an alternative to a manually guided effector. See Ex.
`1001, 12:22–25 (“The effector 2 . . . is manually guided via a corresponding
`hand-piece 1 (but can also be kinematically supported . . . ).”), 20:25–40
`(“[Claim] 26. . . . using the position information for at least one of manually
`and kinematically arranging and guiding the effector.”). Moreover, these
`Specification statements accord with the applicant’s statements in the file
`history that manually guiding requires the “absence of robotic control of the
`positioning of the effector.” Ex. 1003, 42–43.
`Patent Owner, however, has failed to direct us to persuasive support
`for reading the term “manually guiding” as prohibiting “moving
`restrictions.” We do not view the distinctions made between manually
`guided systems and robot-based or kinematically supported systems as
`requiring that manually guided systems must be without movement
`restrictions. We also note Patent Owner’s suggestion that manually guiding
`precludes “expensive mechanical assemblies.” Prelim. Resp. 15, 17. We
`disagree. Although it is true the Specification refers to the invention as
`eliminating the need for “[e]xpensive mechanical assemblies for guiding the
`instruments,” this refers to robotic assemblies for guiding the instruments.
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`Ex. 1001, 7:10–13. In other words, we do not read the Specification as
`requiring that manually guided systems may not include any expensive
`mechanical assemblies—rather, the Specification excludes only robotic or
`kinematic systems.
`Accordingly, on this record, we conclude that the broadest reasonable
`interpretation of “manually guiding” and “manually guided,” consistent with
`the record, is “moving/moved by hand, without robotic or kinematic
`support.”
`Remaining Terms
`Patent Owner argues the term “handpiece” should be construed
`consistent with commonly accepted definitions to mean “the part of a
`mechanized device designed and small enough to be used or operated while
`being held in the hand or hands.” Prelim. Resp. 19–20. Petitioner does not
`offer a construction of this term.
`We observe there is no dispute that depends on the construction of this
`term as to those grounds upon which we institute inter partes review.
`Accordingly, we determine that no construction of this term is necessary at
`this time.
`Petitioner proposes claim construction of the terms: “orientation of the
`effector”; “power and parameterization control commands”; and
`“predetermined work volume.” However, Patent Owner does not offer
`constructions of these terms, nor do they appear to relate to any disputes at
`this time. We therefore determine that no specific construction of these
`terms is necessary.
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`B. Principles of Law
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`
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see
`Translogic, 504 F.3d at 1259. A prima facie case of obviousness is
`established when the prior art itself would appear to have suggested the
`claimed subject matter to a person of ordinary skill in the art. In re Rinehart,
`531 F.2d 1048, 1051 (CCPA 1976).
`The level of ordinary skill in the art is reflected by the prior art of
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978).
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`C. Ground 1: Obviousness of Claims 1, 3, 5–7, 9, 10, 16, 17,
`21, 26, 40, 45, 56 and 57 over Mushabac and Klimek
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`Petitioner contends claims 1, 3, 5–7, 9, 10, 16, 17, 21, 26, 40, 45, 56
`and 57 are rendered obvious over the combination of Mushabac and Klimek
`Pet. 13–36. To support its contentions, Petitioner provides claim charts and
`detailed explanations as to how the combination of prior art meets each
`claim limitation. Id. Petitioner also relies upon a Declaration of Brian
`Davies (Ex. 1002) for support.
`Patent Owner counters that the combination of Mushabac and Klimek
`does not render the challenged claims obvious, because the combination
`does not describe certain claim limitations, and because Klimek could not
`have been readily combined with Mushabac. Prelim. Resp. 29–42. We
`begin our discussion with a brief summary of Mushabac and Klimek, and
`then address the arguments presented by Patent Owner.
`Mushabac (Ex. 1004)
`Mushabac describes a method for preparing a dental preparation, such
`as a dental implant, in a patient’s jaw using a computer to generate a
`graphical representation of the orientation of a drill in relation to pre-existing
`structures. Ex. 1004, Abstract, 1:13–18. Figure 12 of Mushabac is
`reproduced below:
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`Figure 12 shows a stylus 52 connected to pantograph arm 56 in
`accordance with the invention. Tracking CCD cameras 184, 186, and 188
`are positioned to track the stylus based on the movements of the pantograph
`arm 56 against references frame plates 198, 200, and 202. Ex. 1004, 14:48–
`56. The stylus 52 is used for pre-operative planning (id. at 4:41–45, 14:55–
`61), but a drill is used in place of the stylus for the actual operation (id. at
`4:45–51, 12:22–33).
`In a pre-operative phase, the dentist may direct the computer to
`overlay a predefined tooth preparation on a three-dimensional representation
`of the tooth. Ex. 1004, 12:3–5. The computer may be programed to
`automatically select a possible tooth preparation, or the dentist may direct
`the computer to alter the graphic representation of the tooth, for example, by
`removing a layer of material from the tooth surface. Id. at 12:8–17. The
`dentist may use the computer to select a preformed tooth preparation
`corresponding to an implant or inlay. Id. at 17:20–45.
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`During the operation, a dentist guides the drill (or other cutting tool)
`while the computer 24 monitors the location of the operating tip. Ex. 1004,
`11:20–26. When the operating tip approaches a boundary defined to the
`computer during the pre-operative planning phase, the computer can display
`a color change or interrupt power to the drill. Id. at 11:25–34; 16:44–57.
`The computer 24 has memory loaded with encoded data corresponding to all
`preformed inlays in a kit, and, thus, may control machining operation to
`limit the range of motion to provide the tooth with the desired preparation.
`Id. at 17:46–65.
`Klimek (Ex. 1005)
`Klimek describes an “optical computer-aided surgery (CAS) device.”
`Ex. 1005, 1509. Klimek’s system includes a freehand probe, tracked by a
`passive-marker sensor system, linked to a computer image space on a
`patient’s CT or MRI scan. Id. at 1510. Infrared cameras track the markers
`attached to the surgical instrument. Id. Figure 3 is reproduced below:
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`Figure 3 shows a passive marker array, which can be adapted to fit on
`any existing surgical instrument. Id. at 1511. In addition, low-profile
`fiducial markers are attached to the patient’s skin to allow the system to
`know the patient’s position in three-dimensional space relative to infrared
`cameras. Id. at 1510.
`Analysis
`In support of this asserted ground of unpatentability, Petitioner
`provides explanations as to how the subject matter of claims 1, 3, 5–7, 9, 10,
`16, 17, 21, 26, 40, 45, 56 and 57 is taught by Mushabac and Klimek. Pet.
`13–36. With respect to claim 1, for example, Petitioner contends Mushabac
`teaches all of the features of claim 1. Id. at 19–24 (citing Ex. 1004; Ex.
`1002). Petitioner contends Klimek’s optical navigation system teaches
`“determining, using a navigation system, position and orientation of the
`effector in relation to a least one reference body,” as claim 1 recites. Id. at
`21, 24 (citing Ex. 10056; Ex. 1002). Petitioner contends it would have been
`obvious to a person of ordinary skill in the art to mount the passive marker
`array of Klimek on the drill of Mushabac, and fiducial markers on a suitable
`location on the patient or support structure, to obtain more accurate
`navigation than that provided by the pantograph-based system of Mushabac.
`Id. at 24–25 (citing Ex. 1005; Ex. 1002). Petitioner further contends the
`combination is a substitution of known elements with predictable results. Id.
`
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`6 At various places, the Petition mistakenly cites Klimek as Ex. 1007
`(Taylor) instead of Ex. 1005. However, because it is clear from the page
`numbering and context that Petitioner is referring to Klimek, we consider
`this error harmless and substitute the correct exhibit number in our
`discussion here.
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`at 25. At this stage of the proceeding, we agree with Petitioner’s
`contentions.
`Regarding claim 1, Patent Owner contends Mushabac does not
`disclose a “manually guided” system. Prelim. Resp. 30. According to
`Patent Owner, the pantograph system of Mushabac is not a “freehand
`system,” but, rather, a “complex arm-based system” such as that
`distinguished from the claimed invention during prosecution. Id. at 30–31.
`We are not persuaded by this argument. As discussed above, the term
`manually guiding precludes the use of kinematic assistance (or robots), but
`does not preclude all complex or expensive mechanical assemblies. In at
`least some embodiments, the drill in Mushabac is manually guided without
`robotics or kinematic assistance. For example, Mushabac explains that the
`embodiment shown in Figure 15 uses motors in place of the encoders shown
`in Figure 14 suggesting the drill in the Figure 14 embodiment is guided
`manually without motor assistance. See Ex. 1004, 16:58–63.
`In furtherance of its position, Patent Owner also contends that a
`similar system disclosed in an earlier Mushabac patent was considered by
`the Examiner during the prosecution of the ’417 patent. Id. at 31 (citing Ex.
`1003, 97). Patent Owner further contends such a system is precisely the
`kind of “interactive arm system” described in the ’417 patent’s background
`and apparently found distinct by the Examiner. Id. at 32. We disagree.
`First, although “interactive systems” are a form of “robot-assisted surgery”
`(Ex. 1001, 1:46–49), Patent Owner has not shown that Mushabac’s system is
`robotic-assisted, as discussed above. Second, although an earlier Mushabac
`patent (Ex. 2002) was cited in an IDS during prosecution of the ’417 patent,
`Patent Owner has not directed us to evidence as to why the Examiner
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`considered it distinguishable from the claimed invention here.
`Consequently, the earlier cited Mushabac patent does not persuade us that
`the cited system in Mushabac is not “manually guided.”
`Regarding claims 5–7, Patent Owner contends Mushabac discloses
`“only a generic boundary-based safety system, not a system designed to
`target a ‘desired fitted object shape,’” as claim 5 requires. Prelim. Resp. 33.
`More specifically, Patent Owner characterizes the cutting plan in Mushabac
`as corresponding to preforms from a kit. Id. (citing Ex. 1004, 16:16–21).
`Patent Owner acknowledges that Mushabac also allows a cutting selection to
`be input via dimensional parameters such as angles, planes, and distances,
`but contends such a cutting plan is based on “paths and other parameters, not
`a tailored shape” or “particularized plan.” Id. at 34 (Ex. 1004, 16:21–29).
`To the extent Mushabac discloses precise cutting boundaries, Patent Owner
`argues, it does so in the context of mechanical preforms that limit the
`movement of the pantograph system, however these are not “computed from
`parameters of a desired fitted object shape.” Id. at 35–36 (Ex. 1004, 17:21–
`37).
`
`We are not persuaded by this argument. As an initial matter, Patent
`Owner does not provide us with a construction of the term “desired fitted
`object shape,” much less one that requires “tailored shapes” and
`“particularized plans,” or excludes the preformed shapes or geometrically
`specified dimensions described in Mushabac. Moreover, such a construction
`would not be consistent with the specification of the ’417 patent, where the
`desired fitted object shape 12 is the cylindrical residual tissue volume that
`accepts cylindrical fitted piece 11, as shown in Figure 3. Ex. 1001, 10:8–12,
`Fig. 3; see also id. at 7:48–49 (“The method can also be used to prepare a
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`fitted shape, that satisfies certain criteria (e.g., cylindrical) . . . .”). Thus,
`even accepting Patent Owner’s characterization of Mushabac as teaching
`preformed shapes or geometric cutting plans, such teachings fall within the
`broadest reasonable construction, consistent with the specification, of the
`recited desired fitted object shape. See Translogic, 504 F.3d at 1257.
`As to Patent Owner’s contention that mechanical preformed cutting
`shapes are “not computed from parameters of a desired fitted object shape”
`(emphasis added), as claim 5 requires, we do not disagree. However,
`Mushabac alternatively teaches the use of electronic encoded data
`corresponding to all preformed inlays and onlays in the kit. Ex. 1004,
`17:46–53; 23:45–24:8. Moreover, the computer “operates to . . . control the
`formation of that preparation in the subject tooth.” Id. at 17:54–65.
`Accordingly, we agree with Petitioner that Mushabac teaches computing the
`desired fitted object shape.
`Regarding claims 5–7, 9, 10, 16, 17, and 26, Patent Owner contends
`Petitioner improperly relies on common knowledge, supplied by its
`declarant Dr. Davies, to supply the recited “desired fitted object shape” or
`“fitted piece.” Prelim. Resp. 36–37. We disagree. Petitioner and Dr.
`Davies rely on Mushabac’s descriptions of electronically encoded tooth
`preparations (Pet. 26–28; Ex. 1002, 62–63) which, as discussed above, relate
`to the preformed inlays and onlays in the kit (Ex. 1004, 17:46–53).
`Regarding claim 9 specifically, Patent Owner contends Petitioner and
`Dr. Davies incorrectly rely on Mushabac’s discussion of “nearby teeth, axes
`of symmetry, and different parameters of a dental arch” as teaching
`“computing the desired fitted object shape based on . . . medical criteria,” as
`claim 9 recites. Prelim. Resp. 37–38. According to Patent Owner, the
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`analysis described in Mushabac is used “‘to determine position and
`orientation of a desired preparation’ – not to ‘compute’ the desired fitted
`object shape.” Id. (citing Ex. 1004, 5:3–5). We disagree with this
`contention. Mushabac also discloses:
`[C]omputer 24 may be programmed to recognize structural
`features of the tooth, such as its type, the location and shapes of
`cavities and prior inlays and onlays and to automatically select
`a possible preparation in accordance with the recognized
`features. The computer may be further programed to vary the
`size of the preparation to correspond to the particular tooth.
`
`Ex. 1004, 16:32–39. In other words, the computer may determine the
`desired fitted object shape, including varying its size, based on existing
`structural features (i.e., “medical criteria”) as claim 9 requires.
`
`In addition, Patent Owner contends Klimek could not be readily
`combined, and would even be unusable, with Mushabac. Prelim. Resp. 38.
`Specifically, Patent Owner contends combining Klimek with Mushabac
`would destroy Mushabac’s principle of operation, because Klimek discloses
`a freehand probe, while Mushabac discloses a pantograph-based system. Id.
`at 39 (citing Ex. 1004, 11:50–62; Ex. 1005, 1510). We disagree. First, as
`discussed above, we disagree that Mushabac is not a freehand system. As
`such, it is similar to the freehand surgical tools discussed in Klimek.
`Second, Patent Owner does not direct us to evidence that altering Mushabac
`to use the particular marker system would present unique challenges or
`would require “much more than routine experimentation” (id.). See
`Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
`2007). Indeed, the ’417 patent itself describes many types of markers and
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`navigation systems, without suggesting any unique challenges within the
`context of the claimed invention. Ex. 1001, 9:5–15.
`
`Patent Owner also contends Klimek’s error range, 0–4.5 mm, renders
`it unusable for the dental application of Mushabac, as “4.5 mm is easily half
`the size of many teeth.” Prelim. Resp. 40 (citing Ex. 1005, 1512; Ex. 2003,
`Table 3). Moreover, according to Patent Owner, Klimek’s system uses
`markers attached to the skin, preferably the scalp, or a vacuum-based marker
`for the mouth, which renders it impractical at best for dental operations and
`unusable in the case of the vacuum-based marker. Id. at 41–42 (citing Ex.
`1005, 1510).
`At this juncture, we are not persuaded by these arguments. As an
`initial matter, the purported 4.5 mm of possible error in Klimek appears to
`be the highest error recorded in a series of experiments. See, e.g., Ex. 1005,
`1509 (reporting interoperative accuracy to within 1.14 mm). Therefore, the
`present record is not conclusive as to amount of error to be expected when
`using Klimek’s system. Similarly, as to the purported inconvenience of the
`positioning of the markers, Klimek does not limit the markers to the scalp.
`Regardless, even if we agreed the error and marker placement evidence at
`this juncture demonstrated Klimek’s unsuitability to drilling teeth as
`described in Mushabac, such facts do not address Mushabac’s use in other
`oral surgery procedures such as implanting in bone, (Ex. 1004, 24:35–39),
`an application that more closely aligns with Klimek’s purposes (Ex. 1005,
`1509 (“ENT surgery”)). Therefore, on the present record, the evidence is
`insufficient to support Patent Owner’s contention that Klimek would be
`“unusable” with Mushabac’s system.
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`Accordingly, we are persuaded Petitioner has established a reasonable
`likelihood of prevailing on the proposed ground of obviousness under
`§ 103(a) over Mushabac and Klimek against claims 1, 3, 5–7, 9, 10, 16, 17,
`21, 26, 40, 45, 56 and 57.
`
`D. Grounds 2–4: Obviousness of Claims 1, 3, and 21 over Harris;
`Claims 1, 3, 5–7, 9, 10, 16, 17, 21, 26, 40, 56 and 57 over Harris and
`Taylor; and Claim 45 over Harris, Taylor, and Klimek
`
`
`
`Pursuant to 35 U.S.C. § 316(b), rules for inter partes proceedings
`were promulgated to take into account the “regulation on the economy, the
`integrity of the patent system, the efficient administration of the Office, and
`the ability of the Office to timely complete proceedings.” The promulgated
`rules provide that they are to “be construed to secure the just, speedy, and
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). As a
`result, and in determining whether to institute an inter partes review of a
`patent, the Board, in its discretion, may “deny some or all grounds for
`unpatentability for some or all of the challenged claims.” 37 C.F.R.
`§ 42.108(b).
`We exercise our discretion and decline to institute review based on
`any of the other asserted grounds advanced by Petitioner that are not
`identified below as being part of the trial. 37 C.F.R. § 42.108(a); see also 35
`U.S.C. § 314(a) (giving the Director discretion on whether to institute
`review).
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
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`showing that claims 1, 3, 5–7, 9, 10, 16, 17, 21, 26, 40, 45, 56 and 57 of the
`’417 patent are unpatentable. At this stage of the proceeding, the Board has
`not made a final determination with respect to the patentability of the
`challenged claims.
`
`
`
`IV. ORDER
`In consideration of the foregoing, it is
`ORDERED that an inter partes review is instituted as to claims 1, 3,
`5–7, 9, 10, 16, 17, 21, 26, 40, 45, 56 and 57 of the ’417 patent on the ground
`that claims 1, 3, 5–7, 9, 10, 16, 17, 21, 26, 40, 45, 56 and 57 would have
`been obvious over Mushabac and Klimek under 35 U.S.C. § 103(a);
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’417 patent is instituted with trial comm
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