Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 15
`
` Entered: January 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EDGE ENDO, LLC,
`Petitioner,
`v.
`MAILLEFER INSTRUMENTS HOLDING S.A.R.L.,
`Patent Owner.
`____________
`
`Case IPR2018-01349
`Patent 9,801,696 B2
`____________
`
`
`Before BART A. GERSTENBLITH, ROBERT A. POLLOCK, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314(a), 325(d)
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 15
`
` Entered: January 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EDGE ENDO, LLC,
`Petitioner,
`v.
`MAILLEFER INSTRUMENTS HOLDING S.A.R.L.,
`Patent Owner.
`____________
`
`Case IPR2018-01349
`Patent 9,801,696 B2
`____________
`
`
`Before BART A. GERSTENBLITH, ROBERT A. POLLOCK, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314(a), 325(d)
`
`
`
`
`
`
`
`
`
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`IPR2018-01349
`Patent 9,801,696 B2
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`I.
`
`INTRODUCTION
`
`Background
`
`Edge Endo, LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting institution of inter partes review of claims 1, 2, 5, and 8–10 of
`U.S. Patent No. 9,801,696 B2 (Ex. 1001, “the ’696 patent”). Maillefer
`Instruments Holding S.A.R.L. (“Patent Owner”) filed a Preliminary
`Response (Paper 14, “Prelim. Resp.”) along with a Declaration by Dr. John
`McSpadden (Ex. 2001) in support thereof.
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may be
`instituted only if “the information presented in the petition . . . and any
`[preliminary] response . . . 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.” See 37 C.F.R. § 42.108(c).
`Upon consideration of the Petition and the Preliminary Response, we
`exercise our discretion pursuant to 35 U.S.C. § 325(d) and do not institute
`inter partes review because the same or substantially the same prior art
`previously were presented to the Office.
`
`Related Proceedings
`
`Petitioner and Patent Owner identify the following related matter:
`
`Dentsply Sirona, Inc., et al. v. Edge Endo, LLC, et al., No. 1:17-CV-01041
`(D.N.M.). Paper 10, 1; Paper 12, 2. The parties also identify U.S. Patent
`Application Serial No. 15/710,869, filed September 21, 2017. Paper 10, 1;
`Paper 12, 3. Additionally, Petitioner challenges patents with similar subject
`matter to the ’696 patent in IPR2018-01320, IPR2018-01321, and
`IPR2018-01322. Paper 10, 1; Paper 12, 2–3.
`
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`Real Parties in Interest
`
`Petitioner identifies the following as real parties in interest: Edge
`Endo, LLC; US Endodontics, LLC; Charles Goodis; Bobby Bennett; Edge
`Holdings, LLC; Guidance Endodontics, LLC; Peter Brasseler Holdings,
`LLC; SG Healthcare Corp.; SavDen Corp.; and Henry Schein, Inc.”
`Paper 10, 1. Patent Owner identifies “Maillefer Instruments Holding
`S.a.r.l.” and “Tulsa Dental Products LLC d/b/a Dentsply Sirona
`Endodontics” as real parties in interest. Paper 12, 2.
`
`The References
`
`Petitioner relies upon the following references:
`U.S. Patent Application Publication No. US 2004/0023186 A1,
`published February 5, 2004 (Ex. 1004, “McSpadden”);
`U.S. Patent No. 6,299,445 B1, issued October 9, 2001 (Ex. 1005,
`“Garman”);
`U.S. Patent Application Publication No. US 2006/0228669 A1,
`published October 12, 2006 (Ex. 1006, “Scianamblo”);
`International Publication Number WO 01/19279 A1, published
`March 22, 2001 (Exs. 1007, 1008; “Badoz”);1 and
`U.S. Patent No. 5,882,198, issued March 16, 1999 (Ex. 1009,
`“Taylor”).
`
`
`1 Petitioner filed an English-language translation (Exhibit 1008), including a
`certificate of translation, of Exhibit 1007. References and citations to Badoz
`refer to Exhibit 1008, unless otherwise indicated.
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`The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1, 2, 5, and 8–10 of
`the ’696 patent on the following grounds:
`Reference(s)
`Basis
`McSpadden
`§ 102
`McSpadden
`§ 103(a)
`McSpadden and Garman
`§ 103(a)
`Scianamblo
`§ 103(a)
`Scianamblo and Garman
`§ 103(a)
`Badoz and Taylor
`§ 103(a)
`Badoz, Taylor, and Garman
`§ 103(a)
`
`Claims Challenged
`1, 2, 5, and 8
`1, 2, 5, 8, and 10
`9
`1, 2, 5, 8, and 10
`9
`1, 2, 5, and 10
`8 and 9
`
`Petitioner supports its challenge with a Declaration by Mr. Gary Garman,
`dated June 28, 2018 (Ex. 1003).
`
`The ’696 Patent
`
`The ’696 patent is directed to an instrument for drilling dental root
`canals. Ex. 1001, 2:15–16. The ’696 patent explains that “treatment of an
`infected dental root is carried out by extracting the pulp using special
`instruments, then by shaping the root canal using successive drilling
`procedures, traditionally carried out with instruments of varying size and
`conicity. The final operation consists of filling the root canal.” Id. at 1:11–
`15. The ’696 patent teaches that a typical instrument for drilling root canals
`is a tapered rod, which rotates, fitted into a handle. Id. at 1:20–24. The
`’696 patent identifies several problems associated with prior art instruments:
`Used in continuous rotation, this type of instrument may
`have a tendency to screw itself into the canal. Apart from the
`screwing action, another problem occurring in the production of
`instruments for drilling root canals is that of the strength and
`flexibility of the instruments. Indeed, when the instrument is too
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`flexible it may bend or break before the practitioner has been able
`to complete the operation and when the instrument is too rigid, it
`follows the curvature of the dental root canal only with difficulty.
`Id. at 1:25–33. Thus, the ’696 patent aims to “produce an instrument which
`is flexible while being strong, reliable and effective and which makes it
`possible at the same time to respect the initial path of the root canal to be
`treated and to ensure optimum dimensioning of the canal in its apical portion
`after treatment.” Id. at 2:4–11.
`Figure 1 is shown below:
`
`
`Figure 1 of the ’696 patent illustrates a first embodiment of an instrument for
`drilling root canals in accordance with the invention. Id. at 2:23–24. The
`’696 patent explains:
`In a first embodiment shown in FIG. 1 the instrument in
`accordance with the invention comprises a rod 1 fitted at one of
`its ends 1a in a handle 2 permitting either manual actuation of
`the instrument or preferably its engagement in a hand-held part
`providing mechanical driving of the said instrument. In
`particular, the instrument 1 is intended to be driven in rotation
`about its axis of rotation R.
`The rod 1 has an active part 1b extending to the other
`end 3—the point 3—of the rod 1. Said active part 1b is
`preferably tapered and conical, narrowing to the point 3 of the
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`rod 1. Alternatively, the active part 1b or the whole rod 1 could
`be cylindrical rather than conical.
`The active part 1b has a polygonal cross-section (the sides
`of which are straight or curved) and comprises cutting edges.
`More particularly in this first embodiment, the active part 1b has,
`over its whole length, a square cross-section 4 forming four
`cutting edges 5a, 5b, 5c, 5d defining between them four
`helicoidal flutes 6, one flute being the face defined between two
`successive cutting edges of the active part 1b. The active part 1b
`is defined by an envelope 7 which is substantially tapered and
`has its longitudinal axis coinciding with the axis of rotation R of
`the instrument.
`The particular feature of the instrument in accordance with
`the invention resides in the fact that the active part 1b has a first
`portion 1c extending from the point 3 towards the rear of the
`active part 1b and of which the centre of mass is located on the
`axis of rotation R of the instrument and a second portion 1d
`extending from the end of the first portion 1c to the rear of the
`active part 1b and of which at least one cross-section has a centre
`of mass which is not located on the axis of rotation R of the
`instrument but is offset with respect to said axis R. In the first
`embodiment shown in FIGS. 1 to 4, any cross-section of the
`second portion 1d of the active part 1b of the instrument 1 has a
`centre of mass which is not located on the axis of rotation R but
`is offset with respect to said axis.
`Id. at 2:56–3:25.
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`Figures 2–4 are reproduced below:
`
`
`Figures 2–4 of the ’696 patent show cross-sectional views of the instrument
`shown in Figure 1 along different lines. Id. at 2:25–30. The ’696 patent
`explains that, “as shown in FIG. 2, . . . any cross-section 4a of the first
`portion 1c has its centre of mass ma on the axis of rotation R of the
`instrument. Moreover, . . . the four edges 5a, 5b, 5c, 5d of such a
`cross-section 4a are located on the envelope 7.” Id. at 3:26–31. In
`comparison,
`[a]s shown in FIGS. 3 and 4 . . . any cross-section 4b of
`the second portion 1d of the active part 1b has its centre of
`mass mb offset with respect to the axis of rotation R of the
`instrument and preferably a single cutting edge 5a of such a
`cross-section 4b is located on the envelope 7, the other cutting
`edges 5b, 5c and 5d being disposed inside said envelope 7.
`Id. at 36–45. The ’696 patent teaches that an effective instrument is
`obtained “because its point 3 is centered, does not generate any heating
`within the canal and has four active cutting edges.” Id. at 3:46–48.
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`
`Illustrative Claim
`
`Claim 1, the sole independent claim challenged in this proceeding, is
`representative of the challenged subject matter and reproduced below:
`1.
`An instrument for drilling dental root canals
`comprising:
`a tapered rod defined by a single continuous taper function
`and having over at least an active part of its length a polygonal
`cross-section forming at least two cutting edges, said active part
`terminating by a point and being defined by an envelope of a
`cylindrical or conical shape along its entire length, the
`longitudinal axis of the envelope coinciding with the axis of
`rotation of the instrument,
`wherein for any cross-section of the active part, at least
`one of the at least two cutting edges is located on the envelope,
`said active part has a first portion extending from the point
`and a second portion extending following the first portion
`towards the rear of the active part,
`any cross-section of the first portion has a center of mass
`located on the axis of rotation, said at least two cutting edges
`defined by said cross-section of the first portion being located on
`the envelope,
`at least one cross-section of the second portion has a center
`of mass offset with respect to the axis of rotation, at least one
`cutting edge defined by said cross-section of the second portion
`being located set back within the envelope.
`Id. at 8:2–27.
`
`CLAIM CONSTRUCTION
`II.
`The parties propose several claim terms for construction. At this stage
`of the proceeding, however, and for the reasons discussed below, we do not
`need to construe expressly any claim terms for purposes of this Decision.
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (only terms that are in controversy need to be construed, and these
`need be construed only to the extent necessary to resolve the controversy).
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`III. ANALYSIS – 35 U.S.C. § 325(d)
`Section 325(d) of Title 35 of the United States Code provides, in
`relevant part: “In determining whether to institute or order a proceeding
`under this chapter, chapter 30, or chapter 31, the Director may take into
`account whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were presented to
`the Office.” In Becton, Dickinson and Co. v. B. Braun Melsungen AG,
`Case IPR2017-01586, 2018 WL 2671360 (PTAB Dec. 15, 2017) (designated
`informative Mar. 21, 2018), the Board set forth six non-exclusive factors
`that previous panels had considered in evaluating whether to exercise
`discretion under § 325(d) to deny a petition:2
`(1) the similarities and material differences between the asserted art
`and the prior art involved during examination;
`(2) the cumulative nature of the asserted art and the prior art evaluated
`during examination;
`(3) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`(4) the extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the prior
`art or Patent Owner distinguishes the prior art;
`(5) whether Petitioner has pointed out sufficiently how the Examiner
`erred in its evaluation of the asserted prior art; and
`
`
`2 There is no requirement that each factor be considered in every case, and
`there is no limitation to the consideration of other factors that may be
`relevant to the application of § 325(d).
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`(6) the extent to which additional evidence and facts presented in the
`Petition warrant reconsideration of the prior art or arguments.
`Id. at *6. We first discuss the prosecution history of the ’696 patent and then
`consider the Becton Dickinson factors as applicable to each of the references
`relied upon by Petitioner.
`
`Prosecution History
`
`During prosecution of the ’696 patent application, the examiner
`rejected then-pending claims 1–7, 9, and 10 under 35 U.S.C. § 102(b) as
`anticipated by U.S. Patent Application Publication No. 2006/0228668 A1,
`published October 12, 2006 (Ex. 1010, “the related McSpadden reference”)
`and rejected then-pending claim 8 under 35 U.S.C. § 103(a) based on the
`related McSpadden reference. Ex. 1002, 244–50 (Non-Final Office Action,
`mailed Jan. 30, 2017). The examiner relied upon Figures 3A, 3C, 3D, and
`4A–4I of the related McSpadden reference, as well as paragraph 55. Id. at
`247.
`
`Applicants amended the claims to include, inter alia, limitations that
`the tapered rod be “defined by a single continuous taper function” and that
`“for any cross-section of the active part, at least one of the at least two
`cutting edges is located on the envelope.” Id. at 308 (amendments to
`independent claim 1). Applicants argued, inter alia, that the related
`McSpadden reference “does not disclose or suggest a tapered rod having a
`single continuous taper function. The instrument of [the related]
`McSpadden [reference] is a multi-tapered instrument that is not defined by a
`single continuous taper function.” Id. at 316.
`The examiner issued a Notice of Allowance and Notice of
`Allowability. Id. at 321–25. Applicants then submitted a request for
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`continued examination and an Information Disclosure Statement (“IDS”)
`that included, inter alia, McSpadden, Scianamblo, and Badoz. Id. at 350–
`57. The examiner indicated that each of the references submitted was
`considered. See, e.g., id. at 392 (notation at the bottom of the page stating,
`“ALL REFERENCES CONSIDERED EXCEPT WHERE LINED
`THROUGH. /EDB/”). Thereafter, the examiner issued a new Notice of
`Allowance and Notice of Allowability. Id. at 386–90.
`
`Challenges Based on McSpadden
`
`Petitioner advances challenges based on McSpadden alone, including
`anticipation and obviousness, as well as a challenge based on McSpadden in
`combination with Garman. Pet. 3.
`
`
`
`Similarities and Material Differences Between the
`Asserted Art and the Prior Art Involved During
`Examination;
`Cumulative Nature of the Asserted Art and the Prior Art
`Evaluated During Examination; and
`Extent to Which the Asserted Art Was Evaluated During
`Examination, Including Whether the Prior Art Was the
`Basis for Rejection
`Petitioner acknowledges that (1) McSpadden was cited in an IDS and
`considered by the examiner during prosecution of the ’696 patent application
`(Pet. 7); (2) the Examiner relied upon, and rejected the pending claims under
`35 U.S.C. §§ 102 and 103 based on, the related McSpadden reference (id. at
`8); and (3) the related McSpadden reference “is a continuation-in-part of,
`and in substantial part includes the disclosures of, McSpadden” (id. at 8 n.4).
`Additionally, Petitioner recognizes that the examiner relied upon portions of
`the related McSpadden reference that correspond to Figures 3A, 3C, 3D, and
`4A–4I of McSpadden. Id. at 8 (citing Ex. 1002, 245–47, 249).
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`We have reviewed McSpadden and the related McSpadden reference,
`as well as the prosecution history of the ’696 patent application. We agree
`with Petitioner that the disclosures of McSpadden are substantially the same,
`if not exactly the same in relevant part, to those of the related McSpadden
`reference. Most notably, we refer to Figures 3A–3D and Figures 4A–4I, and
`the corresponding descriptions in the respective specification. Therefore, the
`first three Becton Dickinson factors weigh in favor of dismissing the Petition
`under § 325(d).
`
`
`
`Extent of the Overlap Between the Arguments Made
`During Examination and the Manner in Which Petitioner
`Relies on the Prior Art or Patent Owner Distinguishes
`the Prior Art
`During prosecution, the examiner relied upon Figures 3A, 3C, 3D, and
`4A–4I of the related McSpadden reference, which figures are substantially
`the same as Figures 3A, 3C, 3D, and 4A–4I of McSpadden. Compare
`Ex. 1010, Figs. 3A, 3C, 3D, 4A–4I with Ex. 1004, Figs. 3A, 3C, 3D, 4A–4I.
`As noted above, the examiner rejected many of the then-pending claims as
`anticipated by the related McSpadden reference and raised a rejection based
`on obviousness over the related McSpadden reference.
`Petitioner relies upon the same figures of McSpadden in asserting that
`claims 1, 2, 5, and 8 are anticipated by McSpadden and in asserting that
`claims 1, 2, 5, 8, and 10 would have been obvious over McSpadden. See,
`e.g., Pet. 29 (citing Figures 3A and 3C of McSpadden). Petitioner contends
`that the examiner failed to consider “several key disclosures [of the related
`McSpadden reference] that correspond to those of McSpadden upon which
`Petitioner relies in this Petition.” Pet. 8 (citing Ex. 1004 ¶¶ 36, 49, 51–53,
`59, 60). Yet, when discussing the claim phrase “tapered rod defined by a
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`single continuous taper function,” Petitioner suggests that we should not
`give credit to the disclosure in several of those same paragraphs that
`describe Figures 3A and 3C of McSpadden as having two taper functions as
`opposed to one. See, e.g., id. at 14 (“Figures 3A and C depict a ‘tapered rod
`defined by a single continuous taper function,’ notwithstanding that the
`related McSpadden reference [as well as McSpadden] describes this
`embodiment as having a second taper function (which defines its ‘cork-
`screw-like shape’).” (citing Ex. 1010 ¶¶ 48–54, 56; Ex. 1003 ¶¶ 54–56)).
`Thus, Petitioner’s argument calls into question its position regarding the
`criticality of the alleged disclosure not considered by the examiner.
`There is also substantial overlap between the arguments raised by
`applicants during prosecution and Patent Owner. In response to the
`examiner’s rejections based on the related McSpadden reference, applicants
`argued, as noted above, that the related McSpadden reference does not
`disclose a rod having a single continuous taper function. Ex. 1002, 316.
`Patent Owner raises the same argument in its Preliminary Response, that
`McSpadden does not disclose a rod with a single continuous taper function.
`See, e.g., Prelim. Resp. 46–49.
`Of course, there are differences between the arguments raised by the
`examiner and those raised by Petitioner. But, § 325(d) is phrased in the
`disjunctive (“or”), not the conjunctive (“and”), when it refers to “whether
`. . . the same or substantially the same prior art or arguments previously
`were presented to the Office.” 35 U.S.C. §325(d) (emphasis added). Thus,
`§ 325(d) does not require previous presentation of the same art and
`arguments. In the context before us, where the examiner rejected the claims
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`based on substantially the same prior art, we attribute less weight to the
`differences in the arguments raised.
`
` Whether Petitioner has Pointed Out Sufficiently How the
`Examiner Erred in Its Evaluation of the Asserted Prior
`Art
`Petitioner does not assert that the examiner erred in evaluating the
`related McSpadden reference, except to comment that certain disclosures
`were not considered previously by the Office. Pet. 8. The disclosures to
`which Petitioner points, as discussed above, include the discussion in the
`McSpadden specification that describes, inter alia, Figures 3A and 3C. We
`find it unreasonable to believe that the examiner relied upon the same
`figures Petitioner relies upon, yet did not review the description of those
`figures in the related McSpadden reference. Nonetheless, whether and to
`what extent the examiner appreciated the full scope of the related
`McSpadden reference, we may never know. What we do know, however, is
`that the examiner reviewed the reference and relied upon it in rejecting the
`then-pending claims. Thus, on the record before us, this factor weighs
`considerably less than the first three factors previously discussed.
`
`
`
`Extent to Which Additional Evidence and Facts
`Presented in the Petition Warrant Reconsideration of the
`Prior Art or Arguments
`The principal additional evidence presented by Petitioner is the
`declaration testimony of Gary Garman, which was not available to the
`examiner during examination of the ’696 patent application. We have
`reviewed Mr. Garman’s testimony regarding McSpadden and determine that
`his testimony largely mirrors the arguments presented in the Petition. In
`short, we recognize that there is a disagreement between Petitioner’s
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`consideration of McSpadden and the examiner’s determination that the
`related McSpadden reference does not anticipate or render the claims
`obvious. We acknowledge that Petitioner raises arguments beyond those
`made by the examiner but, on balance, we determine that reconsideration of
`McSpadden’s disclosure in an inter partes review would not be an efficient
`use of the Board’s or parties’ resources.
`
`Summary
`
`As discussed above, Petitioner sets forth different arguments and
`additional evidence that were not raised by, or available to, the examiner.
`On balance, however, we give the most weight to the fact that the examiner
`rejected the claims (1) based on the related McSpadden reference, which is
`substantially the same prior art as McSpadden, and (2) on the same statutory
`grounds that form the basis for Petitioner’s challenge. Further, we do not
`find that the addition of Garman, to challenge a single dependent claim,
`changes the balance regarding Petitioner’s challenge based on McSpadden.
`Accordingly, we find that consideration of the Becton Dickinson factors
`supports the exercise of our discretion to reject the Petition under § 325(d).
`
`Challenges Based on Scianamblo
`
`Petitioner advances obviousness challenges based on Scianamblo
`alone as well as a challenge based on Scianamblo in combination with
`Garman. Pet. 3.
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`Similarities and Material Differences Between the
`Asserted Art and the Prior Art Involved During
`Examination; and
`Cumulative Nature of the Asserted Art and the Prior Art
`Evaluated During Examination
`Scianamblo is directed to endodontic instruments, which can be used
`for cleaning and enlarging the endodontic cavity space, also known as the
`root canal system of a human tooth. Ex. 1006 ¶¶ 2–3. Scianamblo discloses
`several different embodiments, including those shown in Figures 11A and
`30A, reproduced below:
`
`
`
`Figure 11A of Scianamblo illustrates cutting edge 1106 of working
`portion 1104 of endodontic instrument 1102. Id. ¶ 97. Figure 30A of
`Scianamblo illustrates a curved embodiment of the instrument, in which
`tip 2315 can lie on or off of the axis of rotation 2320. Id. ¶ 232.
`As discussed above, the related McSpadden reference includes
`substantially the same Figures 2A–2D and 3A–3D as McSpadden.
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`Figures 2A, 2C, 3A, and 3C of the related McSpadden reference are
`reproduced below:
`
`
`
`
`Figures 2A and 2C of the related McSpadden reference illustrate “side
`elevation view[s] of a multi-tapered endodontic instrument,” with Figure 2C
`providing a “detail view of the working portion” of the instrument shown in
`Figure 2A. Ex. 1010 ¶¶ 14, 16. Figures 3A and 3C illustrate “side elevation
`view[s]” of an alternative embodiment, with Figure 3C providing a “detail
`view of the working portion” of the instrument shown in Figure 3A. Id.
`¶¶ 18, 20.
`Although there are differences between Scianamblo and the related
`McSpadden reference, those differences do not detract from the overall
`substantial similarity of their disclosures. For example, Petitioner maps the
`elements of claims 1, 2, 5, 8, 10 to each of Scianamblo and McSpadden.3
`
`
`3 Although Petitioner maps the elements of the claims to McSpadden,
`Petitioner acknowledges that the related McSpadden reference includes
`those same disclosures. Pet. 8 n.4.
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`IPR2018-01349
`Patent 9,801,696 B2
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`Compare, e.g., Petitioner’s Ground 2 with Ground 4 (challenging the same
`claims based on each reference alone). Additionally, Petitioner fails to point
`out any substantial differences between Scianamblo and the related
`McSpadden reference (or McSpadden). Accordingly, the first two Becton
`Dickinson factors weigh in favor of dismissing the Petition under § 325(d).
`
`
`
`Extent to Which the Asserted Art Was Evaluated During
`Examination, Including Whether the Prior Art Was the
`Basis for Rejection
`Petitioner acknowledges that Scianamblo was identified by applicants
`in an IDS and considered by the examiner during prosecution of the
`’696 patent application. Pet. 7. The examiner did not rely upon Scianamblo
`as a basis for rejecting the claims, finding instead that the claims were
`allowable after consideration of Scianamblo. Accordingly, this factor is
`either neutral or slightly weighs in favor of rejecting the Petition under
`§ 325(d).
`
`
`
`Extent of the Overlap Between the Arguments Made
`During Examination and the Manner in Which Petitioner
`Relies on the Prior Art or Patent Owner Distinguishes
`the Prior Art
`Although Scianamblo was not expressly applied by the examiner
`during prosecution, Petitioner relies upon Scianamblo as disclosing the same
`elements of the claims allegedly taught by McSpadden. Thus, the Petition
`suggests that there is considerable overlap between their disclosures.
`
` Whether Petitioner has Pointed Out Sufficiently How the
`Examiner Erred in Its Evaluation of the Asserted Prior
`Art
`We do not find this factor relevant because neither Scianamblo nor
`Garman was applied by the examiner in a rejection of the claims.
`
`18
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`Extent to Which Additional Evidence and Facts
`Presented in the Petition Warrant Reconsideration of the
`Prior Art or Arguments
`As noted above regarding McSpadden, the additional evidence
`presented by Petitioner is the declaration testimony of Gary Garman, which
`was not available to the examiner during examination of the ’696 patent
`application. We have reviewed Mr. Garman’s testimony regarding
`Scianamblo and determine that his testimony largely mirrors the arguments
`presented in the Petition. On balance, we do not find that the additional
`evidence or facts presented in the Petition warrant reconsideration of the
`prior art or arguments.
`
`Summary
`
`For the reasons discussed above, we find that Petitioner relies upon
`portions of Scianamblo that are substantially the same as the related
`McSpadden reference considered by the examiner during prosecution. That
`fact, in light of the record before us, carries the most weight in our
`consideration of the Becton Dickinson factors and supports the exercise of
`our discretion to reject the Petition under § 325(d). Further, we do not find
`that the addition of Garman changes the balance regarding Petitioner’s
`challenge based on Scianamblo. Accordingly, we find that consideration of
`the Becton Dickinson factors supports the exercise of our discretion to reject
`the Petition under § 325(d).
`
` Challenges Based on Badoz
`Petitioner advances obviousness challenges based on Badoz in
`combination with Taylor and Garman. Pet. 4.
`
`19
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`IPR2018-01349
`Patent 9,801,696 B2
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`Similarities and Material Differences Between the
`Asserted Art and the Prior Art Involved During
`Examination; and
`Cumulative Nature of the Asserted Art and the Prior Art
`Evaluated During Examination
`Badoz is directed to “endodontic instruments for the preparation of
`root canals.” Ex. 1008, 1:2–3. Badoz explains that unlike many prior art
`endodontic instruments that have circular symmetry, its instrument does not.
`Id. at 1:20–24. By “intentionally breaking the circular symmetry of the
`instrument,” Badoz explains that “the tip of the instrument is able to search
`for the root canal and penetrate it naturally, since the bending resistance of
`the blade is no longer the same in all directions.” Id. at 1:21–24.
`Badoz includes Figures 1–4, reproduced below, illustrating cross-
`section views of its instrument:
`
`
`Badoz’s Figure 1 shows “a cross-section view of a root-canal instrument of
`the prior art” and Figures 2–4 show cross-section views of different
`embodiments of Badoz’s root canal instruments. Id. at 2:3–11.
`
`20
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`IPR2018-01349
`Patent 9,801,696 B2
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`
`Figures 2D, 3D, and 4A–4I of the related McSpadden reference are
`shown below:
`
`
`
`
`Figures 2D, 3D, and 4A–4I of the related McSpadden reference show partial
`cross-section views of different embodiments of the working portion of a
`multi-tapered endodontic instrument. Ex. 1010 ¶¶ 16, 21, 22. Figures 2D
`and 3D show cutting edges 125, 225. See, e.g., id. ¶¶ 41, 55.
`Petitioner relies on substantially the same disclosure from McSpadden
`and Badoz. For example, Petitioner’s annotated versions of Figure 3D from
`McSpadden4 and Figure 2 from Badoz are reproduced below:
`
`
`4 As discussed previously, Figure 3D of McSpadden is substantively the
`same as Figure 3D of the related McSpadden reference.
`
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`IPR2018-01349
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`Figure 3D of McSpadden is shown on the left and Figure 2 of Badoz is
`shown on the right, each annotated by Petitioner with a red arrow to identify
`a cutting edge on the envelope. Pet. 33, 59.5
`Although there are differences between Badoz and the related
`McSpadden reference, those differences do not detract from the overall
`substantial similarity of their disclosures. Additionally, Petitioner fails to
`point out any substantial differences between Badoz and the related
`McSpadden reference (or McSpadden). Accordingly, the first two Becton
`Dickinson factors weigh in favor of dismissing the Petition under § 325(d).
`
`
`
`Extent to Which the Asserted Art Was Evaluated During
`Examination, Including Whether the Prior Art Was the
`Basis for Rejection
`Petitioner acknowledges that Badoz was identified by applicants in an
`IDS and considered by the examiner during prosecution of the ’696 patent
`application. Pet. 7. The examiner did not rely upon Badoz as a basis for
`rejecting the claims, finding instead that the claims were allowable after
`
`
`5 Petitioner also explains that Taylor “similarly teaches that its instrument
`has at least one cutting edge located on the envelope.” Pet. 60 (citing
`Ex. 1009, 6:17–27, Figs. 2C, 2D; Ex. 1003 ¶ 225).
`
`22
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`IPR2018-01349
`Patent 9,801,696 B2
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`consideration of Badoz. Accordingly, this factor is either neutral or slightly
`weighs in favor of dismissing the Petition under § 325(d).
`
`
`
`Extent of the Overlap Between the Arguments Made
`During Examination and the Manner in Which Petitioner
`Relies on the Prior Art or Patent Owner Distinguishes
`the Prior Art
`Although Badoz was not expressly applied by the examiner during
`prosecution, Petitioner relies upon Badoz and Taylor as disclosing the same
`elements of claims 1, 2, 5, and 10 allegedly taught by McSpadden. Thus, the
`Petition suggests that there is considerable overlap between their disclosures.
`
` Whethe
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