United States: Insufficient Teaching Away Throws Cold Water On Heat-Treating Patent

In a non-precedential decision, the US Court of Appeals for the Federal Circuit concluded that the degree of teaching away is a question of fact reviewable for substantial evidence, and affirmed a determination of obviousness in an inter partes review. Gold Standard Instruments, LLC v. US Endodontics, LLC, Case No. 16-2597 (Fed. Cir., Aug. 17, 2017) (Prost, CJ).

Gold Standard is the owner of a patent directed to methods for manufacturing an endodontic instrument by heat-treating the entire shank of the instrument. US Endodontics filed a petition for inter partes review of the patent. The Patent Trial and Appeal Board (PTAB or Board) found all claims of the patent obvious in view of a reference by Matsutani, which discloses a procedure for heat-treating three-quarters of the shank of an instrument. However, Matsutani discloses that "a problem may occur" in the manufacture of an instrument if the maker heat-treats more than three-quarters of the shank. In arguing around this disclosure, US Endodontics' expert testified that a skilled artisan would have inferred that Matsutani's heat-treating procedures may be used for the entire shank. Gold Standard appealed.

On appeal, Gold Standard argued that the asserted combination did not render the claims obvious because Matsutani's disclosure that heat-treating more than three-quarters of the shank may cause "a problem [to] occur" teaches away from the heat-treating the entire shank claim limitation. The Federal Circuit rejected this argument, finding there was substantial evidence that the degree of teaching away was insufficient to defeat a finding of obviousness.

First, the Court noted that the degree of teaching away is a question of fact reviewable for substantial evidence. Second, the Court found that the PTAB finding was supported by the expert testimony that a skilled artisan would have inferred that Matsutani's heat-treating procedures may be used for the entire shank.

By using expert testimony to contextualize teachings away within the knowledge of a skilled artisan, parties can help the PTAB understand the impact of references in an obviousness combination and increase the likelihood that the Federal Circuit will apply substantial evidence as opposed to de novo review.

Insufficient Teaching Away Throws Cold Water on Heat-Treating Patent

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