Endodontic Patent Lacked Enablement due to Testing Results

January 3, 2017 – Judge Goodson wrote the final written decision in a post-grant review proceeding which found unpatentable claims 12-16 of U.S. Patent 8,876,991, regarding endodontic instruments for use in performing root canals. The claims were found to lack enablement under 35 U.S.C. § 112(a) due to Petitioners’ testing results. The claims also lacked written description under 35 U.S.C. § 112(a) because the specification does demonstrate possession of heat-treatment that achieves the deformation characteristic of the ‘wherein’ clause. Judge Goodson also granted in part the Petitioners’ Motion to Exclude a declaration in the file history of a related patent as hearsay. He denied Patent Owners’ Motion to Exclude cited references because the arguments went to the weight of the evidence, rather than the evidences’ admissibility. Petitioners include US Endodontics, LLC and four others. Patent Owners include Gold Standard Instruments, LLC and two others. The case was pending in the Patent Trials and Appeal Board and is captioned US Endodontics, LLC v. Gold Standard Instruments, LLC, PGR2015-00019.

By: Una Fan