PTAB

IPR2025-00787

Dentsply Sirona Inc v. Osseo Imaging LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Dental and Orthopedic Densitometry Modeling System and Method
  • Brief Description: The ’374 patent describes a system and method for creating tomographic models of dental and orthopedic structures to measure bone density. The system uses computed tomography (CT) equipment to generate quantitative data regarding a patient's bone morphology.

3. Grounds for Unpatentability

Ground 1: Obviousness over Arai and Cann - Claims 1-12 are obvious over Arai in view of Cann.

  • Prior Art Relied Upon: Arai (Patent 6,118,842) and Cann (“Precise Measurement of Vertebral Mineral Content Using Computed Tomography,” Journal of Computer Assisted Tomography (Aug 1980)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Arai discloses a complete dental X-ray CT imaging apparatus containing all structural elements of independent claim 1. This includes a controller with a microprocessor and memory (Arai’s “controlling means 170” and “image signal processing means 236”), input/output devices, positioning motors, and X-ray equipment (source, detector, restricted beam device). Petitioner contended that while Arai's system is inherently quantitative, to the extent it is found not to be, Cann explicitly teaches the use of CT for quantitative bone mineral measurements. Cann describes using dual-energy CT and calibration phantoms to improve the accuracy of densitometry.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Arai’s dental CT system with Cann’s quantitative densitometry methods to obtain more accurate and precise bone density models for dental diagnosis. Arai itself noted the utility of knowing jawbone thickness prior to implant operations, and Cann’s teachings provide a well-known method to enhance such measurements. Adding a quantitative function makes the system more versatile and saves costs on separate equipment.
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in combining the teachings, as both relate to CT imaging, and applying quantitative measurement techniques to a CT scanner was an established and well-understood practice by the priority date.

Ground 2: Obviousness over Pelc and Rothman - Claims 1-12 are obvious over Pelc in view of Rothman.

  • Prior Art Relied Upon: Pelc (WO 94/10908) and Rothman (DENTAL APPLICATIONS OF COMPUTERIZED TOMOGRAPHY (1998)).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Pelc discloses a general-purpose CT system for evaluating bone density and morphology that meets all limitations of independent claim 1. Pelc’s system includes an electronic computer controller, mass storage, input/output devices, positioning motors, and X-ray equipment. Petitioner argued that while Pelc’s system is not expressly for dental imaging, Rothman teaches the widespread and logical application of CT imaging technology to dental applications, including the preoperative evaluation of the jaw for dental implants and the quantitative assessment of mineral content in the mandible.
    • Motivation to Combine (for §103 grounds): A POSITA would be motivated to apply the teachings of Pelc's bone densitometry system to the dental context described by Rothman. Rothman extolls the benefits of CT for dental applications and explains that most commercially available CT scanners are suitable for this purpose. This established the clear utility of combining a known CT system (Pelc) with a known application (dental imaging per Rothman).
    • Expectation of Success (for §103 grounds): Given that Rothman describes using CT imaging devices similar to Pelc's for producing tomographic models of dental structures, a POSITA would have a high expectation of success in applying Pelc's system to the dental field.

  • Additional Grounds: Petitioner asserted that claims 1, 3, 7, and 9 are anticipated by Arai under 35 U.S.C. §102 and that claims 1-4 and 7-10 are anticipated by Pelc under §102. Petitioner also asserted additional obviousness challenges for all 24 claims based on Arai and Pelc in further combination with references including Xu (Patent 6,363,163), Milestone (WO 98/36683), and Pelc ’080 (Patent 5,533,080) to teach features such as comparing models, helical scan paths, and dual-energy beams.

4. Key Claim Construction Positions

  • Petitioner adopted claim constructions from a prior district court litigation (Osseo Imaging, LLC v. Planmeca USA Inc., D. Del. 2017) for the purposes of the petition.
  • "Tomographically modeling/tomographic model(s)": Construed as "Merging information from multiple tomographic scans of an object to produce a representation of the subject/said representation depicting quantitative density differences of the object scanned..." Petitioner argued that standard CT systems, as disclosed in the prior art, inherently produce quantitative data (e.g., Hounsfield units) that satisfies this construction.
  • "Fiducial marker": As the term is not defined in the patent, Petitioner proposed a construction of "An x-ray attenuating object on or within the structure to be imaged that serves as a reference point." This construction is relevant to the negative limitation "without the use of fiducial markers" in claims 13 and 21.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv is inappropriate. It was asserted that the co-pending district court litigation against Petitioner is at a nascent stage, as an answer had not yet been filed and no trial date or dates for substantive filings were set. Therefore, the factors weigh against discretionary denial. Petitioner also noted the Board previously instituted review of the same claims on substantially the same grounds in IPR2020-00659, which was terminated due to settlement before a Final Written Decision (FWD).

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of the ’374 patent as unpatentable.