Facts

Dr. Paula Small sued Nobel Biocare USA LLC, Nobel Biocare AB, Implant Direct Manufacturing LLC dba Implant Direct LLC, and others, for patent infringement.

PLAINTIFF'S CONTENTIONS:
Small holds two patents directed to methods to rehabilitate a damaged dental implant and an improved dental implant design that helps prevent a mounted crown from rotating. Small contended that defendants' dental implant products infringed on these patents.

DEFENDANTS' CONTENTIONS:
Defendants contended that its' dental implants did not infringe the asserted patents, that the patents were invalid on a number of grounds, and that the patents were unenforceable due to inequitable conduct before the Patent Office. Nobel filed two motions for summary judgment. With respect to Small's first patent, Noble contended that the asserted claims were invalid because the invention embodying those claims had been on sale and in public use for more than one year prior to the patent application's filing. Defendants contended that Small's second patent was invalid because it failed to comply with the written description requirement, it violated the rule against reissue recapture, and it was anticipated by prior art dental implant designs. Implant Direct joined Nobel's second motion, and moved for summary judgment, of the non-infringement of the second Small patent. Implant Direct contended that the allegedly infringing products did not embody all of the elements of the claims asserted against it.

Result

The court granted both of Nobel's motions for summary judgment of invalidity. On Small's first patent, the court found the asserted claims invalid because the evidence showed, as a matter of law, that the invention embodied in the asserted claims had been in public use more than a year before the application was filed. On Small's second patent, the court found that the original patent application failed to provide a sufficient written description of the claimed inventions and that the patent owner had improperly recaptured subject matter during a reissue proceeding. The court did not reach the issue of whether the second patent was anticipated by prior art implant designs. Finding that the second patent was invalid, the court also granted Implant Direct's motion for summary judgment due to non-infringement, relying on the principle that one cannot infringe an invalid patent.