  United States Court of Appeals
      for the Federal Circuit
                ______________________

        SIRONA DENTAL SYSTEMS GMBH,
                  Appellant

                           v.

INSTITUT STRAUMANN AG, DENTAL WINGS INC.,
               Cross-Appellants
            ______________________

                 2017-1341, 2017-1403
                ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in No.
IPR2015-01190.
               ______________________

                Decided: June 19, 2018
                ______________________

   JUSTIN J. OLIVER, Fitzpatrick, Cella, Harper & Scinto,
Washington, DC, argued for appellant. Also represented
by JASON M. DORSKY; JOHN D. CARLIN, MICHAEL P.
SANDONATO, New York, NY.

   WESLEY OTTO MUELLER, Leydig, Voit & Mayer, Ltd.,
Chicago, IL, argued for cross-appellants. Also represent-
ed by DAVID AIRAN, THOMAS CANTY, AARON ROSS
FEIGELSON.
                 ______________________
2     SIRONA DENTAL SYSTEMS GMBH    v. INSTITUT STRAUMANN AG



    Before PROST, Chief Judge, MOORE and STOLL, Circuit
                          Judges.
MOORE, Circuit Judge.
    Sirona Dental Systems GmbH appeals the final writ-
ten decision of the Patent Trial and Appeal Board
(“Board”) holding claims 1–8 of U.S. Patent No. 6,319,006
unpatentable as obvious over the combination of German
Patent No. 195 10 294 (“Bannuscher”) and U.S. Patent
No. 5,842,858 (“Truppe”), and denying Sirona’s contingent
motion to amend the claims. Institut Straumann AG and
Dental Wings Inc. (collectively, “Petitioners”) cross-appeal
the Board’s decision holding patentable claims 9–10 of the
’006 patent. For the following reasons, we affirm-in-part,
vacate-in-part, and remand-in-part.
                        BACKGROUND
    The ’006 patent “relates to a method for producing a
drill assistance device,” i.e., a drill template, “to precisely
place a pilot hole for a tooth implant, wherein the pilot
hole for the tooth implant is aligned relative to the teeth
that still remain in the jaw.” ’006 patent at 1:6–9. The
specification discloses taking X-ray images of the jaw and
taking a three-dimensional optical image of the visible
surfaces of the jaw and teeth. Id. at 2:15–20, 3:50–59.
These images are compiled into “measured data records”
and correlated. Id. at 2:21–23, 2:58–3:11. One way to
correlate the images is by placing markers at fixed points
that are visible in both images and superimposing the
images based on the locations of the markers. Id. at 2:58–
65, 3:63–4:3. From this correlation, the position for the
implant is determined and a drill template is prepared.
Id. at 2:33–45, 2:51–57, 4:17–36, 4:55–62.
    Petitioners sought inter partes review of claims 1–10
of the ’006 patent. Ground 1 argued claims 1–4 and 9–10
were anticipated by U.S. Patent No. 5,562,448 (“Musha-
bec”); ground 2 argued claims 1–4 and 9–10 were antici-
SIRONA DENTAL SYSTEMS GMBH   v. INSTITUT STRAUMANN AG   3



pated by a printed publication titled “Computer-Assisted
Dental Implant Surgery Using Computed Tomography”
(“Fortin”); ground 3 argued claims 1–10 would have been
obvious based on Bannuscher and Truppe; and ground 4
argued claims 1–10 would have been obvious based on
Fortin and Truppe. The Board instituted inter partes
review based on grounds 1 and 3. After institution,
Sirona filed a contingent motion to amend the claims
pursuant to 37 C.F.R. § 42.121. Petitioners opposed the
motion, arguing that the proposed substitute claims
would have been obvious based on Mushabec, U.S. Patent
No. 5,725,376 (“Poirer”), a printed publication titled
“Computer-Assisted Milling of Dental Restorations Using
a New CAD/CAM Data Acquisition System” (“Willer”),
and U.S. Patent No. 5,967,777 (“Klein”), as well as obvi-
ous based on Mushabec, International Publication No.
WO 95/28688 (“Swaelens”), and Klein.
    The Board held that claims 1–8 would have been ob-
vious based on Bannuscher and Truppe. It held that
Petitioners had not met their burden of demonstrating
claims 9–10 would have been obvious based on Ban-
nuscher and Truppe, or that claims 1–4 and 9–10 were
anticipated by Mushabec. The Board denied Sirona’s
contingent motion to amend because Sirona failed to meet
its burden of demonstrating that proposed substitute
claims 11–18 would not have been obvious over Ban-
nuscher and Truppe in view of Klein and Poirier.
    Sirona appeals the determination that claims 1–8 are
unpatentable and the denial of its contingent motion to
amend. Petitioners cross-appeal the determination that
claims 9–10 are patentable. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
                      DISCUSSION
    We review the Board’s legal determination of obvi-
ousness de novo and its factual findings for substantial
evidence. Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d
4   SIRONA DENTAL SYSTEMS GMBH   v. INSTITUT STRAUMANN AG



1364, 1367 (Fed. Cir. 2017). We review its procedures for
compliance with the Administrative Procedure Act
(“APA”) de novo, and we must set aside Board decisions if
they are “arbitrary, capricious, an abuse of discretion, or
otherwise not in accordance with law.” 5 U.S.C. § 706;
EmeraChem Holdings, LLC v. Volkswagen Grp. of Am.,
Inc., 859 F.3d 1341, 1345 (Fed. Cir. 2017).
                    I. Sirona’s Appeal
                            A
    Sirona appeals the Board’s obviousness determination
regarding claims 1–8 based on the combination of Ban-
nuscher and Truppe. Claim 1 of the ’006 patent recites:
    1. Method for producing a drill assistance device
    for a tooth implant in a person’s jaw, comprising
    the following process steps:
       taking an x-ray picture of the jaw and
       compiling a corresponding measured data
       record,
       carrying out a three-dimensional optical
       measuring of the visible surfaces of the jaw
       and of the teeth and compiling a corre-
       sponding measured data record,
       correlating the measured data records
       from the x-ray picture and from the meas-
       ured data records of the three-dimensional
       optical measuring,
       determinating the optimal bore hole for
       the implant, based on the x-ray picture,
       and
       determinating a pilot hole in a drill tem-
       plate relative to surfaces of the neighbor-
       ing teeth based on the x-ray picture and
       optical measurement.
SIRONA DENTAL SYSTEMS GMBH   v. INSTITUT STRAUMANN AG     5



Claims 2–8 depend on claim 1. Sirona does not raise
separate patentability arguments for dependent claims 2–
8, so their patentability depends on the patentability of
claim 1.
     Petitioners and Sirona filed different translations of
Bannuscher, a German reference. It describes a method
of determining an optimal position for a dental implant
based on 3-D model geometry of the mouth or jaw region
and an X-ray image of the same and producing a surgical
template with this optimal position to use in implant
surgery. The structures of the mouth can be recorded,
combined with other parameters, and presented graph-
ically in a 3-D computer simulation to assist in surgical
preparation. The different translations both describe
digitally inputting plaster models cast from impressions
taken of the “patient’s oral situation” into a computer, but
do so differently. J.A. 665; id. at 1555. According to
Petitioners’ translation, the plaster models are trans-
ferred into a skull-based simulator in a 3-D relationship
“using a recording sheet.” J.A. 665 at 8:23–32. According
to Sirona’s translation, the plaster models are transferred
“into a skull-referenced simulation device with the aid of
a recording bow.” J.A. 1555. Based on these different
translations, the parties dispute whether Bannuscher
digitally inputs structures of the mouth or movements of
the jaw into the simulation.
    Truppe relates to enabling “planning of a surgical op-
eration in the region of the jaw from a model” that incor-
porates “representations from imaging methods.”
J.A. 656. It describes using a video camera with a posi-
tion sensor to create an optical representation of a jaw or
a model, which is displayed on a monitor. It discloses
taking at least one picture of the jaw with an X-ray imag-
ing process and storing the picture as a data set.
Three-dimensional sensors located on the jaw and the
camera allow a computer to calculate “a representation of
the data set from the imaging process in real time and
6    SIRONA DENTAL SYSTEMS GMBH     v. INSTITUT STRAUMANN AG



display[] it on the screen” with the proper viewing angle
and scale. J.A. 657–58.
                              B
    The obviousness framework under 35 U.S.C. § 103 re-
quires determining “(1) the scope and content of the prior
art; (2) the differences between the claims and the prior
art; (3) the level of ordinary skill in the art; and (4) objec-
tive considerations of nonobviousness.” Arctic Cat Inc. v.
Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1358
(Fed. Cir. 2017). These are questions of fact reviewed for
substantial evidence. Id.
    The     Board      construed     “carrying     out     a
three-dimensional optical measuring of the visible surfac-
es of the jaw and of the teeth” as “using light to measure
the visible surfaces of the jaw and teeth in three dimen-
sions,” which the parties do not dispute. J.A. 9. It con-
cluded that claims 1–8 would have been obvious over
Bannuscher and Truppe. Sirona does not challenge the
Board’s legal analysis. The only questions on appeal are
whether substantial evidence supports the Board’s find-
ings that the combination of Bannuscher and Truppe
discloses “carrying out a three-dimensional optical meas-
uring of the visible surfaces of the jaw and of the teeth
and compiling a corresponding measured data record”
based on the Board’s construction, and whether a person
of ordinary skill in the art would have been motivated to
combine the references. Specifically, the Board found that
“Bannuscher discloses digitally inputting the X-ray image
and 3-D model geometry of a patient’s jaw and teeth into
a computer for ‘correlating’ the data sets.” J.A. 32. It
found that Bannuscher does not disclose carrying out a
3-D optical measuring of the visible surfaces of a patient’s
jaw and teeth but found that Truppe did, “using light
from a conventional video camera, with reference to a
three-dimensional coordinate system provided by the
relative positions of the magnetic sensors.” J.A. 35. It
SIRONA DENTAL SYSTEMS GMBH   v. INSTITUT STRAUMANN AG     7



found that a person of ordinary skill in the art would have
been motivated to use Truppe’s optical measurement
system to generate 3-D surface data of the jaw and teeth
for use in Bannuscher’s planning simulation software to
assist in determining the optimal implant position.
    Sirona argues that Bannuscher uses a “recording
bow,” which only measures movement of the jaw joint, not
surface structures, to transfer the 3-D relationship of the
plaster models into a computer. It argues Bannuscher
never indicates that data reflecting the topography of the
plaster models is input into a computer and Petitioners
never identified an instrument in Bannuscher that could
do so.     Substantial evidence, however, supports the
Board’s finding that such data is input. The Board de-
termined that whether Bannuscher uses a recording bow
to measure jaw movement is not dispositive in light of
Bannuscher’s other disclosures. Bannuscher discloses
that “a three-dimensional model geometry of the mouth or
jaw region and an X-ray image thereof are input digitally,
relative to the patient’s skull, into a computer.” J.A. 663;
see also id. at 665 (disclosing taking impressions of a
patient’s “oral situation,” forming 3-D plaster models from
the impressions, and digitally inputting the plaster mod-
els into a computer). The 3-D model geometry refers to
the plaster model of the mouth or jaw region, which
represents the visible surfaces of the jaw and teeth.
Based on this disclosure, substantial evidence supports
the Board’s finding that Bannuscher digitally inputs the
structures from the plaster model for correlation and not
simply jaw movement.
    Substantial evidence also supports the Board’s finding
that Truppe discloses “carrying out a three-dimensional
optical measuring of the visible surfaces of the jaw and
teeth,” as claimed. Truppe discloses using a video camera
provided with a position sensor to create an optical repre-
sentation of the jaw. It discloses that, based on the
known 3-D locations of the camera and the jaw, a 3-D
8   SIRONA DENTAL SYSTEMS GMBH    v. INSTITUT STRAUMANN AG



optical representation of the structures of the jaw can be
calculated. This 3-D representation can be made from the
actual jaw or a model of the jaw. It discloses that 3-D
structures are inserted into a digital X-ray image of the
jaw to make it easier to see the structures and perform a
simulation. The optical representation and the X-ray
image are joined in a “positionally correct relationship”
such that the structures of the X-ray image always match
the structures of the optical representation even if the jaw
moves three-dimensionally. J.A. 657.
    Sirona does not dispute that Truppe discloses an opti-
cal measuring of the visible surfaces of the jaw and teeth.
Instead, it argues that Truppe’s camera measures only in
2-D and that Truppe uses electromagnetic sensors to
determine the relative positions of the jaw in 3-D. The
Board construed this claim term as “using light to meas-
ure the visible surfaces of the jaw and teeth in three
dimensions.” J.A. 9. This construction, which was not
challenged on appeal, does not require any specific type of
optical measuring instrument. Indeed, the ’006 patent
describes measuring the jaw and teeth “using a
three-dimensional system of coordinates.” ’006 patent at
3:50–53. That is precisely what Truppe discloses. Truppe
uses an optical camera along with 3-D sensors and a
device for positional determination to create a 3-D optical
representation that can be inserted into the 3-D X-ray
image in a positionally-correct manner. The Board’s
construction requires no more than that.
    Substantial evidence also supports the Board’s finding
that a person of ordinary skill in the art would have been
motivated to combine Bannuscher and Truppe. As the
Board noted, Petitioners did not propose substituting
Truppe’s camera in place of Bannuscher’s recording bow.
Rather, the Board found that a person of ordinary skill
“would have had reason to incorporate the teaching of
Truppe’s enhanced 3-D optical measurement technique
into Bannuscher’s method for correlating 3-D X-ray image
SIRONA DENTAL SYSTEMS GMBH   v. INSTITUT STRAUMANN AG    9



and model geometry data sets, to determine an optimal
bore hole and corresponding pilot hole in the drill tem-
plate.” J.A. 41. It relied on Petitioners’ expert, who
testified that it would have been desirable to have as
much diagnostic information as possible when planning
for dental implant surgery. It also relied on advantages
disclosed in Truppe of incorporating optical imaging data
to obtain a vivid representation of the jaw. Relying on
Petitioners’ expert, the Board found that both Truppe and
Bannuscher disclose a similar process of correlating 3-D
X-ray and visible imaging data of the jaw and teeth to
generate the best representation of a patient’s jaw and
teeth. This evidence is enough to support the Board’s
finding of a motivation to combine.
    Because substantial evidence supports the factual
findings challenged on appeal and no issues were raised
regarding the Board’s legal analysis, we affirm the
Board’s conclusion that claims 1–8 would have been
obvious over the combination of Bannuscher and Truppe.
                             C
    Sirona challenges the Board’s final written decision,
arguing that the Board relied on theories that first ap-
peared in the final written decision. Specifically, it ar-
gues that the petition relied on Bannuscher’s disclosure of
a “recording sheet” to input surface structures of the
plaster models into a computer, but the proper translation
is “recording bow,” which cannot digitally input surface
structures. It argues the Board violated the APA when it
determined that Sirona’s recording bow argument was not
relevant and put together its own obviousness theory
based on Bannuscher’s input of “geometry data,” which
does not appear in the petition.
    An inter partes review must proceed “in accordance
with or in conformance to the petition.” SAS Inst., Inc. v.
Iancu, 138 S. Ct. 1348, 1356 (2018) (internal quotations
omitted). “Nothing suggests the Director enjoys a license
10   SIRONA DENTAL SYSTEMS GMBH    v. INSTITUT STRAUMANN AG



to depart from the petition and institute a different inter
partes review of his own design.” Id. (emphasis in origi-
nal). “The rest of the statute confirms, too, that the
petitioner’s petition, not the Director’s discretion, is
supposed to guide the life of the litigation.” Id. “[T]he
statute tells us that the petitioner’s contentions, not the
Director’s discretion, define the scope of the litigation all
the way from institution through to conclusion.” Id. at
1357. It would thus not be proper for the Board to deviate
from the grounds in the petition and raise its own obvi-
ousness theory, as Sirona contends.
                             1
    We hold that the Board’s unpatentability determina-
tion regarding claims 1–8 did not, as Sirona contends,
deviate from the grounds alleged in the petition. The
petition discussed Bannuscher’s 3-D plaster models being
input into a computer and cited to Bannuscher’s 3-D
model geometry of the mouth or jaw region as disclosing
the claimed “measured data record” of the 3-D measuring.
The Board cited to these same portions of Bannuscher to
support its finding that “Bannuscher discloses using
digitized 3-D X-ray data and 3-D geometry data of the jaw
and teeth to determine the optimum 3-D position of a bore
hole and corresponding pilot hole in the drill template.”
J.A. 33. The Board did not change theories simply be-
cause the petition did not use the exact words “geometry
data.” See Rambus Inc. v. Rea, 731 F.3d 1248, 1255 (Fed.
Cir. 2013) (“[T]he Board is not required to ‘recite and
agree with the examiner’s rejection in haec verba’ in order
to ensure that the PTO has provided adequate notice.”
(quoting In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir.
2011))).
    We conclude that the Board did not deviate from the
grounds in the petition by relying upon the geometry data
and citing for support the same portions of Bannuscher
that the petition cited. Moreover, Sirona itself spent
SIRONA DENTAL SYSTEMS GMBH   v. INSTITUT STRAUMANN AG    11



much of its Patent Owner Response arguing that Ban-
nuscher does not disclose inputting the geometry data of
the plaster models into a computer because of its disclo-
sure of a recording bow. The Board addressed this argu-
ment but dismissed it as not dispositive of the issue
because other portions of Bannuscher, to which the peti-
tion cited, explain that the plaster models, not jaw articu-
lation movements represented by the plaster models, are
digitally input into a computer. It is not the case that the
Board deviated from the grounds or evidence cited in the
petition. The Board simply used the term “geometry
data” to refer to the digitized plaster models that were
expressly cited in the petition. Because the petition
provided Sirona notice and opportunity to address the
portions of Bannuscher relied on by the Board, the
Board’s reliance on these portions of Bannuscher did not
violate the APA and is not inconsistent with SAS.
                             2
    Sirona also challenges the Board’s denial of its con-
tingent motion to amend. Sirona filed its contingent
motion to amend concurrently with its Patent Owner
Response. Its proposed substitute claim 11 amended
claim 1 as follows:
   1. Method for producing a drill assistance device
   for a tooth implant in a person’s jaw, the tooth
   implant to be positioned between neighboring
   teeth, comprising the following process steps:
       taking an x-ray picture of the jaw and
       compiling a corresponding measured data
       record,
       carrying out a three-dimensional optical
       measuring of the visible surfaces of the
       jaw and of surfaces of the neighboring
       teeth and compiling a corresponding
       measured data record,
12   SIRONA DENTAL SYSTEMS GMBH   v. INSTITUT STRAUMANN AG



       correlating the measured data records
       from the x-ray picture and from the meas-
       ured data records of the three-dimensional
       optical measuring,
       determinating the optimal bore hole for
       the implant, based on the x-ray picture,
       and
       determinating a pilot hole in a drill tem-
       plate relative to surfaces of the neighbor-
       ing teeth based on the x-ray picture and
       optical measurement, and
       producing the drill template containing
       the pilot hole and negatives of the surfaces
       of the neighboring teeth, wherein the neg-
       atives of the surfaces of the neighboring
       teeth are formed by a machine based on
       the measured data record obtained from
       the three-dimensional optical measuring
       in the carrying out step.
J.A. 336–38. Proposed substitute claims 12–18 depend
from claim 11 and are otherwise identical to claims 2–8.
    The Board erred when it denied Sirona’s contingent
motion to amend. Sirona challenged the Board’s denial on
multiple grounds. It argued that the Board improperly
placed the burden on Sirona to prove that the proposed
substitute claims were patentable. It argued that the
Board improperly rejected the proposed substitute claims
based on a combination of references not raised by Peti-
tioners. It argued that, even if the Board could rely on a
combination of references not raised by Petitioners,
Sirona did not receive notice and an opportunity to re-
spond to the combination of references the Board relied
on, as required under the APA.
    The petitioner bears the burden of proving that pro-
posed amended claims are unpatentable. Aqua Prods.,
SIRONA DENTAL SYSTEMS GMBH   v. INSTITUT STRAUMANN AG   13



Inc. v. Matal, 872 F.3d 1290, 1324–25 (Fed. Cir. 2017) (en
banc) (plurality opinion). The final written decision,
which issued prior to our en banc decision in Aqua Prod-
ucts, improperly placed the burden on Sirona to demon-
strate that the proposed substitute claims were
patentable. Thus, we must vacate the Board’s denial of
Sirona’s contingent motion to amend and remand for the
Board to reconsider in light of Aqua Products.
    We need not address Sirona’s other alleged errors at
this time. Instead, we leave to the Board to determine in
the first instance, in light of recent precedent including
SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018),
whether it may consider combinations of references not
argued by the petitioner in opposing the motion to amend
claims, and, if so, what procedures consistent with the
APA are required to do so.
              II. Petitioners’ Cross-Appeal
    The Board concluded that Petitioners did not demon-
strate that claims 9 and 10 were unpatentable over Ban-
nuscher and Truppe. Claim 9 depends from claim 1 and
recites:
   9. The method according to claim 1, wherein the
   drill assistance device is ground out from a di-
   mension-stable material, and said material repre-
   sents the form of occlusal surfaces of neighboring
   teeth as a negative with respect to an implant po-
   sition.
Claim 10 depends from claim 9.
    The Board found that Bannuscher did not satisfy the
“drill assistance device” limitation of claims 9–10. It
found that Bannuscher’s plaster model was not “ground
out” and was a positive representation of the teeth, not a
negative representation. It noted Petitioners inconsist-
ently cited Bannuscher’s operation template as the “drill
assistance device” in claim 1, but cited the plaster models
14   SIRONA DENTAL SYSTEMS GMBH    v. INSTITUT STRAUMANN AG



for the same term in claim 9. It credited Sirona’s expert,
who testified that Bannuscher’s operation template
“typically would be molded on the surface of the plaster
model, not ground out or milled,” and found that Petition-
ers did not demonstrate “why or how Bannuscher would
have taught a [person of ordinary skill] to grind out a drill
assistance device” satisfying claim 9. J.A. 44. Substan-
tial evidence supports these findings.
    Petitioners do not argue that the combination of Ban-
nuscher and Truppe discloses the claimed “drill assistance
device” of claim 9. Rather, they argue that the Board, as
a legal matter, should have applied findings from its
analysis of Sirona’s contingent motion to amend to its
analysis of claims 9–10. They argue, when analyzing the
motion to amend, the Board found that the use of ma-
chines to make the claimed drill assistance device was
known. They argue claim 11 covers similar scope to the
term “ground out from a dimension-stable material” in
claim 9, which refers to removal of material by grinding or
cutting operations to form a relief pattern that represents
negatives of the neighboring teeth surfaces. Petitioners
are, in essence, attempting to add references to the
ground of unpatentability put forth in their petition.
When analyzing the contingent motion to amend, the
Board considered multiple references in combination with
Bannuscher and Truppe that were not asserted together
in the petition. Poirier contains the disclosures that
Petitioners contend show the limitations of claim 9 were
known to a person of ordinary skill. But Petitioners never
argued Poirier in combination with Bannuscher and
Truppe. We see no error in the Board’s decision not to
decide grounds of unpatentability not raised in the peti-
tion. See SAS, 138 S. Ct. at 1355–57. Thus, we affirm the
Board’s determination regarding claims 9–10.
SIRONA DENTAL SYSTEMS GMBH   v. INSTITUT STRAUMANN AG   15



                      CONCLUSION
     For the forgoing reasons, we affirm the Board’s con-
clusion that claims 1–8 of the ’006 patent are unpatenta-
ble, we affirm the Board’s conclusion that Petitioners
failed to demonstrate claims 9–10 were unpatentable, and
we vacate the denial of the contingent motion to amend
and remand for further proceedings consistent with this
opinion.
     AFFIRMED-IN-PART, VACATED-IN-PART,
            REMANDED-IN-PART
                         COSTS
   No costs.
