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Federal Circuit Review No. 79-1.
In IPR Motion to Amend, Patentee Must Show Patentability Over Prior Art from Original Prosecution History
Prolitec, Inc., v. Scentair Techs., Inc., No. 2015-1020 U.S. App. LEXIS 21037 (Fed. Cir. Dec. 4, 2015) (Before Newman, Taranto, and Prost, CJ.) (Opinion for the court, Prost, CJ.). Click Here for a copy of the opinion.
Prolitec owns a patent for a cartridge useful in air freshener dispensers. The cartridge contains a reservoir at the bottom portion, where liquid is stored, and a diffusion head on the top portion, where mist particles exit. In inter partes review (IPR), the Patent Office found the challenged patent claims were anticipated and obvious. The Board denied Prolitec’s motion to amend, and Prolitec appealed.
On the merits, the Court disagreed with Prolitec’s assertion that “a diffusion head mounted to the reservoir” meant that the two components were “permanently joined.” Prolitec argued that this was consistent with the purpose of providing a one-time disposable cartridge. The Court disagreed, noting that the description mentioned that a configuration for one-time use may be desirable. But the specification also mentioned the cartridge could be disassembled, cleaned, and reused, which contradicted Prolitec’s definition of “mounted.” Prolitec argued that the patent stated the head and reservoir may be attached together by heat, welding, or an adhesive. However, the Court agreed with the Board’s explanation that an adhesive may also encompass non-permanent bonding.
The Court also disagreed with Prolitec’s construction of “fixed in a position” to mean “non –adjustable.” Based on the plain meaning of the claim language and description, the Board correctly determined that “fixed in a position” meant “stationary,” especially since the cartridge could be disassembled for reuse.
Prolitec argued that the cartridge’s “head space” was one of three chambers in the system, which also included an initial expansion chamber and secondary chamber. The Court disagreed, holding that “head space” was nowhere described as a “chamber.”
The Court upheld that Prolitec’s patent was anticipated by Benalikhoudja, because both devices contained cartridges that are capable of being disassembled and both contained stationary components.
In denying Prolitec’s motion to amend, the Court affirmed that a patentee’s burden included showing patentability over prior art from the patent’s original prosecution history. In its reply brief, Prolitec failed to show that its amended claim would still be patentable (non-obvious) over the combination of an original prior art reference and Benalikhoudja. Accordingly, the Court affirmed the Board’s finding of anticipation and obviousness.
In her dissent, Judge Newman argued that the PTAB erred in denying Prolitec’s motion to amend and in its analyses of anticipation and obviousness. According to Newman, Prolitec’s motion should have been granted because refusing to enter a proposed amendment that would resolve a dispositive aspect of claim breadth contradicted the America Invents Act. Newman also argued that the Court should not have deferred to the PTAB’s ruling under a substantial evidence standard. Instead, the Court should have made a de novo review to consider whether the PTAB correctly decided the broadest reasonable construction under a preponderance of evidence standard. According to Newman, an amendment would have potentially avoided an adverse claim construction, and the majority erred in upholding the PTAB’s refusal of entry. Newman opined that under the AIA, the petitioner is required to prove unpatentability, including any amended claims. The patent owner is not required to prove that claims are patentable. Thus, the majority erred in failing to place the correct burden on the correct party.