Patentee must show patentability over prior art from original case to amend in IPR

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Chief Judge Prost, Federal Circuit.

Chief Judge Prost, Federal Circuit.

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.


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Join the Discussion

15 comments so far.

  • [Avatar for Night Writer]
    Night Writer
    December 22, 2015 08:48 am

    Cowboy>>Pre-grant publication is a taking of the inventor’s innate right to keep his invention as secret in exchange for the “hope” that he or she might get a patent that the courts will enforce one day.

    That is exactly right. I’ve worked with inventors who have very little faith in the patent system and want to keep their invention secret. I think we are moving to a tipping point when inventors are going to stop filing patents for anything that can be kept a secret and rely on trade secrets to protect them from employees. That is the thing about the new trade secret push. The international corporations (as well as the small inventor who is probably far more likely to start hiding things) needs the trade secret protection to protect the invention from employees that are going to build it. If the trade secret laws get strengthened then we will definitely see a massive shift from patents to trade secrets. I see it in talking to inventors. They would rather hide what they have done behind a firewall then file a patent for it now that the patent system has become ridiculous.

  • [Avatar for Anon]
    December 21, 2015 02:30 pm

    American Cowboy,

    Absolutely correct.

    And further, that same (tenuous) “bargain” needs to be re-evaluated with the additional hindsight that that “hope” is now even further diminished with the AIA.

    At the same time that the “hope” is now even more a fantasy, I see all about me more and more people not only assuming that pre-grant publication is a “good thing,” but also a default thing, and wanting immediate publication.

    We (the Royal We) have lost our way when it comes to understanding the Quid Pro Quo bargain.

  • [Avatar for American Cowboy]
    American Cowboy
    December 21, 2015 01:42 pm

    Benny at 9. I have been practicing patent law since way before pre-grant publication became the “norm.” I have NEVER seen a patentee get paid for any infringer’s use of his invention before patent grant. And I have asked numerous other patent attorneys if they had ever known of it to happen, and none of them have either. Pre-grant publication is a taking of the inventor’s innate right to keep his invention as secret in exchange for the “hope” that he or she might get a patent that the courts will enforce one day.

  • [Avatar for Night Writer]
    Night Writer
    December 20, 2015 09:25 pm

    The big picture here is that the federal courts are overloaded. It is not just patent law but every kind of law. In every kind of law, the federal courts are desperately trying to find ways to lighten their work load. That is the reality. There is no way they want to deal with 10,000 to 20,000 challenges to the validity of a patent. I would suggest if you want any kind of possibility for reform that you come up with something that doesn’t put more of a burden on the federal courts. It is just not going to happen.

  • [Avatar for Night Writer]
    Night Writer
    December 20, 2015 09:14 pm

    Anon, I agree with much of what you said, but I think the political reality is that politicians (both those in Congress and no the bench) believe there are many invalid patents and they want a way to challenge the validity without using up federal court time. That is the reality of what is driving this.

  • [Avatar for Anon]
    December 20, 2015 06:47 am


    I am more than just “aware of” – i commented on the fact that they are simply not as “great” as you make them out to be and provided a reason why: the prevalence of the need to amend during prosecution.

    Further reason post-AIA is that even granted patents that are not amended, are simply not as strong anymore (the driver for the post by Night Writer).

    Your assumption that you do not have to elaborate is correct. Your more incorrect assumption is that the bargain for pre-grant publication is “worth it,” much less “greatly” so.

  • [Avatar for Benny]
    December 20, 2015 02:57 am

    regarding your post at 7, are you aware of the benefits to industry from pre-grant publication? In my untrained opinion, they greatly outweigh the drawbacks. I assume I don’t have to elaborate.

  • [Avatar for nat scientist]
    nat scientist
    December 19, 2015 03:59 pm

    Placing the burden on the patent owner seems to fundamentally ignore the fact that patents are supposed to be presumed valid once issued.


    The standard IPR review is another way to state the manufactured consent of the mass media and big government protection racket: “You didn’t build that.” Yes, you, the individual,. You are nothing without your government’s daily approval. What’s more is extremism, ridicule, bankruptcy, and dis-empowerment in your future.
    GE mass media education broadcasts daily the following message complete with “Sesame Street” Big Bird rip-off displaying a 49% legacy interest in NBCUNIVERSAL showing on a red blue and white take-off on the peacock tail at the finale:

    “Ideas are scary. They come into the world ugly and messy. Ideas are frightening because they threaten what is known.
    Ideas are the natural-born enemy of the way things are. Yes, ideas are scary and messy and fragile, but under the proper care (GE, big enough of a hospital I suppose), they become something beautiful.”

    Now is this procedure expected to be left to the individual without proper credentials?
    Thanks to GE’s millions of messages, the future is medieval indeed.

  • [Avatar for Anon]
    December 19, 2015 10:15 am

    Night Writer,

    This “going back to prosecution” remains problematic due to the “shelf life” issue and the fact that once back “into the Office,” you incur a very real problem with that shelf life and getting back OUT of the Office in order to have any sense of protect-able asset.

    This is related to what I would call a “patent profanity” type of (unintended) consequence of not meeting the number one basic bargain of the patent deal: Quid Pro Quo.

    Once the Office has its Quo, there is just not enough incentive for it to deliver the Quid.

    Putting things “back into the Office” suffers from this ill effect.

    Another instance of this ill effect comes from the Office publishing prior to an actual grant.

    I think it no accident at all that the massive backlog – across the board in all categories of Office “buckets” of applications awaiting first actions and applications after first action, and appeals – exploded after the inaptly named congressional action that allowed publication prior to award of grant.

    I do recognize that a token “value” was permitted to pre-grant items that did survive un-amended from publication to grant, but I think such to be a shallow and insubstantial “prize,” given how often amendments are needed in the give and take of prosecution.

    We need some impetus for the Office to not only act swiftly, but to act swiftly and thoroughly. The current system seems to reward incalcitrance and “stall” within the Office, and your suggestion too easily falls into that trap.

    Perhaps the simple addendum of re-opening Patent Term Adjustment would help, but that too is not perfect, as not all art fields find “worth” in adding term to the end of the patent life.

  • [Avatar for Night Writer]
    Night Writer
    December 19, 2015 09:28 am

    Prost just doesn’t understand technology. She must have at some time in her life, but I would imagine she has not keep up. IMHO, the only way to deal with the conflicting needs of the patentee and the PTAB (and district courts) is to automatically get to go back to prosecution (some form of expedited prosecution) if your claims are invalidate with different art than was used in the OA. This would give the expediency that is needed and be fair in many ways because if your claims are going to change then it is highly likely the lawsuit is going to change.

    So, solution: you get the option of going back into prosecution no matter if at least one claim is invalidated. You get a free pass if the PTAB uses different art as an acknowledgement that the PTO should have found the best art during prosecution.

  • [Avatar for Anon]
    December 18, 2015 12:49 pm

    American Cowboy,

    I am using the bridge offered by Judge Newman (even if she is unaware that she is offering such a bridge) to show both that Gene’s immediate concern with the propriety of the taking of the presumption of validity is fully with the legal changes enacted by the America Invents Act, and that notwithstanding the placement of that change within the law as passed by Congress, that just because it finds a place there, does NOT inoculate that law from being an improvident law.

    So you are correct that Judge Newman is NOT saying what I am saying (I am the one saying what I am saying), she is correct in so far as saying that Congress acted a certain way. I am (merely!?) fleshing out a direct – and much larger – consequence of Congress acting as it has to bereft (take, in a constitutionally violating manner) one of the sticks in the bundle of property rights that a granted patent has.

    To me point here, it is immaterial whether or not Congress intended the law that it passed, when under constitutional scrutiny an infirmity is found. The law still must fall. Here, in full accordance with Judge Newman, the law intended a certain taking. Whether or not her voice in the present case is in the majority or in the minority, the larger point here is that the law as she recognizes it effects an improper taking.

    It should be clear that no matter what the outcome of this case, a larger – and subsequently more important – issue has direct implications to the standing law; implications that doom the law and make ANY result a problem.

  • [Avatar for American Cowboy]
    American Cowboy
    December 18, 2015 12:33 pm

    Anon, perhaps I don’t correctly interpret your statement “As Judge Newman explicates, Congress has decided to change the bargain with the AIA.

    Of course, there is a huge problem with what Congress has done.”

    I think Judge Newman is saying not so much that Congress screwed up in establishing IPRs, but that PTAB and its amending rules are not following Congress’s intent (or for that matter decades of judicial holdings)

  • [Avatar for Anon]
    December 18, 2015 11:45 am


    As Judge Newman explicates, Congress has decided to change the bargain with the AIA.

    Of course, there is a huge problem with what Congress has done.

    Given that supposition that you reference has been removed, the IPR path explicitly has taken the stick in the bundle of property rights that is the presumption of validity.

    Not only that, but this taking is done at the initiation of the IPR, explicitly has NO judicial recourse, and offers NO recompense, and finally, operates separately and without regard to any final Office actions on the merits of the IPR. As this is the case, this taking is a separate legislative taking that must – on its own – survive any legal challenge.

    It is an entirely different question though whether such a removal meets constitutional scrutiny (takings and due process) that a challenge on these grounds may present.

    As you have recently pointed out, prior to the AIA patents were legally deemed to be property and with that property comes a bundle of property rights (including that presumption of validity).

    It bears emphasis that this portion of patent law was not changed – nor any discussion or indication of change as to the status of patents being property – by the AIA. To that extent, the nature of the item remains unchanged.

    It also bears emphasis that even Congress acting within its constitutionally allotted sphere of authority (to write patent law), cannot while in that sphere violate other constitutional protections in force.

    Such goes beyond any sense of “intent” that may apply and renders the law that does violate constitutional protections unconstitutional.

    Finally, this challenge provides a severe and very large challenge to the entirety of the America Invents Act – as has been noted, that specific act considered, and explicitly rejected the notion of severability. As such, any court faced with rejecting a portion of that law under constitutional grounds has had the option of ANY action that is equivalent to rewriting that law to effectively have an “interpretation” of severability removed from the court’s power.

    And while I have seen this legal argument presented on several fora, I have as of yet seen any legal rebuttal that stands up to scrutiny – for this particular law.

  • [Avatar for Gene Quinn]
    Gene Quinn
    December 18, 2015 11:08 am


    Placing the burden on the patent owner seems to fundamentally ignore the fact that patents are supposed to be presumed valid once issued.


  • [Avatar for American Cowboy]
    American Cowboy
    December 18, 2015 09:59 am

    Placing the burden on the patent owner to be allowed to amend is the crux of the problem with the killing fields of post-grant reviews.