Fed. Cir. Affirms Denial of Motion to Amend During IPR

In Prolitec, Inc. v. Scentair Technologies, Inc. 2015-1020 (Fed. Cir. December 2015) (Available Here), the Federal Circuit affirmed the United States Patent and Trademark Office, Trial and Appeal Board’s (“Board”) determination in an inter partes review (“IPR”) that the patent claims were unpatentable and the Board’s the denial of Prolitec’s motion to amend.  The Board had determined that the two claims to Prolitec’s U.S. Patent No. 7,712,683 (“the ‘683 Patent”) were unpatentable as anticipated under 35 U.S.C. §102 and additionally as obvious under 35 U.S.C. §103.  The Board denied Prolitec’s motion to amend for failing to demonstrate patentability over prior art.

    The ‘683 Patent relates to a air freshener cartridge.    Prolitec challenged the Board’s claim construction, which formed the basis for the Board’s anticipation and obviousness decisions as well as the Board’s decision to deny amendments.  Prolitec argued that the term “mounted” should be interpreted to mean “permanently joined.”  The Board looked to the specification and determined that “mounted” was not in fact limited to “permanently joined.”  The Board also found that the Prolitec expert was attempting to rewrite the intrinsic record of the ‘683 patent to narrow the scope of the patent and the claim element “mounted.”  The Federal Circuit found no error in the Board’s rejection of Prolitec’s proposal to limit “mounted” to mean “permanently joined.”

    The Federal Circuit also affirmed the Board’s interpretation of “fixed in position” to mean “stationary” as opposed to “non-adjustable.”  The Court found that there was nothing in the ‘683 Patent that discusses either allowing or preventing adjustment of the conduit inside the venturi head.  Prolitec also argued that the claim language contemplates three chambers, despite the fact that it only refers to a first and second chamber and a head space.  The Board and Court rejected this argument, noting that the inventor chose to call the third element “head space” rather than calling it another chamber and nothing in the specification would compel an interpretation of “head space” as a “chamber.”

    Prolitec further argued that the claims were not anticipated under a reference that discloses fastening of the liquid reservoir by a tamper-proof ring under Prolitec’s interpretation of “mounted” to mean “permanently joined.”  However, the Court found that both the Prolitec system and the prior art include cartridges that are not intended to be opened by consumers.  Similarly, the prior art holds the nozzle “stationary,” therefore is “fixed in position” as claimed in the Prolitec ‘683 Patent.  Additionally, the optional inclusion of a third opening in the prior art does not preclude its application to the ‘683 Patent’s two opening system.  An optional inclusion of a feature in the prior art anticipates a claim that excludes the feature.  The Federal Circuit affirmed that the claims of the ‘683 Patent were anticipated.

    The Federal Circuit found that the Board properly denied Prolitec’s motion to amend its claims due to the fact that Prolitec failed to demonstrate that the proposed claim is patentable over the prior art.  Prolitec argued that the subject prior art was not of record in the IPR, but only in the patent’s original prosecution history. The Court found that evaluating the substitute claims in light of this prior art helps to effectuate the purpose of the IPRs to improve patent quality and limit unnecessary and counterproductive litigation costs.  This was especially evident in this case where the Defendant had called attention to the subject prior art in opposing Prolitec’s motion to amend.

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