Docket Nos. 2015-1020
PROST, NEWMAN(D), TARANTO
December 4, 2015
Brief Summary: Board claim constructions and anticipation determination affirmed. Board’s decision refusing to enter amendment during IPR also affirmed because “Prolitec failed to demonstrate that the proposed claim ‘is patentable over’” prior art cited during prosecution.
Summary: Prolitec appealed PTAB decision in IPR2013-00179 that the claims of US 7,712,683 relating to air freshener devices were unpatentable as anticipated and/or obvious. Prolitec’s first argument was that the Board’s refusal to narrow the meaning of “‘mounted’ in the context of ‘a diffusion head mounted to the reservoir’” and that it should mean “permanently joined” consistent with “every embodiment of the ‘683 patent” and inconsistent with “‘[t]he very purpose of the patent’ to provide a disposable cartridge for one time use’”. The FC panel concluded that “Prolitec overstates what the ‘683 patent describes”, “[t]he closest description…[being] a singular mention that ‘[i]t is also anticipated that all of cartridge 104 may be made of a biodegradable material, as it may be desirable that the cartridge is configured to be used only one time before being discarded”. And “the use of ‘may’ signifies that the inventors did not intend to limit the patent as Prolitec’s expert opined” as does its “description of disassembling and refilling the cartridge” (“Prolitec’s expert cannot rewrite the intrinsic record of the ‘683 patent to narrow the scope of the patent…” (Phillips, FC 2005)). Prolitec also challenged the Board’s construction of “fixed in position” as “stationary” by, the FC panel concluded, “abandon[ing] its reliance on the ‘683 patent’s specification” and “[i]nstead…rely[ing] solely on its expert testimony”. It found the Board’s construction to be “consistent with the plain meaning of the claim language and the…specification.” And Prolitec challenged the Board’s construction of “second/secondary chamber” in the context of the claim which it argued includes three chambers (the “head space” above the scented fragrance being the third chamber). But the FC again agreed with the Board, finding “each claim recites only two ‘chambers’” and “there is nothing else in the ‘683 patent that would compel an interpretation of ‘head space’ as a ‘chamber’”. Regarding anticipation, the FC panel agreed with the Board that the claims were anticipated under its claim constructions and therefore did not reach the obviousness issue. Prolitec also argued the Board erred in not allowing its proposed amendment to substitute “permanently joined” for “mounted” because “Prolitec failed to demonstrate that the proposed claim ‘is patentable over’” prior art cited during prosecution of the ‘683 patent. The FC panel again agreed with the Board, citing Microsoft v. Proxyconn (FC 2015) and the Board’s “representative decision” MasterImage 3D (IPR2015-00040 (PTAB, July 15, 2015) (“a patent owner does not need to show its claims are patentable over the entire universe of uncited art, but still needs to show its claims are patentable over the prior art of record”, which includes “any material in the prosecution history of the patent”). It found “[t]he Board’s position-that the patentee’s burden on a motion to amend includes the burden to show patentability over prior art from the patent’s original prosecution history-is not in conflict with any statute or regulation.” Judge Newman’s dissent argued this portion of the decision “depart[s] from the government statute and the underlying congressional policy” (“When a proposed amendment would resovle a dispositive aspect of claim breadth, refusal to enter the amendment is contrary to both the purpose and the text of the America Invents Act.”)