Addressing whether a patentee must show that proposed claim amendments in an inter partes review (IPR) overcome not only the prior art in the IPR but also the prior art from the original prosecution, the U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB or Board) and concluded that it was reasonable to require that showing in this particular case. Prolitec, Inc. v. ScentAir Technologies, Inc., Case No. 15-1020 (Fed. Cir., Dec. 4, 2015) (Prost, C.J.) (Newman, J., dissenting).

ScentAir petitioned for institution of an IPR proceeding against Prolitec’s patent on a replaceable cartridge for air fresheners. The question of patentability turned on claim construction, with the patent owner advancing narrow constructions requiring certain claimed elements to be permanent and non-adjustable based on its position that the purpose of the invention was to provide disposable cartridges for one-time use. But the Board viewed the specification discussion regarding one-time use as merely optional and declined to interpret the claims narrowly. The Board also rejected the patent holder’s argument that the claims required a three-chamber device, which would have required the claimed “secondary chamber” to be interpreted as the third chamber.

Prolitec separately filed a motion to amend the claims to expressly require the “permanent” limitation it advanced during claim construction. In opposition, ScentAir resurrected a prior art reference from the original prosecution as meeting that narrower limitation. Prolitec’s reply denied anticipation by that reference but did not dispute that it taught the “permanent” limitation from its amendment. Based on this record, the Board denied the motion and found that Prolitec failed to demonstrate patentability over the original prosecution prior art in combination with the prior art at issue in the IPR. Prolitec appealed.

The Federal Circuit agreed with the Board’s claim constructions and affirmed its findings regarding unpatentability. Turning to the motion to amend, the Federal Circuit reiterated its holding in Proxyconn that the Board can require the patent holder to establish patentability over the prior art. The Court further explained that the prior art subject to that burden can include prior art from the original prosecution. The Court cautioned, however, that doing so was reasonable in this case only because the Board based its holding on the entire record for the motion and indicated that a patent holder’s required showing can be first made in a reply brief when the prior art is raised in an opposition brief.

Judge Newman dissented, arguing that the Board violated the IPR statute and the U.S. Patent and Trademark Office’s own regulations by not automatically entering an amendment that responded to a grounds of unpatentability in the IPR.