/>iTakeaway: Proposed claim constructions that the Board does not find convincing will not be sufficient to distinguish challenged claims from the asserted prior art.
In its Final Written Decision, the Board found that independent claims 1 and 2 of the ’683 patent were unpatentable; denied Patent Owner’s Motion to Amend; and dismissed Petitioner’s Motion to Exclude as moot. The ’683 patent relates to a liquid diffusion device,e.g., one that includes a removable cartridge.
In in its claim construction analysis, the Board addressed various claim recitations, including “fixed in position,” “mounted,” and “second/secondary chamber.” The Board did not agree with Patent Owner that “fixed in position” meant “non-adjustable,” primarily because the sections of the specification cited by Patent Owner in support of its interpretation were found to be lacking. Moreover, Patent Owner’s expert witness, Dr. Shedd, had conceded on cross-examination that adjustment upon refilling of the cartridge was not only possible, but that “it may even be desirable to do so.” The Board disagreed with Patent Owner’s assertion that “mounted” meant “permanently joined,” because this interpretation was not supported by the specification or Dr. Shedd’s testimony. The Board was also not persuaded by Patent Owner’s proposed interpretation of “second/secondary chamber.”
Addressing the challenge to independent claim 1 as being anticipated by Benalikhoudja (the Patent Owner’s own predecessor system), the Board agreed with Petitioner. More particularly, the Board found that Petitioner had shown by a preponderance of the evidence that Benalikhoudja anticipates claim 1. Although Patent Owner presented arguments to the contrary, the Board did not find these convincing, because they were based on unduly narrow constructions of various phrases within claim 1. Moreover, for the “fixed in position” recitation, the Board rejected Patent Owner’s characterization of Benalikhoudja, because Patent Owner’s position on this point was based on an embodiment in this reference separate from the one that Petitioner had relied on in its challenge to claim 1.
As for the challenge that claims 1 and 2 would have been obvious over Benalikhoudja and Sakaida, Petitioner had relied on testimony from its witness, Dr. Garris, that one skilled in the art would have been motivated to combine these references. Patent Owner, in response, argued that Sakaida is not analogous prior art. On this point, the Board found that the testimony of Dr. Shedd cited by Patent Owner did not support limiting the field to “air freshener systems.” Because the Board found that “Petitioner has presented reasoning with rational underpinning for modifying Benalikhoudja in view of Sakaida, such that the modified device would incorporate Sakaida’s particle classifier[,]” and that “[t]hat modified device falls with the scope of the challenged claims,” it concluded that Petitioner had adequately established that independent claims 1 and 2 would have been obvious in view of these references.
Patent Owner had filed a Motion to Amend by which the substitution of challenged claim 1 with proposed claim 3 was proposed, with the motion being contingent on claim 1 being held unpatentable. Since claim 1 was held unpatentable, the Board addressed the Motion to Amend. Nonetheless, the Board denied the motion because, for example: Patent Owner’s supporting assertion was “too general and conclusory” to support the motion; Patent Owner did not sufficiently address the first three underlying factual Graham v. John Deere inquiries; Patent Owner only discussed the proposed novelty of proposed claim 3, but did not address non-obviousness; Patent Owner was factually inaccurate in asserting “that no one had invented a cartridge based system wherein the cartridge included both the diffusion means and the liquid reservoir where the two were permanently joined to each other;” and Patent Owner’s motion did not address “Allred, Poncelet, or any other prior art reference that also may teach the very limitation that Patent Owner seeks to add to claim 3, which it contends would render the claim patentable.”
The Board dismissed Petitioner’s Motion to Exclude certain portions of Dr. Shedd’s direct testimony as being moot. According to the Board, resolution of this motion was not necessary to the Final Written Decision since the Board “did not rely on any of the challenged testimony in a manner adverse to Petitioner.”
ScentAir Technologies, Inc. v. Prolitec Inc., IPR2013-00179
Paper 60: Final Written Decision
Dated: June 26, 2014
Patent 7,712,683 B2
Before: Jameson Lee, Michael J. Fitzpatrick, and Christopher L. Crumbley
Written by: Fitzpatrick
Related Proceeding: Prolitec, Inc. v. ScentAir Technologies, Inc., No. 2:12-cv-483-RTR (E.D. Wis.)
