Prolitec, Inc. v. Scentair Technologies, Inc.
807 F.3d 1353
| Fed. Cir. | 2015Background
- Prolitec owns U.S. Patent No. 7,712,683 for a liquid-dispensing cartridge (reservoir + diffusion head with venturi and multi‑chamber outlet).
- ScentAir petitioned for inter partes review (IPR); the PTAB found both issued claims unpatentable as anticipated by Prolitec’s own PCT application (Benalikhoudja) and also obvious over Benalikhoudja + Sakaida.
- Prolitec sought to amend a claim by replacing the term “mounted” with “permanently joined”; the PTAB denied entry of the amendment.
- The PTAB construed several claim terms ("mounted," "fixed in position," "second/secondary chamber") broadly; Prolitec challenged those constructions and the denial of its motion to amend.
- The Director of the PTO intervened to address PTAB practice on motions to amend; the Federal Circuit affirmed the PTAB’s anticipation finding and refusal to enter the amendment.
Issues
| Issue | Prolitec's Argument | ScentAir / PTO Argument | Held |
|---|---|---|---|
| Construction of “mounted” ("a diffusion head mounted to the reservoir") | "Mounted" should mean "permanently joined" (narrow construction consistent with specification and single‑use cartridge concept) | "Mounted" is not limited to permanent joining; specification and expert testimony allow non‑permanent bonding | Affirmed PTAB: "mounted" not limited to "permanently joined"; PTAB reasonably relied on specification and record evidence |
| Construction of "fixed in position" (conduit second end) | Means "non‑adjustable" (manufacturer sets and prevents adjustment) | Means "stationary" (no requirement precluding adjustment outside claim language) | Affirmed PTAB: construed as "stationary"; no intrinsic support for mandatory non‑adjustability |
| Construction of "second/secondary chamber" (relation to "head space") | Requires a three‑chamber sequence where head space is a distinct second chamber and the claimed secondary chamber is a third chamber | Claims recite only two chambers (initial expansion chamber and second/secondary chamber); "head space" is not claimed as a separate chamber | Affirmed PTAB: "second/secondary chamber" construed relative to initial expansion chamber; claim language does not require a separate third physical chamber |
| Denial of motion to amend / burden of proof for amended claims | PTAB improperly required patentee to show patentability over prior art in prosecution history and put burden on patentee; entry of compliant amendment is statutory right | Patentee must show patentability of proposed substitute claims over prior art of record (including prosecution history); PTAB’s approach reasonable and consistent with PTO practice | Affirmed PTAB: denial upheld because Prolitec failed to show proposed amendment patentable over prior art of record (including Allred and Benalikhoudja); court declined to overturn PTAB practice here |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claim construction principles; intrinsic record governs)
- Teva Pharm. U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831 (U.S.) (appellate review framework for claim construction: legal conclusions de novo, factual findings for extrinsic evidence for substantial evidence)
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir.) (patentee bears burden to show patentability of substitute claims in IPR under PTAB practice affirmed)
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (standard of review: factual findings for substantial evidence)
- Upsher‑Smith Labs., Inc. v. Pamlab, L.L.C., 412 F.3d 1319 (Fed. Cir.) (an optional disclosure in prior art can anticipate claims that exclude that optional feature)