Federal Circuit Approves Placing Burden on Patent Owner to Show Patentability Over Prior Art Cited in Original Prosecution History

In Prolitec, Inc. v. Scentair Technologies, Inc., [2015-1020] (December 4, 2015), the Federal Circuit affirmed the PTAB’s decision that claims of U.S. Patent No. 7,712,683 were unpatentable as anticipated under 35 U.S.C. §102 alone and as obvious under 35 U.S.C. §103, and denying the patent owner’s motion to amend.

Prolitic argued that the PTAB construed the term “mounted” and “fixed in position” too broadly, arguing with the support of export testimony that the claims should be limited to the preferred embodiments which showed a single use device.  The Federal Circuit rejected these arguments, noting that the description specifically contemplated reusable devices as well.  The Federal Circuit rejected Prolitic’s expert’s testimony that the invention related to single use devices with a permanent mounting, noting that an expert  “cannot rewrite the intrinsic record of the . . .patent to narrow the scope of the patent, saying Phillips instructs that a court should discount any expert testimony ‘that is clearly at odds with the written record of the patent.

Prolitic also appealed the PTAB’s denial of its motion to amend the claims to comport with its proffered constructions.  Prolitec initially argued that it was improper for the Board to place the burden on the patentee to show patentability of the proposed claim amendments, but the Federal Circuit  disposed of this argument in Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015). Prolitec then tried to argue that it did not have the burden to establish patentability over prior art references cited in the patent’s original prosecution history because they are not prior art of record in the IPR.  The Federal Circuit noted that the in MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040 (PTAB July 15, 2015), the Board stated, that “prior art of record” includes “any material art in the prosecution history of the patent.”  The Federal Circuit found this construction reasonable:

We conclude that the PTO’s approach is a reasonable one at least in a case, like this one, in which the Board’s denial of the motion to amend rested on a merits assessment of the entire record developed on the motion, no just on the initial motion itself. The 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. Moreover, it is not unreasonable to require the patentee to meet this burden.

The Federal Circuit discerned no reversible error in the Board’s denial of Prolitec’s motion to amend.





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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.