In Prolitec, Inc, v. Scentair Technologies, Inc., Appeal No. 15-1020, the Federal Circuit affirmed a PTAB decision finding the instituted claims to be invalid, and further affirmed the PTAB’s denial of a motion to amend the claims.

During the IPR proceedings, patent owner Prolitec sought to amend the instituted claims.  The PTAB denied the motion because Prolitec failed to show that the proposed amended claims would be patentable over the combination of the primary IPR reference and a reference from the prosecution history that was first raised in petitioner Scentair’s opposition to the motion to amend.  The PTAB also found that the claims were invalid as anticipated and obvious in view of the prior art.

On appeal, the Federal Circuit affirmed the Board’s invalidity determinations. The Federal Circuit also affirmed the denial of the motion to amend, concluding that the Board’s approach was reasonable and, on a motion to amend, the patent owner has the burden to show patentability over prior art from the patent’s original prosecution history.  It further noted that the patent owner had an opportunity to address the new reference in its reply brief, but in so doing only argued that the new reference was not anticipatory and failed to address the obviousness combination.

Judge Newman dissented and noted that, while Prolitec’s appeal was pending, the PTO announced it was considering allowing a patent owner to amend a claim without being required to make a representation as to the patentability of the amended claims over the art of record before the PTAB. Judge Newman argued that the court should have remanded the case to the PTAB for reconsideration in light of potential rule changes and the PTAB’s decision in Master Image 3D, Inc. v. RealD Inc., IPR2015-00040 (PTAB July 15, 2015).