In Prolitec, Inc. v. Scentair Technologies, Inc., the Federal Circuit upheld the Patent Trials and Appeals Board ("the Board" or "PTAB") decision of invalidating the claims of U.S. Patent No. 7,712,683 ("the '683 patent"). In its decision, the Court upheld the Board's claim construction ruling and the Board's decision to deny a motion to amend.
U.S. Patent No. 7,712,683 ("the '683 patent") issued on May 11, 2010 and was owned by Prolitec. On March 7, 2013, ScentAir Technologies, Inc. filed an inter partes review ("IPR") request of claims 1 and 2 of the '683 patent.
A few claim construction issues were raised on appeal. One of the issues dealt with the construction of the term "mounted." The '683 patent discloses an air freshener dispenser with removable cartridges. The cartridge included a diffusion head "mounted" to the reservoir.
Claim 1 of the '683 patent recites: "a reservoir and a diffusion head mounted to the reservoir."
During the IPR, Prolitec argued that the term "mounted" should mean "permanently joined," to distinguish over a prior art reference, PCT International Publication No. WO 2004/080604 ("Benalikhoudja"), which disclosed a diffusion head fastened to a holder with a tamper-proof ring (i.e. not "permanently joined."). Prolitec argued that the term "mounted" should be construed as "permanently joined" because the '683 patent disclosed that its purpose was a disposable cartridge for one-time use. However, the Federal Circuit noted that the '683 patent does not disclose that its "purpose" was to provide a disposable cartridge. Instead, the '683 patent discloses that the cartridge may be used only one time, or may be reused. Thus, the Court found it improper to read "permanently joined" into the claim term "mounted."
In another claim construction issue, the Board construed the claim term "secondary chamber" to mean "secondary in reference to the initial expansion chamber." The Federal Circuit agreed with the Board's construction because the claim only recited two "chambers." The Court disagreed with Prolitec's argument that the term "secondary chamber" implied a "three-chamber system" which included an initial chamber, a head space (i.e. another "chamber") and a secondary chamber. In support of its ruling, the Court reasoned that the claim did not require three chambers because "the inventor chose to claim the element 'head space' using those precise words, rather than calling it another chamber."
Prolitec also appealed the Board's decision to deny its Motion to Amend the claim. During the IPR, Prolitec filed a motion to amend the term "mounted" to "permanently joined." Petitioner argued that this motion should be denied because a reference cited in the prosecution history of the patent taught permanent joining of a diffusion device. Prolitec did not dispute that the reference disclosed permanent bonding but asserted that the reference failed to disclose other features of the claims. The Board held that Prolitec failed to establish that the proposed claim was patentable and non-obvious. On appeal, Prolitec argued that the Board had placed an unreasonable burden on Prolitec to show that the proposed amendment was not obvious in view of a proposed combination of references cited in the prosecution history of the patent. The Federal Circuit disagreed with Prolitec, and held that an unreasonable burden was not placed on Prolitec because the prior art cited in the prosecution history may be the closest prior art to the patent-at-issue and should have already been reviewed by the patentee.