Art included in the original prosecution is “prior art of record” in an IPR proceeding even if not cited in the IPR petition

Prolitec, Inc. v. Scentair Technologies, Inc., No. 2015-1020 (Fed. Cir. Dec. 4, 2015)

The patent owner appealed an inter partes review (IPR) finding the patent invalid on anticipation and obviousness grounds and denying a motion to amend. The Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB’s) decision.

With regard to the patentee’s motion to amend, the patentee initially argued that the PTAB improperly placed the burden on the patentee to show patentability in light of the proposed amendments. The court found that this argument was foreclosed by the Federal Circuit’s earlier decision in Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015). As an alternative, the patentee argued that it did not have to show patentability of amendments in light of prior art cited in the original prosecution that was not cited as prior art of record in the IPR. The Federal Circuit rejected this alternative argument, finding that the patentee failed to adequately support its assertion of patentability of its claims over the cited art.

Following the Federal Circuit’s decision in Proxyconn, the PTAB issued further guidance for motions to amend. In particular, the PTAB indicated that “prior art of record” “includes any material art in the prosecution history of the patent.” The court concluded that the PTAB’s approach was reasonable because the “denial of the motion to amend rested on a merits assessment of the entire record developed on the motion, not just the initial motion itself.” Further, the PTAB’s requirement that the patent owner distinguish references from the original file history “is not in conflict with any statute or regulation.” Indeed, “it is not unreasonable to require the patentee to meet this burden” because “[t]he prior art references cited in the original patent’s prosecution history often will be the closest prior art and will already have been reviewed by the patentee.”

A copy of the opinion can be found here ►