The court affirmed the PTAB’s construction of three claim terms in an IPR proceeding under the broadest reasonable interpretation standard, and, under those constructions, held that the claims at issue were invalid as being anticipated.  The court also affirmed the PTAB’s denial of Prolitec’s motion to amend one of the claims to substitute the words “permanently joined” for the term “mounted” on the grounds that a reference to Allred (only cited during the original prosecution) teaches that limitation, even though Allred lacked other elements of the claim, and therefore Prolitec could not demonstrate that the proposed claim is patentable over another reference in view of Allred.  Prolitec argued on appeal that the PTAB erred by placing the burden on Prolitec to show patentability, rather than the petitioner Scentair to prove invalidity, and that it was error to rely on a reference that was not prior art of record in the IPR.  The court held that the PTAB did not err by requiring Prolitec to prove patentability, because the Allred reference was raised during the original prosecution and the patentee has the burden of proving patentability over the prior art of record during the original prosecution.

In her dissent, Judge Newman argues, among other things, that the PTAB and the court erred by rejecting the proposed claim amendment, because the amendment would have resolved a dispositive aspect of claim breadth and refusing the amendment was contrary to the purpose and text of the AIA.

Prolitec, Inc. v. Scentair Technologies, Inc., Case No. 2015-1020 (December 4, 2015); Opinion by: Prost, joined by Taranto; Dissenting opinion by Newman; Appealed From: Patent Trial and Appeal Board.  Read the full opinion here.

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