A patentee’s burden on a motion to amend its claims during IPR includes the burden to show patentability over prior art from the patent’s original prosecution history. Here, for example, the patentee’s motion to amend was denied because it did not address the potential obviousness of its proposed amendments in view of a prior art reference cited during original prosecution. “The 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.” It may therefore be best to address not only the “prior art of record” in the IPR itself, but also prior art references cited in the patent’s original prosecution history when seeking to establish the patentability of amendments proposed during IPR.
Background / Facts: The patent on appeal here from rejection at the PTO during inter partes review (IPR) proceedings is directed to a cartridge for use with “diffusion devices,” commonly known as air freshener dispensers. During IPR, the patentee moved to amend the patent by proposing to substitute “permanently joined” for the element “mounted” in claim 1, thus incorporating its proposed claim construction for this element. Although the patentee argued that this amendment would not be anticipated by the prior art applied during IPR, it did not address whether the amendment would be nevertheless obvious in further view of a prior art reference cited during original prosecution.
Issue(s): Whether a patentee seeking to amend its claims during IPR has the burden of establishing patentability over not only the “prior art of record” in the IPR itself, but also prior art references cited in the patent’s original prosecution history.
Holding(s): Yes. “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, not 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 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. Evaluating the substitute claims in light of this prior art helps to effectuate the purpose of IPRs to ‘improve patent quality and limit unnecessary and counterproductive litigation costs.’”