ExpErt guidE: intEllEctual propErty 2016 usA Brian hannon margaret Welsh bhannon@sughrue.com mwelsh@sughrue.com +1 202 663 7362 +1 202 663 7395 prosecution considerations from the Federal circuit for Surviving Inter partes review challenges By Brian Hannon & Margaret Welsh ervoir which holds liquid difgused by A general axiom of patent prosecu - During patent prosecutjon, practj - the ‘683 patent was to provide a dis - the dispenser and a difgusion head tjon is to obtain the broadest valid tjoners well-know to add dependent posable cartridge for one-tjme use, “mounted” to the reservoir. claim possible. While this principle claims which further limit a broader and thus, in essence, the difgusion largely remains true, in light of inter independent claim in hopes that if head and reservoir necessarily were On 7 March 2013, ScentAir Technolo - partes review (“IPR”) proceedings, it the broader claim is not determined permanently joined, since once they gies, Inc. fjled an inter partes review is increasingly important for practj - patentable, a narrower dependent were disabled they could no longer request of claims 1 and 2 of the ‘683 tjoners, during prosecutjon of a pat - claim might be. However, beyond de - be used. patent at the Patent Trials and Ap - ent, to questjon whether the claims termining patentable subject matuer peals Board (“the Board” or “PTAB”). in a pending applicatjon are too and expeditjng patent prosecutjon, The Board disagreed with Prolitec’s One of the disputes in the inter par- broad that they might be subject to having strong dependent claims may argument, and found claim 1 invalid tes review was the claim construc- an IPR challenge. be crucial for a patent in view of Benalikhoudja. On appeal, tjon for the term “mounted.” Spe - to withstand an inva - the Federal Circuit also disagreed cifjcally, claim 1 of the ‘683 patent Recent federal cir - lidity challenge while with Prolitec’s argument and upheld recites: “a reservoir and a difgusion cuit decisions with stjll having value to the Board’s decision. The Federal Cir - head mounted to the reservoir.” respect to inter par- the patent owner. cuit pointed out that the ‘683 patent During the inter partes review, Scen - tes reviews highlight merely discloses that the cartridge some specifjcatjon A recent federal cir - tAir challenged claim 1 as being an - may be used only one tjme, or al - and claim drafuing cuit decision, Prolitec, tjcipated by PCT Internatjonal Publi - ternatjvely may be reused. See ‘683 consideratjons for Inc. v. Scentair Tech - catjon No. WO 2004/080604 (“Bena - patent at col. 11, ll. 6-13. In view of practjtjoners during nologies, Inc. (Fed. likhoudja”). Benalikhoudja discloses the disclosure of the ‘683 patent, patent prosecutjon. While these Cir., 4 Dec. 2015), illustrates the risk a device for difgusing liquids, such as the Federal Circuit denied Prolitec’s questjons may not be new for patent of not including valuable dependent perfumes, and includes a cartridge claim constructjon and did not read practjtjoners, the popularity of inter claims which more narrowly defjne with a reservoir and a difgusion head Prolitec’s proposed limitatjons into partes reviews stresses the impor- the independent claim. U.S. Patent fastened to the reservoir by a tam - the term “mounted.” tance of considering these questjons No. 7,712,683 (“the ‘683 patent”), per-proof ring. During the inter par- when drafuing and prosecutjng pat - owned by Prolitec, issued on 11 May tes review, Prolitec argued that the While the specifjcatjon of the ‘683 ent applicatjons. 2010 with two claims. Both claims term “mounted” should mean “per - patent describes that the difgusion were independent. manently joined,” and that Benalik - head and reservoir may be joined Are There Meaningful Dependent houdja’s tamper-proofjng seal did by welding or chemical bonding, as Claims Which Further Defjne the In - The ‘683 patent relates to air fresh - not meet this limitatjon. In support mentjoned above, there were no dependent Claim? ener dispensers with removable car - of its claim constructjon argument, dependent claims in this patent to tridges. The cartridge included a res - Prolitec argued that the purpose of further limit or defjne any of the 88 January 2016 January 2016 89
ExpErt guidE: intEllEctual propErty 2016 usA Benalikhoudja, does not disclose a claim 2, Prolitec may have had more terms in the independent claims. Are There A Variety of Independent three-chamber difgusion system, and success during the IPR. Thus, unfortunately, Prolitec was lefu Claims? instead, only discloses a two-cham - to argue a narrow claim constructjon ber system. In the inter partes review, Is the Plain Meaning of the Claim that read limitatjons into the inde - Another issue in Prolitec, Inc. v. the Board disagreed with Prolitec be - Uncertain? pendent claim, and Prolitec did not Scentair Technologies, Inc. was the cause the claim language recites only have a dependent claim to fall back meaning of the claim constructjon two chambers ( i.e. “an initjal expan - Straight Path IP Group, Inc. v. Sipnet on. While it may be hard for prac - of the limitatjon “second/secondary sion chamber” and a “second cham - EU S.R.O. (Fed. Cir. 25 Nov. 2015), tjtjoners to predict, during prosecu - chamber.” Claim 1 of the ‘683 pat - ber”). Thus, the Board construed shows the benefjt to a patent owner tjon, which terms might be of issue ent claimed a difgusion head having “secondary chamber” to mean “sec - of having claim language with a clear in a future IPR, familiarity with the a venturi with an opening to an “ini - ondary in reference to the initjal ex - plain meaning. Sipnet EU S.R.O. fjled prior art and knowing the important tjal expansion chamber,” the expan - pansion chamber.” The Federal Cir - an inter partes review of U.S. Patent and signifjcant features of the pat - sion chamber having a plurality of cuit agreed with the Board’s opinion ent applicatjon will help guide prac - openings into a “head space” and an No. 6,108,704, owned by Straight because the claim only recited two tjtjoners to carefully add dependent outlet “including a secondary cham - Path IP Group Inc. The ‘704 patent “chambers” and “the inventor chose claims which may provide value, in ber” in fmuid communicatjon with the relates to a system for “real-tjme to claim the element ‘head space’ the event that the broader indepen - head space. During the IPR, Prolitec voice or video communicatjons be - using those precise words, rather dent claim is found invalid in an IPR. argued that the ‘683 patent discloses tween two processing units over a than calling it another chamber.” See a “three-chamber” system in which network.” See Straight Path IP Group, Prolitec, Inc. v. Scentair Technologies, It should be noted that during this the partjcles fmow fjrst to the initjal Inc. v. Sipnet EU S.R.O. , Slip Op., Fed. Inc. , Slip Op., Fed. Cir. (4 Dec. 2015) IPR proceeding, Prolitec fjled a mo - expansion chamber, then into the Cir. (25 Nov. 2015) Page 2. Claim 1 Page 8. tjon to amend the term “mounted” to head space, and then to the “second of the ‘704 patent recites, “the com - “permanently joined.” However, this chamber.” See IPR2013-00179, Pat - puter system executjng a fjrst pro - Unfortunately for Prolitec, both of motjon was denied by the Board and ent Owner Response, Paper 29 (11 cess and operatjvely connectable to the independent claims, claims 1 and the Federal Circuit because Prolitec Oct. 2013), Page 29. Thus, Prolitec a second process,” “a computer us - 2, similarly recited an “initjal cham - failed to meet its burden of showing asserted that the term “secondary able medium having a program code ber,” a “head space,” and “a sec - that that the amended claim would chamber” means “secondary in ref - embedded in the medium,” where ondary chamber.” Thus, the Board have been patentable and non-obvi - erence to the head space,” and thus, the program code includes “code for similarly found that claims 1 and 2 ous over Benalikhoudja and another the claim requires three chambers transmittjng, to the server, a query were antjcipated by Benalikhoudja. reference cited in the prosecutjon ( i.e. the initjal chamber, the head as to whether the second process is Perhaps if the ‘683 patent contained history. space, and the secondary chamber). connected to computer network .” an independent claim with difgerent See ‘704 patent at claim 1 (emphasis terminology than that of claim 1 or Prolitec argued that the prior art, added). 90 January 2016 January 2016 91
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