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ARTICLE · 15 DECEMBER 2015

Federal Circuit Patent Updates - December 2015

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Federal Circuit Patent Updates - December 2015

United StatesIntellectual Property
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Prolitec, Inc. v. Scentair Technologies, Inc. (No. 2015-1020, 12/4/15) (Prost, Newman, Taranto)

December 4, 2015 4:11 PM

Prost, C. J. Affirming PTAB determinations of unpatentability and denial of motion to amend in an inter partes review (IPR). "Prolitec's expert cannot rewrite the intrinsic record of the '683 patent to narrow the scope of the patent and the claim element 'mounted.'... Prolitec's expert opinion ... was inconsistent with the intrinsic record of the '683 patent and was properly rejected by the Board." An optional inclusion of a feature in the
prior art anticipates a claim that excludes the feature. Regarding the motion to amend, affirming the Board's denial of the motion "on a merits assessment of the entire record developed on the motion, not just on the initial motion itself," including "that the patentee's burden on a motion to amend includes the burden to show patentability over prior art from the patent's

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