prosecution considerations from the Federal circuit for ...€¦ · prosecution considerations from...

88 89January 2016 January 2016

ExpErt guidE: intEllEctual propErty 2016usA

Brian hannon margaret [email protected] +1 202 663 7362

[email protected]+1 202 663 7395

prosecution considerations from the Federal circuit for Surviving Inter partes review challenges

ervoir which holds liquid diffused by the dispenser and a diffusion head “mounted” to the reservoir.

On 7 March 2013, ScentAir Technolo-gies, Inc. filed an inter partes review request of claims 1 and 2 of the ‘683 patent at the Patent Trials and Ap-peals Board (“the Board” or “PTAB”). One of the disputes in the inter par-tes review was the claim construc-tion for the term “mounted.” Spe-cifically, claim 1 of the ‘683 patent recites: “a reservoir and a diffusion head mounted to the reservoir.” During the inter partes review, Scen-tAir challenged claim 1 as being an-ticipated by PCT International Publi-cation No. WO 2004/080604 (“Bena-likhoudja”). Benalikhoudja discloses a device for diffusing liquids, such as perfumes, and includes a cartridge with a reservoir and a diffusion head fastened to the reservoir by a tam-per-proof ring. During the inter par-tes review, Prolitec argued that the term “mounted” should mean “per-manently joined,” and that Benalik-houdja’s tamper-proofing seal did not meet this limitation. In support of its claim construction argument, Prolitec argued that the purpose of

the ‘683 patent was to provide a dis-posable cartridge for one-time use, and thus, in essence, the diffusion head and reservoir necessarily were permanently joined, since once they were disabled they could no longer be used.

The Board disagreed with Prolitec’s argument, and found claim 1 invalid in view of Benalikhoudja. On appeal, the Federal Circuit also disagreed with Prolitec’s argument and upheld the Board’s decision. The Federal Cir-cuit pointed out that the ‘683 patent merely discloses that the cartridge may be used only one time, or al-ternatively may be reused. See ‘683 patent at col. 11, ll. 6-13. In view of the disclosure of the ‘683 patent, the Federal Circuit denied Prolitec’s claim construction and did not read Prolitec’s proposed limitations into the term “mounted.”

While the specification of the ‘683 patent describes that the diffusion head and reservoir may be joined by welding or chemical bonding, as mentioned above, there were no dependent claims in this patent to further limit or define any of the

A general axiom of patent prosecu-tion is to obtain the broadest valid claim possible. While this principle largely remains true, in light of inter partes review (“IPR”) proceedings, it is increasingly important for practi-tioners, during prosecution of a pat-ent, to question whether the claims in a pending application are too broad that they might be subject to an IPR challenge.

Recent federal cir-cuit decisions with respect to inter par-tes reviews highlight some specification and claim drafting considerations for practitioners during patent prosecution. While these questions may not be new for patent practitioners, the popularity of inter partes reviews stresses the impor-tance of considering these questions when drafting and prosecuting pat-ent applications.

Are There Meaningful Dependent Claims Which Further Define the In-dependent Claim?

During patent prosecution, practi-tioners well-know to add dependent claims which further limit a broader independent claim in hopes that if the broader claim is not determined patentable, a narrower dependent claim might be. However, beyond de-termining patentable subject matter and expediting patent prosecution, having strong dependent claims may

be crucial for a patent to withstand an inva-lidity challenge while still having value to the patent owner.

A recent federal cir-cuit decision, Prolitec, Inc. v. Scentair Tech-nologies, Inc. (Fed.

Cir., 4 Dec. 2015), illustrates the risk of not including valuable dependent claims which more narrowly define the independent claim. U.S. Patent No. 7,712,683 (“the ‘683 patent”), owned by Prolitec, issued on 11 May 2010 with two claims. Both claims were independent.

The ‘683 patent relates to air fresh-ener dispensers with removable car-tridges. The cartridge included a res-

By Brian Hannon & Margaret Welsh



Benalikhoudja, does not disclose a three-chamber diffusion system, and instead, only discloses a two-cham-ber system. In the inter partes review, the Board disagreed with Prolitec be-cause the claim language recites only two chambers (i.e. “an initial expan-sion chamber” and a “second cham-ber”). Thus, the Board construed “secondary chamber” to mean “sec-ondary in reference to the initial ex-pansion chamber.” The Federal Cir-cuit agreed with the Board’s opinion because the claim only recited two “chambers” and “the inventor chose to claim the element ‘head space’ using those precise words, rather than calling it another chamber.” See Prolitec, Inc. v. Scentair Technologies, Inc., Slip Op., Fed. Cir. (4 Dec. 2015) Page 8.

Unfortunately for Prolitec, both of the independent claims, claims 1 and 2, similarly recited an “initial cham-ber,” a “head space,” and “a sec-ondary chamber.” Thus, the Board similarly found that claims 1 and 2 were anticipated by Benalikhoudja. Perhaps if the ‘683 patent contained an independent claim with different terminology than that of claim 1 or

claim 2, Prolitec may have had more success during the IPR.

Is the Plain Meaning of the Claim Uncertain?

Straight Path IP Group, Inc. v. Sipnet EU S.R.O. (Fed. Cir. 25 Nov. 2015), shows the benefit to a patent owner of having claim language with a clear plain meaning. Sipnet EU S.R.O. filed an inter partes review of U.S. Patent No. 6,108,704, owned by Straight Path IP Group Inc. The ‘704 patent relates to a system for “real-time voice or video communications be-tween two processing units over a network.” See Straight Path IP Group, Inc. v. Sipnet EU S.R.O., Slip Op., Fed. Cir. (25 Nov. 2015) . Claim 1 of the ‘704 patent recites, “the com-puter system executing a first pro-cess and operatively connectable to a second process,” “a computer us-able medium having a program code embedded in the medium,” where the program code includes “code for transmitting, to the server, a query as to whether the second process is connected to computer network.” See ‘704 patent at claim 1 (emphasis added).

terms in the independent claims. Thus, unfortunately, Prolitec was left to argue a narrow claim construction that read limitations into the inde-pendent claim, and Prolitec did not have a dependent claim to fall back on. While it may be hard for prac-titioners to predict, during prosecu-tion, which terms might be of issue in a future IPR, familiarity with the prior art and knowing the important and significant features of the pat-ent application will help guide prac-titioners to carefully add dependent claims which may provide value, in the event that the broader indepen-dent claim is found invalid in an IPR.

It should be noted that during this IPR proceeding, Prolitec filed a mo-tion to amend the term “mounted” to “permanently joined.” However, this motion was denied by the Board and the Federal Circuit because Prolitec failed to meet its burden of showing that that the amended claim would have been patentable and non-obvi-ous over Benalikhoudja and another reference cited in the prosecution history.

Are There A Variety of Independent Claims?

Another issue in Prolitec, Inc. v. Scentair Technologies, Inc. was the meaning of the claim construction of the limitation “second/secondary chamber.” Claim 1 of the ‘683 pat-ent claimed a diffusion head having a venturi with an opening to an “ini-tial expansion chamber,” the expan-sion chamber having a plurality of openings into a “head space” and an outlet “including a secondary cham-ber” in fluid communication with the head space. During the IPR, Prolitec argued that the ‘683 patent discloses a “three-chamber” system in which the particles flow first to the initial expansion chamber, then into the head space, and then to the “second chamber.” See IPR2013-00179, Pat-ent Owner Response, Paper 29 (11 Oct. 2013), Page 29. Thus, Prolitec asserted that the term “secondary chamber” means “secondary in ref-erence to the head space,” and thus, the claim requires three chambers (i.e. the initial chamber, the head space, and the secondary chamber).

Prolitec argued that the prior art,



At issue in the IPR was the meaning of “is connected to computer net-work.” The parties agreed that the term required a query of wheth-er the second process was online. However, Straight Path contended that the term referred to “a present-tense status” that the second pro-cess is online at that time, and Sipnet contended that the term “is” only re-quired being registered to the server (i.e. active and online at registration). The Board adopted Sipnet’s claim construction; however, the Federal Circuit disagreed and remanded the proceeding.

In its ruling, the Federal Circuit noted that the term “is” “plainly states that the query transmitted to the servers seeks to determine whether the sec-ond unit is connected at that time.” See id. Page 7. Thus, the court opined that “it is not a reasonable interpreta-tion of the claim language, consider-ing its plain meaning, to say that it is satisfied by a query that asks only for registration information, regardless of the its current accuracy.” See id.

As in Straight Path IP Group, patent owners may avoid inter partes re-

other computers” referred to any two computers connected on the network (including a caching com-puter recited later in claim 6). On the other hand, Proxyconn argued that the term “two other computers” referred only to the sender/comput-er and the receiver/computer. The Board agreed with Microsoft; how-ever, the Federal Circuit over-turned the Board’s decision.

In its decision, the Federal Circuit held that even under the broadest reasonable interpretation (the claim construction standard for most IPR proceedings), the construction “can-not be divorced from the specifica-tion and the record evidence.” See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). In this view, the Federal Circuit held that the Board erred in its claim con-struction decision, in part, because the specification uses the phrase “two other computers” as being lim-ited to the sender/computer and the receiver/computer. Further, the court noted that each time the speci-fication refers to the two other com-puters, the specification describes these computers as being separate

view challenges that rely on unrea-sonably broad claim constructions for invalidity arguments if the claim language is clear on its face. As the court mentioned in Straight Path IP Group “when the claim language has a plain meaning on an issue... leaving no genuine uncertainties... it is par-ticularly difficult to conclude that the specification reasonably supports a different meaning.” See id. Page 8.

Are Claim Terms Clearly Defined in the Specification?

Lastly, Microsoft Corporation v. Proxy-conn, Inc. (Fed. Cir., 16 June 2015) il-lustrates the benefit of clearly defin-ing claim terms in the specification. Microsoft filed an inter partes review on U.S. Patent No. 6,757,717. Again, this proceeding involved a claim con-struction dispute. With respect to claim 6, for example, the limitation at issue was “a gateway... connected to said packet-switched network in such a way that the network packets sent between at least two other comput-ers pass through it...” See ‘717 pat-ent at claim 6 (emphasis added).

Microsoft argued that the term “two

from the gateway and caching com-puter. Later in its opinion the Board notes that “nowhere does the ‘717 patent indicate that the gateway and caching computer are the same as, or can be subsumed within, the sender/computer and the receiv-er/computer.” See id. Page 1300. Thus, the court concluded that “the Board’s construction which expands the ‘two other computers 42 and 46’ to include the separately identified caching computer, is unreasonably broad in light of the language of the claims and the specification.”

Practitioners should consider the teachings of Microsoft and decide whether clearly defining claim terms in the specification is appropriate. A comparison of this case with Prolitec, Inc. v. Scentair Technologies, Inc. dis-cussed above, shows the impact of doing so. For example, in Prolitec, the specification used broad descrip-tions—that the cartridges were ca-pable of being used only one time or reused. Given this broad disclosure, the court did not read additional limitations in the claim. However, as shown in Microsoft, if the specifica-tion clearly defines a claim term and



nowhere defines an alternate mean-ing for the claim term, the court may find such an alternate meaning to be unreasonably broad.

Conclusion

These Federal Circuit opinions high-light some areas which patent prac-titioners should pay careful attention to when drafting and prosecuting pat-ent applications to help improve the chances of such patents withstanding invalidity challenges in an IPR.

Brian Hannon is a Partner in the Washington DC office of Sughrue and Chair of the Electro/mechani-cal group. With more than 25 years of experience in the field of intel-lectual property law, Mr. Hannon handles patent matters for emerg-ing and high-technology companies in various electrical and mechani-cal sciences, including optical fibers, biomedical devices, electrical and

optical connectors, GPS, printers, welding technologies and a broad range of automotive technologies. Mr. Hannon’s current practice is de-voted to patent prosecution, inter partes review, strategic counseling on patent procurement and litiga-tion, opinion preparation on matters relating to infringement and validity and infringement litigation. Brian counsels both domestic and foreign clients.

Margaret M. Welsh is an associate in the firm’s Electrical/Mechanical Group. Her practice focuses on the ‎preparation and prosecution of pat-ent applications, counseling clients on ‎intellectual property matters, inter partes review proceedings, and pat-ent litigation. She has experience in a wide range of mechanical and elec-trical technologies, including auto-motive components, semiconductors, nanotechnologies, clean energy tech-nologies, and biomedical devices.

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