Prolitec, Inc. v. Scentair Techs., Inc., 2015–1020.

• Decision Date: 04 December 2015
• Docket Number: No. 2015–1020.,2015–1020.
• Citation: 807 F.3d 1353
• Parties: PROLITEC, INC., Appellant v. SCENTAIR TECHNOLOGIES, INC., Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

807 F.3d 1353

PROLITEC, INC., Appellant

v.SCENTAIR TECHNOLOGIES, INC., Appellee.

No. 2015–1020.

United States Court of Appeals, Federal Circuit.

Dec. 4, 2015.

Erika Arner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Reston, VA, argued for appellant. Also represented by J. Derek McCorquindale ; Cory C. Bell, Boston, MA.

David Clay Holloway, Kilpatrick Townsend & Stockton LLP, Atlanta, GA, argued for appellee. Also represented by Renae Wainwright; Joshua B. Pond, Washington, DC; Adam Howard Charnes, Winston–Salem, NC.

Farheena Yasmeen Rasheed, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor Michelle K. Lee. Also represented by Nathan K. Kelley, Scott Weidenfeller.

Before PROST, Chief Judge, NEWMAN and TARANTO, Circuit Judges.

Opinion for the court filed by Chief Judge PROST. Dissenting opinion filed by Circuit Judge NEWMAN.

PROST, Chief Judge.

This appeal arises from the inter partes review ("IPR") of U.S. Patent No. 7,712,683 ("'683 patent") owned by Prolitec, Inc. The United States Patent and Trademark Office, Patent Trial and Appeal Board ("Board") concluded that both of the claims in the '683 patent were unpatentable as anticipated under 35 U.S.C. § 102 alone and additionally as obvious under 35 U.S.C. § 103. See ScentAir Techs., Inc. v. Prolitec, Inc., IPR2013–00179, Paper No. 60, 2014 WL 2965704 (PTAB June 26, 2014) ("Board Decision "). Prolitec appeals the Board's determination that the two claims were unpatentable and the Board's denial of Prolitec's motion to amend. The Director of the United States Patent and Trademark Office ("Director") intervenes for the limited purpose of addressing the Board's regulations and practices regarding motions to amend. For the reasons stated below, we affirm.

BACKGROUND

The '683 patent relates to a cartridge for use with "diffusion devices," commonly known as air freshener dispensers. See '683 patent col. 1 ll. 56–60. The cartridge contemplated by the '683 patent with its two major components, a reservoir 114 and a diffusion head 122, are depicted in Figure 9, shown below:

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The reservoir contains a liquid to be diffused and a "head space" above the liquid. '683 patent col. 5 ll. 45–57. The diffusion head includes a baffle 140 having an inlet cavity 168 and an outlet cavity 172 detailed in the figure below. Id. at col. 6 ll. 38–62. The outlet cavity 172 is further divided by a bulkhead 186 into a first chamber 188 and a second chamber 190. Id. The bulkhead and the two chambers trap larger mist particles, which would turn into liquid and flow back to the reservoir. Id. at col. 6 l.63–col. 7 l.12. The goal is to have mostly the finer mist particles exit the cartridge.Id.

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The diffusion head further includes a venturi assembly, shown below, with an atomizing chamber between the narrow end 238 and the wide end 242. Id. col. 9 ll. 26–30.

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The '683 patent only has two apparatus claims, both are independent. The Board's final written decision on June 26, 2014 found that the two claims of the ' 683 patent were anticipated by PCT Application No. W02004/080604A2 ("Benalikhoudja") and obvious over the combination of Benalikhoudja and U.S. Patent No. 7,131,603 ("Sakaida"). The Board also denied Prolitec's motion to amend, concluding that Prolitec did not meet its burden of establishing that it was entitled to the relief requested.

Prolitec appeals from the Board's decision, and the Director intervenes. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

We review the Board's conclusions of law de novo and its findings of fact for substantial evidence. See In re Gartside, 203 F.3d 1305, 1316 (Fed.Cir.2000). The Supreme Court clarified the standards of review for claim construction in Teva Pharmaceuticals U.S.A., Inc. v. Sandoz, Inc., –––U.S. ––––, 135 S.Ct. 831, ––– L.Ed.2d –––– (2015). Pursuant to Teva's framework and our review of Board determinations, we review the Board's ultimate claim constructions de novo and its underlying factual determinations involving extrinsic evidence for substantial evidence. See Teva, 135 S.Ct. at 841–42.

I

A

Prolitec first challenges the Board's refusal to narrow the meaning of the claim element "mounted," recited in both patent claims in the context of "a diffusion head mounted to the reservoir." See '683 patent col. 16 ll. 1, 35. Prolitec asserted that the claim element should mean "permanently joined." Board Decision at 13–14. The Board did not provide a specific construction but relied on the disclosure of the '683 patent and the testimony of Prolitec's expert to reject Prolitec's proposal. Id.

On appeal, Prolitec argues that the Board's conclusion was inconsistent with the use of a permanent means of bonding in "every embodiment in the '683 patent" and inconsistent with "[t]he very purpose of the '683 patent" to provide a "disposable cartridge for one-time use" as its expert opined. Appellant's Br. 31–34 (citing J.A. 1553–59, 1563).

Prolitec overstates what the '683 patent describes. The closest description in the '683 patent to Prolitec's "one-time use" argument is a singular mention that "[i]t is also anticipated that all of cartridge 104 may be made of a biodegradable material, as it may be desirable that the cartridge is configured to be used only one time before being discarded." '683 patent col. 11 ll. 6–9 (emphases added). The problem for Prolitec is that the use of "may" signifies that the inventors did not intend to lim it, the patent as Prolitec's expert opined.

Indeed, the very next sentence in the specification shows that the inventors intended for the patent to cover reusable cartridges as well: "It is also anticipated that cartridge 104 could be configured to be returned to a manufacturer or other entity after its planned use to have the cartridge disassembled, cleaned, any worn or damaged parts replaced and then refilled and resealed for use." See id. at col. 11 ll. 9–13. This explicit description of disassembling and refilling the cartridge contradicts the opinion of Prolitec's expert. Prolitec's expert cannot rewrite the intrinsic record of the '683 patent to narrow the scope of the patent and the claim element "mounted." See Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed.Cir.2005) (en banc) (explaining that "a court should discount any expert testimony ‘that is clearly at odds ... with the written record of the patent’ " (quoting Key Pharms. v. Hercon Labs. Corp.,

161 F.3d 709, 716 (Fed.Cir.1998) )).

Moreover, the key passage in the '683 patent relied upon by Prolitec states that "head assembly 604 and reservoir 602 may be jointed to each other by heat or ultrasonic welding spin welding, or by use of an adhesive." '683 patent col. 13 ll. 31–33 (emphasis added). As the Board correctly explained, this passage does not limit the possible methods to the examples listed and those examples are not limited to permanent methods of joining. In particular, the Board explained that the use of an adhesive encompasses a non-permanent method of bonding. The Board quoted Prolitec's expert for conceding that bonding by "[a]n adhesive can be permanent or nonpermanent." Board Decision at 14 (quoting J.A. 1476). This subsidiary factual determination regarding the nature of adhesive bonding was supported by substantial evidence. We discern no error in the Board's rejection of Prolitec's proposal to limit, "mounted" to mean "permanently joined."

B

Prolitec next challenges the Board's construction of "fixed in position," recited in the context of "a conduit including ... a second end ... fixed in position with respect to the narrow end" in Claim 1. See '683 patent col. 16 ll. 11–15. Prolitec's proposal to construe this claim element to mean "non-adjustable" was rejected by the Board in favor of "stationary." Board Decision at 11. The Board noted that Prolitec's only citation to the ' 683 patent in support of its proposal lacks any discussion of either adjustability or non-adjustability. The Board then rejected Prolitec's expert testimony focusing on the '683 patent's purported contemplation of a single use cartridge as contrary to the '683 patent's express statement that the cartridges may be reused.

On appeal, Prolitec abandons its reliance on the '683 patent's specification. Instead, Prolitec relies solely on its expert's testimony and asserts that allowing for adjustments of the conduit inside the venturi head would not be necessary or desirable because the '683 patent contemplates having the manufacturer setting the conduit in the optimal position.

The Board was again correct. There is nothing in the '683 patent that discusses either allowing or preventing adjustment of the conduit inside the venturi head. Rather, the passage cited by Prolitec before the Board merely states that "second end 236 of tube 220 is positioned adjacent a narrow end 238 of a venturi 240." '683 patent col. 9 ll. 26–27 (emphasis added). The Board's claim construction is consistent with the plain meaning of the claim language and the description of positioning the conduit in the specification.

Moreover, as discussed above, the '683 patent describes cartridges that can be disassembled to be reused. See '683 patent col. 11 ll. 9–13. Prolitec's expert opinion, premised upon a theory that the '683 patent is limited to a single-use cartridge, was inconsistent with the intrinsic record of the '683 patent and was properly rejected by the Board. See Phillips, 415 F.3d at 1318. We therefore affirm the Board's construction of "fixed in position."

C

Prolitec finally challenges the Board's construction of "second/secondary chamber," recited in Claim 1 in the context of "the outlet including a second chamber through which the gas within the head space must pass to exit the cartridge" and recited in Claim 2 in a similar context but replacing the word "second" with "secondary." See '683 patent col. 16 ll. 20–24, 46–48. Prolitec proposed that the claim element should mean "secondary in reference to the head space, through which...