Monday, June 8, 2015

PTAB Grants Motion to Amend

In granting the patent owner's motion to amend several challenged claims, the Board rejected the petitioner's argument that the patent owner did not address all known prior art. "While not required to prove that the claims are patentable over every item of prior art known to a person of ordinary skill, [the patent owner] is required to explain why the claims are patentable over the prior art of record. In addition, [the patent owner]'s duty of candor to the Office requires that it discuss any relevant prior art not of record but known to it. . . . [The petitioner] identifies three references in particular . . . [However], the three references cited by [the petitioner] are relevant to [the patent owner's] teaching away argument, not any issue newly raised by the Motion to Amend. As [the patent owner] points out, [the petitioner] does not allege that any of the proposed substitute claims are unpatentable over a combination of references that includes [the three prior art references at issue]. We consider the present case to be distinguishable from that of [ScentAir Tech., Inc. v. Prolitec, Inc., Case IPR2013-00179, slip. op. at 27–30 (PTAB June 26, 2014) (Paper 60)], and decline to deny the Motion for failing to address all relevant prior art."

Petition for Inter Partes Review by Syntroleum Corporation, IPR2014-00192 (PTAB June 5, 2015, Order) (Crumbley, APJ)

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