PTAB Denies Amendment Because Patent Owner Failed to Show Patentability Over the Prior Art | Practical Law

PTAB Denies Amendment Because Patent Owner Failed to Show Patentability Over the Prior Art | Practical Law

In Idle Free Sys., Inc. v. Bergstrom, Inc., the Patent Trial and Appeal Board (PTAB) denied a motion to amend certain claims during an inter partes review, finding that the patent owner failed to show that the new claims are patentable over the prior art.

PTAB Denies Amendment Because Patent Owner Failed to Show Patentability Over the Prior Art

by Practical Law Intellectual Property & Technology
Published on 14 Jan 2014 • USA (National/Federal)
In Idle Free Sys., Inc. v. Bergstrom, Inc., the Patent Trial and Appeal Board (PTAB) denied a motion to amend certain claims during an inter partes review, finding that the patent owner failed to show that the new claims are patentable over the prior art.
In Idle Free Sys., Inc. v. Bergstrom, Inc., the Patent Trial and Appeal Board (PTAB) denied Bergstrom, Inc.'s (Bergstrom) motion to amend its patent claims during an inter partes review, finding that while the new claims are patentable over the closest prior art of record, Bergstrom failed to show that the claims are patentable over the prior art in general, including the knowledge of a person of ordinary skill in the art (Case No. IPR2012-00027 (PTAB Jan. 7, 2014)). Notably, the PTAB held that Bergstrom should have disclosed what, if anything, was previously known in the prior art concerning the new limitations in the amended claims. This decision may heighten the standard for succeeding on a motion to amend claims during an inter partes review.
Bergstrom owns US Patent No. 7,591,303 (the '303 patent), which relates to methods for operating vehicle air conditioning systems. On September 18, 2012, Idle Free Sys, Inc. (Idle Free) filed a petition for inter partes review of claims 1-23 of the '303 patent. The PTAB granted Idle Free's petition and instituted a trial. During the proceedings, Bergstrom filed a motion to amend that would add three new claims. In a January 7, 2014 final decision, the PTAB:
  • Found that the pending claims of the '303 patent are unpatentable.
  • Denied Bergstrom's motion to amend the claims.
Bergstrom's proposed amended claims included two new limitations requiring the claimed method to both:
  • Simultaneously receive electric power from the battery and shore power to run the vehicle air conditioning system.
  • Automatically prioritize shore power over battery power.
The PTAB found that the proposed amendment complied with two requirements of a motion to amend, because the new claims:
  • Did not enlarge the scope of the original patent claims.
  • Were supported by the patent's specification.
Bergstrom argued, and the PTAB found, that the new claims were patentable over the closest prior art of record. However, the PTAB denied the amendment because Bergstrom did not adequately show that the new claims are patentable over the prior art in general, finding that:
  • 37 C.F.R. § 42.20(c) places the burden on Bergstrom to show general patentability over the prior art.
  • For each new limitation, Bergstrom failed to discuss:
    • the level of ordinary skill in the art; and
    • what was previously known regarding each new feature.
The PTAB further held that:
  • While Bergstrom is not expected to know about all relevant prior art, it is expected to reasonably explain what would have been known to a skilled artisan regarding the new limitations.
  • The scope of relevant prior art is not limited to vehicle air conditioning systems.