Allowing Amendments in AIA Trials

Prolitec v. Scentair Tech (Fed. Cir. 2017) [ProlitecDecision]

In a one paragraph en banc order, the Federal Circuit has vacated the panel’s decision here and remanded to allow claim amendments. The court writes:

In light of this court’s en banc decision in Aqua Products, Inc. v. Matal, No. 2015-1177, 2017 WL 4399000 (Fed. Cir. Oct. 4, 2017) (en banc), the portions of the panel’s and Patent Trial and Appeal Board’s decisions in this case concerning Prolitec’s motion to amend are vacated, see Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353, 1362- 65 (Fed. Cir. 2015) (Majority Op. Part III); ScentAir Techs., Inc. v. Prolitec, Inc., IPR2013-00179, Paper No. 60, 2014 WL 2965704, at *15-17 (P.T.A.B. June 26, 2014) (Final Written Decision Part III), and this case is remanded to the Board for further proceedings consistent with Aqua.

Since this case raised the same issues as Aqua, the Federal Circuit had been sitting on the en banc petition for the past year awaiting outcome of that case.

I’ll note here that the decision by the Federal Circuit was unanimous.  Although many of the judges disagreed with the Aqua decision, they all now regard it as the law and binding precedent of the court.

IPR: Proving Patentability before Amendment

30 thoughts on “Allowing Amendments in AIA Trials

  1. 7

    Note that the two biggest specific complaints about IPRs [here and on Gene’s blog and in several unsuccessful briefs] have been (1) the difficulty of making claim amendments and (2) serial IPR petitions.
    The former was just addressed en banc by the Fed. Cir. in Aqua Products v. Matal, followed here. The latter has now been addressed by the PTAB itself [see below]. [The PTAB has also been addressing duplicative joinder petitions.]
    IPO NEWS Oct. 19, 2017: Yesterday the USPTO’s Patent Trial and Appeal Board designated as “precedential” the expanded panel decision in General Plastic Industrial Co., Ltd. v. Canon Kabushki Kaisha. The opinion was previously designated “informative.” As a “precedential” opinion, it now binds all members of the Board.

    1. 7.1


      Perhaps you will pick up the conversation (on the topic of the thread):

      You mention that (1) has just been addressed en banc (Aqua), and yet, that very fractured opinion does NOT provide ANY solid means for the Office to move forward, being as that decision was not only constrained to the facts of that case, but NO rationale received a majority view of the court so as to be binding.

      That the court in this instance was unanimous does NOT provide what is missing in Aqua.

      1. 7.1.1

        Naot true, there is a clear en banc majority opinion in Aqua Products for requiring the petitioner, not the patent owner, to prove invalidity of the proposed claim over the cited art. The disagreements over the Chevron Doctrine do not affect that result.


          The Result garnered a majority position – the rationale for doing so – and THAT is the part that would extend beyond the facts of the case- did NOT garner any such majority position.

  2. 6

    And the Big L i e, courtesy of Judge Crybaby:

    The focus of the claims … is the use of a white list [<–LOL] in combination with a bankcard reader [<–LOL] to regulate access to mass transit.

    News flash: “regulation” by discrimination on the basis of price is not one of the “useful arts”. Why does this have to be explained to the CAFC in 2017?

    This combination overcame the latency and connectivity issues that previously precluded the practical use of a bankcard to regulate mass transit.

    Word salad. There were no technical issues whatsoever “precluding” the “practical use” of credit cards in mass transit when these junk claims were applied for. None. Nada. Zilch. And there’s nothing at all special about “mass transit”. It could be “access” to a pinball arcade. Who cares? The credit card? Does the computer care? Does the “white list” care?

    The result of the interaction between the bankcard, the white list, and the terminal is the off-line regulation of access.

    OMG — it’s “off line”! The processing of the info is “off line” folks! So. Fracking. What.

    And this might be the most hilarious part of Judge Crybaby’s world-class wailing:

    The allowance or refusal of access is no more abstract when performed
    using a computer and a card reader than when performed using a physical token to regulate access to a transit system by mechanically comparing a token to a slug.

    Using a computer and card reader to regulate access was old, Judge Crybaby. The point is not whether the computer is abstract. The point is that the information streaming through the computer is most definitely abstract whereas the coin interacting with the parts of the machine is most definitely not.

    But the patentee should be free to provide some structural distinction if he/she wishes. Go right ahead! Knock yourself out. LOLOLOLOLOL

    1. 6.1

      Regardless, MM, the claimed invention does reduce latency times and is specific in how it does that.

      1. 6.1.1

        I do not imagine that your observation, Ned—however relevant—will quite serve to sway MM from his predetermined views here.


          Is there an implication in your comment that ANY observation will “quite serve to sway” Malcolm?

      2. 6.1.2

        the claimed invention does reduce latency times and is specific in how it does that.

        Instructions and organized lists will reduce the latency time for just about everything.

        That fact doesn’t make them eligible for patent protection.

        And it doesn’t excuse the phenomenal disregard for and/or willful distortion of facts that appear in Judge Crybaby’s ridiculous dissent.

  3. 5

    As to this thread, what does “for further proceedings consistent with Aqua.” even mean when Aqua was so fractured?

    (an Ends with NO agreed Means to that Ends)

    1. 5.1

      Roy Moore vs. Doug Jones.

      Who would you vote for “anon” (assuming you don’t live in Alabama, which is a huge assumption)?

      Tell everyone. Or is this another opportunity for one of your super serious “protest votes” because “they’re the same.”

      You’re very serious! And all about the “rule of law”, right? So let everyone know, you big strong super serious loud-mouthed man.

      1. 5.1.1

        What does this have to do with patent law in general or my post to which you respond to in particular?


          What does this have to do with patent law in general

          It would have nothing to do with “patent law in general” except that, in general, your approach to “patent law” is to hammer on the so-called “rule of law” over and over and over as if it’s the most important thing ever.

          But how important is it to glibertarians like you, really? We all know the answer to that question.


            It would have nothing to do with “patent law in general”

            You should have stopped right there and recanted your spew.

  4. 4

    In dissent in today’s wonderful 101 case (trashing some ridiculously junky “use a credit card to pay!” claims), Judge Linn blindly stumbles into a big juicy n-u-t:

    the contours of the abstract idea exception are not easily defined. For that reason, the abstract idea exception is almost impossible to apply consistently and coherently.

    Boo hoo hoo, Judge Linn! Yes, sometimes deciding stuff in Federal patent cases is hard but … it’s your job. And it’s a job that we only let humans do.

    Here’s the thing: if abstractions are “almost impossible” for people like you to deal with WHY IN THE F-ING HECK DID THE CAFC PROMOTE THE PATENTING OF LOGIC IN THE FIRST PLACE? You guys are the ones that opened the gates to this intractable problem. Decades have gone by and literally you and the PTO have done *nothing* to improve “coherency” or “consistency.” We all know why that is. And we all know what the solution is.

    But you don’t have the guts to make the call, Judge Linn. You’re a coward and an empty suit besides.

    1. 4.2

      More whining from the CAFC’s biggest whining crybaby. This is really p @ thetic:

      If we are not to recharacterize the claims, what are we supposed to do? Are we not to ignore any limitations? May we ignore some? If so, which ones? Which limitations matter and which do not?

      Well, here’s an idea: get your face out of the rightwing maximalist p u k e funnel for a change and start paying attention to what most non-invested, not self-interested people have been saying about this important topic for literally years. That would be a good start.

      And maybe before you fill your bucket with crocodile tears you should recognize that the CAFC has been ignoring certain “limitations” in claims for various (made-up aka “activist”) reasons since its beginnings. There is absolutely nothing at all new about tossing aside “limitations” in the claim because everyone can see that the failure to do so would permit applicants to protect ineligible subject matter otherwise. Nobody ever blinked when you declared a claim anticipated or obvious after you chucked out the “instructions” included with the “kit.” But put those instructions on a computer that has no other purpose except to follow instructions and all of a sudden WOWEE ZOWEE SUPER TECHNO. It’s a farce.


          President Mango Herrball, in a personal phone call to a grieving military father, offered him $25,000 and said he would direct his staff to establish an online fundraiser for the family, but neither happened, the father said.


          But … Hillary gave speeches to banks!




            Pointless (to the topic at hand), but swell that you want to “share” such things.

            Maybe though, you will find an appropriate forum, as opposed to a (supposed) patent law blog…

    2. 4.3

      Biggest laugh line of today’s majority opinion: (slip op. at pg. 17) “Our mandate from the Supreme Court under Alice step one is to ascertain what the claims are ‘directed to,” not the ‘thrust,’ ‘heart,’ or ‘focus’ of the invention…”

      Oh yes, the analysis in today’s case definitely makes clear the distinction between the “directed to” analysis, and a mere “focus” or “thrust” analysis. Indubitably, Socrates, who could say otherwise…

      1. 4.3.1

        For a bonus dose of sick irony, Judge Wallach’s opinion (slip op. at 17) scolds the dissent for “conflat[ing] its Alice step one analysis with Alice step two’s inventive concept analysis,” despite the fact that this majority opinion is joined by Judge Reyna, who has probably done singlehandedly more to conflate the two steps than any other jurist on the CAFC. See, e.g., McRo Inc. v. Bandai Namco Games, 837 F.3d 1299 (Fed. Cir. 2016).

      2. 4.3.2

        “directed to”

        Just is talking about what the claims, in fact, end up covering.


        Is just what the claims might focus on, the main embodiments that would be covered so to speak, or the main limitations distinguishing from the prior art perhaps.


        Just the principal purpose or theme of a claim.

      3. 4.3.3

        You’re missing the distinction between looking at “what the claims are directed to” versus concepts far more nebulous that would permit one to scour the specification or prosecution history for the “real” “invention” and then analyze the eligibility of that subject matter instead.


          “missing the distinction”

          “concepts far more nebulous”

          Oh please, tell us – in that plain and direct English of which you self-profess to be the master of – what are the distinctions and what “concepts” are you “discussing”

          As it is – your post is nothing more than the “word salad” that you Accuse Others of

          [shocking, I know]

  5. 3

    Because it’s never too late to continue laughing at this absurdity:

    In DDR Holdings, we found claims patent eligible under § 101 because, inter alia, they had no pre-Internet analog.


  6. 2

    The ONLY way to square the IPR star chamber with the jurisdiction of the Art III courts – is to allow claim amendments. And to allow amendments – without the ‘Queen of Harts’ gate keeper logic the PTO erected. With a little luck Oil States will strike down this mess.

  7. 1

    More ineligible junk hacked on the chopping block in today’s CAFC “Smart Systems” opinion.

    The “tech”? Using a credit card to pay for stuff. Wowee zowee!

    1. 1.1

      There seems to be a small but significant typo in the majority opinion: (slip op. at 14) “We have determined that claims directed to the collection, storage, and recognition of data are not directed to an abstract idea… Accordingly, the Asserted Claims are directed to an abstract idea under Alice step one” (boldface added, italics in original).

      Surely, they did not mean to include that “not,” no? As it stands, the conclusion does not follow easily from the premise.

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