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IP Alert: PTAB's Authority to Assert New Grounds Against Amended Claims Constrained

July 10, 2020

On July 6, in Hunting Titan, Inc. v. Dynaenergetics Europe GmbH, the Patent Trial and Appeal Board’s (PTAB’s) Precedential Opinion Panel (POP) held that only under rare circumstances may the PTAB raise a ground of unpatentability that a petitioner does not raise or sufficiently develop against a claim proposed in a motion to amend. These circumstances are limited to situations “where the petitioner has ceased to participate in the proceeding or where certain evidence of unpatentability . . . is readily identifiable and so persuasive that the Board should take it up in the interest of supporting the integrity of the patent system.” The POP found that this was not such a case.

After trial was instituted, patent owner Dynaenergetics filed a motion to amend, presenting substitute claims. In response, petitioner Hunting Titan argued that the proposed substitute claims were obvious over the prior art of record. The PTAB issued a final written decision finding the original claims were anticipated, and also denied Dynaenergetic’s motion to amend, finding the proposed substitute claims were also anticipated by the same reference, despite the fact that Hunting Titan had not alleged the substitute claims were anticipated. Dynaenergetics requested rehearing and POP review, which was granted.

The POP noted that the PTAB “should not be constrained to arguments and theories raised by the petitioner” because this would leave the PTAB with no ability to examine the new claims if a petitioner simply decided not to oppose the motion to amend. However, the PTAB may only exercise this authority under rare circumstances when the adversarial system has failed, such as when the petitioner fails to participate. The POP further noted that a rule mandating the PTAB to evaluate all possible arguments that may be supported by the record would diminish the incentives for the petitioner to participate fully in the adversarial briefing by the parties and reduce the efficiency of AIA proceedings. The POP also held that in the situation where the PTAB raises a ground of unpatentability sua sponte, it must give the patent owner sufficient notice and an opportunity to respond, such as via further briefing or during an oral hearing.

This decision is particularly relevant to parties involved in an AIA trial proceeding where a motion to amend has been filed. Petitioners should be sure to assert and fully develop the strongest grounds against the proposed substitute claims and should not expect the PTAB to rely on any unasserted or undeveloped arguments. Further, a ground asserted against the original claims in the petition that may also apply to a substitute claim must be explicitly reasserted in the petitioner’s opposition to the motion to amend for it to be considered. Patent owners should be aware of the possibility of the PTAB raising a new ground of unpatentability, and in such a case the patent owner must be allowed an opportunity to respond to the new ground. This case also provides a basis to challenge (particularly via a rehearing request) a final written decision that finds a substitute claim unpatentable for any reason not asserted by the petitioner in its opposition to the motion to amend.

For more information on this decision, please contact Fitch Even partner Paul B. Henkelmann.

Fitch Even summer associate Irfan Hassam-Malani contributed to this alert.

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