CAFC Finds “Little Sense” in Limiting the PTAB on Amended Claims

CAFC Decision Moots Some POP Consideration in Hunting Titan Dispute

Last November, the PTAB ordered Precedential Opinion Panel (POP) review of the final written decision in  Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG, Inc., IPR2018-00600. The rehearing request in Hunting Titan sought review of the Board’s denial of a Motion to Amend based upon an alleged sua sponte modification of a petitioner’s anticipation ground by the panel (here).  That is, the POP is reviewing the Board’s role in the amendment process where a petitioner either decides not to challenge an amended claim, or does so in a deficient manner that is apparent to the expert agency.

But the Federal Circuit has now weighed in on most aspects of this debate.

First, the POP accepted the following questions for review in Hunting Titan:

1. Under what circumstances and at what time during an inter partes review may the Board raise a ground of unpatentability that a petitioner did not advance or insufficiently developed against substitute claims proposed in a motion to amend?

2. If the Board raises such a ground of unpatentability, whether the Board must provide the parties notice and an opportunity to respond to the ground of unpatentability before the Board makes a final determination.

Last week in Nike v. Adidas, Case No. 2019-1262 (here), the Federal Circuit held that the Board may sua sponte identify a patentability issue for a proposed substitute claim based on the prior art of record in the IPR, but not part of the original trial grounds.

The Court reviewed the Board’s denial of Nike’s motion to enter substitute claims, concluding that Adidas proved that substitute claims certain claims were unpatentable as obvious.  In reaching that conclusion, the Board presented an obviousness ground of its own based upon the prior art of record, but not a particular trial ground presented in the petition or amendment opposition.  Specifically, the Board cited a document included as an attachment to the petition and referenced by both parties’ experts.

The Court upheld the Board’s ability to identify new patentability issues based upon the prior art of record in the IPR proceeding.  The Court reasoned that if the Board could not identify new patentability issues, it would be unable to perform its duties:

" [W]ere a petitioner not to oppose a motion to amend, the Patent Office would be left with no ability to examine the new claims.  Where the challenger ceases to participate in the IPR and the Board proceeds to final judgment, it is the Board that must justify any finding of unpatentability by reference to the evidence of record in the IPR.  It makes little sense to limit the Board, in its role within the agency responsible for issuing patents, to the petitioner’s arguments in this context.  Rather, based on consideration of the entire record, the Board must determine whether the patent owner’s newly presented, narrower claims are supported by the patent’s written description and unpatentable in the face of the prior art cited in the IPR.

(internal citations/quotes omitted)

The case was remanded back to the PTAB due to the lack of notice of the new patentability ground, depriving the parties of an opportunity to respond, thereby violating the Administrative Procedures Act.

Thus, the at least questions (2) of Hunting Titan has been rendered moot.  The question of “under what circumstances” arguably remains.  And as pointed out recently, is an increasingly important question given concerns over gamesmanship, spawning a second POP Request on this same issue within the last month.  An interesting update on the drama surrounding this case is posted over at PatentProgress.org (here)

Scott A. McKeown is an author of the Patents Post Grant