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June 24, 2021

Hunting Titan, Inc. v. Dynaenergetics Europe GmbH, Case IPR2018-00600, Paper 67

In Hunting Titan, the Precedential Opinion Panel (POP) determined that, when evaluating substitute claims in a Motion to Amend, the Board should only raise a ground of unpatentability that a petitioner did not advance or insufficiently developed under “certain rare circumstances.”  Those circumstances include when a petitioner stops participating in a proceeding or where the 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.”  (Paper 67.)

In evaluating whether the Board could raise a new ground of unpatentability sua sponte against substitute claims in a Motion to Amend, the POP looked to the Federal Circuit’s recent decision in Nike, Inc. v. Adidas AG, 955 F.3d 45 (Fed. Cir. 2020).  The Federal Circuit in Nike held that the Board could advance a new ground of unpatentability, but the Court left open when the Board should raise a new ground of unpatentability sua sponte.

 

The POP concluded that the Board should raise a new ground of unpatentability only under “certain rare circumstances” because:

  • There is no requirement that the Board must sua sponte identify a patentability issue for a proposed substitute claim.
  • Placing the onus on the Board to raise patentability arguments for substitute claims sua spoute would not properly incentive the parties in the adversarial process to frame their arguments for the Board.
  • Requiring the Board to evaluate all possible arguments, including those not advanced by a petitioner, would have a detrimental effect on the efficiency of AIA proceedings.

The POP further indicated that if the Board addresses an unpatentability argument that was not advanced or sufficiently developed by petitioner, then the Board must provide the parties with notice and an opportunity to respond.  Looking again to Nike, the POP identified two examples for how the Board could provide notice for motions to amend for substitute claims:

  • Through supplemental briefing; or
  • By requesting parties to be prepared to discuss prior art regarding substitute claims at an oral hearing.

In Hunting Titan, the Petitioner initially presented grounds of unpatentability based on theories of obviousness and anticipation, including anticipation by a primary reference (Schacherer).  (Paper 1.)  After the Board instituted trial on all grounds, the Patent Owner filed a Motion to Amend introducing substitute claims.  (Paper 19.)  The Petitioner opposed the Motion to Amend and in its response presented only obviousness arguments to address the proposed substitute claims.  (Paper 25.)  The Board’s Final Written Decision found Schacherer anticipated the both the original and proposed substitute claims.  (Paper 42.)  The Patent Owner subsequently requested a rehearing and POP review of the Board’s denial of its Motion to Amend.  (Papers 44, 45).

During rehearing, the POP determined that the Petitioner failed to adequately advance or develop an anticipation argument against the proposed substitute claims.  The Petitioner’s purposeful omission of any anticipation arguments against the substitute claims was detrimental.  Next, the POP concluded that no “rare circumstances” existed in Hunting Titan that would have allowed the Board to raise its own ground of unpatentability.  Finally, the POP held that even if this was a case where the Board could have raised its own unpatentability argument, there was no notice to the Patent Owner.  The Petitioner’s anticipation argument in its petition against the original claims was insufficiently developed to provide notice to the Patent Owner that the Board would raise an anticipation argument against its substitute claims.

The POP subsequently granted Patent Owner’s Motion to Amend because the Board improperly raised its own anticipation argument against the proposed substitute claims and the Petitioner failed to establish obviousness.

Takeaways

  1. When evaluating substitute claims in a Motion to Amend, the Board should only raise a ground of unpatentability that a petitioner did not advance or insufficiently developed under “certain rare circumstances.”  Petitioners should therefore not assume that the Board will address grounds of unpatentability not expressly raised in the Opposition to the Motion to Amend.
  2. Petitioner’s unpatentability arguments in its petition against the original claims do not per se provide notice to a patent owner that the Board may raise those same unpatentability arguments against proposed substitute claims.
  3. In an IPR proceeding, Petitioners should be particularly mindful of any unintended consequences when omitting unpatentability arguments in opposing a Motion to Amend.  As opposed to a reexamination, in an IPR, the Petitioner assumes a role in the adversarial process.  If the Petitioner omits an unpatentability argument, even if due to an unsuccessful strategic choice, 35 U.S.C. § 315(e) will estop the Petitioner from later raising the omitted argument.

Author

Meaghan Luster | Associate | Boston

Meaghan Luster is an associate in the Boston office of Fish & Richardson P.C. She was previously a summer associate with the firm.... Read More