POP Tackles the Board’s Authority to Raise a New Unpatentability Ground Under the Motion to Amend Practice

On August 20, 2019, a panel at the PTAB issued a Final Written Decision in Hunting Titan, Inc., v. DynaEnergetics GmbH & Co. KG that denied DynaEnergetics’s contingent motion to amend claims under the Motion to Amend Practice.  IPR2018-00600, Paper 42 at 29.  The Panel explained that Hunting Titan met its burden to show that DynaEnergetics’s proposed amended claims did not overcome the anticipatory nature of the prior art’s disclosure.  Id.  In a Request for Rehearing of this decision, however, DynaEnergetics argued that, in concluding the amended claims were unpatentable, the Board relied upon a theory of unpatentability not proposed or presented by Hunting Titan to challenge the proposed substitute claims.  IPR2018-00600, Paper 44 at 7-10; see also id. at 8-9 (arguing that “[b]ecause DynaEnergetics [] demonstrated that the evidence could not support a finding of obviousness of the proposed amended claims, the Board sua sponte found the claims unpatentable as anticipated, even though [Hunting Titan] never asserted this argument.”).

In a recent order, the PTAB’s Precedential Opinion Panel granted DynaEnergetics’s request, filed with its request for rehearing, that the POP review the Board’s decision denying the Motion to Amend.  IPR2018-00600, Paper 46 at 2.  The Panel will address the following issues:

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.

IPR2018-00600, Paper 46 at 2.  The parties and any amicus curiae may submit briefs discussing the two issues above, of no more than 15 pages, no later than December 20, 2019.  Id.  The parties may then file response briefs, of no more than 10 pages, no later than January 6, 2020.  Id. at 3.  Amicus curiae must submit their briefs to trials@uspto.gov.