In Nike, Inc. v. Adidas AG, the Federal Circuit held that the Patent Trial and Appeal Board (“PTAB”) may sua sponte raise a new ground of unpatentability for substitute claims when the prior art is of record and the parties have adequate notice and an opportunity to respond. The Federal Circuit found that the PTAB had not provided the parties an adequate opportunity to respond, in violation of the Administrative Procedure Act, so it remanded the case for the Board to do so. For additional details, please see the related post on Finnegan’s Federal Circuit IP Blog.
