In a precedential opinion released March 24, 2022, the Federal Circuit affirmed, in relation to an inter partes review of Hunting Titan v. DynaEnergetics, both grounds on appeal – 1) the Precedential Opinion Panel (POP) vacating the Board’s denial of Dynaenergetics’ motion to amend and 2) the Board’s decision finding DynaEnergetics’ original claims anticipated by art cited in the Petition.

In Hunting Titan, the Board instituted trial on all sixteen grounds of unpatentability set forth in the inter partes review petition.  In a final written decision of August 20, 2019, the Board agreed with the petitioner that a reference known as Schacherer anticipated the claims.  The PTAB had originally denied the patent owner’s motion to amend, and sua sponte found the proposed claims anticipated by Schacherer, a position not advocated by the petitioner in its opposition to the motion to amend, thus providing DynaEnergetics with the opportunity to seek review from the Precedential Opinion Panel.  The POP granted rehearing to determine “[u]nder what circumstances and at what time during an inter partes review . . . the Board [may] raise a ground of unpatentability that a petitioner did not advance or insufficiently developed against substitute proposed claims in a motion to amend[.]”  The POP noted Hunter Titan’s failures, and, further, granted the motion to amend, because the circumstances of the case did not “qualify as one of the rare circumstances necessitating the Board to advance a ground of unpatentability that Petitioner did not advance or sufficiently develop.”

While the Federal Circuit affirmed the POP’s decision, it did note (and particularly in Judge’s Prost concurring opinion) that, had Hunter Titan challenged the POP’s decision as an abuse of discretion in applying the “readily identifiable evidence exception,” it may have prevailed on appeal.  But because it did not raise that challenge, it was forfeited. This decision, while providing some clarification on the breadth of the PTAB’s ability to independently examine patentability of substitute claims submitted by a patent owner, falls short of illuminating the full scope of the role PTAB judges have in ensuring patentability of new claims proposed by patent owners during the course of a trial.

The Court did, however, leave some suggestions within the text to shine a light on its leanings regarding this matter.  For example, in a footnote, the decision states “when the Board finds an original claim unpatentable as anticipated by a prior art reference, it would seem to follow that the Board should begin by first asking if the corresponding proposed substitute claim overcomes the ground on which it found the original claim unpatentable,” potentially a sua sponte analysis.

Ultimately, regarding the scope of PTAB judges’ duties, obligations, or requirements in examining the patentability of substitute claims, only time will tell how active a role they will be expected to take.