Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, IPR2018-00600 (July 6, 2020)
Designated Precedential on July 6, 2020

Petitioner Hunting Titan challenged Patent Owner Dynaenergetics’ claims based upon anticipation and obviousness. During the trial, Patent Owner filed a motion to present substitute claims. Petitioner opposed the substitute claims, but only presented arguments based upon obviousness.

The PTAB trial panel found that the original claims were anticipated, and also denied the Motion to Amend based upon anticipation, which was an argument not made by the Petitioner. Patent Owner sought a rehearing and review by the Precedential Opinion Panel (POP) on two 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.

With regard to the first question, the POP reasoned that IPRs are not an agency-led, inquisitorial process, but rather an adversarial process that relies on the parties to frame the issues. Slip op. at 7,11, 19. The POP determined that although the PTAB had the ability to raise issues, those circumstance should be rare. Slip op. at 9, 13. Rare circumstances include a petitioner who stops participating in a proceeding or does not oppose a motion to amend. Slip op. at 12-13.

Turning to the second question, the POP considered the type of notice required. The POP rejected the argument that the anticipation attack against the original claims provided notice that anticipation could be raised against the substitute claims. Slip. Op. at 14. The POP reasoned that due process required notice of how the prior art applied to the newly-added limitations in the substitute claims, and stated that the PTAB could request additional briefing or require that the parties be prepared to discuss how the prior art applies to the substitute claims. Slip op. at 15.

Ultimately, the POP granted the Motion to Amend, and determined that the Petitioner had not proven that the substitute claims were obvious. Slip op. at 26.