Federal Circuit Affirms Hunting Titan POP Decision

In Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG, Inc., IPR2018-00600. The PTAB’s POP panel reviewed the denial of a Motion to Amend based upon a panel’s sua sponte modification of a petitioner’s proposed ground (here). In reversing that determination, the POP found that such a sua sponte action should be a “rare circumstance.” For example, where there is a readily identifiable patentability concern apparent in the record.

At the time, I pointed out that when a petitioner presents a 103 ground that in reality is a 102 ground, I could not imagine how such a circumstance was not readily identifiable, and rare. While seemingly agreeing with me, the Federal Circuit nonetheless affirmed the POP panel.

First, the Federal Circuit emphasized that the Board may, but is not required to advance a ground of unpatentability not presented by a petitioner. This determination, earlier decided in Nike v. Adidas, essentially ended the appeal since the Appellant failed to challenge the Board’s rationale that its presentation of grounds did “readily identify” a 102 ground of rejection.

In this regard, the Court explained (here):

It does strike us as odd, however, that the Panel determined that the Schacherer anticipation ground was not readily identifiable and persuasive such that the Board should have sua sponte raised this ground of unpatentability against DynaEnergetics’s proposed substitute claims. Indeed, the Board specifically found the proposed substitute claims unpatentable for the same reasons it found the corresponding original claims unpatentable. Moreover, 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.

Yet, on appeal, Hunting Titan did not challenge the Panel’s decision as an abuse of discretion. That is, Hunting Titan failed to argue that the Panel misapplied the readily identifiable evidence exception. Because Hunting Titan raised no such argument, it is forfeited.

Ouch!

So, at the end of the day, the original trial panel was correct, but the wrong question was pursued on appeal.

Going forward, I would expect very few sua sponte grounds raised against motions to amend. But, at a minimum, the panel should determine that the amended claims clear the original trial grounds….as should petitioners, of course!