Background
DynaEnergetics Europe GmbH owned U.S. Patent No. 9,581,422, directed to a perforating gun assembly used in oil and gas wellbores to penetrate well casing and surrounding rock to release hydrocarbons. Hunting Titan filed for inter partes review of the patent, arguing the original claims were anticipated by a prior art reference called Schacherer. The Patent Trial and Appeal Board instituted the IPR and found all original claims unpatentable as anticipated.
After institution, DynaEnergetics filed a motion to amend the patent, proposing substitute claims that it argued were not anticipated by Schacherer. Hunting Titan opposed only on obviousness grounds — it did not argue that Schacherer anticipated the proposed substitute claims.
The PTAB’s Precedential Opinion Panel (POP) addressed the question of whether the Board could sua sponte raise anticipation against the substitute claims even though the petitioner had not raised that ground. The POP held that the Board could do so in “rare circumstances” — specifically, when evidence of unpatentability is “readily identifiable and persuasive.” The POP found the rare circumstances existed here and rejected the substitute claims as anticipated. DynaEnergetics appealed.
The Court’s Holding
The Federal Circuit affirmed the POP’s decision. The court agreed with the legal framework the POP had established: in rare circumstances, the Board may raise unpatentability grounds against proposed substitute claims that neither party has raised, where the relevant evidence is readily identifiable in the record and persuasive of unpatentability. This authority flows from the Board’s role in examining substitute claims in the context of a motion to amend — unlike original claims (which are presumed valid), proposed substitute claims must be shown by the patent owner to be patentable over the prior art.
The court was careful to note the narrow scope of this authority: it applies only in “rare circumstances,” not as a routine matter, and the evidence must be already in the record and clearly probative. The Board cannot wander into new prior art searching on its own. Because Schacherer — the primary reference Hunting Titan had already relied upon throughout the IPR — also clearly anticipated the proposed substitute claims, this was precisely the kind of rare circumstance where sua sponte action was appropriate.
Key Takeaways
- The PTAB may sua sponte raise grounds of unpatentability against proposed substitute claims in a motion to amend proceeding, but only in rare circumstances where readily identifiable evidence in the record is persuasive of unpatentability.
- Unlike original patent claims (which are presumed valid and can only be challenged on the grounds in the petition), proposed substitute claims in an IPR must be shown to be patentable over the prior art, and the Board has broader authority to assess their validity.
- Patent owners seeking to amend claims in IPR should carefully review the record to ensure proposed substitute claims are clearly distinguishable from all prior art of record, not just the grounds the petitioner has raised on the substitute claims.
- This decision affirms the Precedential Opinion Panel’s framework for Board authority over motions to amend, providing guidance to both the PTAB and practitioners on when sua sponte action is warranted.
Why It Matters
Hunting Titan v. DynaEnergetics addresses a significant gap in IPR procedure: what happens when a petitioner’s opposition to proposed substitute claims overlooks obvious reasons why the substitute claims should also fail. Without some Board authority to raise such issues, patent owners could obtain narrowed but still invalid claims simply because the petitioner failed to raise all available arguments against the substitutes. The court’s confirmation of the POP’s “rare circumstances” standard gives the Board a tool to prevent this outcome while carefully limiting that authority to avoid the Board acting as a roving patent examiner.
For patent owners pursuing motion to amend strategies in IPR proceedings, the decision is a cautionary tale: even if a petitioner fails to raise anticipation against proposed substitute claims, the Board itself may do so if the evidence is clearly in the record. Practitioners should stress-test proposed substitute claims against the full record before filing a motion to amend, not just against the grounds the petitioner argues in its opposition.