Precedential Opinion Panel issues decision regarding when the Board can raise new argument s in deciding a motion to amend

by John Roberts on July 6, 2020

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Patent Trial and Appeal Board


Precedential Opinion Panel issues decision regarding when the Board can raise new arguments in deciding a motion to amend

Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600 (PTAB July 6, 2020) (Paper 67)

The Precedential Opinion Panel (POP) holds that the Board should not have raised its own ground of unpatentability against proposed substitute claims. Because inter partes reviews are adversarial proceedings, the Board typically relies on the parties to bring the most relevant arguments and evidence to its attention. The Board should raise a ground of unpatentability that a petitioner did not advance, or insufficiently developed, only in the rare circumstances where the adversarial process fails. Examples include matters where the petitioner has ceased to participate, or where evidence of unpatentability is readily identifiable and so persuasive that the Board should take it up to preserve the integrity of the patent system. This was not such a case. Additionally, the POP concludes that the grounds the petitioner did raise are insufficient to support a finding of unpatentability and grants the patent owner’s motion to amend.

Learn more about POP decisions and other PTAB precedential and informative decisions on the USPTO website.

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