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Federal Circuit Affirms Precedential Opinion Panel Decision Limiting the Circumstances In Which the Board Should Raise Sua Sponte Patentability Issues Against Proposed Substitute Claims
On March 24, 2022, a Federal Circuit panel consisting of Judges Prost, Reyna, and Hughes issued a unanimous opinion, authored by Judge Hughes, in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, Case Nos. 2020-2163 and 2020-2191. Petitioner Hunting Titan appealed from the Precedential Opinion Panel's vacatur of an inter parts review (IPR) Board's decision denying Patent Owner DynaEnergetics's contingent motion to amend, and DynaEnergetics cross-appealed from the Board's final written decision finding the original claims unpatentable. Slip Op. at 3. Because substantial evidence supports the Board's determination that the original claims were unpatentable, and Hunting Titan forfeited the argument that the Precedential Opinion Panel misapplied a legal doctrine by failing to raise it on appeal, the panel affirmed both decisions. Id. at 19.
Hunting Titan petitioned for IPR of certain claims of a DynaEnergetics patent raising multiple grounds of unpatentability based on theories of anticipation and obviousness. Id. at 4. DynaEnergetics opposed the petition and filed a contingent motion to amend its patent to add new claims in the event that the Board were to find the originally challenged claims unpatentable. Id. In opposition to the motion to amend, Hunting Titan argued that each of several references, including a patent to Schacherer, disclosed every limitation of the proposed substitute claims, but presented unpatentability arguments based on obviousness without alleging that the proposed substitute claims were anticipated by the prior art of record. Id. at 8-9. The Board determined that the originally challenged claims were anticipated by Schacherer. Id. at 5. Relying solely on a theory of anticipation by Schacherer, the Board also denied DynaEnergetics' motion to amend, without rendering any findings or conclusions as to Hunting Titan's numerous obviousness challenges. Id. at 9. On DynaEnergetics's motion for rehearing, the Precedential Opinion Panel reviewed and vacated the Board's denial of the motion to amend. Id. at 9-13.
The Federal Circuit first addressed whether substantial evidence supports the Board's determination that Schacherer anticipates the originally challenged claims, and found that it does. Id. at 15. The court found that Schacherer teaches the elements alleged to be missing by DynaEnergetics under the claim construction adopted by the Board, and the Board provided a satisfactory explanation as to why it dismissed DynaEnergetics's evidence in favor of Hunting Titan's evidence. Id. at 14-15.
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