AIPLA Submits Amicus Brief to PTAB in Hunting Titan, Inc. v. Dynaenergetics & Co. Kg

December 20, 2019

File Downloads

All documents are in PDF format.

This Brief addresses the questions:

  1. Under what circumstances and at what time during inter partes review (IPR) 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?
As explained in the brief, the structure of IPR proceedings greatly limits how and when the Board may permissibly raise a ground of unpatentability against substitute claims that a petitioner did not advance or insufficiently developed without violating patent owner due process rights.

Accordingly, the Board should make any determination of unpatentability based on the arguments and evidence of record. The answer to the second question assumes, for argument’s sake, that the Board may, at least in some circumstances, permissibly raise such a ground.

On that assumption, in order to comply with the Administrative Procedures Act (APA), the Board must provide the parties with notice and an opportunity to respond to the ground of unpatentability before the Board makes a final determination denying the motion to amend.

Upcoming Events

  • 2024 AIPLA Virtual Corporate Practice Institute

    January 9 to 16, 2024   |   Up to 360 Minutes of CLE

    Tuesday, January 9, 12:00 Noon - 5:00 PM - and Tuesday, January 16, 12:00 Noon - 5:00 PM -- The Corporate Practice Institute is a virtual event will take place on the 2nd and 3rd Tuesday of January, and will consist of 60 minute Sessions with 30 minute breaks in between. Each evening will end with an online networking event. Program Coming soon! Special registration rates for in-house corporate practitioners.
  • 2024 Patent Prosecution Boot Camp - San Jose, CA

    February 7 to 9, 2024

    Register today and don't miss out! The Patent Prosecution Boot Camp is a comprehensive, CLE-accredited seminar that includes instructional lecture-style sessions with practical tips on U.S. and international patent preparation and prosecution, as well as hands-on interactive workshops that will walk you through drafting claims and responding to office actions.
  • 2024 Trade Secret Summit

    March 14 to 15, 2024

    Save the Date! Please join the AIPLA Trade Secret Committee for the 2024 Trade Secret Summit, which is being held March 14-15, 2024 in Santa Clara, California. The AIPLA Trade Secret Summit is the leading trade secret conference in the nation, with speakers from across the spectrum of private practitioners, in-house counsel, government, and academia, as well as fantastic networking opportunities. Registration and Venue Information Coming Soon!