POP Says PTAB Should Not Have Raised Its Own Ground of Unpatentability

Written July 7, 2020

The Precedential Opinion Panel (POP) on July 6, 2020, issued a new 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 decision 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.

This decision is consistent with AIPLA’s amicus brief filed in the matter.

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