Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, Nos. 2020-2163, -2191 (Mar. 24, 2022).
Hunting had petitioned for inter partes review (IPR) asserting claims 1–15 of DynaEnergetics’ U.S. Patent No. 9,581,422 are unpatentable due to anticipation and obviousness. The ‘422 patent is directed to a perforating gun used in an oil wellbore to penetrate the well lining and surrounding rock formation to provide a flow path for oil. Hunting’s anticipation grounds included allegations that the claims were anticipated by a patent to Schacherer. After institution, DynaEnergetics moved to amend to add proposed substitute claims 16–22. Hunting opposed the motion, asserting only obviousness grounds. The Board ultimately found all original and proposed substitute claims anticipated by Schacherer.
DynaEnergetics requested rehearing and Precedential Opinion Panel review. The Panel granted rehearing, vacated the Board’s decision denying the motion to amend, concluded that Hunting had not proven the unpatentability of the proposed substitute claims, and granted the motion to amend. Hunting appealed the Panel’s vacatur of the Board’s decision on the motion to amend and DynaEnergetics appealed the Board’s decision finding the original claims unpatentable.
The Federal Circuit affirmed. Addressing first DynaEnergetics’ cross-appeal, the Court held that substantial evidence supported the Board’s findings that Schacherer disclosed every element of the original claims. Next, the Court addressed Hunting’s appeal. The Court rejected Hunting’s argument that the Board has a duty to determine the patentability of proposed substitute claims based on the entirety of the record. Hunting, citing Nike and Aqua Products, had argued “that the Board had an obligation to sua sponte identify patentability issues for a proposed substitute claim based on the prior art of record, and that the Panel committed legal error by vacating the Board’s decision to do so . . . .” The Court explained Nike stood for the proposition that the Board may advance a ground of unpatentability against proposed substitute claims not advanced by the petitioner, but it left unanswered the circumstances when it should do so. Here, the Court held, the Panel’s determination that the evidence of anticipation “was not readily identifiable and persuasive” was not challenged as an abuse of discretion by Hunting on appeal and, therefore, such argument was forfeited. Accordingly, the Court affirmed the Panel’s vacatur of the Board’s decision on that limited ground.