WASHINGTON, DC—Womble Bond Dickinson attorneys Barry Herman, Christy Dupriest, Preston Heard and Will Hubbard, along with co-counsel Lisa Moyles and Jason Rockman of Moyles IP, represented DynaEnergetics Europe GmbH in a critical hearing before the Patent Trial and Appeal Board’s Precedential Opinion Panel (“POP”) on February 18. The hearing served as a springboard for the panelists to discuss the scope of the PTAB’s authority—a conversation that attracted significant attention in patent litigation circles.

On November 7, 2019, the POP agreed to review the dispute between Womble Bond Dickinson client DynaEnergetics and rival energy industry company Hunting Titan Inc. on two important questions related to motions to amend in inter partes review proceedings.  The parties and several amicus curiae submitted briefs related to whether the Board can raise its own invalidity arguments that were not advanced by the petitioner, and if it is permitted to do so, whether it needs to provide notice to the parties.  The three-member panel, consisting of USPTO Director Andrei Iancu, Commissioner for Patents Andrew Hirshfield and Chief Administrative Patent Judge Scott R. Boalick, asked questions to the two parties about the scope of the Board’s authority.  The two sides have been involved in a patent dispute for the past two years, with DynaEnergetics alleging in a Houston federal court that Hunting Titan infringes on its patent for technology used in the oil and gas industry, and Hunting Titan responding by asking the PTAB to invalidate the patent.  

The PTAB found DynaEnergetics’ patent claims unpatentable in August and also denied its motion to amend the claims—but, according to DynaEnergetics, on different grounds than Hunting Titan raised. In its final written decision, the PTAB said the proposed amended claims were anticipated by an earlier patent, while Hunting Titan had asserted an obviousness position. At yesterday’s hearing, Herman told the panel that the PTAB’s decision to introduce new invalidity grounds in the final written decision was not only unexpected, but was beyond the scope of the Board’s authority.

“It was clear that all three of the panelists were incredibly well prepared and asked really good questions, and we’re cautiously optimistic that the POP will rule in DynaEnergetics’ favor,” Herman told Law360. 

Created in 2018, the Precedential Opinion Panel reviews cases of “exceptional importance” in order to set precedent for the PTAB. The DynaEnergetics v. Hunting Titan case is just the fourth case that the panel has reviewed, and the first related to a final written decision.

The Feb. 18 hearing attracted significant attention in the legal media. Click here to read “PTAB Panel Probes Rules For Patent Amendment Rejection” in Law360. Also, click here to read, “Iancu Weighs PTAB Authority in Patent Claim Amendments” in Bloomberg Law.