Womble Bond Dickinson client DynaEnergetics Europe GmbH earned a complete and closely watched victory in a precedent-setting decision by the Patent Trial and Appeal Board’s Precedential Opinion Panel.
  
Womble Bond Dickinson attorneys Barry Herman, Christy Dupriest, Preston Heard, Brent BabcockWill Hubbard, Ana Friedman, and Julie Giardina, along with co-counsel Lisa Moyles and Jason Rockman of Moyles IP, represented DynaEnergetics in the Precedential Opinion Panel review, which concerned the scope of the PTAB’s authority to consider arguments that were not advanced by the petitioner in opposing a motion to amend. On July 6, the Precedential Opinion Panel ruled that the PTAB panel had overstepped its authority in this case by considering invalidity arguments not advanced by Hunting Titan Inc. in a patent validity dispute between the two energy industry companies. In the initial August 2019 inter partes decision, a PTAB panel found DynaEnergetics’ patent claims unpatentable 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 panel found the proposed amended claims were anticipated by an earlier patent, while Hunting Titan had asserted an obviousness position. 

DynaEnergetics filed a request for rehearing and sought review by the newly-formed Precedential Opinion Panel, which ordered additional briefing and an oral hearing.  At the February hearing, DynaEnergetics told the Precedential Opinion Panel – comprised of Director of the USPTO Andrei Iancu, Commissioner of Patents Andrew Hirshfeld, and Chief Administrative Patent Judge Scott Boalick – 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. 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 panel agreed with DynaEnergetics, writing, “Although the Board may, in certain rare circumstances, raise a ground of unpatentability that a petitioner did not advance, or insufficiently developed, against substitute claims proposed in opposing a motion to amend, those circumstances are limited to situations in which the adversarial process fails to provide the Board with potential arguments of patentability with respect to the proposed substitute claims…. This is not such a case. We hold that the Board should not have raised its own ground of anticipation by Schacherer against the proposed substitute claims, and that the obviousness grounds that Petitioner purports to have raised are facially insufficient to support a finding of unpatentability.”

The case represents a paradigm shift in the scope of Administrative Patent Judges’ duties in PTAB proceedings, and the case has attracted significant attention in patent litigation circles. Click here to read “Precedent Panel Reins In When PTAB Can Reject Amendments” at Law360.  Click here to read “Precedent Panel Says PTAB Can Raise Grounds Against Amendments” at Bloomberg Law.