Federal Circuit Affirms Precedential Opinion Panel Decision Limiting the Circumstances In Which the Board Should Raise Sua Sponte Patentability Issues Against Proposed Substitute Claims

May 3, 2022The Intellectual Property Strategist

On March 24, 2022, a Federal Circuit panel consisting of Judges Prost, Reyna, and Hughes issued a unanimous opinion, authored by Judge Hughes, in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, Case Nos. 2020-2163 and 2020-2191. Petitioner Hunting Titan appealed from the Precedential Opinion Panel’s vacatur of an inter parts review (IPR) Board’s decision denying Patent Owner DynaEnergetics’s contingent motion to amend, and DynaEnergetics crossappealed from the Board’s final written decision finding the original claims unpatentable. Because substantial evidence supports the Board’s determination that the original claims were unpatentable, and Hunting Titan forfeited the argument that the Precedential Opinion Panel misapplied a legal doctrine by failing to raise it on appeal, the panel affirmed both decisions. 

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