PTAB can raise own arguments to block patent amendments
The US Patent Trial and Appeal Board (PTAB) can put forward its own grounds for halting a petitioner’s bid to amend its patent during a validity trial, according to an agency leadership panel.
In a decision handed down on Monday, July 6, the PTAB’s Precedential Opinion Panel declared 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 a motion to amend”.
However, the panel noted the PTAB must usually adhere to the grounds of unpatentability raised by the patent challenger when rejecting patent amendments.
The opinion stemmed from Hunting Titan v DynaEnergetics, in which the petitioner presented 16 grounds of unpatentability, arguing the board “should raise any ground of unpatentability with respect to amended claims that the record supports”.
Hunting Titan argued that “the board has a duty to protect the public and should not blind itself to any ground of unpatentability supported by a preponderance of the evidence”.
The panel agreed that in situations where the petitioner has failed to raise evidence of unpatentability, the board should consider identifiable and persuasive evidence in the interest of supporting the “integrity of the patent system” and ensuring high-quality patents.
The panel did, however, hold that “the opposition to a motion to amend typically should guide the contours of the motion to amend patentability analysis,” and that “expecting the board to raise any potential arguments of unpatentability in every case involving a motion to amend”, would significantly “diminish the incentives for a petitioner to fully and cogently explain its basis for concluding that the proposed substitute claims are unpatentable”.
In Hunting Titan v DynaEnergetics, the panel concluded that such circumstances were not present, the board should not have raised its own ground of unpatentability and granted DynaEnergetics a motion to amend its patent.
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