AIPLA Submits Amicus Brief to PTAB in Hunting Titan, Inc. v. Dynaenergetics & Co. Kg

This Brief addresses the questions:

1. Under what circumstances and at what time during inter partes review (IPR) may the Board raise a ground of unpatentability that a petitioner did not advance or insufficiently developed against substitute claims proposed in a motion to amend?
2. If the Board raises such a ground of unpatentability, whether the Board must provide the parties notice and an opportunity to respond to the ground of unpatentability before the Board makes a final determination?

As explained in the brief, the structure of IPR proceedings greatly limits how and when the Board may permissibly raise a ground of unpatentability against substitute claims that a petitioner did not advance or insufficiently developed without violating patent owner due process rights.

Accordingly, the Board should make any determination of unpatentability based on the arguments and evidence of record. The answer to the second question assumes, for argument’s sake, that the Board may, at least in some circumstances, permissibly raise such a ground.

On that assumption, in order to comply with the Administrative Procedures Act (APA), the Board must provide the parties with notice and an opportunity to respond to the ground of unpatentability before the Board makes a final determination denying the motion to amend.