Case: 20-2163
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`Document:59
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`Page:1_
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`Filed: 03/24/2022
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`GAnited States Court of Appeals
`for the Federal Circuit
`
`HUNTINGTITAN,INC.,
`Appellant
`
`Vv.
`
`DYNAENERGETICS EUROPE GMBH,
`Cross-Appellant
`
`ANDREW HIRSHFELD, PERFORMING THE
`FUNCTIONS AND DUTIES OF THE UNDER
`SECRETARY OF COMMERCE FOR
`INTELLECTUAL PROPERTY AND DIRECTOR OF
`THE UNITED STATES PATENT AND TRADEMARK
`OFFICE,
`Intervenor
`
`2020-2163, 2020-2191
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2018-
`00600.
`
`Decided: March 24, 2022
`
`JASON SAUNDERS, Arnold & Saunders, LLP, Houston,
`TX, argued for appellant. Also represented by GORDON
`ARNOLD, CHRISTOPHER MCKEON.
`
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`HUNTINGTITAN, INC. v. DYNAENERGETICS EUROPE GMBH
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`BARRY J. HERMAN, Womble Bond Dickinson (US) LLP,
`Baltimore, MD, argued for cross-appellant. Also repre-
`sented by WILLIAM R. HUBBARD; CHRISTINE H. DUPRIEST,
`PRESTON HAMILTON HEARD, Atlanta, GA; LISA MOYLES,
`JASON ROCKMAN, Moyles IP, LLC, Shelton, CT.
`
`SARAH E. CRAVEN,Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA, argued for
`intervenor. Also represented by THOMAS W. KRAUSE,
`ROBERT J. MCMANUS, MAUREEN DONOVAN QUELER,
`FARHEENA YASMEEN RASHEED.
`
`Before PROST, REYNA, and HUGHES, Circuit Judges.
`
`Opinionfor the court filed by Circuit Judge HUGHES.
`
`Concurringopinion filed by Circuit Judge PROST.
`
`HUGHES, Circuit Judge.
`
`Hunting Titan, Inc. petitioned for inter partes review
`of claims 1-15 of U.S. Patent No. 9,581,422, asserting 16
`grounds of unpatentability based on theories of anticipa-
`tion and obviousness,including allegations that the claims
`were anticipated by Schacherer, U.S. Patent No. 9,689,223.
`The Board instituted trial on all grounds and ultimately
`agreed with Hunting Titan, finding all of the original
`claims unpatentable.
`
`After the petition was instituted, DynaEnergetics Eu-
`rope GmbH,the patent owner, moved to amend the 422 pa-
`tent to add proposed substitute claims 16-22. Hunting
`Titan opposed the motion to amend, advancing only obvi-
`ousness grounds. Although Hunting Titan did not assert
`that Schacherer anticipated the proposed substitute
`claims, the Board determined that the original and pro-
`posed substitute claims alike were unpatentable as antici-
`pated by Schacherer. DynaEnergetics requested rehearing
`and Precedential Opinion Panel review of the Board’s
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`the motion to amend. The Panel granted
`denial of
`DynaEnergetics’s
`request
`for
`rehearing, vacated the
`Board’s decision denying DynaEnergetics’s motion to
`amend, and then—after concluding that Hunting Titan
`had not proven by a preponderance of the evidence that
`proposed substitute claims 16-22 are unpatentable—
`granted the motion to amend the ’422 patent to add the
`proposed substitute claims.
`
`Hunting Titan appeals the Precedential Opinion
`Panel’s vacatur of the Board’s decision denying the motion
`to amend, and DynaEnergetics cross-appeals the Board’s
`decision finding the original claims of the ’422 patent an-
`ticipated by Schacherer. Weaffirm on both grounds.
`
`I
`
`DynaEnergetics owns the °422 patent, which is di-
`rected to a perforating gun usedin an oil wellbore to pene-
`trate the well lining and surrounding rock formation in
`order to provide a flow path for oil into the wellbore from
`the surrounding rock formation. ’422 patent, 1:15—44. The
`perforating gun’s key feature is a “wireless” and “selective”
`detonator assembly for detonating an explosive projectile
`charge within the perforating gun “without the need to at-
`tach wires to the detonator.” Jd. 2:24—-34. Claim 1 is repre-
`sentative and is reproduced below.
`
`1. A wireless detonator assembly configured for be-
`ing electrically contactably received within a perfo-
`rating gun assembly without using a_ wired
`electrical connection, comprising:
`
`a shell configured for housing components
`of the detonator assembly;
`
`more than one electrical contact compo-
`nent, wherein at least oneof the electrical
`contact components extends from theshell
`and further wherein the electrical contact
`
`component an_electricallycomprises
`
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`HUNTINGTITAN, INC. v. DYNAENERGETICS EUROPE GMBH
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`contactable line-in portion, an electrically
`contactable line-out portion and an electri-
`cally contactable ground portion,
`the
`ground portion in combination with the
`line-in portion and the line-out portion be-
`ing configured to replace the wiredelectri-
`cal connection to complete an electrical
`connection merely by contact;
`
`an insulator positioned betweentheline-in
`portion and the line-out portion, wherein
`the insulator electrically isolates the line-
`in portion from theline-out portion; and
`
`selective detonation housed
`means for
`within the shell, wherein the detonatoras-
`sembly is configured for electrically con-
`tactably forming the electrical connection
`merely by the contact.
`
`Id. 8:39-61.
`
`A
`
`Hunting Titan petitioned for inter partes review of
`claims 1—15 of the ’422 patent, asserting 16 groundsof un-
`patentability based on theoriesof anticipation and obvious-
`ness. The Board instituted on the petition. Appx246.
`DynaEnergetics opposed thepetition.It also filed a contin-
`gent motion to amend the ’422 patent to add new claims
`16—22, in the event the Board wereto find original claims
`5-11 unpatentable.
`
`1
`
`Relevant to this appeal is Hunting Titan’s first as-
`serted ground of unpatentability that Schacherer, U.S. Pa-
`tent No. 9,689,223, anticipates all of the °422 patent’s
`original claims. DynaEnergetics maintained, in its Patent
`OwnerResponse, that Schachererlacks several limitations
`of the claimed detonator assembly.
`
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`DynaEnergetics asserted that Schacherer does not
`teach or disclose the claimed “wireless detonator assem-
`bly.” Appx320 (emphasis added). According to DynaEner-
`getics, Schacherer “incorporate[s] an electrically wired
`detonator (38) into a tandem sub or connector,” id., while
`the claimed detonator assembly “replace[s] [the] electri-
`cally wired detonator ... with a wireless detonator 10 and
`house[s] the components of the detonator, including the
`means for
`selective detonation, within a_
`shell (12).”
`Appx321. DynaEnergetics also argued that “Schacherer
`does not teach or suggest incorporating the selecting firing
`module (82) into the wired detonator (88),” but instead “de-
`scribes a [tandem] sub for housing such components.”
`Appx822-23.
`Thus,
`according
`to DynaEnergetics,
`“Schachererdoes not teach or suggest a shell configured for
`housing componentsof the detonator assembly.” Appx323.
`
`Because these limitations, among others not relevant
`to this appeal, are allegedly not taught by Schacherer,
`DynaEnergetics argued that Hunting Titan failed to
`“show[] that Schachereranticipates [any] of the challenged
`claims of the ’422 [p]atent.” Appx333. The Board disagreed
`with DynaEnergetics, concluding that each original claim
`is unpatentable as anticipated by Schacherer. Appx24.
`
`Significant to this appeal, the Board first considered
`claim 1’s uncontested limitations and found these limita-
`tions fully supported by the record and “effectively admit-
`ted” by DynaEnergetics. Appx9. The Board accordingly
`concluded that Hunting Titan had metits burden of prov-
`ing that Schacherer discloses a “detonator assembly” that
`is:
`
`(1) “received with a perforating gun,”
`
`(2) has “more than one electrical contact compo-
`nent, wherein at least one of the electrical contact
`components... comprises an electrically contacta-
`ble line-in portion, ... line-out portion[,] and...
`ground portion,” and
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`HUNTINGTITAN, INC. v. DYNAENERGETICS EUROPE GMBH
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`(3) has “meansfor selective detonation,” as recited
`in representative claim 1.
`
`Appx9—10. The Board then addressed whether Schacherer
`teaches or suggests the remaininglimitations that are pur-
`portedly missing from theprior art reference.
`
`Beginning with claim 1’s “wireless detonator assem-
`bly” limitation, the Board said that “DynaEnergetics [had]
`oversimplifie[d] what constitutes Schacherer’s detonator
`assembly and ignore[d] the express language ofthe [repre-
`sentative] claim” in the ’422 patent. Appx13. The Board ex-
`plained that, “consistent with the claim language and
`specification, the ‘wireless’ and ‘merely by the contact’ lim-
`itations speak expressly to how one assembly formsan elec-
`trical connection with the other assembly—through bodily
`contact as opposed to connection of physical wires.” Jd. But
`“nowhere does the ’422 patent preclude the use of wired
`connections internal to the detonator assembly.” Id.
`
`Still, the Board observed, DynaEnergetics attempted to
`fall back on a third, related limitation—.e., “without using
`a wired connection”’—when it “distort[ed] the [clarifying]
`testimony of Hunting Titan’s expert,’ Appx15, and
`“fault[ed] Schacherer for using a wired connection between
`subcomponents of the detonator assembly,” Appx13—14.
`“What DynaEnergetics fail[ed] to acknowledge,” however,
`was “that the claimed‘wireless,’ ‘without using a wired con-
`nection,’ and ‘merely by the contact’ limitations pertain
`solely to how the detonator assembly as a whole forms an
`electrical connection with the perforating gun assembly as
`a whole, irrespective of how any subcomponents with each
`assembly are connected.” Appx15. And because “the claims
`require only the absence of a wired connection between the
`detonator assembly and the perforating gun assembly,” the
`Board “conclude[d] that Schachereris a ‘wireless’ detona-
`tor assembly in the mannerrecited by claim 1” since its
`“detonator assembly achieves anelectrical connection with
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`the perforating gun assembly merely by contact of one with
`the other.” Appx16.
`
`The Board also determined that Schacherer discloses
`claim 1’s “shell configured for housing components of the
`detonator assembly.” In reaching this determination, the
`Board construed “shell” to mean “a shell, housing, or casing
`for housing any componentof the detonator assembly, in-
`cluding but not limited to a detonator head plug, a fuse
`head,an electronic circuit board, or explosive components.”
`Appx17. It then found that this construction “matches ex-
`actly the structure and function” of Schacherer’s con-
`nector 30. Appxl9.
`The
`Board
`thus’
`dismissed
`DynaEnergetics’s arguments “as nothing more than se-
`mantics.” Id.
`
`Having determined “that a skilled artisan would have
`understood Schacherer as disclosing each and every limi-
`tation of claim 1,” the Board then determined the same
`with respect to each limitation of independent claims 5
`and12 as well as the claims depending therefrom.
`Appx24—25.
`
`2
`
`Contingent on the Board finding original claims 5-11
`unpatentable, DynaEnergetics also moved the Board to
`amend the ’422 patent
`to add proposed substitute
`claims 16—22. The substitute claims would retain all the
`limitations of the original claims and further add the fol-
`lowing new limitations:
`
`1) “a perforating gun housing” having “a detonator
`assembly contained entirely within the perforating
`gun housing,”
`
`2) “a carrying device positioned within the perfo-
`rating gun housing to hold at least one shaped
`charge,” and
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`3) “a detonator assembly contained entirely within
`the perforating gun housing.”
`
`Appx419, 429. DynaEnergetics asserted that these “contin-
`gent amendmentsfurtherclarify that the detonator assem-
`bly includes a means for selective detonation within the
`shell, in addition to at least one electrically contactable
`component extending from theshell, all designed in a way
`that replaces wires and instead completes anelectrical con-
`nection within the perforating gun housing merely by con-
`tact.” Appx419;
`see
`also Appx429. These proposed
`substitute claims are therefore patentable and not antici-
`pated by Schacherer, according to DynaEnergetics, be-
`cause Schacherer’s detonator assembly is not wireless and
`its “selective detonator assembly ... is clearly not con-
`tained within its perforating gun housing.” Appx430-31.
`So DynaEnergetics argued that Schacherer “does not teach
`or disclose a ‘wirelessly connectable selective detonator as-
`sembly’ that is ‘contained entirely within the perforating
`gun housing without using a wired electrical connection’ as
`recited in” its proposed substitute claims. Appx431.
`
`Hunting Titan opposed the motion to amend, asserting
`that the proposed substitute claims “d[id] not overcome the
`previously cited prior art in the Petition.” Appx524. Hunt-
`ing Titan identified two publications—U.S. Patent
`No. 10,077,641 (Rogman) and U.S. Patent Application
`No. 14/888,882 (Harrigan)—that, it contended, “disclose all
`of the additional claim limitations in proposed amended
`claims 16—22 and would have been obvious to combinewith
`the previously cited prior art.” Appx524. It also identified
`as pertinent several previously cited prior art references—
`including Schacherer—andasserted that each of these ref-
`erences discloses or teaches every claim limitation of the
`proposed substitute claims. Appx524—44. Based on these
`assertions, Hunting Titan maintained that the proposed
`substitute claims are obvious and therefore unpatentable.
`Hunting Titan “presented only obviousness arguments,
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`without alleging that the proposed substitute claims were
`anticipated by the prior art of record.” Appx33.
`
`“In [the Board’s] view, none of [DynaEnergetics’s] ad-
`ditional
`limitations rendered] the proposed substitute
`claims novel or non-obviousoverthe priorart of record. In-
`stead,” the Board held, “each of [the additional] limitations
`is taught by thepriorart, either as admitted in the ’422 pa-
`tent itself or as disclosed by Schacherer.” Appx26. The
`Board thus decided that “Hunting Titan ha[d] carried its
`burden in showing that DynaEnergetics’[s] proposed
`amendmentsd[id] not overcome theanticipatory nature of
`Schacherer’s disclosure,” and it denied DynaEnergetics’s
`motion to amend. Appx29. In reaching this decision, the
`Board “addresse[d] only Hunting Titan’s anticipation chal-
`lenge based on Schacherer . .. . [It] render[ed] no findings
`or conclusions as to Hunting Titan’s numerous obviousness
`challenges.”! Appx34.
`
`B
`
`DynaEnergetics requested rehearing and Precedential
`Opinion Panel review of the Board’s denial of the motion to
`amend. The Panel granted DynaEnergetics’s requestfor re-
`view to address “[u]nder what circumstances and at what
`time during an inter partes review ... the Board [may]
`raise a ground of unpatentability that a petitioner did not
`advanceor insufficiently developed against substitute pro-
`posed claims in a motion to amend[.]” Appx34.
`
`The Panel acknowledged that our decision in Nike, Inc.
`v. Adidas AG, 955 F.3d 45 (Fed. Cir. 2020), had “resolve[d]
`
`In a footnote and without further explanation, the
`1
`Board found “persuasive” Hunting Titan’s argumentthat a
`particular modification to Schacherer would have been ob-
`vious as “within the purview of Schachererand the general
`knowledge of a skilled artisan.” Appx29 n.5; see also
`Appx34 n.2.
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`the question of whether the Board may advance a ground
`of unpatentability that a petitioner does not advance,or in-
`sufficiently develop[s], against substitute claims proposed
`in a motion to amend,” and it agreed that Nike had an-
`swered this question in the affirmative. Appx39. But the
`Panel said, Nike “d[id] not address the circumstances in
`which the Board should advance such a ground of un-
`patentability in relation to substitute claims proposed in a
`motion to amend.” Appx40. Andthe Panel “conclude[d] that
`only underrare circumstances should the needarise for the
`Board to advance grounds of unpatentability to address
`proposed substitute claims that the petitioner did not ad-
`vance, or insufficiently developed, in its opposition to the
`motion.” Appx40.
`
`The Panel believed that “the better approach, in most
`instances, is to rely on the incentives the adversarial sys-
`tem creates, and expect that the petitioner will usually
`havean incentiveto set forth the reasons why the proposed
`substitute claims are unpatentable.” Appx43. Still,
`the
`Panel left open the possibility for the Board to sua sponte
`raise a ground of unpatentability, but “only ... under rare
`circumstances,” such as whena petitioner “cease[s] to par-
`ticipate in the proceeding altogether” or “chooses not to op-
`pose the motion to amend.” Appx43—44. The Panel further
`accepted that “there may be circumstances where certain
`evidence of unpatentability has not been raised by the pe-
`titioner, but is readily identifiable and persuasive such
`that the Board should take it up in the interest of support-
`ing the integrity of the patent system, notwithstanding the
`adversarial nature of the proceedings.” Appx44. Although
`the Panel chose not “to delineate [every situation] with par-
`ticularity,” it did put forth one exemplarysituation: “where
`the record readily and persuasively establishes that substi-
`tute claims are unpatentable for the same reasonsthatcor-
`responding original claims are unpatentable.” Appx44. In
`addition, it noted that “[s]uch situations are usually fact-
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`specific” and gave the Boarddiscretion to “address them as
`they arise.” Appx44.
`
`then observed that Hunting Titan had
`The Panel
`“never mentioned anticipation as a ground”of unpatenta-
`bility against the proposed substitute claims. Appx48. It
`further rejected Hunting Titan’s assertion that its antici-
`pation arguments against the original claims, found in its
`petition, were “sufficient to also raise arguments regarding
`anticipation of
`the proposed substitute
`claims by
`Schacherer.” Appx48. And because “raising a groundof un-
`patentability in a petition against original claims in a pa-
`tent does not provide a patent owner with sufficient notice
`that new arguments would be asserted using that sameref-
`erence against new substitute claims proposed in a motion
`to amend,” the Panel concluded that “the anticipation
`ground based on Schacherer ... was not advanced, much
`less sufficiently developed, by [Hunting Titan] against pro-
`posed substitute claims 16—22.” Appx49.
`
`Although anticipation based on Schacherer was not
`raised by Hunting Titan, the Panel asked “whether the
`Board should [still] have raised that ground against the
`proposed substitute claims in the Final Written Decision.”
`Appx49—50. It decided that the circumstancesof this case
`did not “qualify as one of the rare circumstances necessi-
`tating the Board to advance a ground of unpatentability
`that Petitioner did not advance or sufficiently develop.”
`Appx50. In doing so, the Panel faulted Hunting Titan for
`its strategic choice “to oppose the motion to amendon dif-
`ferent grounds,” holding that “an unsuccessful strategy
`alone does not reflect a failure of the adversarial process
`here that might otherwise support the Board’s decision to
`exercise its discretion to sua sponte raise a new groundof
`unpatentability.” Appx50-51.
`
`The Panel further rejected Hunting Titan’s and sup-
`porting amici’s arguments that “the public interest w[ould]
`be harmed by the issuance of substitute claims that the
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`[|PTO knowsto be unpatentable”“if the Board cannot raise
`the Schacherer anticipation ground” here. Appx51. “The
`public interest is preserved,” the Panel claimed, “by a well-
`functioning adversarial system, which, in contrast to reex-
`amination,is the basic set-up Congress envisioned for inter
`partes reviews.” Id. So in a case like this one, where Hunt-
`ing Titan “vigorously prosecuted its case but madea tacti-
`cal decision not to raise anticipation arguments,” the Panel
`explained, “the adversarial system has not failed” and
`“[t]he public interest [wa]s not well-served by the [PTO]
`filling in gaps intentionally left void by” the petitioner. Id.
`The Panel therefore “conclude[d] that, as a policy matter,
`the Board should not have raised the Schacherer anticipa-
`tion ground.” Appx50. Moreover, the Panel stated, this case
`wasnot one that “present[ed] the potential for issuing sub-
`stitute claims the [PTO] ‘knows to be unpatentable” be-
`cause the PTO “d[id] not havesufficient information on the
`record of this case .. . to make requisite findings on antici-
`pation.” Appx52. According to the Panel, this case did not
`contain “the sort of readily identifiable and persuasiveevi-
`dence of anticipation in the record that would justify the
`Board raising its own grounds of unpatentability.” Id.
`
`Having determined that the Board should not haveit-
`self advanced the ground of anticipation based on
`Schacherer when Hunting Titan raised this ground of un-
`patentability only against the original claims and not the
`proposed substitute claims, the Panel proceeded to con-
`sider in the first instance Hunting Titan’s obviousness“ar-
`guments and cited evidence” raised in its opposition to
`DynaEnergetics’s motion to amend. Appx54. The Panel
`“conclude[d] that [Hunting Titan] ha[d] not set forth an ad-
`equate case of obviousness.” Jd. Rather,
`the Panel ob-
`served, Hunting Titan had “merely present[ed] how oneor
`more of the various asserted prior art references separately
`teaches the various limitations of proposed substitute
`claims 16—22.” Appx56. It had “provide[d] no discussion of
`a reason to combine or modify theprior art,” and the Panel
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`“decline[d] to piece together [its] arguments” and “develop
`a persuasive theory of unpatentability” on Hunting Titan’s
`behalf. Id. Thus, following its holding that “the obviousness
`grounds that [Hunting Titan] purport[ed] to have raised
`[we]re facially insufficient to support a finding of unpatent-
`ability,” the Panel granted the motion to amend.
`Appx56-57.
`
`Hunting Titan timely appealed the Panel’s decision va-
`cating the Board’s denial of DynaEnergetics’s motion to
`amend. DynaEnergetics timely cross-appealed the Board’s
`decision invalidating its original claims. We havejurisdic-
`tion under 28 U.S.C. § 1295(a)(4)(A).
`
`II
`
`Wereview the Board’s decisions in accordance with the
`Administrative Procedure Act, 5 U.S.C. § 706. HTC Corp.
`v. Cellular Comme’ns Equip., LLC, 877 F.3d 1361, 1367
`(Fed. Cir. 2017). We therefore “review the Board’s legal
`conclusions de novo andits factual findings for substantial
`evidence.” Jd. Because “[a]nticipation is a question of fact,”
`we consider whether substantial evidence supports the
`Board’s determination holding the original claims un-
`patentable as anticipated by Schacherer. SynQor, Inc. v.
`Artesyn Techs., Inc., 709 F.3d 1365, 1873 (Fed. Cir. 2018).
`“Substantial evidence review asks ‘whether a reasonable
`fact finder could have arrived at the agency’s decision’ and
`requires examinationof the ‘record as a whole, taking into
`account evidence that both justifies and detracts from an
`agency’s decision.”Intelligent Bio-Systems, Inc. v. Illumina
`Cambridge Ltd., 821 F.3d 1359, 1866 (Fed. Cir. 2016) (cita-
`tion omitted). “Where two different conclusions may be
`warranted based on the evidence of the record, the Board’s
`decision to favor one conclusion over the otheris the type
`of decision that must be sustained by this court as sup-
`ported by substantial evidence.” In re Chudik, 851 F.3d
`1365, 1371 (Fed. Cir. 2017) (citation omitted).
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`HUNTINGTITAN, INC. v. DYNAENERGETICS EUROPE GMBH
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`A
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`Wefirst address DynaEnergetics’s cross-appeal, chal-
`lenging the Board’s decision holding the original claims of
`the ’422 patent unpatentable as anticipated by Schacherer.
`
`DynaEnergetics primarily takes issue with the Board’s
`finding that Schacherer teaches a detonator assembly that
`is received within a perforating gun assembly. Specifically,
`DynaEnergetics faults the Board for identifying this limi-
`tation as uncontested, fully supported by the record, or ef-
`fectively admitted, and contends that the Board’s conduct
`erroneously shifted the burden of persuasion from Peti-
`tioner to Patent Owner. But the Board identified where in
`the petition Hunting Titan had shown how Schachererdis-
`closes the uncontested limitations. Appx9. And “[t]he
`Board, having found the only disputed limitations together
`in one reference, was not required to address undisputed
`matters.” In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir.
`2016).
`
`the same reason, we are not persuaded by
`For
`DynaEnergetics’s argument that the Board’s purported
`“failure to analyze the ‘received within’ feature infected its
`construction of the ‘shell’ limitation” and its determination
`that “Schacherer disclosed a shell,” such that “neither is
`supported by substantial evidence.” Cross-Appellant’s
`Opening Br. 25. Moreover, DynaEnergetics’s arguments
`addressing the wireless detonator assembly’s “shell” com-
`ponent—which fault Schacherer’s sub for its size and as-
`sert
`that
`this sub “cannot reasonably be said to be
`configuredfor being received within the perforating gun as-
`sembly” since it is “a large structural element or heavy
`steel tool that [instead] provides a connection between
`guns,” id. at 27—overlook the fact that the Board construed
`“shell” to include “casing for housing any componentof the
`detonator assembly,” Appx16—17. So, since the shell houses
`at least part of the detonator assembly andsincethe deto-
`nator assembly is received within the perforating gun
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`HUNTINGTITAN, INC. v. DYNAENERGETICS EUROPE GMBH
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`assembly, substantial evidence supports the Board’s find-
`ing that the shell is configured to be received within the
`perforating gun assembly. See Appx15—19.
`
`Lastly, DynaEnergetics contends that substantial evi-
`dence does not
`support
`the Board’s
`findings
`that
`Schacherer discloses the claimed “wireless detonator as-
`sembly” because the Board did not satisfactorily explain
`why it dismissed DynaEnergetics’s evidence in favor of
`Hunting Titan’s evidence. But the Board’s explanation was
`more than satisfactory.
`It expressly disagreed with
`DynaEnergetics’s narrow construction of “detonator as-
`sembly,” specifically noting that “[w]hat DynaEnergetics
`fails to acknowledge is that the claimed ‘wireless,’ ‘without
`using a wired connection,’ and ‘merely by the contact’ limi-
`tations pertain solely to how the detonator assembly as a
`whole forms an electrical connection with the perforating
`gun assembly as a whole, irrespective of how any subcom-
`ponents within each assembly are connected.” Appx15.
`And,
`in light of its construction,
`the Board explicitly
`pointed to DynaEnergetics’s failure to provide evidentiary
`support or an explanation for why its position—that “a
`wired connection residing entirely within, and internalto,
`Schacherer’s detonator assembly precludes the assembly
`from being ‘wireless”—was the correct and necessary one
`for the Board to adopt. Appx16. Substantial evidence sup-
`ports the Board’s determination that the detonator assem-
`bly’s electrical connection with the perforating gun
`assembly does not use a wired electrical connection in
`Schacherer. Appx16.
`
`For the foregoing reasons, substantial evidence sup-
`ports the Board’s determination that Schacherer antici-
`pates all of the ’422 patent’s original claims.
`
`B
`
`Because we affirm the Board’s decision holding the
`original claims unpatentable, we address Hunting Titan’s
`appeal challenging the Panel’s decision to vacate the
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`HUNTINGTITAN,INC. v. DYNAENERGETICS EUROPE GMBH
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`Board’s denial of the motion to amend. Hunting Titan con-
`tends that, under Aqua Products, Inc. v. Matal, 872 F.3d
`1290, 1325-26 (Fed. Cir. 2017) (en banc) and Nike, Inc. v.
`Adidas AG, 955 F.3d 45, 51-52 (Fed. Cir. 2020), the Board
`has a duty to determine the patentability of the proposed
`substitute claims based ontheentirety of the record. Hunt-
`ing Titan asserts that the Panel therefore erred in revers-
`ing the Board’s decision finding the proposed claims
`anticipated by Schacherer and further erred in determin-
`ing the patentability of the proposed substitute claims
`based only on its review of Hunting Titan’s opposition to
`the motion to amend.In other words, Hunting Titan argues
`that the Board had an obligation to sua sponte identify pa-
`tentability issues for a proposed substitute claim based on
`the prior art of record, and that the Panel committed legal
`error by vacating the Board’s decision to do so in this case.
`Wedisagree.
`
`Neither Aqua Products nor Nike established that the
`Board maintains an affirmative duty, without limitation or
`exception, to sua sponte raise patentability challenges to a
`proposed substitute claim. Nike, 955 F.3d at 51 (“We ad-
`dressed the universeof prior art that the Board should con-
`sider when reviewing a motion to amend in Aqua
`Products. ... We expressly declined to address, however,
`whether the Board ‘may sua sponte raise patentability
`challenges of amendedclaims.”(citation omitted)); id. “We
`hold today that the Board may sua sponte identify a pa-
`tentability issue for a proposed substitute claim based on
`the prior art of record.” (emphasis added)). Indeed, as the
`Panel correctly pointed out, “Nike resolve[d] the question
`of whether the Board may advance a ground of unpatenta-
`bility that a petitioner does not advance, or insufficiently
`develop[s], against substitute claims proposed in a motion
`to amend.” Appx39. But Nike left unanswered “the circum-
`stances in which the Board should advance such a ground
`of unpatentability in relation to substitute claims proposed
`in a motion to amend.” Appx40. It was this question that
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`the Panel answered here, and confining the circumstances
`in which the Board should sua sponte raise patentability
`issues was not itself erroneous.
`
`Notably, we do find problematic the Panel’s reasoning
`behindits decision to confine the Board’s discretion to sua
`sponte raise patentability issues to only rare circum-
`stances. For example, while the adversarial system proves
`useful in IPR proceedings to bring forth evidence the
`agency might not have otherwise discovered, the Panel’s
`substantial reliance on the adversarial system as the basis
`for confining its patentability determination for new claims
`overlooks the basic purpose of IPR proceedings: to reex-
`amine an earlier agency decision and ensure “that patent
`monopolies are kept within their legitimate scope.” Oil
`States Energy Serus., LLC v. Greene’s Energy Grp., LLC,
`138 S. Ct. 13865, 1374 (2018) (cleaned up). And “[t]he fact
`that Congress has enlisted the assistanceof private parties
`does not changetheir essential character.” Regents of Univ.
`ofMinn. v. LSI Corp., 926 F.3d 1327, 1338 (Fed. Cir. 2019);
`see also id. (“[A]lthough these modifications to inter partes
`reexamination make IPR [proceedings] ‘look[] a good deal
`morelike civil litigation,’ fundamentally these proceedings
`continue to be a ‘second look at an earlier administrative
`grant of a patent.” (third alteration in original) (citations
`omitted)).
`
`Nevertheless, the Panel’s conclusion, at least to the ex-
`tent at issue here, is not inconsistent with Nike and Aqua
`Products. The Panel identified circumstances in which the
`Board should advance “a ground of unpatentability that a
`petitioner did not advance, or insufficiently developed,
`against substitute claims in a motion to amend.” Appx44.
`And it acknowledged that “even where both a petitioner
`and patent owner participate in the motion to amend pro-
`cess, there maybe situations where certain evidence of un-
`patentability has not been raised by the petitioner, but is
`readily identifiable and persuasive such that the Board
`should take it up in the interest of supporting the integrity
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`of the patent system”(the readily identifia