Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 67
`Date July 6, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HUNTING TITAN, INC.,
`Petitioner,
`v.
`DYNAENERGETICS EUROPE GMBH,1
`Patent Owner.
`
`IPR2018-00600
`Patent 9,581,422 B2
`__________________________
`
`Before ANDREI IANCU, Under Secretary of Commerce for Intellectual
`Property and Director of the United States Patent and Trademark Office,
`ANDREW HIRSHFELD, Commissioner for Patents, and SCOTT R.
`BOALICK, Chief Administrative Patent Judge.
`
`BOALICK, Chief Administrative Patent Judge.
`
`
`
`DECISION
`Granting Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`Granting Patent Owner’s Motion to Amend
`35 U.S.C. § 316(d)(1)
`
`
`1 Patent Owner’s Updated Mandatory Notice Information, Paper 62, dated
`February 14, 2020, states that DynaEnergetics GmbH & Co. KG has been
`dissolved and DynaEnergetics Europe GmbH is the patent owner and real
`party in interest to this proceeding. Accordingly, we modify the original
`case caption to reflect that change. The parties shall use the modified
`caption for filings in this proceeding from this date forward.
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 67
`Date July 6, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HUNTING TITAN, INC.,
`Petitioner,
`v.
`DYNAENERGETICS EUROPE GMBH,1
`Patent Owner.
`
`IPR2018-00600
`Patent 9,581,422 B2
`__________________________
`
`Before ANDREI IANCU, Under Secretary of Commerce for Intellectual
`Property and Director of the United States Patent and Trademark Office,
`ANDREW HIRSHFELD, Commissioner for Patents, and SCOTT R.
`BOALICK, Chief Administrative Patent Judge.
`
`BOALICK, Chief Administrative Patent Judge.
`
`
`
`DECISION
`Granting Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`Granting Patent Owner’s Motion to Amend
`35 U.S.C. § 316(d)(1)
`
`
`1 Patent Owner’s Updated Mandatory Notice Information, Paper 62, dated
`February 14, 2020, states that DynaEnergetics GmbH & Co. KG has been
`dissolved and DynaEnergetics Europe GmbH is the patent owner and real
`party in interest to this proceeding. Accordingly, we modify the original
`case caption to reflect that change. The parties shall use the modified
`caption for filings in this proceeding from this date forward.
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-00600
`Patent 9,581,422 B2
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`
`
`I. INTRODUCTION
`Hunting Titan, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1–15 of U.S. Patent
`No. 9,581,422 B2 (Ex. 1001, “the ’422 patent”). The Petition presented
`sixteen grounds of unpatentability based on theories of anticipation and
`obviousness, including a ground alleging that claims 1–15 are anticipated by
`U.S. Patent No. 9,689,223 B2 (Ex. 1002, “Schacherer”). DynaEnergetics
`Europe GmbH (“Patent Owner”) filed a Preliminary Response (Paper 9).
`The Board instituted trial on all grounds. Paper 10 (“Inst. Dec.”).
`During the trial, Patent Owner filed a Motion to Amend presenting
`substitute claims 16–22. Paper 19. In response, Petitioner filed an
`Opposition to Patent Owner’s Motion to Amend. Paper 25 (“Pet. Opp. to
`Mot. Amend”). In the Opposition, Petitioner presented only obviousness
`arguments, without alleging that the proposed substitute claims were
`anticipated by the prior art of record. See generally Pet. Opp. to Mot.
`Amend. More specifically, Petitioner’s obviousness arguments addressed
`individual limitations of the proposed substitute claims, alleging that the
`limitations are taught by the prior art. Patent Owner filed a Reply to
`Petitioner’s Opposition, arguing, among other things, that Petitioner’s
`obviousness analysis did not specify combinations of prior art or
`demonstrate a motivation to combine the prior art. Paper 28 (“Reply”).
`Petitioner filed a Sur-Reply on Patent Owner’s Motion to Amend, arguing,
`among other things, that “the Board is tasked with determining whether the
`substitute claims are unpatentable by a preponderance of the evidence based
`on the entirety of the record.” Paper 33 (“Sur-Reply”), 6.
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`
`The Board issued a Final Written Decision finding the original claims
`are anticipated by Schacherer. Paper 42 (“Decision”). The Final Written
`Decision further denied Patent Owner’s Motion to Amend because the
`proposed substitute claims also were anticipated by Schacherer. Id.
`Specifically, the Final Written Decision determined that “Hunting Titan has
`carried its burden in demonstrating that th[e] proposed amendment does not
`overcome the anticipatory nature of Schacherer,” and noted that it
`“addresses only Hunting Titan’s anticipation challenge based on Schacherer,
`while rendering no findings or conclusions as to Hunting Titan’s numerous
`obviousness challenges.”2 Id. at 28, 30.
`Patent Owner requested rehearing and Precedential Opinion Panel
`(“POP”) review of the Board’s denial of the Motion to Amend.
`Papers 44, 45. The POP granted Patent Owner’s request for POP review to
`address the following issues:
`I. Under what circumstances and at what time
`during an inter partes review 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?
`II. 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.
`
`
`2 In a footnote, and without further explanation, the Final Written Decision
`points out that the Board “find[s] persuasive” Petitioner’s argument that a
`particular modification to Schacherer would have been obvious as “within
`the purview of Schacherer and the general knowledge of a skilled artisan.”
`Decision 29 n.5.
`
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`Paper 46, 2 (citing Standard Operating Procedure 2 (“SOP 2”),3 3–7).
`Petitioner and Patent Owner each filed an additional brief addressing
`the POP review issues (Paper 51, “Pet. Br.”; Paper 49, “PO Br.”), and each
`party filed a response (Paper 58, “Pet. Resp.”; Paper 57, “PO Resp.”).
`Several amici curiae—Google LLC et al., High Tech Inventors Alliance, the
`American Intellectual Property Law Association, Askeladden L.L.C., and
`Unified Patents Inc.—filed briefs addressing the POP review issues.
`Paper 52 (“Google Br.”); Paper 53 (“HTIA Br.”); Paper 54 (“AIPLA Br.”);
`Paper 55 (“Askeladden Br.”); Paper 56 (“Unified Patents Br.”)). An oral
`argument was held on February 18, 2020, and a transcript of the argument is
`included in the record. Paper 63 (“Tr.”).
`Subsequent to oral argument, the Court of Appeals for the Federal
`Circuit issued its opinion in Nike, Inc. v. Adidas AG, 955 F.3d 45 (Fed. Cir.
`2020). We authorized supplemental briefing from the parties to address the
`impact of Nike on this proceeding (Paper 64), and both Petitioner and Patent
`Owner submitted supplemental briefs. Paper 65 (“PO Supp. Br.”); Paper 66
`(“Pet. Supp. Br.”).
`We grant Patent Owner’s request for rehearing. We conclude that 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. We hold, however, that
`such circumstances are not present in this case and the Board should not
`have raised its own ground of unpatentability. Moreover, we find that the
`grounds that were raised by Petitioner in opposition to the Motion to Amend
`
`
`3 Available at https://go.usa.gov/xPMqx.
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`Patent 9,581,422 B2
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`are facially insufficient to support a finding of unpatentability. Accordingly,
`we grant Patent Owner’s Motion to Amend.
`II. ANALYSIS
`A. The Board’s Ability to Raise New Grounds
`1. May the Board raise a new ground?
`We first address whether the Board may raise a ground of
`unpatentability that a petitioner did not advance, or insufficiently developed,
`against substitute claims proposed in a motion to amend. Paper 46, 2.
`Implicit in this issue is whether the Board has the ability to raise a ground of
`unpatentability beyond what the petitioner has raised or developed and, if so,
`under what circumstances should the Board do so. We conclude that the
`Board has the ability to raise a ground of unpatentability a petitioner has not
`advanced or has insufficiently developed, but should do so only under rare
`circumstances. Because those circumstances are not present here, the panel
`should not have raised a new ground in this case, as explained below.
`
`35 U.S.C. § 316(d)(1) states that
`During an inter partes review instituted under this
`chapter, the patent owner may file 1 motion to
`amend the patent in 1 or more of the following
`ways:
`(A) Cancel any challenged patent claim.
`(B) For each challenged claim, propose a
`reasonable number of substitute claims.
`35 U.S.C. § 318 states, in part,
`(a) Final Written Decision.—
`If an inter partes review is instituted and not
`dismissed under this chapter, the Patent Trial and
`Appeal Board shall issue a final written decision
`with respect to the patentability of any patent claim
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`IPR2018-00600
`Patent 9,581,422 B2
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`
`challenged by the petitioner and any new claim
`added under section 316(d).
`(b) Certificate.—
`If the Patent Trial and Appeal Board issues a final
`written decision under subsection (a) and the time
`for appeal has expired or any appeal has terminated,
`the Director shall issue and publish a certificate
`canceling any claim of the patent finally determined
`to be unpatentable, confirming any claim of the
`patent determined
`to be patentable,
`and
`incorporating in the patent by operation of the
`certificate any new or amended claim determined to
`be patentable.
`Petitioner argues that the Board should raise any ground of
`unpatentability with respect to amended claims that the record supports,
`noting that “[t]he 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.” Pet. Br. 9; see Google Br. 3–7; HTIA Br. 5–8; Askeladden
`Br. 4–8. Patent Owner, on the other hand, argues that Congress has not
`given the Board the authority to independently examine the patentability of
`substitute claims proposed in a motion to amend. PO Br. 2, 5. Further,
`Patent Owner argues that “[b]y definition, substitute claims contain
`narrowing limitations not present in the original claims” and that a “patent
`owner cannot receive the required notice as to how the asserted art
`purportedly teaches the narrowing limitations—via the petition or
`otherwise—unless advanced by the petitioner.” PO Resp. 8. See also
`AIPLA Br. 3 (“the Board generally should not raise its own grounds of
`unpatentability in response to a motion to amend”).
`The America Invents Act (“AIA”) established post-grant proceedings
`that are primarily adversarial. The Supreme Court has stated that AIA
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`proceedings are “similar to court proceedings.” Cuozzo Speed Techs., LLC
`v. Lee, 136 S. Ct. 2131, 2143 (2016). The Court noted that, “rather than
`create (another) agency-led, inquisitorial process for reconsidering patents,
`Congress opted for a party-directed, adversarial process,” that is “guided by
`a petition describing ‘each claim challenged’ and ‘the grounds on which the
`challenge to each claim is based.’” SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
`1355 (2018). The Court further noted that “Congress chose to structure a
`process in which it’s the petitioner, not the Director, who gets to define the
`contours of the proceeding,” and that “the statute tells us that the petitioner’s
`contentions, not the Director’s discretion, define the scope of the litigation
`all the way from institution through to conclusion.” Id. at 1355–57.
`Nevertheless, the Supreme Court has recognized that in “significant
`respects, inter partes review is less like a judicial proceeding and more like a
`specialized agency proceeding.” Cuozzo, 136 S. Ct. at 2143. Moreover,
`both Cuozzo and SAS addressed situations in which the Board evaluated
`grounds of unpatentability that differed from those the Petitioner raised
`against original claims that were present in the issued patent. The present
`case involves a new ground raised against new substitute claims proposed in
`a motion to amend. The ability to amend claims distinguishes AIA
`proceedings from other adversarial processes such as litigation in the district
`courts, or the International Trade Commission, as patentees cannot pursue
`claim amendments in those venues. Indeed, the Federal Circuit addressed
`this distinction in Nike, and concluded that “the Board should not be
`constrained to arguments and theories raised by the petitioner in its petition
`or opposition to the motion to amend. . . . Otherwise, were a petitioner not to
`oppose a motion to amend, the Patent Office would be left with no ability to
`
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`IPR2018-00600
`Patent 9,581,422 B2
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`examine the new claims.” Nike, 955 F.3d at 51. As such, “the Board may
`sua sponte identify a patentability issue for a proposed substitute claim based
`on the prior art of record.” Id.
`Patent Owner’s Supplemental Brief argues that, regardless of the
`Federal Circuit’s statements in Nike, it is the Supreme Court’s decision in
`SAS that controls the outcome of our decision. PO Supp. Br. 1. The Federal
`Circuit, however, made clear that it viewed the facts in Nike as
`distinguishable from SAS. As we note above, SAS involved original claims
`present in an issued patent, as did the other cases the Nike court
`distinguished, such as In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
`1373 (Fed. Cir. 2016). Nike, 955 F.3d at 51. By contrast, Nike, and the
`instant case, involve new amended claims that are not present in an issued
`patent. As the Federal Circuit has stated, “the Board’s authority with respect
`to new and amended claims” is different than with respect to originally
`issued claims, and “necessarily extends to other possible grounds of
`unpatentability.” Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d
`1342, 1352 (Fed. Cir. 2020). Accordingly, the Supreme Court’s ruling in
`SAS does not require that we disregard the Federal Circuit’s ruling in Nike.
`We find that Nike resolves the question of whether the Board may
`advance a ground of unpatentability that a petitioner does not advance, or
`insufficiently developed, against substitute claims proposed in a motion to
`amend. The Board may do so.
`
`8
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`IPR2018-00600
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`
`2. Should the Board raise a new ground?
`Nike, however, does not address the circumstances in which the Board
`should advance such a ground of unpatentability in relation to substitute
`claims proposed in a motion to amend. We conclude that only under rare
`circumstances should the need arise for the Board to advance grounds of
`unpatentability to address proposed substitute claims that the petitioner did
`not advance, or insufficiently developed, in its opposition to the motion.
`Patent Owner acknowledges that when a “challenger ceases to
`participate in an IPR proceeding, [s]ection 317(a) expressly permits the
`Board to proceed to final judgment and justify any finding of unpatentability
`by reference to the evidence of record.” PO Br. 4 (citing Cuozzo, 136 S. Ct.
`at 2144). Patent Owner, however, argues that the Administrative Procedure
`Act (“APA”) “discourages administrative law judges (‘ALJs’)—including
`PTAB administrative patent judges—from exercising investigatory
`functions,” and “by developing its own arguments, the Board will inevitably
`extend its role beyond that of simply ‘presiding at hearings.’” PO Br. 8–9.
`Accord AIPLA Br. 5‒10.
`Petitioner and supporting amici, on the other hand, suggest that the
`Board has an obligation to raise its own grounds of unpatentability in any
`appropriate case, and to independently examine the patentability of every
`proposed substitute claim. Pet. Br. 9–12; Google Br. 3–7; HTIA Br. 5–8;
`Askeladden Br. 4–8. In its Supplemental Brief, Petitioner argues that Nike
`requires that “the Board must consider the entire record when determining
`invalidity, including prior art cited in the IPR.” Pet. Supp. Br. 1. Petitioner
`directs us to the Nike court’s reiteration of the holding in Aqua Products that
`“the Board may not ‘base its patentability determinations with respect to
`
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`IPR2018-00600
`Patent 9,581,422 B2
`
`amended claims solely on the face of the motion to amend, without regard to
`the remainder of the IPR record’” and “[r]ather, the Board must consider the
`entirety of the record before it when assessing the patentability of amended
`claims.” Id. (citing Nike, 955 F.3d at 51) (quoting Aqua Prods., Inc. v.
`Matal, 872 F.3d 1290, 1325, 1296 (Fed. Cir. 2017)) (bolding and
`underlining omitted) (italics in Nike).
`We are not persuaded that the statements identified by Petitioner in
`Nike mandate the broad rule Petitioner proposes, under which the Board is
`obligated to undertake an independent examination of every proposed
`substitute claim. This would require the Board to raise, develop, and resolve
`every possible argument supported by the evidence of record that an
`amended claim is unpatentable, even if the petitioner has never raised or
`sufficiently developed that argument in the record. The holding of Nike is
`that “the Board may sua sponte identify a patentability issue for a proposed
`substitute claim based on the prior art of record,” not that the Board must do
`so. Nike, 955 F.3d at 51 (emphasis added).
`The sentence from Nike on which Petitioner relies says nothing to the
`contrary – it provides only that, “based on consideration of the entire record,
`the Board must determine” the patentability of the proposed substitute claim.
`Id. at 51–52 (emphasis added). This sentence simply recognizes that the
`Board is required to “issue a final written decision with respect to the
`patentability of . . . any new claim added under section 316(d).” 35 U.S.C.
`§ 318(a). And “[i]t makes little sense to limit the Board . . . to the
`petitioner’s arguments” in assessing the patentability of such claims. Nike,
`955 F.3d at 51 (emphasis added). However, nothing in Nike requires the
`
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`IPR2018-00600
`Patent 9,581,422 B2
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`Board to raise and then address additional arguments, much less all possible
`arguments that the record could possibly support.
`Furthermore, a rule mandating the Board to evaluate all possible
`arguments that may be supported by the evidence of record would not
`provide the parties with the appropriate incentives to participate in the
`adversarial process. Notably, adversarial briefing by the parties provides the
`basic framework for the amendment process in AIA trials. That is, the
`patent owner first proposes the substitute claims in its motion, and the
`petitioner then has the opportunity to raise grounds of unpatentability in
`opposition based on evidence and arguments. Therefore, the opposition to a
`motion to amend typically should guide the contours of the motion to amend
`patentability analysis.
`Relying on the adversarial process to frame the issues for the Board
`properly places the incentives on the parties to identify the pertinent
`evidence and make the best arguments for their desired outcome. As the
`Supreme Court has explained:
`In our adversary system, in both civil and criminal cases, in the
`first instance and on appeal, we follow the principle of party
`presentation. That is, we rely on the parties to frame the issues
`for decision. . . . [A]s a general rule, “[o]ur adversary system is
`designed around the premise that the parties know what is best
`for them, and are responsible for advancing the facts and
`arguments entitling them to relief.”
`Greenlaw v. United States, 554 U.S. 237, 243–44 (2008) (quoting Castro v.
`United States, 540 U.S. 375, 386 (2003) (Scalia, J., concurring in part and
`concurring in the judgment) (alteration in original)). Underlying this
`reliance on the adversarial system is the notion that “[c]ounsel almost always
`know a great deal more about their cases than we do.” United States v.
`
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`IPR2018-00600
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`Samuels, 808 F.2d 1298, 1301 (8th Cir. 1987) (Arnold, J., concurring in the
`denial of reh’g en banc) (“[Courts] do not, or should not, sally forth each day
`looking for wrongs to right. We wait for cases to come to us, and when they
`do we normally decide only questions presented by the parties.”).
`Adopting Petitioner’s proposal, and obligating the Board to raise sua
`sponte 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. This would also greatly undermine the
`efficiency of AIA proceedings. Such an approach would put the onus on the
`Board to develop arguments for the petitioner. See Anderson v. Eppstein, 59
`USPQ2d 1280, 1287 (BPAI 2001) (quoting United States v. Dunkel, 927
`F.2d 955, 956 (7th Cir. 1991)); Cisco Sys. Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12, 10 (PTAB Aug. 29, 2014) (informative) (quoting
`DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999)).
`Accordingly, the better approach, in most instances, is to rely on the
`incentives the adversarial system creates, and expect that the petitioner will
`usually have an incentive to set forth the reasons why the proposed
`substitute claims are unpatentable. In most circumstances, then, the Board
`need not raise its own arguments of unpatentability.
`To be sure, there may be circumstances where the adversarial system
`fails to provide the Board with potential arguments for the unpatentability of
`the proposed substitute claims. As noted above, the Supreme Court in
`Cuozzo specifically addressed one such situation, in which the petitioner has
`ceased to participate in the proceeding altogether. Cuozzo, 136 S. Ct. at
`2144. A similar situation may exist where a petitioner chooses not to oppose
`
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`IPR2018-00600
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`the motion to amend. And even where both a petitioner and patent owner
`participate in the motion to amend process, there may be situations where
`certain evidence of unpatentability 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 of the patent system, notwithstanding
`the adversarial nature of the proceedings. For example, a situation could
`arise where the record readily and persuasively establishes that substitute
`claims are unpatentable for the same reasons that corresponding original
`claims are unpatentable. There may be other situations as well, but we need
`not undertake to delineate them with particularity at present. Such situations
`are usually fact-specific and the Board can address them as they arise.
`In sum, we determine that the Board may raise a ground of
`unpatentability that a petitioner did not advance, or insufficiently developed,
`against substitute claims in a motion to amend, but should only do so under
`rare circumstances.4
`
`
`4 In its Supplemental Brief, Patent Owner argues that the Office lacks the
`ability to set standards for when the Board may sua sponte raise a ground of
`unpatentability, because the Supreme Court’s decision in Chevron, U.S.A.,
`Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837, 842 (1984)
`prohibits such standard-setting. PO Supp. Br. 3–4. But Chevron addresses
`the question of whether a reviewing court should give deference to an
`agency’s rulemaking, not the underlying question of whether an agency has
`the power to make rules. We do not understand Chevron to be any obstacle
`to the Office setting standards for when the Board, which is part of the
`Office, may exercise the power to sua sponte raise grounds of
`unpatentability, as Nike expressly permits.
`
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`B. Notice of New Grounds
`We now turn to the issue of whether the Board must provide the
`parties notice of, and an opportunity to respond to, any ground of
`unpatentability the Board raises sua sponte. The parties and amici do not
`dispute that the Board needs to provide notice in that event—their dispute,
`instead, focuses on what form that notice must take. Pet. Br. 4–8; PO Br.
`12–15; Google Br. 8–15; HTIA Br. 14–15; AIPLA Br. 13–15; Askeladden
`Br. 8–10; Unified Patents Br. 12–14. We, therefore, do not consider there to
`be any question that notice to the parties is indeed required. As Patent
`Owner points out, the APA requires that an agency must “timely inform[]”
`the parties to a formal adjudication of “the legal authority and jurisdiction
`under which the hearing is to be held,” as well as “the matters of fact and
`law asserted.” 5 U.S.C. § 554(b)(2), (3) (2018) (portions quoted in PO Br.
`12). Moreover, in Nike the Federal Circuit held that this requirement applies
`to a ground of unpatentability the Board raises with respect to proposed
`substitute claims that a petitioner has not advanced or sufficiently developed.
`Nike, 955 F.3d at 51; see also id. at 52 (“the notice provisions of the APA
`and our case law require that the Board provide notice of its intent to rely on
`[newly raised references] and an opportunity for the parties to respond
`before issuing a final decision relying on [those references].”).
`Rather than contest whether the Board must provide notice,
`Petitioner’s primary argument is that a ground of unpatentability raised in
`the petition against original claims (for example, in the present case, the
`Schacherer anticipation ground) provides sufficient notice to a patent owner
`that the Board may apply the same ground against the newly-proposed
`substitute claims. Pet. Br. 4. We disagree.
`
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`As an initial matter, the proposed amended claims will include new
`limitations not found in the original claims, and the petition will not have set
`forth how the prior art meets those new limitations. Absent some
`explanation—from the petitioner when opposing a motion to amend or, in
`rare circumstances, the Board—of how the prior art allegedly meets the
`newly-added limitations, the patent owner cannot be said to have been given
`“notice and a fair opportunity to meet the grounds of rejection.” See Belden
`Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015).
`In addition, Petitioner’s approach fails to balance the burdens on the
`parties properly, as it would require a patent owner to guess which grounds
`of unpatentability from the petition the Board may apply against the
`substitute claims and respond to them, while at the same time absolving the
`petitioner from addressing which grounds it believes are meritorious in view
`of the proposed amendment.
`Thus, due process requires that a patent owner receive notice of how
`the prior art allegedly discloses the newly-added limitations of each
`proposed substitute claim, as well as a theory of unpatentability asserted
`against those claims. And the patent owner must have the opportunity to
`respond to those factual allegations and legal theories. Although we need
`not define every possible procedure that would be sufficient to provide the
`required notice and opportunity to respond, the Federal Circuit in Nike gave
`two examples. Nike, 955 F.3d at 54. Specifically, the court suggested that
`the Board could request “supplemental briefing from the parties regarding its
`proposed ground for unpatentability” or it could “request[] that the parties be
`prepared to discuss” the prior art in connection with the substitute claim at
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`
`an oral hearing. Id. The court opined that “either of these actions would
`satisfy the APA’s notice requirements.” Id.
`C. Application to the Instant Case
`1. Petitioner Failed to Adequately Advance or Develop an
`Anticipation Argument Against Proposed Substitute Claims 16–22
`Petitioner argues that, at the very least, the Board here decided that the
`proposed substitute claims were both anticipated and rendered obvious by
`Schacherer, and that it raised the latter grounds in its Opposition to Patent
`Owner’s Motion to Amend. Pet. Br. 3–4. Alternatively, Petitioner points
`out that the Petition alleged anticipation by Schacherer (id. at 4), and,
`therefore, argues that the anticipation ground was not new. We disagree on
`both points.
`Initially, we determine anticipation is the only ground of
`unpatentability fully analyzed in the Final Written Decision in relation to
`substitute claims proposed in the Motion to Amend. We acknowledge that
`the Final Written Decision states that “none of th[e] additional limitations
`renders the proposed substitute claims novel or non-obvious over the prior
`art of record,” and includes footnote 5, which references Petitioner’s
`assertions regarding an “obvious modification” to Schacherer’s disclosure.
`Decision 26, 29 n.5. Although the Final Written Decision might at best
`imply a finding of obviousness in relation to the proposed substitute claims,
`the Final Written Decision does not set forth a detailed obviousness analysis,
`such as an analysis of the Graham factors or the reason a person of ordinary
`skill in the art would have modified the prior art or combined references
`with a reasonable expectation of success. See, e.g., Decision 30. This is true
`not only of the proposed substitute claims, but also of the original claims. In
`addition, the Final Written Decision concludes that Patent Owner’s
`
`16
`
`
`
`IPR2018-00600
`Patent 9,581,422 B2
`
`“proposed amendments do not overcome the anticipatory nature of
`Schacherer’s disclosure,” and, in dismissing Patent Owner’s Motion to
`Exclude as moot, the Final Written Decision states that “[o]ur decision today
`addresses only Hunting Titan’s anticipation challenge based on Schacherer,
`while rendering no findings or conclusions as to Hunting Titan’s numerous
`obviousness challenges.” Id. at 29, 30. Therefore, the Final Written
`Decision determines the proposed substitute claims are unpatentable based
`on an anticipation theory alone.
`We further find that the anticipation theory discussed in the Final
`Written Decision was not advanced, much less sufficiently developed, by
`Petitioner against the proposed substitute claims. The record indicates that
`Petitioner never mentioned anticipation as a ground in its Opposition to the
`Motion to Amend. Nor did Petitioner do so in its Sur-Reply, despite Patent
`Owner’s observation in its Reply that, “[i]n striking contrast to the Petition’s
`heavy focus on assertions of anticipation, the instant challenge relies entirely
`on allegations of obviousness.” Reply 1 (footnote omitted). At the hearing,
`Petitioner admitted that focusing on obviousness, and not anticipation, was
`an intentional “tactical decision, to focus our arguments in the limited space
`we had.” Tr. 17:3–6.
`Nor do we consider the action of Petitioner raising the ground of
`anticipation by Schacherer against the original claims in the Petition
`sufficient to also raise arguments regarding anticipation of the proposed
`substitute claims by Schacherer. Petitioner argues that “[t]he Board is not
`required to set out a bill of particulars naming every possible piece of
`evidence it might rely on, or every legal or factual issue that may arise.”
`Pet. Br. 4 (citing Genzyme Therapeutic v. Biomarin Pharmaceutical, 825
`
`17
`
`
`
`IPR2018-00600
`Patent 9,581,422 B2
`
`F.3d 1360, 1366–67 (Fed. Cir. 2016)). Petitioner further argues in its
`Supplemental Brief that Nike reaffirms this aspect of Genzyme. Pet. Supp.
`Br. 4. In Genzyme, however, the Board relied on references, raised by the
`petitioner in reply, to support its conclusion of unpatentability of challenged
`claims of the patent on a ground that was cited in the original Petition.
`Genzyme, 825 F.3d at 1366. As the Nike court pointed out, the parties in
`Genzyme both addressed the relevance of these references, and the patent
`owner “had ample notice that the references were in play as potentially
`relevant evidence and that the Board might well address the parties’
`arguments regarding those references in its final written decisions.” 955
`F.3d at 54 (quoting Genzyme, 825 F.3d at 1367).
`In the present case, by contrast, the newly raised argument against the
`proposed amended claims is an entirely new theory of unpatentability and
`the evidence relied upon is applied against new claim limitations that did not
`exist at the time the Petition was filed. As discussed above, raising a ground
`of unpatentability in a petition against original claims in a patent does not
`provide a patent owner with sufficient notice that new arguments would be
`asserted using that same reference against new substitute claims proposed in
`a motion to amend. See supra § II.B. Accordingly, the anticipation ground
`based on Schacherer, which was raised only in the Petition with respect to
`the original claims, was not advanced, much less sufficiently developed, by
`Petitioner against proposed substitute claims 16–22.
`2. Should the Board Have Rai
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