- Eric H. Liou
Inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB) provides an avenue for a petitioner to challenge the patentability of one or more claims in an issued patent based on prior art under anticipation and/or obviousness grounds (35 U.S.C. § 102 and 35 U.S.C. § 103). A patent owner in an IPR proceeding has the option of filing a motion to amend with substitute patent claims, as an alternative to the original claims in the challenged patent. This presentation discusses the Federal Circuit’s recent decision in Hunting Titan v. DynaEnergetics, in which the court affirmed DynaEnergetics’ granted motion to amend in an IPR proceeding, but suggested that the PTAB should have greater discretion to sua sponte raise a new ground of unpatentability of substitute claims in a motion to amend that was not raised by the petitioner.