Hunting Titan, Inc. v. Dynaenergetics Europe Gmbh

Case: 20-2163 Document: 59 Page: 1 Filed: 03/24/2022

United States Court of Appeals

for the Federal Circuit

______________________

HUNTING TITAN, INC.,

Appellant

v.

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.

Case: 20-2163 Document: 59 Page: 2 Filed: 03/24/2022

2 HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH

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.

Opinion for the court filed by Circuit Judge HUGHES.

Concurring opinion 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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HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH 3

denial of the motion to amend. The Panel granted

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. We affirm on both grounds.

I

DynaEnergetics owns the ’422 patent, which is di-

rected to a perforating gun used in 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.” Id. 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 one of the electrical

contact components extends from the shell

and further wherein the electrical contact

component comprises an electrically

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4 HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH

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 wired electri-

cal connection to complete an electrical

connection merely by contact;

an insulator positioned between the line-in

portion and the line-out portion, wherein

the insulator electrically isolates the line-

in portion from the line-out portion; and

means for selective detonation housed

within the shell, wherein the detonator as-

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 grounds of un-

patentability based on theories of anticipation and obvious-

ness. The Board instituted on the petition. Appx246.

DynaEnergetics opposed the petition. It also filed a contin-

gent motion to amend the ’422 patent to add new claims

16–22, in the event the Board were to 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

Owner Response, that Schacherer lacks several limitations

of the claimed detonator assembly.

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HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH 5

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 (32) into the wired detonator (38),” but instead “de-

scribes a [tandem] sub for housing such components.”

Appx322–23. Thus, according to DynaEnergetics,

“Schacherer does not teach or suggest a shell configured for

housing components of 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 Schacherer anticipates [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 met its 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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6 HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH

(3) has “means for selective detonation,” as recited

in representative claim 1.

Appx9–10. The Board then addressed whether Schacherer

teaches or suggests the remaining limitations that are pur-

portedly missing from the prior 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 of the [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 forms an elec-

trical connection with the other assembly—through bodily

contact as opposed to connection of physical wires.” Id. 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—i.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 Schacherer is a ‘wireless’ detona-

tor assembly in the manner recited by claim 1” since its

“detonator assembly achieves an electrical connection with

Case: 20-2163 Document: 59 Page: 7 Filed: 03/24/2022

HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH 7

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 component of 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. Appx19. 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

and 12 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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8 HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH

3) “a detonator assembly contained entirely within

the perforating gun housing.”

Appx419, 429. DynaEnergetics asserted that these “contin-

gent amendments further clarify 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 the shell, all designed in a way

that replaces wires and instead completes an electrical 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 combine with

the previously cited prior art.” Appx524. It also identified

as pertinent several previously cited prior art references—

including Schacherer—and asserted 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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HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH 9

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 render[ed] the proposed substitute

claims novel or non-obvious over the prior art of record. In-

stead,” the Board held, “each of [the additional] limitations

is taught by the prior art, 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

amendments d[id] not overcome the anticipatory 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.” 1 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 request for 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

advance or 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]

1 In a footnote and without further explanation, the

Board found “persuasive” Hunting Titan’s argument that a

particular modification to Schacherer would have been ob-

vious as “within the purview of Schacherer and the general

knowledge of a skilled artisan.” Appx29 n.5; see also

Appx34 n.2.

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10 HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH

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. And the Panel “conclude[d] 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 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

have an incentive to 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 when a 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 exemplary situation: “where

the record readily and persuasively establishes that substi-

tute claims are unpatentable for the same reasons that cor-

responding original claims are unpatentable.” Appx44. In

addition, it noted that “[s]uch situations are usually fact-

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HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH 11

specific” and gave the Board discretion to “address them as

they arise.” Appx44.

The Panel then observed that Hunting Titan had

“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 ground of 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 same ref-

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 circumstances of 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 amend on 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 ground of

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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12 HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH

[]PTO knows to 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 made a 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

was not one that “present[ed] the potential for issuing sub-

stitute claims the [PTO] ‘knows to be unpatentable’” be-

cause the PTO “d[id] not have sufficient 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 persuasive evi-

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 have it-

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.” Id. Rather, the Panel ob-

served, Hunting Titan had “merely present[ed] how one or

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 the prior art,” and the Panel

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HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH 13

“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 have jurisdic-

tion under 28 U.S.C. § 1295(a)(4)(A).

II

We review the Board’s decisions in accordance with the

Administrative Procedure Act, 5 U.S.C. § 706. HTC Corp.

v. Cellular Commc’ns Equip., LLC, 877 F.3d 1361, 1367

(Fed. Cir. 2017). We therefore “review the Board’s legal

conclusions de novo and its factual findings for substantial

evidence.” Id. 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, 1373 (Fed. Cir. 2013).

“Substantial evidence review asks ‘whether a reasonable

fact finder could have arrived at the agency’s decision’ and

requires examination of 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, 1366 (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 other is 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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14 HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH

A

We first 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 Schacherer dis-

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).

For the same reason, we are not persuaded by

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

configured for 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 component of the

detonator assembly,” Appx16–17. So, since the shell houses

at least part of the detonator assembly and since the deto-

nator assembly is received within the perforating gun

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HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH 15

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 internal to,

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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16 HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH

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 on the entirety 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.

We disagree.

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 universe of 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 amended claims.’” (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

Case: 20-2163 Document: 59 Page: 17 Filed: 03/24/2022

HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH 17

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

behind its 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 Servs., LLC v. Greene’s Energy Grp., LLC,

138 S. Ct. 1365, 1374 (2018) (cleaned up). And “[t]he fact

that Congress has enlisted the assistance of private parties

does not change their essential character.” Regents of Univ.

of Minn. 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

more like 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 may be 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

Case: 20-2163 Document: 59 Page: 18 Filed: 03/24/2022

18 HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH

of the patent system” (the readily identifiable evidence ex-

ception). Id.

Notably, however, the Panel highlighted one example

in which the readily identifiable evidence exception could

apply: “where the record readily and persuasively estab-

lishes that substitute claims are unpatentable for the same

reasons that corresponding original claims are unpatenta-

ble.” Id. It was on this basis that the Panel concluded that

the Board should not have considered whether the pro-

posed substitute claims were anticipated by Schacherer,

and the Panel therefore confined its own consideration to

the grounds of unpatentability advanced by Hunting Titan

in its opposition to DynaEnergetics’s motion to amend. In

other words, the Panel did not preclude the Board from con-

sidering the entirety of the record, but instead determined

that certain evidence of anticipation—evidence that Hunt-

ing Titan contends on appeal should have been considered

when determining patentability—was not readily identifi-

able and persuasive. Yet, on appeal, Hunting Titan did not

challenge the Panel’s decision as an abuse of discretion.

That is, Hunting Titan failed to argue that the Panel mis-

applied the readily identifiable evidence exception. Be-

cause Hunting Titan raised no such argument, it is

forfeited. 2

2 It does strike us as odd, however, that the Panel

determined that the Schacherer anticipation ground was

not readily identifiable and persuasive such that the Board

should have sua sponte raised this ground of unpatentabil-

ity against DynaEnergetics’s proposed substitute claims.

Indeed, the Board specifically found the proposed substi-

tute claims unpatentable for the same reasons it found the

corresponding original claims unpatentable. Moreover,

when the Board finds an original claim unpatentable as an-

ticipated by a prior art reference, it would seem to follow

Case: 20-2163 Document: 59 Page: 19 Filed: 03/24/2022

HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH 19

We must therefore affirm the Panel’s decision granting

the motion to amend. We emphasize, however, that this af-

firmance is based only on this narrow ground. We are not

determining the patentability of the proposed substitute

claims, nor are we deciding whether the Panel abused its

discretion in determining that the Schacherer anticipation

ground was not readily identifiable and persuasive such

that the Board should have sua sponte raised this ground

of unpatentability. Likewise, we are not opining on the

other limitations that the Panel placed on the Board’s abil-

ity to advance patentability issues not raised by a peti-

tioner, and whether those limitations are consistent with

35 U.S.C. § 318. Cf. Samsung Elecs. Am., Inc. v. Prisua

Eng’g Corp., 948 F.3d 1342, 1352 (Fed. Cir. 2020). Finally,

we do not decide whether the Board has an independent

obligation to determine patentability of proposed substi-

tute claims. These questions need not be answered to re-

solve the appeal before us.

CONCLUSION

We affirm the Board’s decision holding claims 1–15 un-

patentable, and we also affirm the Panel’s decision grant-

ing DynaEnergetics’s motion to amend the ’422 patent to

add new claims 16–22.

AFFIRMED

COSTS

No costs.

that the Board should begin by first asking if the corre-

sponding proposed substitute claim overcomes the ground

on which it found the original claim unpatentable.

Case: 20-2163 Document: 59 Page: 20 Filed: 03/24/2022

United States Court of Appeals

for the Federal Circuit

______________________

HUNTING TITAN, INC.,

Appellant

v.

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.

______________________

PROST, Circuit Judge, concurring.

I join the majority’s opinion, agreeing that Hunting Ti-

tan didn’t preserve a challenge to the Precedential Opinion

Panel’s (“POP”) application of its standard for when it is

(and isn’t) appropriate for the Board to sua sponte raise

Case: 20-2163 Document: 59 Page: 21 Filed: 03/24/2022

2 HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH

patentability issues as to new claims. 1 I write separately

to explain why, had that challenge been preserved, it likely

would have succeeded—and why I’m troubled by how the

PTO is handling this issue, including with a recently en-

acted regulation.

I

In evaluating new (i.e., proposed substitute or

amended) claims, “the Board should not be constrained to

arguments and theories raised by the petitioner in its peti-

tion or opposition to the motion to amend.” Nike, Inc. v.

Adidas AG, 955 F.3d 45, 51 (Fed. Cir. 2020) (emphasis

added). We’ve reasoned:

It makes little sense to limit the Board, in its role

within the agency responsible for issuing patents,

to the petitioner’s arguments in this context. Ra-

ther, based on consideration of the entire record,

the Board must determine whether the patent

owner’s newly-presented, narrower claims are . . .

“unpatentable in the face of the prior art cited in

the IPR.”

Id. at 51–52 (emphasis added) (quoting Aqua Prods., Inc.

v. Matal, 872 F.3d 1290, 1314 (Fed. Cir. 2017) (en banc)

(plurality opinion)). Although we haven’t delineated the

outer bounds of any independent Board duty to ensure that

new patent claims are, in fact, patentable before they issue,

we have observed that “the text, structure, and history of

the IPR [s]tatutes . . . indicate Congress’s unambiguous

1 This preservation failure was discussed exten-

sively at oral argument, during which Hunting Titan’s

counsel could not—despite repeated opportunities—iden-

tify where its opening brief made this challenge. See Oral

Arg. at 2:31–4:49, 5:59–7:28, 11:58–15:04, 1:03:27–1:07:37,

No. 20-2163, https://oralarguments.cafc.uscourts.gov/de-

fault.aspx?fl=20-2163_11012021.mp3.

Case: 20-2163 Document: 59 Page: 22 Filed: 03/24/2022

HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH 3

intent to permit the [Board] to review [new] claims more

broadly than” original claims. Uniloc 2017 LLC v. Hulu,

LLC, 966 F.3d 1295, 1304 (Fed. Cir. 2020); id. at 1306 (not-

ing the absence of “any other context under Title 35—e.g.,

original applications, reexaminations, reissue, etc.—in

which the [PTO] is required or authorized to newly issue a

patent claim without ever having determined that the par-

ticular claim meets the statutory requirements for patent-

ability”).

The POP nevertheless constrained the Board’s ability

to raise its own patentability issues as to new claims. It

identified just three situations in which the Board could do

so: (1) where the petitioner has ceased participating in the

proceeding altogether; (2) where the petitioner chooses not

to oppose the patent owner’s motion to amend; and

(3) where, although the petitioner has opposed, it has failed

to raise unpatentability evidence that is nonetheless “read-

ily identifiable and persuasive.” Hunting Titan, Inc. v.

DynaEnergetics Eur. GmbH, IPR2018-00600, 2020 WL

3669653, at *6 (P.T.A.B. July 6, 2020). The third situa-

tion—“readily identifiable and persuasive” evidence—is at

issue here, given that Hunting Titan opposed DynaEner-

getics’s motion to amend.

Whatever the “readily identifiable and persuasive”

standard means, it should have let the Board do what it did

here: evaluate whether the prior-art reference that antici-

pated the original claims also anticipated the new claims.

Such an evaluation can hardly be deemed overly zealous or

creative on the Board’s part. Indeed, among potential un-

patentability bases to raise sua sponte, this would seem to

be square one. But the POP disagreed. It forbade the

Board from making that basic evaluation. The POP thus

denied three administrative patent judges—who had de-

voted extensive resources to analyzing this prior-art refer-

ence—the ability to use that acquired expertise in making

their own patentability determinations before letting new

claims out the door. I don’t see how the POP’s decision in

Case: 20-2163 Document: 59 Page: 23 Filed: 03/24/2022

4 HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH

this regard is reasonable. It also appears inconsistent with

Nike, where we approved the Board’s sua sponte unpatent-

ability finding based on a prior-art reference not even men-

tioned in the petitioner’s opposition. 2 See Nike, 955 F.3d

at 48–53.

But, because Hunting Titan forfeited a challenge to the

POP’s application of its new standard here, review of that

standard’s application must await another day.

II

The POP stressed the adversarial aspect of IPRs when

justifying its “readily identifiable and persuasive” con-

straint on the Board. Hunting Titan, 2020 WL 3669653,

at *5–6, *9. But it acknowledged that motions to amend

don’t always have an adversary. For example, the peti-

tioner might have dropped out or declined to oppose. Ac-

cordingly, the POP framed the “readily identifiable and

persuasive” constraint as applying only to situations where

the petitioner opposes a motion to amend:

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.

A similar situation may exist where a petitioner

chooses not to oppose the motion to amend. And

2 Here, Hunting Titan cited and discussed the

Schacherer reference throughout its opposition to

DynaEnergetics’s motion to amend. J.A. 518–47. But it

argued obviousness (not anticipation), and as to one of the

newly added claim elements, the Board found a disclosure

in Schacherer that Hunting Titan’s opposition did not spe-

cifically identify.

Case: 20-2163 Document: 59 Page: 24 Filed: 03/24/2022

HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH 5

even where both a petitioner and patent owner par-

ticipate in the motion to amend process, there may

be situations where certain evidence of unpatenta-

bility 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 support-

ing the integrity of the patent system, notwith-

standing the adversarial nature of the proceedings.

Id. at *6 (emphasis added) (citation omitted). 3 The clear

implication was that the Board would not be so constrained

when a motion to amend is unopposed. Id.; see Nike,

955 F.3d at 51 (expressing concern over limiting the PTO’s

“ability to examine the new claims” in cases where the pe-

titioner has not opposed).

The PTO, however, has since enacted a regulation that

seemingly applies the “readily identifiable and persuasive”

constraint to all motions to amend—opposed or not. The

following provision now applies 4:

(d) Burden of Persuasion. On a motion to amend:

(1) A patent owner bears the burden of per-

suasion to show, by a preponderance of the

evidence, that the motion to amend com-

plies with the requirements of paragraphs

(1) and (3) of 35 U.S.C. § 316(d), as well as

3 The PTO’s brief in this appeal adopted this same

framing. E.g., Intervenor’s Br. 17 (“These circumstances

include where the petitioner ceases to participate in the

proceeding altogether or does not oppose the motion to

amend; and, even when the petitioner opposes, where the ev-

idence of unpatentability is readily identifiable and persua-

sive . . . .” (emphasis added)).

4 This provision applies to all motions to amend filed

on or after January 20, 2021, so it doesn’t apply in this case.

Case: 20-2163 Document: 59 Page: 25 Filed: 03/24/2022

6 HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH

paragraphs (a)(2), (a)(3), (b)(1), and (b)(2) of

this section;

(2) A petitioner bears the burden of persua-

sion to show, by a preponderance of the ev-

idence, that any proposed substitute claims

are unpatentable; and

(3) Irrespective of paragraphs (d)(1) and (2)

of this section, the Board may, in the inter-

ests of justice, exercise its discretion to

grant or deny a motion to amend only for

reasons supported by readily identifiable

and persuasive evidence of record. In doing

so, the Board may make of record only

readily identifiable and persuasive evi-

dence in a related proceeding before the

[PTO] or evidence that a district court can

judicially notice. Where the Board exer-

cises its discretion under this paragraph,

the parties will have an opportunity to re-

spond.

37 C.F.R. § 42.121(d) (emphasis added); see Rules of Prac-

tice to Allocate the Burden of Persuasion on Motions to

Amend in Trial Proceedings Before the Patent Trial and

Appeal Board, 85 Fed. Reg. 82,923, 82,924 (Dec. 21, 2020)

(setting forth the effective date).

The PTO’s remarks accompanying this regulation’s en-

actment note some situations where the “readily identifia-

ble and persuasive” constraint would apply. For example,

if the patent owner’s briefing fails to expressly address or

establish every statutory and regulatory requirement for a

motion to amend (as 37 C.F.R. § 42.121(d)(1) mandates),

the Board may nonetheless determine that such require-

ments are met—but “only when there is readily identifiable

and persuasive evidence” showing as much. 85 Fed. Reg.

at 82,927. Likewise, where a petitioner opposes a motion

to amend “but fails to raise certain evidence of

Case: 20-2163 Document: 59 Page: 26 Filed: 03/24/2022

HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH 7

unpatentability that is [nonetheless] readily identifiable

and persuasive,” the Board may take up that evidence,

“notwithstanding the adversarial nature of the proceed-

ings.” Id.

The prospect of applying the “readily identifiable and

persuasive” constraint to unopposed motions to amend,

however, is what particularly troubles me. Although the

POP indicated that the constraint wouldn’t apply in such

circumstances, see Hunting Titan, 2020 WL 3669653, at *6,

and although the PTO maintains that this regulation “cod-

ifie[s]” or “embod[ies] the policy determination articulated

by the POP here,” Intervenor’s Br. 17–18, 29–30, the regu-

lation appears to apply the constraint to all motions to

amend—opposed or not. Indeed, the PTO’s counsel at oral

argument adopted that view, maintaining that the regula-

tion imposes the “readily identifiable and persuasive” con-

straint even in unopposed situations. Oral Arg. at

21:03–13; see id. at 19:39–59. According to counsel, the

reason for doing so is “to encourage the parties to remain

in and oppose the motion [to amend].” Oral Arg. at

19:48–57. But an adverse petitioner needs no extra encour-

agement to oppose a motion. And if the petitioner is no

longer adverse—e.g., having settled or satisfied itself that

an amendment removes the threat of infringement—it’s

unclear how the PTO’s policy would affect the petitioner’s

incentive to oppose.

Because the regulation makes no caveat for unopposed

motions, the Board may find its hands tied (or its head

forced into the sand) even when no one is around to oppose

a new patent monopoly grant.

* * *

The “basic purpose[]” of IPRs is “to reexamine an ear-

lier agency decision,” thus “help[ing] protect the public’s

paramount interest in seeing that patent monopolies are

kept within their legitimate scope.” Cuozzo Speed Techs.,

Case: 20-2163 Document: 59 Page: 27 Filed: 03/24/2022

8 HUNTING TITAN, INC. v. DYNAENERGETICS EUROPE GMBH

LLC v. Lee, 579 U.S. 261, 279–80 (2016) (cleaned up). That

purpose is particularly salient here, given that the Board

usually evaluates the patentability of new claims only after

it has recognized the PTO’s original error in issuing un-

patentable claims. I don’t see the reasonableness of a pol-

icy that seriously hinders the Board’s basic efforts to avoid

making the same error twice.