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United States Court of Appeals for the Federal Circuit
March 24, 2022, Decided
[*1373] 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 anticipation 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 [**2] with Hunting Titan, finding all of the original claims unpatentable.
After the petition was instituted, DynaEnergetics Europe GmbH, the patent owner, moved to amend the '422 patent to add proposed substitute claims 16-22. Hunting Titan opposed the motion to amend, advancing only obviousness grounds. Although Hunting Titan did not assert that Schacherer anticipated the proposed substitute claims, the Board determined that the original and proposed substitute [*1374] claims alike were unpatentable as anticipated by Schacherer. 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 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 anticipated by [**3] Schacherer. We affirm on both grounds.
DynaEnergetics owns the '422 patent, which is directed to a perforating gun used in an oil wellbore to penetrate 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 attach wires to the detonator." Id. 2:24-34. Claim 1 is representative and is reproduced below.
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28 F.4th 1371 *; 2022 U.S. App. LEXIS 7755 **; 2022 U.S.P.Q.2D (BNA) 289; 2022 WL 870781
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
Prior History: [**1] Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2018-00600.
unpatentability, assembly, detonator, patent, anticipation, motion to amend, electrical, persuasive, gun, perforating, original claim, limitations, amend, wired, housing, shell, prior art, circumstances, wireless, sua sponte, new claim, grounds, oppose a motion, proceedings, discloses, configured, teach, adversarial system, regulation, supporting evidence
Administrative Law, Judicial Review, Standards of Review, Substantial Evidence, Patent Law, US Patent & Trademark Office Proceedings, Appeals, Anticipation & Novelty, Fact & Law Issues, Jurisdiction & Review, De Novo Review, Nonobviousness, Elements & Tests, Prior Art, Business & Corporate Compliance, Patent Law, Reexamination Proceedings