Law360 quoted Haynes and Boone, LLP Partner Eugene Goryunov in an article about a recent decision that the Patent Trial and Appeal Board (PTAB) should only craft its own reasons to reject proposed amended claims in "rare circumstances."
Here is an excerpt:
The PTAB's Precedential Opinion Panel, which includes Chief Judge Scott Boalick and U.S. Patent and Trademark Office Director Andrei Iancu, ruled last week in Hunting Titan v. DynaEnergetics that in most cases, decisions on whether to reject proposed amended claims in inter partes reviews should be based on invalidity arguments made by the petitioner.
The ruling surprised some observers, since the Federal Circuit ruled in April in a case involving Nike Inc. and Adidas AG that the board has the authority to look beyond the petitioner's arguments and come up with its own reasons why amendments shouldn't be allowed, provided the parties have a chance to respond.
The POP acknowledged that the Federal Circuit gave the board that authority, but held that it should be exercised sparingly. Broad use "would significantly diminish the incentives" for petitioners to make strong invalidity arguments by putting the onus on the board to come up with them, and "would also greatly undermine the efficiency" of the proceedings, the board said.
Eugene Goryunov of Haynes and Boone, LLP said that he expects the board to issue decisions where it "tests the waters" in the coming months, identifying some situations where it decides to come up with its own rationale for rejecting proposed amendments and others where it doesn't.
Some of those may be made informative, providing guidance on when it will happen going forward, Goryunov said, which may end up being in situations where it is "pure common sense" that the amendment shouldn't be allowed.
"The board may look at it and say, 'I can't see how this is patentable, even though the petitioner never challenged it under this ground,' so we have to take ... up this new basis for unpatentability,'" he said. "Because one of the mandates that we are charged with is to prevent bad patents from issuing."
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