Agency Patent Amendment Precedent Questioned by Federal Circuit

The Federal Circuit upheld an administrative tribunal’s decision allowing DynaEnergetics Europe GmbH to amend a patent on a perforating gun, but questioned patent office policy that limits the tribunal’s ability to raise its own invalidity issues for substitute patent claims.

Hunting Titan Inc. challenged DynaEnergetics’ patent in inter partes review after it was sued for infringement. The Patent Trial and Appeal Board found the patent’s original claims invalid and denied DynaEnergetics’ attempt to amend the patent, finding the new substitute claims weren’t patentable.

The reason the panel rejected the new claims—they’re anticipated—wasn’t an argument Hunting Titan made.

Reviewing the decision, ...