USPTO de-designates Hunting Titan in view of final rule governing motion to amend procedures

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Patent Trial and Appeal Board

USPTO de-designates Hunting Titan in view of final rule governing motion to amend procedures

The USPTO’s final rule on motion to amend (MTA) procedures, which became effective today, broadens the Patent Trial and Appeal Board's (the Board) authority to sua sponte raise grounds of unpatentability with respect to proposed substitute claims (see 37 CFR 42.121(d)(3), 42.221(d)(3)).

In the final rule, the body of evidence that the Board may consider and make of record now includes the entire evidence of record in the proceeding, without limitation. Specifically, the final rule removes limitations of the prior rule, such as the “interests of justice” standard and the requirement for “readily identifiable and persuasive” evidence. The final rule therefore departs from the Board's precedential Hunting Titan decision, which held that the Board may raise a ground of unpatentability that a petitioner did not advance against substitute claims under certain rare circumstances (Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600 (PTAB July 6, 2020) (Paper 67)). Accordingly, the MTA final rule provides that the Hunting Titan decision is de-designated from precedential status as of today.

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