Precedential: PTAB Will Rarely Identify MTA Unpatentability Grounds

The PTAB may sua sponte raise unpatentability grounds based upon the prior art of record when reviewing a motion to amend. Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir. 2020). It is now clear, however, that the PTAB will do so only in "certain rare circumstances." Hunting Titan, Inc., v. Dynaenergetics Europe Gmbh, IPR2018-00600, Paper 67 at 4 (PTAB July 6, 2020) (precedential).

During the IPR trial in Hunting Titan, the petitioner argued that the substitute claims proposed in patent owner's motion to amend were obvious in view of the prior art. Id. at 2, 24. However, even though the petitioner had not alleged they were anticipated, the PTAB denied the motion to amend after finding the proposed claims were anticipated by the prior art of record. Id. at 3. On rehearing, the USPTO's Precedential Opinion Panel ("POP") concluded that the PTAB should not have raised its own ground of anticipation and that the obviousness grounds raised by the petitioner were