Today, in Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, the Federal Circuit found the POP panel analysis flawed (in relying upon the adversarial process theory), and the POP panel's action (vacatur of the Board’s decision denying the motion to amend) facially internally inconsistent with the criteria specified in the POP's own decision. Nevertheless, the Federal Circuit affirmed due to argument forfeiture.
Skipping the twists and turns of legal analysis, one gem popped up, in footnote 2, that the Board should first determine if the proposed substitute claim overcomes the basis for unpatentability of the corresponding patented claim:
…Moreover, when the Board finds an original claim unpatentable as anticipated by a prior art reference, it would seem to follow that the Board should begin by first asking if the corresponding proposed substitute claim overcomes the ground on which it found the original claim unpatentable. [Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, 2020-2163, 2020-2191, footnote 2 (Fed. Cir. 3/24/2022).]
And in concurrence, Judge Prost expressed concern with recently amended 37 C.F.R. § 42.121(d) "Because the regulation makes no caveat for unopposed motions, the Board may find its hands tied (or its head forced into the sand) even when no one is around to oppose a new patent monopoly grant."
Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States