Hunting Titan petitioned for inter partes review of claims 1–15 of DynaEnergetics’ U.S. Patent No. 9,581,422 which is directed to a perforating gun used in an oil wellbore having a wireless and selective detonator assembly for detonating an explosive projectile charge within the perforating gun without the need to attach wires to the detonator. The Board instituted trial on all 16 asserted grounds of unpatentability grounds and ultimately agreed with Hunting Titan, finding all of the original claims unpatentable. After IPR was instituted, DynaEnergetics moved to amend the ’422 patent to add proposed substitute claims 16–22. Hunting Titan opposed the motion to amend, advancing only obviousness grounds. Although Hunting Titan did not assert that the prior art anticipated the proposed substitute claims, the Board determined that the original and proposed substitute claims alike were unpatentable as anticipated. DynaEnergetics requested rehearing and Precedential Opinion Panel review of the Board’s denial of the motion to amend, was granted for rehearing, and the Panel vacated the Board’s decision denying the motion to amend, and then granted the motion to amend the ’422 patent to add the proposed substitute claims. Hunting Titan appeals the Panel’s vacatur of the Board’s decision, and DynaEnergetics cross-appeals the Board’s decision finding the original claims of the ’422 patent anticipated. The CAFC finds that substantial evidence supports the Board’s determination that the prior art anticipates all of the ’422 patent’s original claims, and disagrees with Hunting Titan’s argument that the Board had an obligation to sua sponteidentify patentability issues for a proposed substitute claim based on the prior art of record. Also, the CAFC expressly did not decide whether the Board has an independent obligation to determine patentability of proposed substitute claims. The CAFC therefore affirms the Board’s finding of unpatentability of the original claims and the Panel’s decision granting the motion to amend. Judge Prost concurs, but is troubled by how the PTO is handling this issue, noting that whatever the “readily identifiable and persuasive” standard means, it should have let the Board do what it did here: evaluate whether the prior-art reference that anticipated the original claims also anticipated the new claims because such an evaluation can hardly be deemed overly zealous or creative on the Board’s part.
