On October 18, 2024, a new motion-to-amend rule took effect, and the Office de-designated Hunting Titan the same day, saying the rule departs from it. The Board can now raise its own grounds against substitute claims on the whole record. Three older amendment decisions had already been archived.
Before you read
The patent owner files substitute claims, and the petitioner stops opposing. Can the Board still find the substitute claims unpatentable on a ground nobody raised?
Yes. The 2024 rule broadened the Board’s authority to raise grounds on its own and removed the old interests-of-justice limit, which is why Hunting Titan was de-designated.
Part 1 of 7
On October 18, 2024, the Office’s new motion-to-amend rule took effect. The same day, the Office de-designated Hunting Titan, its leading precedential decision on amendments. The announcement said why: “The final rule therefore departs from the Board’s precedential Hunting Titan decision.”
De-designation dates from the USPTO’s list of designated decisions. The 2020 rule is described in the 2024 rule.
Source
Part 2 of 7
A patent owner in an IPR or PGR can ask to replace challenged claims with narrower substitute claims by filing a motion to amend. For years, much of the practice was built on Board decisions. Several of them no longer count as designated.
| Decided | De-designated | |
|---|---|---|
| Idle Free (IPR2012-00027) | 2013 | Jun 1, 2018 |
| MasterImage (IPR2015-00040) | 2015 | Jun 1, 2018 |
| Western Digital (IPR2018-00082) | 2018 | Mar 7, 2019 |
| Hunting Titan (IPR2018-00600) | Jul 6, 2020 | Oct 18, 2024 |
The first three are listed under motion-to-amend requirements. Their specific holdings have not been reviewed for this story.
Part 3 of 7
Hunting Titan, from the Precedential Opinion Panel, had held “that the Board may, in certain rare circumstances, raise a ground of unpatentability that a petitioner did not advance, or insufficiently developed, against substitute claims.”
The tempting reading
The 2024 rule just wrote Hunting Titan into the regulations.
What the Office said
The rule departs from Hunting Titan. It “broadens” the Board’s authority to raise grounds on its own against substitute claims, and drops the old “interests of justice” standard and the requirement for “readily identifiable and persuasive” evidence. The Board can consider the whole record.
Source
Part 4 of 7
The burdens are written into the regulation.
| What they must show | Standard | |
|---|---|---|
| Patent owner, (d)(1) | The motion meets the requirements: a reasonable number of substitute claims, no broadened scope, no new matter, written-description support | Preponderance |
| Petitioner, (d)(2) | The proposed substitute claims are unpatentable | Preponderance |
| Board, (d)(3) | May grant or deny, or raise a new ground, with notice and an opportunity to respond | Preponderance for any ground it raises |
Part 5 of 7
Two amendment decisions remain on the USPTO’s precedential list.
Open questionWhether any other part of Lectrosonics has been displaced by the 2024 rule has not been reviewed.
Part 6 of 7
Choose your side.
Part 7 of 7
A de-designated decision isn’t overruled. It stops being binding or informative guidance, and its reasoning may still persuade where the rule doesn’t speak. Lectrosonics and Amazon v. Uniloc are still listed as precedential.
Cite
Don’t cite as designated
Check a decision’s status on the USPTO’s list on the day you cite it.
The takeaway
Start from the rule. An unopposed amendment still needs its own patentability case.
Each item is marked in the story with a dashed outline. We update the story when the official record confirms or corrects it.
Precedential decisions bind the Board within their designated scope. Informative decisions show the Office’s reasoning but do not bind the Board. Court opinions are cited for what they decided; later history was checked on the date shown above.