# The rule changed, and Hunting Titan went with it.

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 Three older amendment decisions had already been archived.

Sources checked October 16, 2026

**Oct 18, 2024** the 2024 amendment rule took effect and Hunting Titan lost its precedential status, the same day.

## 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?

- No: the Board decides only what the parties argue
- Yes: the 2024 rule broadened its authority to raise grounds itself
- Only in rare circumstances, under Hunting Titan

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.

## Same day

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.” USPTO notice, Oct. 18, 2024 89 Fed. Reg. 76421

## What a motion to amend is

A patent owner in an IPR or PGR can ask to replace challenged claims with narrower substitute claims by filing a motion to amend. 35 U.S.C. § 316(d) For years, much of the practice was built on Board decisions. Several of them no longer count as designated.

## What changed in 2024

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.” Hunting Titan

## Who proves what

The burdens are written into the regulation. 37 C.F.R. § 42.121(d) 2024 rule

## Still designated

Two amendment decisions remain on the USPTO’s precedential list. USPTO list

## What to do

Choose your side.

## Cuts the other way

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.

Check a decision’s status on the USPTO’s list on the day you cite it. Kokusai

## The takeaway

Start from the rule. An unopposed amendment still needs its own patentability case.

## Related stories

- [If the settlement mentions it, file it.](https://postgrantproceeding.com/insights/d14-if-the-settlement-mentions-it)
- [Give up the claims, and the review never starts.](https://postgrantproceeding.com/insights/d11-give-up-the-claims)
- [The precedent in your template may have retired.](https://postgrantproceeding.com/insights/d20-the-precedent-in-your-template-may-have-retired)

## Sources

- S84. USPTO, Rules Governing Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, final rule, 89 Fed. Reg. 76421 (Sept. 18, 2024; effective Oct. 18, 2024). https://www.federalregister.gov/citation/89-FR-76421
- S32. USPTO, USPTO De-designates Hunting Titan in View of Final Rule Governing Motion to Amend Procedures (Oct. 18, 2024). https://www.uspto.gov/subscription-center/2024/uspto-de-designates-hunting-titan-view-final-rule-governing-motion-amend
- S81. Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, No. IPR2018-00600, Paper 67 (P.T.A.B. July 6, 2020) (Precedential Opinion Panel); de-designated Oct. 18, 2024. https://www.uspto.gov/subscription-center/2024/uspto-de-designates-hunting-titan-view-final-rule-governing-motion-amend
- S82. Lectrosonics, Inc. v. Zaxcom, Inc., No. IPR2018-01129, Paper 15 (P.T.A.B. Feb. 25, 2019) (precedential). https://www.uspto.gov/patents/ptab/precedential-informative-decisions
- S83. Amazon.com, Inc. v. Uniloc Luxembourg S.A., No. IPR2017-00948, Paper 34 (P.T.A.B. Jan. 18, 2019) (precedential). https://www.uspto.gov/patents/ptab/precedential-informative-decisions
- S24. Federal patent regulations, 37 C.F.R. §§ 1.321(a), 42.107(e) and 42.121. Reproduced in MPEP Appendix R; consult intervening official rulemaking for later amendments. https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html
- S13. Federal patent statutes, 35 U.S.C. §§ 253(a), 303(a), 311–315, 317 and 321–325. Reproduced in MPEP Appendix L (currency date stated by the appendix: Jan. 31, 2024). https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html
- S88. USPTO, Precedential and informative decisions (PTAB), as checked Oct. 16, 2026, and PostGrantProceeding's inventory of the list (341 entries, Oct. 2026). https://www.uspto.gov/patents/ptab/precedential-informative-decisions
- S33. Kokusai Electric Corporation v. ASM IP Holding B.V., No. IPR2018-01151, Paper 38 (P.T.A.B. August 20, 2019) (informative). https://www.uspto.gov/sites/default/files/documents/Kokusai%20Electric%20Corp.%20v.%20ASM%20IP%20Holding%20B.V.%2C%20IPR2018-01151%20%28Paper%2038%29.pdf

## Not yet confirmed

- Their specific holdings have not been reviewed for this story.
- Whether any other part of Lectrosonics has been displaced by the 2024 rule has not been reviewed.

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.

General information about published decisions, not legal advice. Reading it does not create an attorney-client relationship.