{"id":2866,"date":"2020-07-22T13:48:00","date_gmt":"2020-07-22T18:48:00","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2866"},"modified":"2020-07-28T21:10:55","modified_gmt":"2020-07-29T02:10:55","slug":"ptab-is-not-limited-to-%c2%a7-102-and-%c2%a7-103-when-reviewing-amended-claims-in-ipr","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2866","title":{"rendered":"PTAB is not Limited to \u00a7 102 and \u00a7 103 when Reviewing Amended Claims in IPR"},"content":{"rendered":"\n

In Uniloc 2017 LLC v. Hulu, LLC<\/a>, [2019-1686] (July 22, 2020) the Federal Circuit affirmed the PTAB’s denial of Uniloc 2017’s motion to amend on the grounds that the substitute claims were unpatentable under 35 USC 101.<\/p>\n\n\n\n

During an IPR the patent owner may file one motion to amend the patent, canceling any challenged patent claim and for each challenged claim, proposing a reasonable number of substitute claims. \u00a7 316(d)(1). At the conclusion of the IPR, the Director shall issue and publish a certificate incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable<\/strong><\/em>. \u00a7 318(b).<\/p>\n\n\n\n

In its Final Written Decision, the PTAB, in addition to explaining why the challenged original claims are unpatentable, denied Uniloc\u2019s Motion to Amend the claims, concluding that Hulu had shown by a preponderance of the evidence that the Substitute Claims are directed to non-statutory subject matter under 35 U.S.C. \u00a7 101. Ineligibility was the sole ground on which the PTAB denied the motion to amend.<\/p>\n\n\n\n

Rejecting the argument that the case was moot, the Federal Circuit considered PTAB authority to consider \u00a7 101 eligibility for proposed
substitute claims, concluding that the PTAB was authorized by statute to assess Uniloc\u2019s proposed Substitute Claims for eligibility under \u00a7 101 and,
finding the claims ineligible, to deny the motion to amend.<\/p>\n\n\n\n

Uniloc argued that the PTAB was limited in its review of proposed
substitute claims to anticipation or obviousness, as provided by \u00a7 311(b). However the Federal Circuit found that the PTAB correctly concluded that it is not limited by \u00a7 311(b) in its review of proposed substitute claims in an
IPR, and that it may consider \u00a7 101 eligibility. The Federal Circuit said that this determination was supported by the text, structure, and history of
the IPR Statutes, which indicate Congress\u2019s unambiguous intent to permit the PTAB to review proposed substitute claims more broadly than those bases provided in \u00a7 311(b).<\/p>\n\n\n\n

The Federal Circuit said that the IPR Statutes plainly and repeatedly require the PTAB to determine the \u201cpatentability\u201d of proposed substitute claims. The Federal Circuit said that Congress did not intend \u00a7311 to constrain the PTAB\u2019s review of proposed substitute claims to anticipation and obviousness, pursuant to \u00a7 102 and \u00a7 103, because \u00a7311 is confined to the review of existing patent claims, not proposed ones. The Federal Circuit said that the structure and legislative history of the IPR Statutes support this conclusion, as section 311 applies to the petition phase of the proceedings, and not to a separate adjudication-stage provision, such as \u00a7 316. Finally, the Federal Circuit found support in the IPR statute’s legislative history.<\/p>\n\n\n\n

The Federal Circuit concluded that the PTAB can consider \u00a7101 when considering amended or substitute claims in an IPR (and no doubt \u00a7112 as well). <\/p>\n","protected":false},"excerpt":{"rendered":"

In Uniloc 2017 LLC v. Hulu, LLC, [2019-1686] (July 22, 2020) the Federal Circuit affirmed the PTAB’s denial of Uniloc 2017’s motion to amend on the grounds that the substitute claims were unpatentable under 35 USC 101. During an IPR … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26],"tags":[],"class_list":["post-2866","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2866","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2866"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2866\/revisions"}],"predecessor-version":[{"id":2867,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2866\/revisions\/2867"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2866"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2866"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2866"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}