In Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit affirmed PTAB's determination that the patent owner's substitute claims proposed in a motion to amend were patent ineligible under 35 U.S.C. § 101 in an inter partes review (IPR).
As a reminder, IPR only permits challenges of US patent claims based on prior literature under 35 U.S.C. § 102 and 35 U.S.C. § 103. However, the Federal Circuit is now making a distinction with issued and substitute claims proposed in an IPR and states that PTAB may review substitute claims proposed by the patent owner for patent eligibility.
The dissent stated: "the majority breathes life into a dead patent and uses
the zombie it has created as a means to dramatically expand the scope of inter partes review (“IPR”) proceedings.
Because the Patent Trial and Appeal Board (“Board”) is estopped from issuing substitute claims in place of the invalidated claims of U.S. Patent No. 8,566,960 ("'960 patent")
and because, even if the Board could issue such claims, it
would be improper for it to consider 35 U.S.C. § 101."
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