by Dennis Crouch
Everyone understands an important limitation of inter partes review — that an IPR petition are only permitted in the form of anticipation and obviousness challenges relying upon published prior art documents. 35 U.S.C. § 311(b).
A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.
Id. An issue arises when the patentee amends its claims or adds new claims during the IPR proceedings. Namely, may the PTAB consider other conditions of patentability with regard to the proposed new or amended claims?
In Uniloc v. Hulu now pending before the Federal Circuit, the patentee submitted a set of substitute claims during the IPR proceedings after its original claims were found ineligible in a separate court proceedings. The PTAB denied Uniloc’s motion to enter the substitute claims — finding that those new claims are also ineligible under 35 U.S.C. § 101. I’ll note here that the the amended claims are narrower than the original claims (the amendment added additional limitations).
On appeal, Uniloc argues that the denial on 101 grounds was improper:
Interpreting the IPR statutes to allow a § 101 challenge through the back door, merely because a patent owner exercises the right to propose a narrowing amendment, threatens to disrupt the streamlined and focused nature of the IPR adjudication. Amended claims that meet the statutory requirements for motions to amend are narrower than claims that have previously been examined in full and, to the extent there is any room for further challenges under § 101, an accused infringer that cannot avail themselves of a PGR or CBM challenge can still assert ineligibility in a civil action for infringement.
In its briefing, the PTO agrees that § 311(b) limits the scope of petition, but focuses on § 318(a) that requires the PTO to address “patentability of . . . any new claim added” during the course of the proceeding. For the PTO, Uniloc’s approach appears to be off-the-rails because it could force the PTO to issue new claims via IPR that were never examined for eligibility, utility, written description, or enablement.
One distinguishing feature here, however, is that PTO issued particular regulations regarding amendments and Section 112 — requiring a showing of “support in the original disclosure” for any amendments. The regulations say nothing about eligibility. 37 C.F.R. § 42.121(b). The basic idea here favoring Uniloc is that this is an area where the PTO could regulate, but it cannot regulate from the hip via PTAB decisions. See Aqua Prods.
The additional feature of the argument here has to do with the nature that IPR amendments are narrowing amendments. Narrowing amendments basically do not raise new eligibility problems.
In its brief, Uniloc also has an alternative request — that the Court remand for a new eligibility analysis based upon the PTO’s new eligibility guidance. (The PTAB’s denial here was made prior to the Jan 2019 eligibility guidance, and that guidance was recently updated in October 2019). USPTO responds that Uniloc did not explain how its amendments would be sufficient to overcome the collateral district court invalidity finding — “Uniloc bears the burden of showing that the Board committed reversible
Askeladden filed an amicus brief supporting the PTO and patent challenger arguing that the Board has “a statutory obligation to consider the subject-matter eligibility” of proposed amended claims during IPR proceedings.
Patent at issue: U.S. Patent No. 8,566,960 B2 (claimed “system for adjusting a license for a digital product over time”).
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