Federal Circuit: Amended Claims in IPR Should be Subject to Full Examination (Including 101)

by Dennis Crouch

Uniloc 2017 LLC v. Hulu, LLC & Netflic, Inc. (Fed. Cir. 2020)

A divided Federal Circuit has authorized the PTAB to consider patent-eligibility challenges during inter partes review (IPR) proceedings in the context of a patentee’s motion to amend the claims.   Uniloc had moved to amend with substitute claims and Hulu opposed. The PTAB then denied the motion to amend — concluding that the proposed claims were not subject matter eligible under Section 101.  The PTAB’s subsequent rehearing denial was designated as precedential — holding that any ground of unpatentability can be considered in the context of a motion to amend.

The PTAB holding is controversial because inter partes review proceedings are strictly limited to cancellation of claims “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.” 35 U.S.C. 311(b).

On appeal, the Judge Wallach wrote the majority opinion joined by Judge Taranto.  Judge O’Malley dissented.

In his opinion, Judge Wallach looks to the statute and concludes that the limitations on the “grounds” for challenging a patent via IPR do not apply to whether the PTAB allows amendments to the claims.

The PTAB correctly concluded that it is not limited by § 311(b) in its review of proposed substitute claims in an IPR, and that it may consider § 101 eligibility. The determination is supported by the text, structure, and history of the IPR Statutes, which indicate Congress’s unambiguous intent to permit the PTAB to review proposed substitute claims more broadly than those bases provided in § 311(b).

Slip Op.  Rather, under Section 318, the PTO appears to be required to determine whether any new claim is patentable before issuing a certificate saying as much.

Any proposed amended or new claim determined to be patentable and incorporated into a patent following an [IPR] shall have the same effect as that specified in section 252 for reissued patents. . . 35 U.S.C. 318(c).

[E]very reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form. . . 35 U.S.C. 252.

The implication here is that any new or amended claim must be fully reviewed for patentability–under all of the patentability doctrines–before being allowed. This is different from the limitations of Section 311 that are directed toward cancellation of already existing claims. The majority did not reach the issue of whether the PTO determination should be given deference — since the “text, structure, and history of the IPR Statutes are unambiguous.”

Note here that this outcome is in sharp tension with the language of Aqua Products Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc).  In that case, the plurality opinion explained that challenges to amended claims should be limited since the PTO requires that substitute claims be narrower than the original claims. Here, the majority rejected this portion of Aqua Products–explaining that the en banc case did not have a majority opinion and that aspect of the case was thus merely dicta of a handful of judges.

No opinion in Aqua Products garnered a majority, leaving the only holding as a burden of proof determination, concluding that the USPTO had improperly adopted regulations assigning the burden of proof with respect to proposed substitute claims.

Slip Op.

Writing in dissent, Judge O’Malley would have dismissed this appeal as moot. In particular by the time the PTAB issued its rehearing denial, the Federal Circuit had already held these claims invalid in the parallel infringement proceeding.

After our affirmance of the district court’s ineligibility determination, and once the time expired for Uniloc to seek Supreme Court review of that affirmance, it did not possess any patent rights that it could give up in exchange for a substitute claim. It owned nothing and could not, therefore, substitute its old claims for new ones. If Uniloc were to prevail in this appeal and return to the Board, the Board would be without power to effectuate a substitution. . . .

To analogize to ownership of real property, if a
court finally determines that a deed to property is defective such that the property belongs to someone else, the former “owner” cannot “substitute” that property for a new parcel—even if the owner is in the middle of closing a sale. The former “owner” has nothing to give up and, indeed, never had anything to bargain with in the first place.

Dissent. Judge O’Malley then explains that the majority kept this case alive in order to enact misguided policy:

Here, rather than follow that usual procedure, 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. . . .

After concluding that an invalid patent can serve as a vehicle to reach the merits of this appeal, the majority announces that, when it comes to substitute claims, the Board can engage in a full-blown examination. This revelation runs contrary to the plain language of the statute and the policy of efficiency that underlies the IPR system.

Id.

110 thoughts on “Federal Circuit: Amended Claims in IPR Should be Subject to Full Examination (Including 101)

  1. 11

    I respectfully disagree with this decision, but on narrower grounds than many here. The PTAB should have authority to review amended/substitute claims in IPR for compliance with 101 and 112 compliance, but that review in IPR should be confined to the new subject matter added through the proposed amendments or substitute claims.

    For example, if a claim recites limitations A, B, C, and D, and during IPR the patent owner seeks to narrow the claim to add limitation E, then only that final limitation E should be subject to challenge for compliance with Section 101 or Section 112. For Section 101 and 112 issues, therefore, that would mean that the new limitation E must be the one that actually introduces the statutory problem, rather than just serving as an excuse for challenging the originally-issued claim language on grounds not authorized by the statute.

    This is actually the way Section 112 issues have consistently been handled for amended claims in reexamination. See for example, MPEP 2258, governing ex parte reexamination: “Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter.” As a practical matter, this approach would foreclose most Section 101 challenges in IPR, as it’s exceedingly rare that a narrowing amendment would itself introduce a new Section 101 problem that wasn’t in the original claim language. Most likely, a narrowing amendment would make the claim less susceptible to a Section 101 challenge, or perhaps have zero impact. It’s always possible to dream up a hypothetical scenario in which the narrowing amendment creates a discrete Section 101 problem, of course, but it’s unlikely in practice.

    In any event, the reexamination restriction–allow non-prior art statutory challenges only to the extent they are specifically directed at the new claim language–strikes a balance between allowing robust review of new language that was never before examined, but not exposing the original claim language to challenges clearly not contemplated by Congress. IPR (like post-issuance reexamination) of issued claims can only be sought based on prior art patents and printed publications. Congress was clear on that. If you allow challengers to attack originally-issued claim language for compliance under Section 101 and/or 112, simply because of a proposed amendment that itself doesn’t create the supposed 101/112 issue, you’re arguably circumventing a key limitation of the scope of IPR as envisioned by Congress.

    1. 11.1

      confined to the new subject matter added

      Not a small nit, but NO amendment may have or present new subject matter.

      Further, examination on a limitation – per se – is improper for 101 (claim as a whole, as an ordered combination).

      Handling in reexamination is NOT the same as in the PTAB precisely because there are NO examiners in the PTAB. You have not cured the single largest deficiency of having a proper examiner among the parties involved in the post grant trial. Referencing anything of a reexamination is in the weeds for THIS topic. Such is simply NOT what Congress provided (and at least my Congressman was explicitly notified of this before this monstrosity was passed).

      1. 11.1.1

        Anon says:

        >Further, examination on a limitation – per se – is improper for 101
        >(claim as a whole, as an ordered combination).

        I’m not suggesting “examination on a limitation” for Section 101. I don’t know why patent prosecutors are so attracted to arguments based on pure formalism, like moths to a flame. Of course, you’d still look at the claim as a whole. The difference here is procedural. I’m suggesting that a Section 101 challenge would only be appropriate if the problem was introduced by the new amendment. For example, if you amended a claim in IPR to add a method step to a system claim, that creates a new and distinct Section 101 problem (under IPXL) that didn’t exist before, so you could challenge the claim on that basis. But if the Section 101 challenge is based on the abstract idea/Alice law, and that exact same challenge would exist with-or-without the new amendment, I’m arguing that a Section 101 challenge in this situation would be improper. In this situation, you’re basically using the amendment as an excuse and subterfuge to bring a challenge applicable to the original claim.

        This doesn’t involve “examination on a limitation,” but still examination of the claim as a whole. The difference is procedural, when it’s appropriate to consider a Section 101 challenge. The PTO has followed this approach in reexamination for decades, in consistently refusing to consider any non-prior-art issues for amended claims that are directed at the original claim language. It’s an easy line to draw and, in the context of IPR, strikes the balance Congress intended.

        >Handling in reexamination is NOT the same as in the PTAB
        > precisely because there are NO examiners in the PTAB

        I realize this your pet peeve, anon, but this distinction is pure formalism for purposes of the issue here. The AIA mandates that the PTAB determine whether or not new or amended claims are patentable (35 USC 318(b)). It doesn’t matter that Congress didn’t call that process by the PTAB “examination.” But at the same time, the AIA mandates that issued claims can be challenged under 102/103 “only on the basis of prior art consisting of patents or printed publications.” (35 USC 311(b)). The debate is on how to reconcile those two potentially conflicting statutory mandates, and I’ve suggested at least one approach for that. Your whole bit about “there are no examiners in the PTAB” is getting a little tiring, because although true, it doesn’t move the ball in resolving any of the statutory questions that panel dealt with here.

        1. 11.1.1.1

          It was well beyond ‘pure formalism,’ given that the Office personal are supposed to be THE neutral party.

          Examination and judgement of a case presented by two other parties is simply not the same thing.

          Congress scr Ewed the p00ch on this one — that’s the bottom line.

        2. 11.1.1.2

          You have to realize that “moving the ball” is going to take another Act of Congress.

          That you might “get tired of this” is completely besides the point.

        3. 11.1.1.3

          By the way, 35 USC 318(b) does NOT dictate what you think it dictates (vis a vis actual examination).

          The ‘determination’ IS the neutral party evaluation of the cases presented by each of the Petitioner and the Patent Holder. Nowhere in this section of law is ANY true examination (as reflected by 35 USC 131).

          See link to law.cornell.edu

    2. 11.2

      L.R. your last sentence above is a great argument which many could agree with, but its not the law per this decision for IPR substitute claims.
      That MPEP cite for ex parte reexaminations may no longer be valid for the same reasons, or even more so, since new patent claims brought before an examiner should be fully examined.

      1. 11.2.1

        …?

        Paul, you are still suffering from disconnect (emphasis added):

        or even more so, since new patent claims brought before an examiner…”

        There is NO examiner in a post grant review.

        That’s kind of the problem.

    1. 10.1

      The problem is that you can’t just create a new claim without allowing it to be examined on all grounds.

      1. 10.1.1

        That is not the problem.

        That is the situation that leads to the problem.

        The problem is that the AIA did not set up a system for performing that examination, and NONE of the parties that are involved in the post grant ‘trial’ are proper entities for performing that examination.

        The Petitioner is not a proper entity.
        The Patent holder is not a proper entity.
        And certainly, the neutral arbiter of the PTAB is not a proper entity.

        While the AIA does take a certain stick from the bundle of property rights AT the institution decision point, and returns the post grant property to the Executive Branch, there is a gaping hole in that the AIA does NOT provide that ANY actual examiner is involved with ANY actual examination.

        1. 10.1.1.1

          The Patent Office in general, and patent examiners in particular, have an impossible job. Petitioners are able to pour more time and resources into searching the prior art and formulating an assertion of unpatentability. At the point where a petition is filed, an examiner has already examined the claims for compliance with 102 and 103. Any amended claim must be narrower than the claim already found by an examiner to comply with 102 and 103. Are you suggesting that the Board is not capable of properly considering 112 issues raised by claim amendments?

          I guess I am struggling to figure out what problem you think is raised by not having an examiner involved in the IPR/PGR process. And who do you think is being harmed by this problem? Patent owners, or the public?

          To the extent that you are concerned that the public is being harmed by not having a full examination process involving a new examiner search when proposed claim amendments are presented, I guess I could buy that, but that is the choice Congress made.

          To the extent that you are concerned that patent owners are being harmed by not being given multiple opportunities to amend their claims, I think I agree with that, but again, that is the choice Congress made, and patent applicants can ameliorate this by keeping a continuation pending.

          Personally, I think it would be fair to allow a patent applicant to file a continuation application within a certain time period after a final written decision canceling one or more claims, but there are certainly good reasons why some would be very opposed to that idea.

          Overall, I am not saying I disagree with anything; I just am trying to understand what it is you are concerned about. You seem very concerned about something, but I am not sure I understand what that something is.

      2. 10.1.2

        [Y]ou can’t just create a new claim without allowing it to be examined on all grounds.

        Why not? Says who? Where is it written?

        1. 10.1.2.1

          The PTO’s overarching job and the Patent Act states that the PTO’s job is to examine patent applications.

          You can’t under that umbrella create a claim that has not been examined.

          1. 10.1.2.1.1

            1) No claim emerges out of an IPR that has not been vetted—across its whole scope—for compliance with §§ 101, 102, & 103.

            2) Your objection seems to be that Congress said that claims must be examined. Very well, but Congress also created a process for claims to emerge from an IPR without an examiner signing off on them. In other words, your argument that “Congress said so” does not hold water in this instance. Congress is free to create whatever exceptions to examination that It wants to create. What skin is it off of anyone’s nose if Congress has seen fit—in this particular circumstance—to dispense with a second (patently superfluous) round of examination?

            1. 10.1.2.1.1.1

              How would it be vetted for 101? Or for 102/103 for all references when those arguments are not permitted in an IPR?

              I don’t disagree with you that it can be done and if Congress says so, then I guess it can. But how do you have a presumption of validity if 101 can’t be raised?

              It is a policy matter. There is no right or wrong answer. There is only one policy over another and what was Congress’s intent.

              Probably Congress was sloppy which is typical and didn’t think it through. I suspect the real solution is to allow the applicant to file a continuation if one or more claims is canceled in an IPR. That would be my preferred solution.

              1. 10.1.2.1.1.1.1

                How would it be vetted for 101? Or for 102/103 for all references when those arguments are not permitted in an IPR?

                By definition, if a claim is being litigated in an IPR, then that claim must have already been granted, which means that an examiner has already verified its compliance—across its full scope—with §§ 101–103. There is not an iota of claim scope that emerges from an IPR that has not been already examined and approved by the PTO.

                1. Greg has been off on this topic since day one, not recognizing that the issue at hand is for claims (amended claims) that have never been examined.

                  There is a serious disconnect for several here that are not realizing that just because “narrower” does not mean “ok.”

                  “Narrower” than a (prior approved, but now disallowed claim is suspect because it has NOT been examined, and ANY presumption is lost because the prior ‘fence post’ has been deemed revoked.

                  He appears to be assuming that the narrower claim must be a prior dependent claim that putatively has been examined, but nowhere is such a thing being stipulated.

                2. This is for an amended claim.

                  And? In parts of southern Italy, it used to be standard practice before a real estate sale could close for the seller to have the entire parcel swept for land mines. Imagine that a Calabrian landowner has his parcel swept incident to a sale, and the whole parcel is declared clean. Now suppose that the buyer has a survey done, and it turns out that the eastern legal boundary of the parcel is actually 2 decimeters west of where the seller had thought it lay—in other words, the mine sweeper had actually swept the whole of the seller’s parcel, and 2 square meters of the eastern neighbor’s property.

                  Does that mean that the mine sweep needs to be done again before the sale can close? Of course not. It remains that the whole parcel being conveyed has been swept, and is certifiably compliant with the “no land mines” rule. It is true, of course, that the mine sweeper (like a patent examiner) is only a fallible human, and could have missed a genuinely present land mine on the property. But the whole parcel being conveyed has been checked for mines before the sale closes. The mere fact that the parcel boundary has been adjusted since then does not mean that the no-sale-before-mine-sweep rule is being ignored.

                  So it is with amended claims after IPR. The whole claim scope was checked for §101 compliance before the claim was initially allowed to grant. The IPR amendments can only shrink claim scope. Therefore, even after amendment in IPR, it remains the case that the whole claim scope has been checked for §101 compliance. It may not be §101-compliant (just as the mine sweeper might have missed a land mine, but it has been checked for §101 compliance.

                3. The mine-sweep analogy is a fail.

                  Claims are just not like that example, and once the initial ‘fence post’ is tossed, there is NO basis for an intermediate (and NOT prior examined) amended new fence post to have a ‘blanket’ acceptance.

                  Greg rests entirely TOO much value on the (removed in IPR) initial fence post.

  2. 9

    Tarantino and Wallach are both Obama appointments that were directed by SV. Both are virulently anti-patent. O’Malley was an Obama appointment and the last one before SV took over.

    Note that none of the three has science training.

    1. 9.1

      I just can’t image people less qualified to sit on the CAFC that is supposed to be the science literate court.

  3. 8

    So… in an IPR, can we attack substitute claims on, say, best mode, prior public use, on-sale grounds now also?

    1. 8.1

      Does ‘full examination’ equate to any of the ‘attack modes’ that you reference, or does the view that a ‘full examination’ is necessary mean that a petitioner may ask for** a full examination to include everything under the law?

      **there is still a very real problem of just who it is that it is proper to be asking to DO this full examination, as the neutral arbiter is NOT set up per the words of Congress in the AIA to BE that entity to do the full examination (and neither are the other parties to the post grant ‘trial’).

    2. 8.2

      Agree. Should it stand, this “2-of-3” panel has just opened a can of patentability worms they may come to regret.

      Those squeals of glee we hear are emanating from the infringers lobby.

    3. 8.3

      Those are interesting questions, but not likely to arise. Substitute claims are still only requested by patent owners in a relatively small number of IPRs, and their “intervening rights” problems still makes them undesirable in many cases.
      Nor will IPR petitioners get sweeping discovery to uncover such defenses in an IPR.
      Another interesting question is why will this not increase the disclosure duty of the patent owner [and inequitable conduct risk] in introducing substitute claims for material known such prior art?

      1. 8.3.1

        Not seeing how you get to last paragraph.

        There is no duty during prosecution given the more expansive claims then being pursued.

      2. 8.3.2

        Relatedly Paul or anyone:

        (How) do replacement claim intervening rights come into play / even exist when expired patents are subjected to IPRs?

  4. 7

    Ha! And we all thought CBM availability expired in a couple of months.

    In IPRs with claim amendments . . . they live!

    An excellent case for an en banc rehearing.

  5. 6

    Re: “Dissent. Judge O’Malley then explains that the majority kept this case alive..” [To decide this IPR issue, even though allegedly moot since the D.C. suit on this patent was ended.]
    Yes, its an important principle that courts should not be deciding truly moot issues, if this really was. But isn’t that exactly what several Justices of the Sup. Ct. recently tried to do re the truly moot [no longer in existence] NYC gun transport law? What kind of example was that setting?

    1. 6.1

      The Supreme Court has LONG been setting bad examples.

      (this has been pointed out for years now)

  6. 5

    Once again the CAFC twists the IPR process to defeat the ends that IPRs were meant to serve. IPRs are supposed to be faster and less costly means of resolving outcome-dispositive issues in patent litigation. The more you ask the PTAB to do, the costlier and more time-consuming the process becomes, which is the opposite of what Congress hoped to achieve when it created the IPR regime.

    IPRs are not meant to do everything. Let them do some things well, and leave the rest to the courts, where they belong.

    As usual, Judge O’Malley shows herself to possess a better understanding of Title 35 than have most of her colleagues. We need more like her.

    1. 5.1

      That’s a good point Greg, but the extensive effort of the PTO to make claim substitutions more frequent in IPRs was primarily due to widespread complaints by patent attorneys on patent blogs, Sup. Ct. cert briefs, and elsewhere, that this was a major defect in IPRs. Now they are more frequent, and this is one of the consequences of getting what they asked for.

    2. 5.2

      I don’t know how you can allow substitute amendments and allow it to be any way other that what the majority did here. It would be a a failure of the system to allow substitute claims to be granted in a reissue without a full examination of those claims. If you do, you’ve just defeated the purpose of the IPR.

        1. 5.2.1.1

          If the purpose of the IPR is a “quick” and “cheap” resolution over the validity of the claims, allowing unexamined substitute claims just kicks the fight back to the more expensive court case. Even if you take the narrower view that IPRs are to come to a resolution of the 102 and 103 issues, the unexamined claims go out in the wild to reek more havoc. The patent-owner can sue one those untested claims.

          1. 5.2.1.1.1

            You are correct.

            I will also state (again) that the view expressed previously that since the amended claim must be more narrow than the claim being surrendered, that it somehow ‘must be OK.’

            The fallacy of course is that this type of “inner and more narrow” relies on a fence post that is no longer considered to be demonstrative of what is patentable.

            Bottom line is that once the ‘fence post’ claim is removed, ALL BETS ARE OFF as to ANY ‘more narrow’ claim, because the examined marker is being thrown out.

            This is part and parcel of the problem that you have (necessarily) when you take a GRANTED property right and revoke certain sticks in the bundle of that GRANTED property right and put that item back into the Executive Branch agency – at the institution decision point.

            Congress scr ewed the p00ch on this one.
            Hard.

            1. 5.2.1.1.1.1

              Congress seems to of made the mistake when they allowed motions to amend in IPRs.

              1. 5.2.1.1.1.1.1

                I think that THAT was one of the ingredients for the sausage.

                (absent that, they weren’t getting out of the chamber)

            2. 5.2.1.1.1.2

              “This is part and parcel of the problem that you have (necessarily) when you take a GRANTED property right and revoke certain sticks in the bundle of that GRANTED property right and put that item back into the Executive Branch agency – at the institution decision point.”

              Agree. Strongly.

            3. 5.2.1.1.1.3

              Oh, please.

              The only gateway thing to look at in the proposed amended claims should be under 112. If they survive that, the IPR should proceed, with the attacking party amending its 102/103 arguments as necessary. IPRs were never meant to be a back door opening for 101 attacks. Those would not be precluded in litigation.

              1. 5.2.1.1.1.3.1

                You appear to be responding to my post, but your “oh please” and confusion about how you want to insert a 112 review (but not 101?) as part of an examination does not address ANY of the issues that I have long raised in regards to the fact that Congress set NO mechanism for actual examination in the post-grant mechanism.

                Your post becomes an “I feel” that is just not connected to anything that I have said.

              2. 5.2.1.1.1.3.2

                If they survive that, the IPR should proceed, with the attacking party amending its 102/103 arguments as necessary.

                I think that this is right, but I would add the further refinement that the deadline for proposing substitute claims should be the patent owner’s response to the IPR petition. That is to say, the petitioner makes an argument that the granted claims are invalid, and then the owner has an opportunity (pre-institution) to rebut the arguments for invalidity and to propose substitute claims. If the substitutes are not proposed at that time, then there will be no substitutes. If the PTAB institutes, then the petitioner’s opening brief must both (1) address the §102/§103 infirmities (if any) of the substitutes and (2) address the §112 infirmities (if any) of the substitutes. Arguments not raised at this point are waived.

                1. So…

                  Even before institution you want the patent holder to be giving up things…

                  With friends like this, who needs enemies?

        2. 5.2.1.2

          Re: “What do you take to be “the purpose of the IPR“?
          The primary expressed purpose was to reduce the many millions of litigation dollars being spent on lawsuits on invalid issued patent claims. This decision is consistent with that.

          1. 5.2.1.2.1

            Except for the fine details in which it is NOT ‘consistent’ with that.

            But what’s fairness got to do with how the Efficient Infringer lobby captured Congress and pushed through the AIA, eh?

          2. 5.2.1.2.2

            The primary expressed purpose was to reduce the many millions of litigation dollars being spent on lawsuits on invalid issued patent claims. This decision is consistent with that.

            I will agree that the decision is not especially inconsistent with that goal, if only because the actual lived instance of patentees presenting substitute claims in IPRs is to slight actually to move the numbers appreciably when it comes to the cost of IPRs. I do wonder if the sort of shallow-thinking in today’s majority decision is consistent with the cost saving goal. The more you ask an IPR panel to decide, the costlier the IPR becomes. I worry about mission creep here.

            1. 5.2.1.2.2.1

              It’s beyond ‘mission creep’ and strikes to the foundation of what Congress provided — or to be more precise, what Congress did NOT provide when they set up the post grant mechanism for the PTAB as a neutral arbiter between a patent holder and a petitioner.

      1. 5.2.2

        OSitA,

        It is less the notion of having any amendments BE examined and more an allocation of just who it would be that would PROPERLY perform that examination.

        The neutral arbiter is NOT the proper entity.

        1. 5.2.2.1

          I don’t think we disagree that the PTAB in an IPR is not a great place for a full examination to take place. However, if substitute claims are going to be in a reissued patent, then those claims need to be examined. The statutory framework seems to mean that examination take place at the PTAB or no substitute claims should be allowed. I think the later is also precluded. I have not seen anyone suggest how else claims could be fully examined before reissued (I mean, I guess immediately after the reissue, the PTO could sua sponte declare a reexamination of the reissued claims, but that is a mess).

          1. 5.2.2.1.1

            However, if substitute claims are going to be in a reissued patent, then those claims need to be examined.

            Agreed.

            The statutory framework seems to mean that examination take place at the PTAB or no substitute claims should be allowed.

            Absolutely wrong.

            The statutory framework CHOKED on this and just did NOT PROVIDE for the examination to take place.

            By the way, way back when, this was one of the points that I had explicitly told my elected representative as one — of many — reasons why the AIA should not be passed. BUT if even this aspect were to have received some decent level of critical thinking, then the very real danger of the ENTIRE AIA unraveling was there.

          2. 5.2.2.1.2

            [I]f substitute claims are going to be in a reissued patent, then those claims need to be examined.

            Why? Obviously the claims have already been examined once (even if only imperfectly) for §101 compliance by the time they can be the object of an IPR. Nothing about the PTAB tanking them for §102/103 defects makes them more likely to suffer §101 defects than are the mine run of already-granted claims. What evil do we expect to befall us if we simply release them into society without a second round of §101 scrutiny?

            1. 5.2.2.1.2.1

              Obviously the claims have already been examined once

              Not so.

              At all.

              This is NOT a case of merely resorting to a dependent claim that as already been examined Greg.

    3. 5.3

      “IPRs are not meant to do everything. Let them do some things well, and leave the rest to the courts, where they belong.”

      Big +1 Greg.

    4. 5.4

      Agreed, Greg. Wallach, Taranto and Reyna are proven disasters; O’Malley has shown herself to be sensible. I hope this rogue “decision” is overturned en banc, but who knows what will be?

  7. 4

    “Judge O’Malley then explains that the majority kept this case alive in order to enact misguided policy”

    Judge Wallach wouldn’t do that . . . would he?

  8. 3

    Assuming they are followed, this Fed.Cir decision [and other recent PTAB decisions on unopposed claim amendments] seems to remove a concern previously expressed on this blog that the PTO would issue new substitute claims from IPRs that had never been fully examined by anyone in the PTO either before or during an IPR.

    1. 3.1

      I do not agree, Paul.

      If anything, this only compounds the problem because the PTAB is not supposed to be THE examiner — their role as set out by Congress in these proceedings is to be THE neutral arbiter.

      As being forced to be the examiner, this removes the essence of neutrality.

      This does not resolve anything — it throw you (the Royal You) from the frying pan into the fire.

      1. 3.1.1

        Yes, and the PTAB has said that itself – an IPR being a inter partes proceeding, it should normally be the opponent doing the examination and challenge of substitute claims in an IPR. But in a few unusual IPRs that may not happen, such as a sweetheart [AT?] settlement deal with the Petitioner that would issue unexamined substitute claims to be asserted against competitors of the Petitioner.

        1. 3.1.1.1

          I disagree again – the petitioner is NOT an examiner.

          Never was – never was intended to be.

          1. 3.1.1.1.1

            Indeed. The petitioner has thousands of dollars and hundreds of hours more money and time for claim examination than an examiner.

              1. 3.1.1.1.1.1.1

                Ben,

                As an examiner, you need to extend one hand…

                …and slap yourself in the face with it.

                DO YOUR F’N JOB, and we wouldn’t have these issues, eh?

                (and spare me the conflation of the internal metrics of your job with the actual job that you have — you have a union that should be protecting you enough that you can do what you need to be — what you should be — doing)

                1. “you have a union that should be protecting you enough”

                  Anon doesn’t know that unions are powerless in this day and age thanks to the Reagan revolution (TM). Even as we speak mgmt is literally as we speak implementing changes to the PAP that makes the conditions for clear errors more arbitrary and capricious and even more ripe for abuse than they are today (currently the biggest problems to my eye arise in disputed claim constructions where the claim constructions are a mere hairs breadth away from each other and the admin basically disregards the instruction about “reasonable difference of opinion” when it comes to the claim construction). Soon spes will have the discretion to not include clear errors in the rating outright (suck up to the spe guys). Not that I don’t want spes to not do this all the time, but it opens the way for workplace bullying and arbitrary and capricious application of the PAP and turning the whole caboodle into one big arbitrary and capricious rating element (“QUALITYLOL” element). Not saying it might not turn out to be all rainbows and puppydogs, but the door to abuse is wide open and popa can’t do squat.

                  That’s not to even mention that they’re going to reduce down the number of cases on your reg new folder from ~20 to ~5 that you can pick from to get counts, which just ups the pressure to “make all cases fit within the alotted time each biweek” which will just further screw apps to help the self serving bureaucrats at the top of the bureacracy (by making them look like they’re actually doing something, and etc other things). It’s an absurdity.

                2. “you have a union that should be protecting you enough”

                  Anon doesn’t know that unions are powerless in this day and age thanks to the Reagan revolution (TM). Even as we speak mgmt is literally as we speak implementing changes to the PAP that makes the conditions for clear errors more arb itr ary and ca pricio us and even more ripe for abuse than they are today (currently the biggest problems to my eye arise in disputed claim constructions where the claim constructions are a mere hairs breadth away from each other and the admin basically disregards the instruction about “reasonable difference of opinion” when it comes to the claim construction). Soon spes will have the discretion to not include clear errors in the rating outright (su ck up to the spe guys). Not that I don’t want spes to not do this all the time, but it opens the way for workplace bu lly ing and arb itrary and ca pricious application of the PAP and turning the whole caboodle into one big a rbitr ary and ca prici ous rating element (“QUALITYLOL” element). Not saying it might not turn out to be all rainbows and puppydogs, but the door to abu se is wide open and popa can’t do sq uat.

                  That’s not to even mention that they’re going to reduce down the number of cases on your reg new folder from ~20 to ~5 that you can pick from to get counts, which just ups the pressure to “make all cases fit within the alotted time each biweek” which will just further scr ew apps to help the self serving bureaucrats at the top of the bureacracy (by making them look like they’re actually doing something, and etc other things). It’s an absurdity.

                3. Just because your union (apparently) does not protect you does not mean that they cannot protect you.

                4. “Anon doesn’t know that unions are powerless in this day and age thanks to the Reagan revolution (TM).”

                  That’s like saying the homeless man raving on the street corner about fluoride in the water doesn’t understand modern dentistry. It is not a matter of misunderstanding, but rather a fundamental disconnect from reality. Leave him to rant in isolation, and everyone will be better off.

                5. “Just because your union (apparently) does not protect you does not mean that they cannot protect you.”

                  Why don’t you do us all a favor and tell us how they can protect us? Maybe let the popa union pres know? Because she’ll be all ears to hear your very amazing input, and so will I, and so will everyone else. They literally have no ability to strike (legally prohibited), can’t do x y or z also, and the negotiating provisions in law don’t actually do anything. The admin just decides what they want to do and do it. And to be clear, they’re taking their marching orders from generic big biz (TM). Explicitly.

                6. If what you say is true, then WHY do you even have a union – and why the F have you not attempted to de-certify the union?

                  Whining – like you and Ben are apt to do, does what exactly?

                7. Another assertion that PTO examiners should be able to do $50,000.+ IPR-petitioner-level prior art searches and examinations for the $500 PTO fee for that?

                8. “If what you say is true, then WHY do you even have a union – and why the F have you not attempted to de-certify the union?

                  Whining – like you and Ben are apt to do, does what exactly?”

                  Anon is starting to understand. Lol.

                  First the whining is just now starting as the changes are just now really starting happening (as they are further clamping down on already clamped down on examination conditions). And anon, it’s kind of a big to-do in order to do those things you’re suggesting. Further, for a long time the fat man (rest his retired soul) heading POPA managed to literally cry his way into blocking changes. True leadership right there! But even beyond that this kind of change is especially difficult as an individual. First and foremost it’d be easier to just quit and be an agent rather than volunteer 100-1000’s of hours necessary to be a “labor leader” in that regard. But I do think that the rank and file are starting to halfway wake up to the PAP (like literally 3/4+ of the workforce barely even knew what the PAP formally said as of 4 years ago). Now people are starting to take note because they’re actually changing the PAP, and thus are having actual formal training on the PAP (which they should have had back in the day).

                  And still further, I haven’t looked into being able to get the thing decertified, in fact I doubt if it even can be according to federal law. Furthermore, there’s no assurance that getting it decertified would actually do much good for the worker. Again, the major loser here will be the applicant, and somewhat the public, the workers will just stop doing as much searching etc and make apps fit best they can and deal with whatever “clear error” allegations pop up. The worker ONLY loses if they insist on doing a good job AND ONLY if the mgmt on top of that throws a bunch of clear errors.

                  Further, the union agreement (the CBA collective bargaining agreement signed like in the 1960’s and mostly unchanged) is literally the basis of all of the production scheme, the promo scheme, the pay scale (somewhat) on and on and on. Without that (as I guess the CBA would go away if “decertified” or if the union otherwise dissolves), I mean it’ll be chaos most likely at least for awhile.

                  Finally I’m not sure there is enough support against having the union just yet. Like I say, workers only lose if they don’t short the app and if mgmt (usually an individual as opposed to the whole) somewhat screws them over. That last part won’t start till midyears next yearish at the soonest. Actual firings would start later I would think. From there it would take a few years to build up enough resentment etc. against having the union most likely. And you’d have to show how things would be at all better without a union (spoiler it likely wouldn’t if mgmt really wants to take corporate orders then they’ll take corporate orders with or without a union present and they could limp along for 5 years or so, maybe indefinitely, just hiring replacements).

                  The point to all that is, with or without the union (which is practically worthless along these lines) the workers, via their worker’s rights/agreements/bargaining, can’t magically “protect” applicant’s/the public’s right to a great/decent examination via their “professionalism” or “ethics” or whatever magic shield you think is supposed to do that work.

                9. “If what you say is true, then WHY do you even have a union – and why the F have you not attempted to de-certify the union?

                  Whining – like you and Ben are apt to do, does what exactly?”

                  Anon is starting to understand. Lol.

                  First the whi ning is just now starting as the changes are just now really starting happening (as they are further clamping down on already clamped down on examination conditions). And anon, it’s kind of a big to-do in order to do those things you’re suggesting. Further, for a long time the f at man (rest his reti red soul) heading POPA managed to literally cry his way into blocking changes. True leadership right there! But even beyond that this kind of change is especially difficult as an individual. First and foremost it’d be easier to just qu it and be an agent rather than volunteer 100-1000’s of hours necessary to be a “la bor leader” in that regard. But I do think that the rank and file are starting to halfway wake up to the PAP (like literally 3/4+ of the workforce barely even knew what the PAP formally said as of 4 years ago). Now people are starting to take note because they’re actually changing the PAP, and thus are having actual formal training on the PAP (which they should have had back in the day).

                  And still further, I haven’t looked into being able to get the thing decer tified, in fact I doubt if it even can be according to federal law. Furthermore, there’s no assurance that getting it decer tified would actually do much good for the worker. Again, the major los er here will be the applicant, and somewhat the public, the workers will just stop doing as much searching etc and make apps fit best they can and deal with whatever “clear erro r” allegations pop up. The worker ONLY loses if they insist on doing a good job AND ONLY if the mgmt on top of that throws a bunch of clear erro rs.

                  Further, the union agreement (the CBA collective bargaining agreement signed like in the 1960’s and mostly unchanged) is literally the basis of all of the production scheme, the promo scheme, the pay scale (somewhat) on and on and on. Without that (as I guess the CBA would go away if “decer tified” or if the union otherwise dis solves), I mean it’ll be chaos most likely at least for awhile.

                  Finally I’m not sure there is enough support against having the union just yet. Like I say, workers only lose if they don’t short the app and if mgmt (usually an individual as opposed to the whole) somewhat screws them over. That last part won’t start till midyears next yearish at the soonest. Actual fir ings would start later I would think. From there it would take a few years to build up enough res entm ent etc. against having the union most likely. And you’d have to show how things would be at all better without a union. Spoiler it likely wouldn’t if mgmt really wants to take corporate orders then they’ll take corporate orders with or without a union present and they could limp along for 5 years or so, maybe indefinitely, just hiring replacements.

                  The point to all that is, with or without the union (which is practically worthless along these lines) the workers, via their worker’s rights/agreements/bargaining, can’t magically “protect” applicant’s/the public’s right to a great/decent examination via their “professionalism” or “ethics” or whatever magic shield you think is supposed to do that work.

                10. Anon is starting to understand. Lol.

                  6 is prevaricating again. Not lol. I fully understand already 6, and just because I add to my top level comment is not an indicator of “starting to.”

                  First the whi ning is just now starting as the changes are just now really starting happening

                  Wrong.
                  The whi ning has been going on like forever. There is constant confusion between what the examiner’s job is and the internal metrics of that job.

                  And anon, it’s kind of a big to-do in order to do those things you’re suggesting.

                  So? Have I ever indicated that it was not a ‘big to-do?’ Does that change anything as to what YOU (the Royal You) need to do – that is, ‘need’ instead of whi ning?

                  True leadership right there! But even beyond that this kind of change is especially difficult as an individual.

                  I really do not care – at all – what ANY dude heading POPA has done. That’s YOUR responsibility as a union member to make sure that YOUR union is actually (you know) representing you. Had you listened to me several years ago, you (again, the Royal You) would no longer have this aspect to whi ne about. Sure, it is ‘easier’ to sit there and whi ne as an individual, but somehow you have confused what is ‘easy’ for what is ‘necessary.’ That’s a YOU problem.

                  First and foremost it’d be easier to just qu it and be an agent rather than volunteer 100-1000’s of hours necessary to be a “la bor leader” in that regard.

                  I laugh as I remember your own banter about how easy it would be to leave the bureaucracy and go into the private sector – and yet you never did.

                  But I do think that the rank and file are starting to halfway wake up to the PAP (like literally 3/4+ of the workforce barely even knew what the PAP formally said as of 4 years ago).

                  I laugh again as it appears that YOU (again, the Royal You) are now starting to understand me and what I have been saying for at least those same 4 years.

                  And still further, I haven’t looked into being able to get the thing decer tified, in fact I doubt if it even can be according to federal law.

                  Maybe do as I suggest BEFORE you ‘doubt.’ Like so many other things that have seen you (finally) come around to my suggestions, you would do well to actually follow my suggestions in the first instance.

                  Furthermore, there’s no assurance that getting it decer tified would actually do much good for the worker.

                  No reason to sit there and whi ne. There is no assurance of anything NOT tried.

                  Again, the major los er here will be the applicant, and somewhat the public, the workers will just stop doing as much searching etc and make apps fit best they can and deal with whatever “clear erro r” allegations pop up.

                  LOL – the answer is NOT “I won’t examiner and thus punish the applicant.” If you won’t do your job, then you deserve to be fired. Period. This old mantra of punishing my clients for your sense of ease has NO legitimate place in the discussion. It’s a vapid threat.

                  Further, the union agreement (the CBA collective bargaining agreement signed like in the 1960’s and mostly unchanged) is literally the basis of all of the production scheme, the promo scheme, the pay scale (somewhat) on and on and on.

                  So what? This just means that you may have recognized WHAT to change. It does not matter how long ago something was put into place, but I am not shocked that you see a roadblock and simply don’t want to bother (that’s part and parcel of the bureaucrat mindset of the civil service dis ease),

                  I mean it’ll be chaos most likely at least for awhile.

                  Stop looking for excuses to not do something instead of the whi ning.

                  Finally I’m not sure there is enough support against having the union just yet.

                  Are you saying that the whi ning that I hear is merely a minority? What’s your point with this statement?

                  That last part won’t start till midyears next yearish at the soonest. Actual fir ings would start later I would think.

                  I do not understand what drives your ‘timetable,’ or why you think effects would be so delayed. This appears to be nothing but another excuse.

                  And you’d have to show how things would be at all better without a union.

                  Wrong. This is NOTHING that I would have to do. It’s YOUR union – and you and the other whi ners here are the ones that have to do something. The lack of actually doing anything except whi ning shows that you (again, the Royal You) would merely whi ne THAN actually do anything about it.

                  they could limp along for 5 years or so, maybe indefinitely, just hiring replacements.

                  Extremely doubtful. And this again is nothing more than your own lack of FAITH in your union. YOU (personally) need to do something about that lack of faith.

                  The point to all that is,… can’t magically “protect” applicant’s/the public’s right to a great/decent examination via their “professionalism” or “ethics” or whatever magic shield you think is supposed to do that work.

                  You need to start grasping the point here. Protecting the applicant is what I and my fellow practitioners have been doing all along. YOU doing YOUR JOB and actually examining is NOT about ‘protecting’ the applicants. It is about YOU doing YOUR JOB.

                  Do your F N job and stop whi ning.

                11. Paul,

                  Please pardon potential repeat (due to count filter)….

                  Let me fix your error in your statement of:

                  Another assertion that PTO examiners should be able todo their job.”

                  It is plain error to think that examiners somehow are excused from doing their job under the law with your inane parallel to what others MAY decide to do in a different setting of litigation.

                  You do no one any good (especially your own credibility) with such diversions.

                  Don’t like the set fee? Want a different fee arrangement? Talk to your Congressional representative. But please, do not make specious arguments and provide logical fallacies here.

                12. Ben’s “Leave him to rant in isolation, and everyone will be better off” could not be more wrong.

                  Clearly, as 6 would have been better off had he listened to me straight up years ago, and the ‘model’ of Ben’s “stick my fingers in my ears” approach Greg (I Use My Real Name) DeLassus repeatedly goofs and errs by ig n0ring what I have provided.

                  Ben, the only thing that your tactic does is deprive you of the chance to better yourself.

                  That you ‘advocate’ such is more a reflection of your own stunted ability to apply critical thinking than anything else.

                13. “Had you listened to me several years ago, you (again, the Royal You) would no longer have this aspect to whi ne about. ”

                  wtf did you say several years ago re re? Nobody remembers whatever re tard sht that came from you about popa years ago. Something that was going to magically make anything different?

                  “I laugh as I remember your own banter about how easy it would be to leave the bureaucracy and go into the private sector – and yet you never did.”

                  Is that your suggestion? Because yeah, it is fairly easy. I’ve still got fairly routine offers to come join this or that engineering or legal firm. Nobody has as yet bribed me away. Up to them.

                  “I do not understand what drives your ‘timetable,’ or why you think effects would be so delayed. This appears to be nothing but another excuse.”

                  The new pap goes into effect in 2-3 months. The first mid year ratings (where people would truly get into trouble under the new pap) would be half a year after that. 8-9 mo. Firings would then start prob 2-3 mo after that. That’s no “excuse” that’s just the timetable. And they’re offering like the first 1/4 or 1/2 year without newly callable clear errors (sort of a “change over period freebie”), so it might really be more like another year before people actually start getting into trouble (except on the production front).

                  “So what? This just means that you may have recognized WHAT to change. It does not matter how long ago something was put into place, but I am not shocked that you see a roadblock and simply don’t want to bother (that’s part and parcel of the bureaucrat mindset of the civil service dis ease),”

                  You don’t seem to comprehend, that’s not something an individual can make. It would take a whole team, working with mgmt to do that.

                  Which is mostly the main problem with your blathering, you don’t comprehend the scale of the things you’re talking about. You think “o it’s a problem, and you’re just not willing to do the work teee heee you’re lazy just like I said herp derp”. You don’t even know the size of the problem you’re loling about. They’re skyscraper sized problems compared to an individual.

                  “LOL – the answer is NOT “I won’t examiner and thus punish the applicant.” If you won’t do your job, then you deserve to be fired. Period. This old mantra of punishing my clients for your sense of ease has NO legitimate place in the discussion. It’s a vapid threat.”

                  It’s not a threat at all dumas. The system determines who the loser is, not the individuals within.

                  “Are you saying that the whi ning that I hear is merely a minority? What’s your point with this statement?”

                  No dumas, it means that most people can tell there is no actual benefit to decertifying the union most likely and everyone in the union with a brain can tell that from the get go. And furthermore as with all unions, the whole point of the union is to “protect”/benefit the majority of workers that are the lower on the scale of being good employees as compared to the minority of workers who are considered “good” employees by mgmt and wouldn’t have any issues at work anyway.

                  “Wrong. This is NOTHING that I would have to do. It’s YOUR union – and you and the other whi ners here are the ones that have to do something. The lack of actually doing anything except whi ning shows that you (again, the Royal You) would merely whi ne THAN actually do anything about it.”

                  Again, there is nothing to do re re. Corporate capture is corporate capture. The reason corporate capture is such a bad thing is because there is nothing those captured can do to break it. Derp to your herp re re.

                  “Extremely doubtful. And this again is nothing more than your own lack of FAITH in your union. YOU (personally) need to do something about that lack of faith.”

                  Anon goes straight jes us on us. “Have faith in the union that is legally prohibited from securing anything derp herp”. /facepalm

                  You really don’t get workplace lawl anon. Not at all.

                  Maybe start here so you can understand what is happening for the last 20 years.

                  link to amazon.com

                14. Your first two replies (your not listening to me, and the fact that you mouthed how easy it was to ‘go private’ – and yet never did) provide ZERO substance, 6. The fact that you cannot recall what I have (long) said is actually summed up in your last recommendation of Sheldon’s Captured book, as I have long lamented that very capture of Congress going back to when the AIA was still being ‘discussed’ IN Congress.

                  You really should pay attention to what I say. As you have grown older, you have adopted several of my positions – even as you are still in a bureaucrat role. You would be immensely more ahead of the game had you paid attention all along.

                  As to your timetable – thanks. My point there was a genuine one of my not knowing the timing. Absent such a view, your post DOES come across as straight whi ning.

                  By the way, you should take that and NOT immediately whi ne about it (as you have done), as that only strengthens the perception that you would rather whi ne than actually take charge of YOUR problem.

                  Your rant about the “size” of the problem entirely misses the point. YOU (and select other examiners) come on these boards and whi ne. YOU don’t get to whi ne AND do nothing. YOU do have to get ‘personally’ involved – no matter the size of the problem.

                  This is NOT a thing that “you don’t understand…’size’…” I know full well the ‘size’ effects, as well as I know full well that YOUR whi ning on a patent blog won’t do JACK. What WILL do something is your active involvement in YOUR union. IF YOUR union ain’t cutting it, then YOU (individually and collectively) NEED to do something about it, and that something simply is not whi ning on Patently-O.

                  The system determines who the loser is, not the individuals within.

                  You are attempting to bark up the wrong tree and you are not addressing my direct point of an attempt by examiners to make my clients pay for your misery with your internal metrics.

                  Try to stay on point, ‘dumas.’

                  most people can tell there is no actual benefit to decertifying the union most likely

                  LOL – you don’t get to whi ne about how ineffective they are and then sit there and do nothing else.

                  That’s the entire point ‘dumas.’

                  Whether or not “ the whole point of the union is to “protect”/benefit the majority of workers that are the lower on the scale of being good employees as compared to the minority of workers who are considered “good” employees by mgmt.” has ZERO to do with anything that I have said. Your bringing this up is an empty non sequitur.

                  Corporate capture is corporate capture” and “ there is nothing to do

                  Wow – did you miss the ENTIRE point of Sheldon writing his book. He did so PRECISELY because there are things to do.

                  Captured STAYS capture when YOU sit on your arse and do nothing but whi ne.

                  Time for you to TRY something else.

                  As to “goes straight jes us”… Meh, go ahead and use a different figure of speech. Just get off your arse and DO something (and if it isn’t clear yet, whi ning just does not count). You can do THAT for much more than 20 years and all that you will get is your own whi ning.

            1. 3.1.1.1.1.2

              ..and you think it somehow fair to provide that examination be controlled by those with the most resources….?

              Or did you not bother to think through the necessary ramifications of your quip?

  9. 1

    “challenges to amended claims should be limited since the PTO requires that substitute claims be narrower than the original claims”

    Added claim limitations can clearly be indefinite, thus creating 112 issues. I’ve successfully gotten proposed amendments in a PGR kicked because of indefiniteness, and this should be available in an IPR too.

    Further, added claim limitations can theoretically create a 101 issue, e.g. the addition of claim language reciting a newly discovered natural law and simply saying “apply it”. Perhaps sufficient to render an otherwise obvious claim nonobvious, but would clearly create 101 issues.

    1. 1.1

      Yes, proposed substituted claims in IPRs have always been required to have full 112 enablement in the application for which the subject patent claims priority. But far more common than 101 issues with such new claims is that even though narrower the added claim limitations still do not make the claim unobvious. E.g., merely adding a claim limitation to “do it on an Apple PC” to a much broader “do it on a [any] computer” limitation, unless that required doing something unobvious taught in that patent.

      1. 1.1.1

        have always been required to have full 112 enablement

        Judged by whom?

        Hint: it is NOT who you think it to be.

        This “always been” is more like a “never was” – the AIA and the ENTIRE post grant mechanism has been a cluster from the start.

    2. 1.2

      Further, added claim limitations can theoretically create a 101 issue, e.g. the addition of claim language reciting a newly discovered natural law and simply saying “apply it”. Perhaps sufficient to render an otherwise obvious claim nonobvious, but would clearly create 101 issues.

      This is nonsense. If the narrowed claim reads on §101-ineligible matter, the a fortiori the original claim must also have read on §101-ineligible matter. Unlike §112 issues, which really can apply to a dependent claim without prejudicing the validity of the independent claim, it is logically impossible for a narrowing amendment to introduce §101 issues that had not been present before the amendment.

      1. 1.2.2

        “it is logically impossible for a narrowing amendment to introduce §101 issues that had not been present before the amendment.”

        Under the current framework, is this necessarily true if the original claim is not novel?

        Consider a claimed method in an issued patent which is determined to be not novel. Now add recitation of a newly discovered natural law, or recitation of a newly articulated mathematical formula. Is the claim automatically eligible simply because the original method was eligible? Is this true even if it is the addition of the ineligible subject matter which renders the claim patentable over the prior art? Isn’t this the exact problem which the implicit exception is designed to address?

        Extreme example –

        (original) A method comprising:

        (a) administering a drug providing 6–thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

        (b) determining the level of 6–thioguanine in said subject having said immune-mediated gastrointestinal disorder.

        (amended claim) A method comprising:

        (a) administering a drug providing 6–thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

        (b) determining the level of 6–thioguanine in said subject having said immune-mediated gastrointestinal disorder;

        (c) wherein the level of 6-thioguanine less than about 230 pmol per 8×10^8 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject; and

        (d) wherein the level of 6-thioguanine greater than about 400 pmol per 8×10^8 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

        Is the original claim patent eligible, even if it never should have issued because it was not novel? The amended claim clearly is not eligible under current law.

        1. 1.2.2.1

          The newly amended claim in your example is ineligible because the original (and therefore broader) claim is also ineligible under current law. The newly added limitations did not make it ineligible.

          I stand by the full force of my earlier assertion—it is logically impossible for a narrowing amendment to introduce §101 issues that had not been present before the amendment. The real force of saying “this proposed amendment is not §101-eligible” in an IPR is to say “the originally granted claim should never have gone to grant because of §101 infirmities.” This, of course, may well be true, but it is black-letter law that the IPR is not the forum in which to litigate such a contention.

          1. 1.2.2.1.1

            Fair enough! I think I would largely be okay with that, although I think it creates a question as to whether every non-novel claim is also ineligible under 101.

            For example, what about:

            (original) A computer comprising a computer processor, memory, and storage.

            (amended) A computer comprising a computer processor, memory, and storage containing instructions for electronically performing intermediated settlement.

            Moreover, as an issue of statutory construction, it seems like you would need some reason to distinguish between 112 and 101. 35 U.S.C. 318 references “new or amended claim determined to be patentable,” and Uniloc seemingly argued that “§ 311 [] constrain[s] the PTAB’s review of proposed substitute claims to anticipation and obviousness, pursuant to § 102 and § 103.” Slip op. at 16. However, 112 issues clearly need to be considered for claim amendments.

            If your suggestion that “[i]f the narrowed claim reads on §101-ineligible matter, the a fortiori the original claim must also have read on §101-ineligible matter” is true, then this works as a distinction. However, I am not sure that I am convinced, owing to the case of a non-novel but eligible claim and an amendment to recite a newly discovered ineligible concept.

      2. 1.2.3

        How about:

        Claim 1: A system comprising a processor and a computer readable memory.
        Claim 2: The system of claim 1 where the processor is configured to perform intermediated settlement.

        1. 1.2.3.1

          How about it?

          (where did you find so much straw?)

          The item that you and J. Doerre are also forgetting is that the law written by the Justices is NOT the law written by Congress.

        2. 1.2.3.2

          I wrote the basically identical example vis-a-vis an original and amended claim before even seeing this.

        3. 1.2.3.3

          As far as I am concerned, this example is just the ultimate reductio ad absurdum send up of Alice. Obviously claim is §101-eligible (anticipated as all get out, but obviously eligible), so therefore obviously claim 2 must also be eligible (however flagrant be its §112 flaws). I will concede, however, that there are legitimate concerns here with claim 2 (but not claim 1) under PTO guidance. That just goes to show how slipshod is the PTO’s examination standard on this area of the law.

          1. 1.2.3.3.1

            It seems like you’re arguing against Alice rather than arguing what is true under the present regime.

            It’s not exactly a self-recommending attribute of current law, but it’s probably better for the goals of the system than a more rationale rule which forbids “a processor” itself under 112.

          1. 1.2.3.4.1

            Doerre beat you too.

            Even as I was asking the question I had a nagging feeling that this has been discussed before, do you recall that and if so approximately the thread or date? Greg is a good faith participant, so I’m sure he’ll reply if he has a chance. But the hour is late, so that window may have already closed, and I’d appreciate reviewing his previous related responses.

            1. 1.2.3.4.1.1

              I tried to post a reply yesterday, but it was swallowed by the filter. Maybe it will come through eventually.

      3. 1.2.4

        Greg, the fact that 101 cannot be raised in an IPR against original claims does not mean that the original claims did not have a 101 issue, and, per this decision, that does not immunize substitute claims from getting a 101 rejection the original claims could have gotten to launch into the District Courts.

        1. 1.2.4.1

          [T]he fact that 101 cannot be raised in an IPR against original claims does not mean that the original claims did not have a 101 issue…

          Very true.

          [P]er this decision, that does not immunize substitute claims from getting a 101 rejection the original claims could have gotten to launch into the District Courts.

          I certainly agree that per this decision, such is now possible. Per the statute, such an outcome is not possible. I rather like the patentee’s chances here if they care to petition for cert. on this one (the Court takes an unusual interest in the minutiae of statutory construction on this particular end of Title 35). I have a hard time envisioning the Court sustaining this holding.

      4. 1.2.5

        Your pal Random is not going to agree with you.

        Yup

        If the narrowed claim reads on §101-ineligible matter, the a fortiori the original claim must also have read on §101-ineligible matter.

        1. A device comprising: a non-transitory computer readable medium.

        2. The device of claim 1, wherein the medium comprises code for performing intermediated settlement.

        The first step of Alice asks what the claim is directed to. Claim 2 is directed to a fundamental economic practice. Claim 1 is not.

    3. 1.3

      Further, added claim limitations can theoretically create a 101 issue, e.g. the addition of claim language reciting a newly discovered natural law and simply saying “apply it”. Perhaps sufficient to render an otherwise obvious claim nonobvious, but would clearly create 101 issues.

      Raise such issues, yes, but be dispositive on them? I’m not so sure about that. For example, let’s say we had a claim 1 that recited some new and nonobvious super-strong metal alloy – unobtanium – and then we have a claim 2 that recites that unobtanium is gravitationally attracted to other objects with a force equal to F=gMm/r^2. Claim 2 clearly recites an ineligible law of nature, and so at least requires a 101 analysis. But I’d argue that the remaining elements provide “significantly more” (whatever the heck that means) under Alice step 2B, and/or that the claim as a whole is directed a practical application under the PTO’s step 2A(2). The independent claim’s eligibility, in essence, confers eligibility on all of its dependent claims.

      But I’ve heard the opposite from some Examiners and have received 101 rejections for just dependent claims.

      1. 1.3.1

        I’ve… received 101 rejections for just dependent claims.

        So have I, and they are daft beyond telling. Usually when I call the examiner to discuss the logical insupportability of such rejections, they tell me that they agree that this arrangement is daft, but that this is what TQAS instructs them to do. In other words, the daftness is coming from the higher ups in the PTO.

        1. 1.3.1.1

          I overcame one such rejection by canceling the dependent claim, which really makes no sense. :)

        2. 1.3.1.2

          So have I, and they are daft beyond telling. Usually when I call the examiner to discuss the logical insupportability of such rejections, they tell me that they agree that this arrangement is daft, but that this is what TQAS instructs them to do. In other words, the daftness is coming from the higher ups in the PTO.

          This also occurs. The guidance requires the “directed to” to be textually recited. In other words, if I claim an algorithm to convert one value to another, what I am claiming is a mathematical equation. But I didn’t use the word math, or provide an equation. Therefore (under the guidance) it is not directed to math. When the dependent claim limits to a particular equation for conversion, the claim now explicitly recites math, and if that is what the claim is directed to it many prompt a 101.

          This is not “wrong” per the goal of the guidance. The function is to promote consistency in the 101 analysis. The independent claim requires a logical leap. The dependent claim does not.

      2. 1.3.2

        “I’d argue that the remaining elements provide “significantly more” (whatever the heck that means) under Alice step 2B”

        Agree. It seems like the bizarre situation can only arise where an original claim fails 102 or 103.

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