PTAB Designates Precedential Opinion Allowing Section 101 Consideration Of Proposed Amended Claims
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  • PTAB Designates Precedential Opinion Allowing Section 101 Consideration Of Proposed Amended Claims

    On March 18, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential a Decision on Patent Owner’s Request for Rehearing., Inc. v. Uniloc Luxembourg S.A., IPR Case No. IPR2017-00948 (PTAB Jan. 18, 2019).  The PTAB held that, while a Petitioner may only challenge patent claims in an inter partes review based on prior art patents and publications under 35 U.S.C. §§ 102 and 103, it is nonetheless proper to consider patent eligibility under 35 U.S.C. § 101 for any proposed substitute claims.

    The relevant statutory framework sets up as follows:

    35 U.S.C. § 311(b) provides that “[a] petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims . . . under [35 U.S.C. §§ 102 or 103] . . . on the basis of patents or printed publications.”  When the PTAB institutes a Petitioner’s challenge, 35 U.S.C. § 316(d) provides a patent owner with the right to propose substitute amended claims:  “During an inter partes review . . . the patent owner may file 1 motion to amend the patent . . . .  [and] [f]or each challenged claim, propose a reasonable number of substitute claims.”  35 U.S.C. § 318(a) requires that the PTAB “issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d),” and Section 318(b) mandates “the Director [to] issue and publish a certificate canceling any claim of the patent determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable.”  Notably, this statutory scheme is silent as to whether consideration of the proposed substitute claims is limited to prior-art-publication Section 102 and 103 challenges (as in a Petitioner’s inter partes review challenge itself) or may additionally include consideration of other patentability determinations (such as Sections 101 or 112, as in original prosecution).

    Here, patent owner Uniloc filed a Contingent Motion to Amend, seeking to replace three challenged claims with substitute claims, to the extent the challenged claims were found unpatentable on the prior-art grounds in the Petition.  The PTAB found the challenged claims unpatentable based on the asserted prior art, but denied the Motion to Amend because the proposed substitute claims are direct to patent ineligible subject matter under 35 U.S.C. § 101. 

    Uniloc then moved for rehearing, arguing that it is improper to consider Section 101 for substitute claims, in the same way that it is improper to do so for challenged claims.

    The PTAB disagreed.  The PTAB found that the statutory scheme confirms that it may consider the full range of patentability for substitute claims.  According to the PTAB, the scheme distinguishes “between claims of a patent and amended claims,” and “the statute makes clear that amended claims are proposed claims until they are adding following a final written decision and action by the Director.”  Moreover, the Federal Circuit’s Aqua Products decision—which the PTAB describes as “the lead opinion” on substitute claims—is not to the contrary, and too “recognizes that substitute claims sought to be added are not claims of that patent.”

    This decision continues the PTAB’s recent trend of providing guidance through precedential opinions.  It confirms the PTAB’s long-standing practice to treat substitute claims akin to application claims in original prosecution, and, in doing so, consider all patentability provisions (including, not only Section 102 and 103 prior art, but also Section 101 patent eligibility and Section 112 written description, indefiniteness, and enablement).