Substitute Claims in IPR Are Subject to Section 101 Challenges

| Jeremy Anapol


Before O’Malley, Wallach, and Taranto. O’Malley dissenting. Appeal from the Patent Trial and Appeal Board.

Summary: The Board did not exceed its statutory authority in an inter partes review proceeding by rejecting proposed substitute claims for lack of patent-eligible subject matter under 35 U.S.C. § 101.

Hulu, LLC and others (collectively, “Hulu”) petitioned for inter partes review (IPR) of a patent owned by Uniloc 2017 LLC (“Uniloc”). The Patent Trial and Appeal Board instituted the IPR and issued a final written decision finding some of Uniloc’s claims unpatentable over the prior art. During the IPR, Uniloc filed a Motion to Amend, requesting that the Board enter substitute claims if it found the patent’s independent claims unpatentable. Hulu opposed the motion and argued that the substitute claims were patent-ineligible under § 101. Uniloc replied that the § 101 challenge was barred by the IPR statutes, but did not respond to the substance of Hulu’s § 101 arguments. The Board denied Uniloc’s motion, finding the substitute claims unpatentable based solely on § 101. Uniloc appealed.

The Federal Circuit affirmed. The majority held that the IPR statutes permit the Board to review substitute claims more extensively than original claims (which are reviewed under §§ 102 and 103 only). The statutes require that all substitute claims be “patentable”—meaning that such claims must satisfy § 101.

Judge O’Malley dissented, asserting that the term “patentability” in the IPR statutes refers specifically to patentability under §§ 102 and 103, not § 101. The dissent also noted that substitute claims must be narrower than original claims, and if an original claim satisfied § 101, a narrowed claim would too. Thus, substitute claims could not raise any new problem of patentability under § 101 that did not exist in the original claims.

Editor: Paul Stewart