By John Marlott

We recently posted about the panel opinion in v. Uniloc, a final written decision demonstrating how the PTAB has given heightened scrutiny to proposed substitute amended claims in an IPR.  In addition to assessing the patentability of proposed amended claims in view of the prior art, the PTAB has also considered whether such amended claims satisfy the other statutory requirements for patentability, including the patent eligibility requirement of § 101 and all of the statutory requirements of § 112 (definiteness, enablement, written description).

The panel opinion in v. Uniloc explained that even where proposed substitute amended claims are determined to be patentable over the prior art under §§ 102 and 103 during an IPR, the PTAB will nevertheless refuse to enter a motion to amend the patent if the proposed amended claims fail to satisfy § 101 or § 112.  Thus, any amended claims proposed by a patent owner must clear a higher hurdle than the original patent claims (which, by statute, are reviewed only for patentability in view of prior art under §§ 102 and 103).  On the facts in v. Uniloc, the patent owner was unable to clear the higher hurdle—the PTAB found that the substitute claims, although not shown to obvious in view of prior art under § 103, recited patent-ineligible subject matter under § 101.

The PTAB has now designated the panel decision in v. Uniloc as precedential.  As described by the PTAB:

This decision determines that 311(b) does not preclude Petitioner from raising, or the Board from considering, other grounds of unpatentability, including § 101, as to substitute claims not yet part of a patent, in the context of a motion to amend.

See Patent Trial & Appeal Board email release (Mar. 18, 2019).

The heightened scrutiny for proposed amended claims in an IPR is now precedential Board authority, and is binding on all future PTAB panels.  Challenges to amended claims are not limited to prior art, and petitioners raising § 101 or § 112 challenges to amended claims can cite to v. Uniloc with full confidence that it represents official Board policy.

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John Marlott brings more than 30 years of intellectual property law experience to his role as lead counsel in IP disputes for Jones Day clients. He focuses on high-stakes district court and ITC patent litigation, post-grant patent proceedings before the PTAB, and appeals to the U.S. Court of Appeals for the Federal Circuit.

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