Uniloc 2017 v. Hulu: Federal Circuit Says PTAB’s Review of Substitute Claims Is Not Limited to Anticipation and Obviousness

Posted by Kevin Mosier on Aug 31, 2020

Kevin Mosier

Per the express language of 35 U.S.C. § 311, a petitioner in an IPR may request cancellation of a claim “only on a ground that could be raised under section 102 or 103.” In other words, an issued claim can only be canceled via IPR on the basis of anticipation or obviousness grounds. But once an IPR is instituted, can the PTAB also make eligibility determinations pursuant to section 101 and/or written description or enablement determinations pursuant to section 112? The answer is, in certain circumstances, “yes” according to the Federal Circuit in Uniloc 2017 v. Hulu, No. 2019-1686 (Fed. Cir. July 22, 2020).

In Uniloc 2017, the petitioners challenged the patent owner’s claims as anticipated and obvious. The patent owner defended the claims and also filed a contingent motion to amend requesting that, in the event certain claims were found unpatentable, the PTAB issue substitute claims pursuant to section 316(d). The petitioners opposed the motion to amend, arguing that the proposed substitute claims were directed to patent ineligible subject matter.

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Topics: Obviousness, "Federal Circuit", IPR, PTAB, Anticipation

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