July 24, 2020

1. On July 22, 2020, a sharply split Federal Circuit panel held that “[t]he 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.” Uniloc 2017 LLC v. Hulu, LLC, 2020 WL 4197750, at *6 (Fed. Cir. July 22, 2020). Section 311(b) limits an IPR petitioner to assertions of unpatentability for anticipation and obviousness under §§ 102 and 103 based on prior art patents and printed publications.

2. The Federal Circuit affirmed the PTAB’s decision, which found patent owner’s amended substitute claims to be unpatentable solely for claiming ineligible subject matter under 35 U.S.C. § 101, but not for anticipation or obviousness under §§ 102 or 103.

3. The majority decision leaned heavily on the statutory mandate of 35 U.S.C. § 318(a), which requires the PTAB to “issue a final written decision with respect to the patentability of . . . any new claim added under [§] 316(d),” to support its holding. Uniloc, 2020 WL 4197750 at *6. The majority reasoned that the “plain language of the IPR Statutes demonstrates Congress’s intent for the PTAB to review proposed substitute claims for overall ‘patentability’—including under § 101—of the claims.” Id.

4. Judge O’Malley pushed back in a sharply worded dissent that reignites the clash over PTAB’s substitute claim review authority first laid bare in Aqua Products. Judge O’Malley reasoned that the single word “patentability” cannot have two different meanings in the statute and that the “sole meaning of patentability must be, therefore, the one contemplated by § 311(b).” Id. at *13.

5. Judge O’Malley’s dissent concluded that the majority decision “improperly places an examination process in the hands of an administrative judge,” and she noted that the PTAB Precedential Opinion Panel recently issued a decision that “made clear that it does not view the Board as independently fulfilling an examinational function.” Id. at *15 n.9 (citing Hunting Titan v. Dynaenergetics, IPR2018-00600, Paper 67 at 18–23).

1. Judge O’Malley finished off her dissent using highly provocative language aimed squarely at provoking an en banc review. Judge O’Malley repeatedly refers to a “dead patent” that was “dead on arrival” only to “die again on the same § 101 sword that killed it two years ago,” and she openly accused the majority (Judges Wallach and Taranto) of viewing the dead patent “as an opportunity” to “open[] substitute claims to an examination equivalent to that undertaken during patent prosecution.” Whoa!

2. The Uniloc v. Hulu decision should be viewed in the context of the July 6, 2020 PTAB Precedential Opinion Panel decision in Hunting Titan. Hunting Titan holds that PTAB judges have the authority to sua sponte raise a new ground of unpatentability against proposed substitute claims, but should do so only in rare circumstances, such as when a petitioner drops out of the proceeding or to protect “the integrity of the patent system.” Hunting Titan relied on the Federal Circuit’s recent decision in Nike v. Adidas (955 F.3d 45), which held that the PTAB is not constrained by the AIA statute, or the Supreme Court’s SAS Institute decision, from sua sponte raising new grounds of unpatentability against proposed substitute claims, just as an examiner would during examination or reexamination.

3. This is a heavyweight intellectual fight among the Federal Circuit judges – those who see the AIA as providing PTAB with expansive review powers during IPR proceedings that are necessary to protect the public from “bad” patents, and those who see clear and necessary limits on that power in the context and framework of the AIA statute.

4. The Supreme Court’s admonition in SAS Institute, “the petitioner’s contentions, not the Director’s discretion, define the scope of the litigation all the way from institution through to conclusion,” may foreshadow further clashes among the judiciary on the scope of PTAB review authority. See SAS Inst., 138 S. Ct. at 1357.