Federal Circuit Holds That PTAB Should Consider § 101 When Reviewing Proposed Amended Claims

In today’s Uniloc v. Hulu decision, the Federal Circuit held that the PTAB is permitted to consider all issues of patentability, including § 101 (and presumably including § 112), when a patent owner proposes new claims in an inter partes review (IPR).  While a petitioner can only file an IPR petition based on § 102 and § 103 and relying on patents and printed publications, the PTAB can consider § 101 and § 112 when reviewing any amended claims proposed by the patent owner.

This should come as no surprise.  As the brief for the Patent Office noted, “if a patent owner seeking amendments in an IPR were not bound by § 101 and § 112, then in virtually any case, it could overcome prior art and obtain new claims simply by going outside the boundaries of patent eligibility and the invention described in the specification.”  As the majority opinion notes, there is no context in which the USPTO “is required or authorized to newly issue a patent claim without ever having determined that the particular claim meets the statutory requirements for patentability”—one of which, of course, is § 101.  And while the petitioner is limited in its challenge in the petition, there is no such limitation in the statutory text as to what the Board may consider.  Instead, the Board is simply instructed to determine “the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).”

It’s also in clear accord with Congressional intent.  The purpose of IPR is to enable review of claims that shouldn’t have been issued.  Barring the PTAB from considering § 101 and § 112 would instead convert it into a mechanism for obtaining claims that not only should not have been issued, but in fact could not have been issued by the USPTO in the original application.  It is a stretch to think that Congress would want the PTAB to permit invalid claims to issue, much less to think that it intended to enable claims that are facially invalid to issue.

Today’s decision helps to ensure that the PTAB can do its job—eliminating invalid claims from patents, whether those were present when filed or whether the patent owner tries to sneak them in during an IPR.

Joshua Landau

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

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