PTAB Tracker

January 18, 2021, Inc. v. Uniloc Luxembourg S.A., Case IPR2017-00948, Paper 34

In this case, patent owner filed a contingent motion to amend to replace the independent claims with substitute claims, if the PTAB found the independent claims unpatentable.  (See Paper 17.)  Petitioners opposed this contingent motion at least in part on § 101 grounds.  (See Paper 19.)  Petitioners first argued that patent owner failed to satisfy its duty of disclosure by failing to even mention that the district court had held that invalidated claims of the patent-at-issue under § 101.  (See id. at 2, 3.)  Petitioners then launched into the two-prong Alice analysis, juxtaposing the substitute claims with the claims that the district court had invalidated.   (See id. at 3-11.)  In its reply, patent owner did not challenge the petitioners’ substantive § 101 arguments.  (See Paper 24.)  Instead, patent owner sought to summarily dismiss this issue by arguing that patentability of the grounds should be limited to challenges under §§ 102 and 103.  (See id. at 12, 13.)  In the Final Written Decision, the Board not only concluded that the independent claims were invalid, it also found that the substitute claims were drawn to patent ineligible subject matter.  (See id. at 56-63.)

Patent owner requested a rehearing on the § 101 issue (Paper 33), which the Board denied (Paper 34.)  The Board concluded that analyzing patentability of substitute claims under Section 101 is proper for two main reasons.  First, the Board reasoned that the controlling statute only limits the available patentability challenges for existing claims—and not substitute claims.  Section 311(b) expressly states that the patentability challenges under §§ 102 and 103 can be raised only for existing claims.  (See 35 U.S.C. § 311(b) (“A petitioner . . . may request to cancel as “unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 . . . .”) (emphasis added).)  Unlike Section 311(b), Section 316(d), which concerns motions to amend, is not limited to any particular types of patentability challenges.  Relatedly, the Board also walked through instances within the statute and prior decisions that have discussed “claims of a patent” (as recited in Section 311(b)) as distinct from substitute claims, which are not part of the patent).


Second, the Board identified multiple decisions in which patentability challenges other than §§ 102 and 103 were considered when analyzing the patentability of substitute claims.  While the decisions identified by the Board only addressed § 112 issues in motions to amend, other prior cases had also raised a § 101 challenge against substitute claims in a motion to amend.  For example, Ariosa Diagnostics v. Isis Innovation Limited, IPR2012-00022 (PTAB Sept. 2, 2014) (Paper 166), held that a motion to amend should address patent eligibility under § 101.  Patent owner, however, argued that Aqua Products overruled this hold in Ariosa.  In particular, patent owner argued that Ariosa“considered § 101 only as part of a patent owner’s burden to show patentability of the amended claims, and the Federal Circuit’s removal of that burden [in Aqua Products] ‘overruled the very basis for Ariosa Diagnostic’s holding that a motion to amend must address patent eligibility under § 101.’”  The Board disagreed, reasoning that Aqua Products “does not foreclose an analysis of whether substitute claims comply with § 101.”


  1. By designating this opinion as precedential, the PTAB has made clear that validity challenges beyond §§ 102 and 103 can be raised against claims identified in a motion to amend.
  2. Patent owners must not only make sure that the amended claims overcome the prior art, they need to also try to rid the amended claims of as many fixable Alice issues as possible.  Note that the PTAB has to apply the 2019 Revised Patent Subject Matter Eligibility Guidance when addressing § 101 issues, so patent owners should consider this guidance in preparing the amended claims.
  3. Petitioners have an opportunity to infect the existing claims using a § 101 challenge against claims in a motion to amend.  The Board will consider and analyze any § 101 challenge against the substitute claims.  And depending on the differences between the existing and substitute claims, any adverse findings with respect to the substitute claims may bleed into the existing claims.
  4. Because of this potential collateral impact of § 101 challenges on existing claims, patent owners need to exercise additional caution with motions to amend.  Patent owners may even want to avoid motions to amend where the subject matter of the claimed invention has significant Alice issues.   In such scenarios, if a patent owner proceeds with a motion to amend, it might make sense to not only cure all fixable Alice issues, but also to try to make the substitute claim look different from the existing claim.  This could potentially dull any collateral use of adverse findings with respect to the substitute claims against the existing claims.


Karan Jhurani | Associate | Atlanta, GA

Karan Jhurani is an associate in the Atlanta office of Fish & Richardson P.C. His practice emphasizes complex patent litigation, patent prosecution and counseling, and post-grant proceedings before the Patent Trial and Appeal Board (PTAB).... Read More