CAFC Holds IPR Claim Amendments Subject To Full Patentability Examination

Yesterday, a divided CAFC panel held in Uniloc 2017 LLC v. Hulu, LLC (here) that during an IPR proceeding, the Board may consider any patentability challenge—including subject matter eligibility—if the Patent Owner moves to amend its claims under § 316(d).  The Court continues to emphasize the agency’s duty to the public in assessing patentability of the patent claims it issues.
Continue Reading 101 is Fair Game for Assessing PTAB Amendments

Leveraging PTAB 101 Determinations in Parallel Litigation

Covered Business Method (CBM) challenges have fallen out of favor with petitioners. This is due to a number of factors, not the least of which is the narrowing of CBM jurisdiction after Unwired Planet. Of course, this 101 challenge option will go away shortly as CBM will sunset in 2020. But, as more patents become eligible for Post Grant Review (PGR), the ability to challenge patent eligibility under 35 U.S.C. § 101 is slowly expanding to all patents.

Given the expanding option to file a PGR to challenge patent eligibility under 101 alongside art-based challenges, is it better to do so (if possible within the 9-month PGR window), or to simply wait out the 9-month window for Inter Partes Review (IPR)?

While 101 challenges can be especially lethal post-Alice, parallel tracking your 101 case at the Patent Trial & Appeal Board (PTAB) is not without its risks.
Continue Reading 101 PTAB Challenges Might Come Back to Haunt Your Parallel Litigation