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ARTICLE · 23 JULY 2020

101 Is Fair Game For Assessing PTAB Amendments

Ropes & Gray LLP
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CAFC Holds IPR Claim Amendments Subject To Full Patentability Examination.

United StatesIntellectual Property
Scott A. McKeown
Scott A. McKeown
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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.

The dispute began when Uniloc filed a patent infringement suit against multiple digital video content providers in the Eastern District of Texas. While the suit was pending, Hulu and other defendants filed an IPR petition against one of the asserted patents ("Uniloc Patent"). The district court did not stay the case.

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