The PTAB may institute IPR proceedings only on the basis of
certain prior art that is potentially invalidating under § 102
(novelty) or § 103 (obviousness). The PTAB may not institute
IPR on any other unpatentability grounds, including, for example,
§ 101 (patentable subject matter) or § 112 (definiteness,
enablement, written description). But as demonstrated by the
PTAB's recent decision in eBay, Inc. v. Global Equity
Management (SA) PTY. LTD (IPR2016-01828, Paper No. 69), §
112 is still relevant to the PTAB's evaluation of a patent
challenger's § 102 or § 103 arguments.
The petitioners in eBay filed an IPR petition,
requesting review of four claims of U.S. Patent No. 6,690,400
("the '400 Patent"). The PTAB instituted IPR
proceedings as to two of the claims and issued a final written
decision finding those two claims unpatentable in view of prior
art. But the PTAB declined to institute IPR proceedings as to the
other two challenged claims because it could not
