The Patent Trial and Appeal Board has designated as precedential
a decision holding that the Board may consider § 101 when
evaluating the patentability of a patent owner's proposed
substitute claims in a motion to amend. The decision clarifies the
impact of the Federal Circuit's Aqua Products decision
on the issue of subject matter eligibility of substitute
claims.
Patent owner Uniloc sued a number of content streaming services
– including Amazon, Hulu, and Netflix – in federal
court in the Eastern District of Texas for alleged infringement of
Uniloc's U.S. Patent Number 8,566,960 entitled "System and
method for adjustable licensing of digital products." The
defendants filed a petition for inter partes review (IPR)
to assert that the claims of the 960 Patent were anticipated and/or
rendered obvious by a number of prior art references. While the IPR
proceeded, the defendants separately alleged in the Texas court
that the claims of the 960 Patent were directed to
