News & Analysis as of

Substitute Claims Section 101

Rothwell, Figg, Ernst & Manbeck, P.C.

Substitute Claims Proposed in an IPR are Subject to Patent Eligibility Review Under Section 101

In Uniloc 2017 LLC v. Hulu, LLC, Netflix, Inc. (July 22, 2020), the Federal Circuit held that the Patent Trial and Appeal Board (“the PTAB”) may consider, in its review of substitute claims proposed in an inter partes review...more

McDermott Will & Emery

PTAB May Reject Substitute Claims Under Any Basis of Patentability

The US Court of Appeals for the Federal Circuit considered for the first time whether a district court’s invalidity determination, when made final after all appeals are exhausted, divests the Patent Trial and Appeal Board...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - July 2020: Federal Circuit Confirms PTAB's Ability to Consider Subject Matter Eligibility of...

On July 22, 2020, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) issued an opinion in Uniloc 2017 LLC v. Hulu, LLC & Netflix, Inc., No. 2019-1686 (Fed. Cir. 2020) authorizing the U.S. Patent Trial &...more

Mintz - Intellectual Property Viewpoints

“Anything Goes” – Federal Circuit Says PTAB Can Use Any Means to Knock Out Substitute Claims (Uniloc v. Hulu: Part 2)

Yesterday we discussed the Federal Circuit’s decision in Uniloc 2017 LLC v. Hulu, LLC confirming the Board’s authority to review contingent substitute claims after the original claims have been held invalid by a federal...more

Pillsbury Winthrop Shaw Pittman LLP

Section 101 Kills Substitute Claims in Inter Partes Review

The Federal Circuit recently held that substitute claims proposed by a patent owner in an IPR are not limited to patentability challenges under 35 U.S.C. §§102 and 103, and can be challenged under 35 U.S.C. §101. ...more

McDonnell Boehnen Hulbert & Berghoff LLP

Uniloc 2017 LLC v. Hulu, LLC (Fed. Cir. 2020)

Last week, in Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit ruled that the Patent Trial and Appeal Board may consider patent eligibility under 35 U.S.C. § 101 for substitute claims.  The appeal raises issues of finality...more

Haug Partners LLP

Uniloc v. Hulu - Federal Circuit Clash over Scope of PTAB Review of Substitute Claims

Haug Partners LLP on

WHAT DO WE KNOW? 1. On July 22, 2020, a sharply split Federal Circuit panel held that “[t]he PTAB correctly concluded that it is not limited by § 311(b) in its review of proposed substitute claims in an IPR, and that it...more

Knobbe Martens

PTAB Grants-in-Part Rare Motion to Amend Based on Unexpected Results

Knobbe Martens on

The PTAB granted-in-part a patent owner’s motion to substitute claims based on evidence of secondary considerations of nonobviousness in Valeo North America, Inc. v. Schaeffler Technologies, AG & CO. KG, IPR2016-00502, Paper...more

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