Argument Preview

The third case being argued this month that attracted an amicus brief is a patent case, Uniloc 2017 LLC v. Hulu, LLC. This case is an appeal from an invalidation of patent claims in an inter partes review proceeding. In it, Uniloc argues the Patent Trial and Appeal Board “erred in denying, based only on a § 101 patent eligibility challenge, Uniloc’s motion to amend the patent.” In particular, Uniloc’s position is that § 101 challenges are not permissible in IPRs, even with respect to proposed new claims. This is our argument preview.

In its opening brief, Uniloc makes three primary arguments. First, it argues that “the Board’s consideration of patent-eligibility challenges under 35 U.S.C. § 101 in an IPR is precluded by the AIA, even for proposed substitute claims in a motion to amend.” Second, it argues that, “even if the statute is determined to be ambiguous as to whether a § 101 challenge may be considered on a motion to amend, there is no indication that Congress intended for the PTO to fill any such gap, or that such a determination would be within the expertise of the PTO.” Third, it contends that “if the Court determines that the Board may consider a § 101 eligibility challenge in IPR proceedings, Uniloc should be allowed on remand to dispute the Board’s substantive determination on § 101, particularly under the PTO’s 2019 Revised Patent Subject Matter Eligibility Guidance.”

The USPTO intervened in this case and filed its own brief urging affirmance. It argues that “[c]laim language that a patent owner proposes to insert into a patent during an inter partes review will, in many cases, never before have been examined by the USPTO,” and that “[t]he AIA plainly—and repeatedly—requires the Board to assess the ‘patentability” of such proposed substitute claims.” As a result, it contends that “[t]he Board . . . correctly concluded that the IPR statute allows it to determine whether such unexamined claims are patentable—an analysis that includes consideration of § 101 eligibility.”

In its response brief, Hulu contends that, “while Congress expressly limited the scope of challenges against issued claims in an IPR, it included no similar limitation for proposed substitute claims.” Moreover, it argues that “Uniloc’s reading [of a particular case] is wrong for several reasons” including that “it makes no sense” and that the “opinion never articulated the rule Uniloc imagines.”

In its reply brief, Uniloc maintains that its “straightforward interpretation of the IPR statutes is not persuasively rebutted by Petitioners or the Government.”

Askeladden LLC filed an amicus brief in support of Hulu. Askeladden’s “urg[es] the Court to affirm the decision of the Board below holding that, in inter partes review, the Board may analyze and determine whether substitute claims submitted by a patent owner in a motion to amend comply with the subject-matter eligibility requirements of § 101.”

We will continue to monitor the case and provide updates on developments.