This morning the Federal Circuit issued one precedential opinion in a patent case addressing the ability of the Patent Trial and Appeal Board to consider eligibility challenges to proposed substitute claims in inter partes review proceedings. Here is the introduction to the opinion.

Uniloc 2017 LLC v. Hulu, LLC

Appellant Uniloc 2017 LLC (“Uniloc”) appeals the U.S. Patent and Trademark Office’s (“USPTO”) Patent Trial and Appeal Board’s (“PTAB”) denial of its motion for rehearing in the inter partes review (“IPR”) of Uniloc’s U.S. Patent No. 8,566,960 (“the ’960 patent”), arguing that “[t]he PTAB misapprehended the law in concluding it is permissible in an IPR proceeding for the [PTAB] to consider a § 101 challenge” to Uniloc’s proposed substitute claims (“the Substitute Claims”). J.A. 597; see J.A. 596– 602 (Uniloc’s Request for Rehearing). In denying Uniloc’s request, the PTAB concluded that it may analyze § 101 patent eligibility for proposed substitute claims. See Amazon.com, Inc. v. Uniloc Lux. S.A. (“Rehearing Denial”), No. IPR2017-00948, 2019 WL 343802, at *5 (P.T.A.B. Jan. 18, 2019). The USPTO Director designated the Rehearing Denial as precedential. See id.

Uniloc timely appealed under 35 U.S.C. §§ 141(c), 142, and 319. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). We affirm.

O’MALLEY, Circuit Judge, dissenting.

Typically, when this court has finally adjudged a patent claim invalid, it also refuses to consider any appeal that demands relief dependent on that claim and vacates any such relief that has been awarded by another tribunal. See e.g.ePlus, Inc. v. Lawson Software, Inc., 789 F.3d 1349, 1361 (Fed. Cir. 2015); Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330, 1347 (Fed. Cir. 2013); see also Chrimar Sys., Inc. v. ALE USA Inc., 785 F. App’x 854, 856 (Fed. Cir. 2019), cert. denied, No. 19-1124, 2020 WL 3492668 (U.S. June 29, 2020). Here, rather than follow that usual procedure, the majority breathes life into a dead patent and uses the zombie it has created as a means to dramatically expand the scope of inter partes review (“IPR”) proceedings. Because the Patent Trial and Appeal Board (“Board”) is estopped from issuing substitute claims in place of the invalidated claims of U.S. Patent No. 8,566,960 (“’960 patent”) and because, even if the Board could issue such claims, it would be improper for it to consider 35 U.S.C. § 101, I respectfully dissent.