“The primary issue on appeal is whether the Board erred in denying, based only on a § 101 patent eligibility challenge, Uniloc’s motion to amend the patent in this inter partes review proceeding. Uniloc also respectfully requests that, if the Court determines that the Board may consider a § 101 eligibility challenge in an IPR, Uniloc be given the opportunity on remand to dispute the Board’s substantive determination on § 101, particularly under the PTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).”
“In response to an order of this court directing the parties to address whether the case is moot, Hulu asserts that this court lacks jurisdiction on the ground of mootness. The Director and Uniloc disagree. We reject the mootness contention. . . . The PTAB correctly concluded that it is not limited by § 311(b) in its review of proposed substitute claims in an IPR, and that it may consider § 101 eligibility. . . . We have considered Uniloc’s remaining arguments— including its argument that it should be given a second chance to address § 101 on the merits in the USPTO, having bypassed the full opportunity it already had—and find them unpersuasive. Accordingly, the Rehearing Denial of the U.S. Patent Trial and Appeal Board is AFFIRMED.”
