Proposed Substitute Claims in Inter Partes Review are Subject to Patentability Challenges Beyond §§ 102 and 103

August 28, 2020

Uniloc 2017 LLC v. Hulu, LLC, 966 F.3d 1295 (Fed. Cir. 2020), deals with the grounds of unpatentability that a petitioner can raise, and that the PTAB can consider, with respect to proposed substitute claims in inter partes review proceedings (IPRs).  The takeaway from this decision is that an IPR petitioner is not limited to anticipation and obviousness grounds when challenging proposed substitute claims, but can challenge such claims based on other patentability theories such as § 101 ineligibility.