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Amazon.com v. Uniloc Luxembourg S.A., IPR2017-00948, Paper No. 34, Patent No. 8,566,960 B2

[Discussing what challenges may be raised against amended claims in an IPR]

FACTS

Amazon et al. (Petitioners), requested an IPR of claims 1-25 of the patent. A District Court (affirmed by the CAFC) had already found that claims 1, 22, and 25 were directed to patent ineligible subject matter. The IPR was initiated. Uniloc (Patent Owner) filed a contingent motion to amend, asking that claims 26, 27, and 28 be substituted for claims 1, 22, and 25, if claims 1, 22, and 25 are found invalid. Claims 1, 22, and 25 were found to be unpatentable and the motion to amend was denied because claims 26, 27, and 28 were directed to unpatentable subject matter (§ 101). The Patent Owner submitted a request for rehearing, arguing that §101 challenges may not be raised in opposition to motion to amend in an IPR.

HOLDING

The request for a rehearing was denied, because §101 challenges are permitted in response to a motion to amend.

While Patent Owner is correct in asserting that the patent owner does not bear the burden of showing patentability of amended claims as explained in Aqua Products, this does not mean that the proposed claims cannot be reviewed to see if they meet the requirements of patentability. Aqua Products Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc).

Furthermore, while § 311(b) restricts the grounds for instituting an IPR to challenges under §102 or §103, this only applies to challenged claims. § 316(d), which concerns amending claims in an IPR, does not restrict the grounds for contesting patentability. Thus, “challenged claims” can only be challenged under § 102 and § 103, but there is no restriction on how “proposed claims” can be challenged.

 TAKEAWAY

Claims challenged in an IPR can only be challenged under § 102 and § 103, but challenges to proposed, amended claims in an IPR are unrestricted.

A copy of the actual decision can be found here.