In today’s Uniloc v. Hulu decision, the Federal CircuitSee CAFC held that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. is permitted to consider all issues of patentability, including § 101 (and presumably including § 112), when a patent owner proposes new claims in an inter partes review (IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.). While a petitioner can only file an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. petition based on § 102 and § 103 and relying on patents and printed publications, the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. can consider § 101 and § 112 when reviewing any amended claims proposed by the patent owner.
This should come as no surprise. As the brief for the Patent Office noted, “if a patent owner seeking amendments in an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. were not bound by § 101 and § 112, then in virtually any case, it could overcome prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. and obtain new claims simply by going outside the boundaries of patent eligibility and the invention described in the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification..” As the majority opinion notes, there is no context in which the USPTOUnited States Patent and Trademark Office. See also PTO. “is required or authorized to newly issue a patent claimThe section of a patent that describes the legal scope of the invention. Patent claims are supposed to establish the boundaries of the patentee’s entitlement to exclude. Under peripheral claiming as practiced in the U.S., claims establish the outer bounds of the patentee's privilege to exclude others. For further reading, see Burk and Lemley, Signposts or Fence Posts. without ever having determined that the particular claim meets the statutory requirements for patentability”—one of which, of course, is § 101. And while the petitioner is limited in its challenge in the petition, there is no such limitation in the statutory text as to what the Board may consider. Instead, the Board is simply instructed to determine “the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).”
It’s also in clear accord with Congressional intent. The purpose of IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. is to enable review of claims that shouldn’t have been issued. Barring the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. from considering § 101 and § 112 would instead convert it into a mechanism for obtaining claims that not only should not have been issued, but in fact could not have been issued by the USPTOUnited States Patent and Trademark Office. See also PTO. in the original application. It is a stretch to think that Congress would want the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. to permit invalid claims to issue, much less to think that it intended to enable claims that are facially invalid to issue.
Today’s decision helps to ensure that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. can do its job—eliminating invalid claims from patents, whether those were present when filed or whether the patent owner tries to sneak them in during an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected..
