Uniloc 2017 LLC v. Hulu, LLC, 966 F.3d 1295

Background

Uniloc moved to amend its U.S. Patent No. 8,566,960 during an IPR to replace certain challenged claims with narrower substitute claims (claims 26–28).
Petitioners (Hulu/Netflix) opposed the motion, arguing the Substitute Claims were patent-ineligible under 35 U.S.C. § 101; Uniloc replied that § 101 was not a permissible ground to deny a substitute-claim motion but did not substantively defend § 101 eligibility.
The PTAB denied the motion to amend solely on § 101 grounds and denied rehearing; the Director designated the rehearing denial precedential.
A district court had earlier found all original claims of the ’960 patent invalid under § 101, and this court affirmed that decision during the pendency of Uniloc’s rehearing request.
Uniloc appealed the PTAB’s precedential rehearing denial to the Federal Circuit, which reviewed statutory interpretation under Chevron and affirmed the PTAB’s authority to consider § 101 when deciding proposed substitute claims.

Issues

Issue	Plaintiff's Argument (Uniloc)	Defendant's Argument (Hulu/Director)	Held
Whether the PTAB may consider § 101 patent-eligibility in evaluating proposed substitute claims in an IPR	PTAB may not use § 101 to deny a substitute-claim motion; review should be limited to § 102/103 grounds raised in the petition	PTAB may evaluate overall "patentability" of substitute claims, including § 101	Held: PTAB may consider § 101 when determining patentability of proposed substitute claims; affirmed.
Whether 35 U.S.C. § 311(b) limits PTAB review of substitute claims to prior-art (§ 102/103) grounds	§ 311(b) confines IPR issues to §§ 102/103, so substitute claims cannot be rejected on other statutory grounds	§ 311(b) governs petitions seeking to cancel issued claims; it does not constrain PTAB review of newly proposed substitute claims	Held: § 311(b) limits petition grounds against issued claims but does not bar PTAB from assessing substitute claims under § 101.
Mootness/jurisdiction after parallel district-court final judgment invalidating original claims	PTAB lacks authority / appeal is moot because after final invalidity there are no original claims to substitute and thus no effective relief	The contingent substitute-claim motion, timely filed during IPR, remains part of the proceeding; relief (issuance of substitutes) remains possible; mootness not established	Held: Case is not moot; Federal Circuit can grant relief (inserting substitute claims) if Uniloc prevails.
Whether Aqua Products forecloses PTAB § 101 review of substitute claims	Cites Aqua Products language suggesting amended claims cannot inject new unpatentability propositions; therefore § 101 review is improper	Aqua Products did not hold that § 101 challenges to substitutes are barred; it addressed burden of proof only	Held: Aqua Products does not preclude § 101 review here; it is silent on whether petitioner may raise § 101 against substitutes.

Key Cases Cited

Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) (discusses PTAB role and purposes of post-grant proceedings)
Oil States Energy Servs. v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365 (2018) (upholds constitutionality of IPR and Director’s institution discretion)
Chevron U.S.A., Inc. v. Nat. Res. Def. Council, Inc., 467 U.S. 837 (1984) (framework for reviewing agency statutory interpretations)
Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc) (addresses burden of proof for proposed amended claims and discusses IPR statutory scheme)
In re NTP, Inc., 654 F.3d 1268 (Fed. Cir. 2011) (discusses limits of reexamination scope and relation to questions of patentability)
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015) (treats § 101 as a condition of patentability)
Regents of the Univ. of Minn. v. LSI Corp., 926 F.3d 1327 (Fed. Cir. 2019) (explains continuity of reexamination/review purposes post-AIA)
Mission Product Holdings, Inc. v. Tempnology, LLC, 139 S. Ct. 1652 (2019) (standards for assessing whether court can provide effectual relief)