Motions to Amend: The Board Invites Alice to the IPR Party

One strategy that a patent owner can pursue in an IPR trial is to file a motion to amend seeking to replace one or more of the challenged claims with substitute claims that neither enlarge the scope of the claims nor introduce new subject matter. When a patent owner files such a motion, the petitioner is permitted to oppose the motion and argue why the substitute claims are not patentable. In a recent decision, the Board reaffirmed that the grounds available for a petitioner to attack the patentability of substitute claims are not limited to anticipation or obviousness, but rather can include other sections under the Patent Statute, including § 101.

In, Inc. v. Uniloc Luxembourg S.A., IPR2017-00948 (PTAB Jan. 18, 2019), Amazon and several other petitioners challenged claims 1-25 of a Uniloc patent. The Board instituted review, and during the trial Uniloc filed a contingent motion to amend seeking to replace three challenged claims with three substitute claims. In its final written decision, the Board denied Uniloc’s motion to amend because the substitute claims were directed to non-statutory subject matter under 35 U.S.C. § 101.

Following the Board’s final written decision, Uniloc requested rehearing, arguing that the Board lacked authority to hold substitute claims unpatentable based on any ground other than §§ 102 and 103. According to Uniloc, when the Federal Circuit overruled the Board’s practice of placing on the patent owner the burden of showing the patentability of proposed substitute claims in Aqua Products Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc), it also foreclosed review of proposed substitute claims under § 101. While prior Board decisions had required a patent owner to address whether substitute claims were patent eligible under § 101, those cases, Uniloc argued, were dependent upon the Board’s now-overruled practice of placing the burden of proving patentability on the patent owner. With such an evidentiary burden no longer on the patent owner, the grounds for determining patentability, Uniloc argued, were limited by 35 U.S.C. § 311(b) to those grounds for which an IPR trial could be instituted in the first instance, i.e., §§ 102 and 103.

In its recent decision, the Board rejected Uniloc’s argument. It found that Aqua Products did not eliminate § 101 as a possible ground for finding substitute claims unpatentable. According to the Board, Aqua Products merely moved the burden of proving the patentability of substitute claims from the patent owner to the petitioner—the decision had no impact on what grounds were available for making that patentability determination. The Board then found that § 311(b) only limited the grounds available for challenging existing patent claims, but did not limit the grounds available for challenging substitute patent claims.


The decision reaffirmed the Board’s prior practice of considering sections of the Patent Statute beyond §§ 102 and 103 when assessing the patentability of substitute claims. While several prior Board decisions used the definiteness requirement of § 112 to reject substitute claims, the decision confirms that § 101 is also a viable ground for rejecting such claims. The decision thus makes clear that there are no statutory limits on the potential avenues for attacking substitute claims. For patent owners, the decision reinforces the need to carefully consider all potential patentability challenges before proposing substitute claims, while it offers petitioners additional ammunition to challenge such claims.