Amazon.com, Inc. v. Uniloc Luxembourg S.A.

When a patent owner files a motion to amend under 35 U.S.C. § 316(d) in an inter partes review, the Board may consider, and a petitioner may raise in opposition, grounds of unpatentability other than § 102 and § 103, such as § 101, against the proposed substitute claims. Section 311(b) limits only a petitioner's request to cancel existing claims of a patent to grounds "that could be raised under section 102 or 103," and Aqua Products v. Matal, which removed the patent owner's burden of persuasion on patentability, does not foreclose such review. The decision rejects the argument that Aqua Products undercut Ariosa Diagnostics v. Isis Innovation Limited, Case IPR2012-00022 (PTAB Sept. 2, 2014) (Paper 166). It explains that Ariosa's § 101 treatment was tied to the patent owner's burden, but that the Board was never limited by § 311(b) to § 102 and § 103 for amended claims. A petitioner may oppose a motion to amend on § 101, and presumably § 112, and carries the burden of proving unpatentability of substitute claims by a preponderance of the evidence; here it did so using the district court and Federal Circuit ineligibility rulings on the original claims. A patent owner cannot avoid non-prior-art challenges to substitute claims by pointing to § 311(b) or Aqua Products, and staying silent on the merits risks a loss on an unrebutted record. It also has a duty of candor to put adverse related rulings on the record. The Board relied on Aqua Products, 872 F.3d 1290 (Fed. Cir. 2017) (en banc), whose lead opinion requires consideration of the entire record and distinguishes challenged claims from substitute claims, and it distinguished Secure Axcess, 848 F.3d 1370 (Fed. Cir. 2017). LEGAL TEST OR STANDARD: Section 311(b) limits a petitioner to requesting cancellation of existing patent claims on a ground that could be raised under section 102 or 103, but it does not limit the grounds that can be raised against proposed substitute claims in a motion to amend under § 316(d). Per Aqua Products, the Board must consider the entirety of the record when assessing the patentability of amended claims under § 318(a). The patent owner does not bear the burden of persuasion on patentability, and the petitioner must prove unpatentability of substitute claims by a preponderance of the evidence. TRIGGERING FACTS: The petition challenged claims only under § 102 and § 103. The patent owner then filed a contingent motion to amend with substitute claims 26-28 replacing claims 1, 22 and 25. The petitioner raised § 101 for the first time in opposing the motion, only against the substitute claims. A district court had held the original claims ineligible and the Federal Circuit affirmed. The patent owner did not respond substantively on § 101 and argued only that the ground could not be raised. KEY QUOTE: "It does not, however, limit the grounds of unpatentability that can be raised in response to proposed substitute amended claims presented in a motion to amend." (Paper 34, p. 5) PRIOR PRECEDENT AFFECTED: Follows and clarifies Ariosa Diagnostics v. Isis Innovation Limited, Case IPR2012-00022 (PTAB Sept. 2, 2014) (Paper 166), holding that Aqua Products v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc), did not undermine it. It also relies on Western Digital Corp. v. SPEX Technologies., Inc., Case IPR2018-00082 (PTAB Apr. 25, 2018) (Paper 13) (informative). It distinguishes Secure Axcess, LLC v. PNC Bank Nat'l Ass'n, 848 F.3d 1370 (Fed. Cir. 2017), as a covered business method case about issued claims. PRACTICE TIP: Patent owners should address § 101, § 112 and other non-prior-art grounds on the merits in the motion to amend and its reply, and should not rest on a § 311(b) or Aqua Products objection. They should also disclose adverse related rulings under 37 C.F.R. § 42.11(a). Petitioners should raise such grounds in the opposition to the motion to amend and support them with record evidence.