Patent validity challenges filed with the Patent Trial and Appeal Board are usually limited in scope, with inter partes review (IPR) petitions restricted to grounds based on Section 102 and 103. Alice, meanwhile, can be invoked only in petitions for covered business method (CBM) review and post-grant review, which may only consider a subset of patents. However, Section 101 has also come into play for IPRs during the claim amendment process, since when patent owners seek to amend their claims in an IPR, the Board’s practice has been to evaluate the subject matter eligibility of the proposed new or amended claims. A split Federal Circuit has just signed off on this approach, holding in a 2-1 decision that the PTAB has the authority to do so—affirming a final decision in an IPR filed by Amazon, Hulu, and Netflix that invalidated claims from a patent held by Uniloc 2017 LLC and rejected a motion to amend under Alice. The decision came over an emphatic dissent from Circuit Judge Kathleen M. O’Malley, who argued that the Board cannot apply Section 101 in IPRs.

The Federal Circuit has partially reversed and remanded a ruling by the Patent Trial and Appeal Board (PTAB) that a device monitoring patent asserted by SIPCO LLC was eligible for covered business method (CBM) review, which led to a January 2018 final decision cancelling claims from the patent under Alice and Section 103. Ruling on September 25, a Federal Circuit majority held that the Board had relied upon an improper claim construction for its determination that the patent does not fall within an exception excluding patents that “solve . . . a technical problem using a technical solution” from CBM review (2018-1635). Inventor-controlled SIPCO has seen multiple changes in corporate ownership since the 2005 launch of its litigation campaign, including the publicly announced 2012 acquisition of part ownership stakes by General Electric and MPEG LA. A more recent change in ownership came with less fanfare: In early 2018, SIPCO disclosed in public filings that it is now wholly owned by Glocom, Inc., a Maryland company apparently led by the CEO of Korean patent monetization firm Ideahub, Inc., the latter of which has touted an investment in SIPCO. Ideahub has also just launched a push into US courts in its own right, cofiling litigation with new NPE plaintiff Helios Streaming, LLC.

November 10, 2010- Microsoft and TiVo are among the 36 defendants named in a suit filed by Guardian Media alleging infringement of two expired patents related to parental control features. Accused products include DVRs, set-top boxes, personal computers and handheld devices. related to digital video recorders, personal computers and other devices. Both patents are now expired. Nintendo prevailed in an earlier suit brought Guardian in 2008 and dismissed in 2009. Guardian has initiated 42 patent suits since 2006.