“Here, rather than follow that usual procedure, the majority breathes life into a dead patent and uses the zombie it created as a means to dramatically expand the scope of inter partes review (IPR) proceedings.” Look no further than this quote from Judge O’Malley’s dissent in Uniloc 2017 v. Hulu (“Uniloc 2017”) to know that new, controversial ammunition for invalidating patent claims during an IPR is now available.

Provided for under the America Invents Act (AIA) in 2012, IPRs are administrative trial proceedings before the Patent Trial and Appeals Board (PTAB) that provide a mechanism for challenging the patentability of an issued United States Patent. Patent holders facing invalidity challenges via IPR can attempt to amend by submitting substitute claims during the proceeding to avoid invalidity.