Case: 19-1686     Document: 87    Page: 1   Filed: 07/22/2020




   United States Court of Appeals
       for the Federal Circuit
                   ______________________

                    UNILOC 2017 LLC,
                        Appellant

                             v.

                HULU, LLC, NETFLIX, INC.,
                        Appellees

     ANDREI IANCU, UNDER SECRETARY OF
   COMMERCE FOR INTELLECTUAL PROPERTY
    AND DIRECTOR OF THE UNITED STATES
      PATENT AND TRADEMARK OFFICE,
                   Intervenor
             ______________________

                         2019-1686
                   ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2017-
 00948.
                  ______________________

                   Decided: July 22, 2020
                   ______________________

     BRIAN MATTHEW KOIDE, Etheridge Law Group, South-
 lake, TX, argued for appellant. Also represented by JAMES
 ETHERIDGE, RYAN S. LOVELESS, BRETT MANGRUM.

    NATHAN K. KELLEY, Perkins Coie, LLP, Washington,
 DC, argued for appellees. Also represented by DAN L.
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 2                               UNILOC 2017 LLC   v. HULU, LLC



 BAGATELL, Hanover, NH; ANDREW DUFRESNE, Madison,
 WI; MATTHEW COOK BERNSTEIN, San Diego, CA; BOBBIE J.
 WILSON, San Francisco, CA; DANIEL T. SHVODIAN, Palo
 Alto, CA.

    FARHEENA YASMEEN RASHEED, Office of the Solicitor,
 United States Patent and Trademark Office, Alexandria,
 VA, argued for intervenor Andrei Iancu. Also represented
 by JOSEPH MATAL, THOMAS W. KRAUSE; MELISSA N.
 PATTERSON, Appellate Staff, Civil Division, United States
 Department of Justice, Washington, DC. Also argued by
 JEFFREY ERIC SANDBERG, Appellate Staff, Civil Division,
 United States Department of Justice, Washington, DC.

     ADAM HOWARD CHARNES, Kilpatrick Townsend &
 Stockton LLP, Dallas, TX, for amicus curiae Askeladden
 L.L.C. Also represented by JOHN STEVEN GARDNER, CHRIS
 WILLIAM HAAF, Winston-Salem, NC.
                 ______________________

      Before O’MALLEY, WALLACH, and TARANTO, Circuit
                         Judges.
     Opinion for the court filed by Circuit Judge WALLACH.
     Dissenting opinion filed by Circuit Judge O’MALLEY.
 WALLACH, Circuit Judge.
      Appellant Uniloc 2017 LLC (“Uniloc”) appeals the U.S.
 Patent and Trademark Office’s (“USPTO”) Patent Trial
 and Appeal Board’s (“PTAB”) denial of its motion for re-
 hearing in the inter partes review (“IPR”) of Uniloc’s U.S.
 Patent No. 8,566,960 (“the ’960 patent”), arguing that
 “[t]he PTAB misapprehended the law in concluding it is
 permissible in an IPR proceeding for the [PTAB] to con-
 sider a § 101 challenge” to Uniloc’s proposed substitute
 claims (“the Substitute Claims”). J.A. 597; see J.A. 596–
 602 (Uniloc’s Request for Rehearing). In denying Uniloc’s
 request, the PTAB concluded that it may analyze § 101
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 patent eligibility for proposed substitute claims. See Ama-
 zon.com, Inc. v. Uniloc Lux. S.A. (“Rehearing Denial”), No.
 IPR2017-00948, 2019 WL 343802, at *5 (P.T.A.B. Jan. 18,
 2019). The USPTO Director designated the Rehearing De-
 nial as precedential. See id.
     Uniloc timely appealed under 35 U.S.C. §§ 141(c), 142,
 and 319. We have jurisdiction pursuant to 28 U.S.C.
 § 1295(a)(4)(A). We affirm.
                         BACKGROUND
                 I. The Statutory Framework
     Congress enacted the Leahy-Smith America Invents
 Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284, in 2011 to
 “improve patent quality and limit unnecessary and coun-
 terproductive litigation costs[,]” H.R. REP. No. 112-98, pt. I,
 at 40 (2011). The AIA included changes to the inter partes
 reexamination provisions. See 35 U.S.C. §§ 311–319 (to-
 gether, the “IPR Statutes”). Specifically, Congress re-
 placed inter partes reexamination with IPR, which “was
 designed to improve on the inter partes reexamination pro-
 cess.” Regents of the Univ. of Minn. v. LSI Corp., 926
 F.3d 1327, 1335 (Fed. Cir. 2019), cert. denied, 140 S.
 Ct. 908 (2020). “Although Congress changed the name
 from ‘reexamination’ to ‘review,’ nothing convinces us that,
 in doing so, Congress wanted to change its basic purposes,
 namely to reexamine an earlier agency decision.” Id. (quot-
 ing Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2137
 (2016)).
     Under the AIA, “a person who is not the owner of a pa-
 tent may file with the [USPTO] a petition to institute an
 [IPR] of the patent[,]” 35 U.S.C. § 311(a), but may “request
 to cancel as unpatentable [one] or more claims of a patent
 only on a ground that could be raised under [§] 102
 or 103[,]” id. § 311(b); see id. §§ 102(a)(1) (2006) (providing
 that “[a] person shall be entitled to a patent unless the
 claimed invention was patented, described in a printed
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 publication, or in public use, on sale, or otherwise available
 to the public before [its] effective filing date”), 103 (2006)
 (“A patent may not be obtained . . . if the differences be-
 tween the subject matter sought to be patented and the
 prior art are such that the subject matter as a whole would
 have been obvious at the time the invention was made to a
 person having ordinary skill in the art to which said subject
 matter pertains.”). 1 The USPTO Director may institute an
 IPR if the petition “shows that there is a reasonable likeli-
 hood that the petitioner would prevail with respect to at
 least [one] of the claims challenged in the petition.” Id.
 § 314(a); see Oil States Energy Servs. v. Greene’s Energy
 Grp., LLC, 138 S. Ct 1365, 1371 (2018) (“The decision
 whether to institute [IPR] is committed to the Director’s
 discretion.”). The PTAB “shall . . . conduct each [IPR] in-
 stituted[,]” 35 U.S.C. § 316(c), where “the petitioner shall
 have the burden of proving a proposition of unpatentability
 by a preponderance of the evidence[,]” id. § 316(e).
     “During an [IPR] . . . , the patent owner may file [one]
 motion to amend the patent” by “[c]ancel[ing] any chal-
 lenged patent claim” and “[f]or each challenged claim, pro-
 pose a reasonable number of substitute claims.” Id.
 § 316(d)(1). The proposed substitute claims “may not en-
 large the scope of the claims of the patent or introduce new
 matter.” Id. § 316(d)(3). When an IPR is completed, “the
 [PTAB] shall issue a final written decision with respect to



     1   Congress amended §§ 102 and 103 when it passed
 the AIA. Pub. L. No. 112-29, § 3(b)(1), § 3(c), 125 Stat. at
 285–87. However, because the application that led to the
 ’960 patent never contained a claim having an effective fil-
 ing date on or after March 16, 2013 (the effective date of
 the statutory changes enacted in 2011), or a reference un-
 der 35 U.S.C. §§ 120, 121, or 365(c) to any patent or appli-
 cation that ever contained such a claim, the pre-AIA § 102
 and § 103 apply. See id. § 3(n)(1), 125 Stat. at 293.
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 UNILOC 2017 LLC   v. HULU, LLC                                  5



 the patentability of any patent claim challenged by the pe-
 titioner and any new claim added under [§] 316(d).” Id.
 § 318(a). Moreover, “the Director shall issue and publish a
 certificate . . . incorporating in the patent by operation of
 the certificate any new or amended claim determined to be
 patentable.” Id. § 318(b). “Any proposed amended or new
 claim determined to be patentable and incorporated into a
 patent following an [IPR]” will “have the same effect as”
 reissued patents have on certain intervening rights under
 35 U.S.C. § 252. Id. § 318(c).
                       II. The ’960 Patent
     Entitled “System and Method for Adjustable Licensing
 of Digital Products,” the ’960 patent is directed to the “prob-
 lem . . . that consumers of software . . . use . . . digital prod-
 ucts on multiple devices[,]” where consumers have “a
 legitimate need to install and use the software on every
 computer.” ’960 patent col. 1 ll. 31–34, 40–41. The ’960
 patent teaches the “adjust[ment] [of] the number of devices
 allowed to use a digital product (e.g., software) under a li-
 cense.” Id., Abstract. To enable the communication involv-
 ing the adjustable license, the ’960 patent discloses
 computer components, such as a “processor module” and a
 “memory module.” Id. col. 7 ll. 46–47; see id. col. 7 ll. 36–
 47.
    Independent claim 26, proposed as a substitute to in-
 dependent claim 1, is illustrative of the Substitute Claims,
 and recites:
     A system for adjusting a license for a digital prod-
     uct over time, the license comprising at least one
     allowed copy count corresponding to a maximum
     number of devices authorized for use with the digi-
     tal product, comprising:
         a communication module for receiving a re-
         quest for authorization to use the digital
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 6                               UNILOC 2017 LLC       v. HULU, LLC



        product from a given device, the request
        comprising:
            license data associated with the
            digital product; and
            a device identity generated at the
            given device at least in part by
            sampling physical parameters of
            the given device;
        a processor module in operative communi-
        cation with the communication module;
        a memory module in operative communica-
        tion with the processor module and com-
        prising executable code for the processor
        module to:
            verify that the license data associ-
            ated with the digital product is
            valid;
            in response to the license data be-
            ing verified as valid, determine
            whether the device identity is cur-
            rently on a record;
            in response to the device identity
            already being on the record allow
            the digital product to be used on
            the given device;
            in response to the device identity
            not currently being on the record,
            temporarily adjust the allowed
            copy count from its current number
            to a different number by setting the
            allowed copy count to a first upper
            limit for a first time period, the first
            upper limit corresponding to the
            maximum number of devices
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 UNILOC 2017 LLC   v. HULU, LLC                             7



             authorized to use the digital prod-
             uct during the first time period;
             calculate a device count corre-
             sponding to total number of devices
             currently authorized for use with
             the digital product; and
             when the calculated device count is
             less than the first upper limit, al-
             low the digital product to be used
             on the given device.
 J.A. 339–40. 2
                    III. Procedural History
      Appellees Hulu, LLC and Netflix, Inc. (together,
 “Hulu”) filed a petition with the PTAB to institute an IPR
 of claims 1–25 of Uniloc’s ’960 patent. J.A. 89; see J.A. 89–
 164 (Petition for IPR). 3 The PTAB instituted the IPR in
 August 2017. Amazon.com, Inc. v. Uniloc Lux. S.A. (“Insti-
 tution Decision”), No. IPR2017-00948, 2017 WL 3484959
 (P.T.A.B. Aug. 14, 2017). On August 1, 2018, the PTAB
 issued a final written decision finding claims 1–8, 18–22,
 and 25 unpatentable over the prior art. See Amazon.com,
 Inc. v. Uniloc Lux. S.A. (“Final Written Decision”), No.




     2   We include the language proposed to be added and
 remove the language proposed to be canceled in substitute
 claim 26.
     3   Amazon.com, Inc., Amazon Digital Services, Inc.,
 and Amazon Fulfillment Services, Inc. joined Hulu in its
 Petition for IPR, but withdrew from this appeal. See Order
 at 2, Uniloc 2017 LLC v. Hulu, LLC, No. 2019-1686 (Fed.
 Cir. Apr. 11, 2019), Dkt. 19.
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 IPR2017-00948, 2018 WL 3695200, at *30 (P.T.A.B. Aug.
 1, 2018). 4
      Eight months earlier in the IPR, in January 2018,
 Uniloc had filed a Motion to Amend, within the PTAB-
 specified due date, asking the PTAB to enter the Substitute
 Claims (claims 26–28) for independent claims 1, 22, and 25
 if the PTAB found the latter unpatentable. See id. at *1;
 J.A. 310–51 (Motion to Amend); J.A. 313. Hulu opposed
 the Motion to Amend in February 2018, arguing, among
 other things, that the Substitute Claims are directed to pa-
 tent-ineligible subject matter under § 101. J.A. 386; see
 J.A. 381–413 (Opposition to Motion to Amend). Uniloc re-
 plied in March 2018 that Hulu was not permitted to raise
 a § 101 argument in opposition to the Substitute Claims,
 but did not respond with substantive arguments that its
 Substitute Claims meet the standards for eligibility under
 § 101. J.A. 508–09; see J.A. 495–512 (Reply to Motion to
 Amend).
      In its Final Written Decision, the PTAB, in addition to
 explaining why the challenged original claims are un-
 patentable, denied Uniloc’s Motion to Amend the claims,
 concluding that “[Hulu] ha[d] shown by a preponderance of
 the evidence that [the Substitute Claims] are directed to
 non-statutory subject matter under 35 U.S.C. § 101.” Final
 Written Decision, 2018 WL 3695200, at *30; id. at *24–27.
 Ineligibility was the sole ground on which the PTAB denied
 the motion to amend. The PTAB rejected Hulu’s other ob-
 jections to the Substitute Claims—obviousness in violation


     4   In a related action, a district court invalidated all
 claims of the ’960 patent under § 101, upon concluding that
 they were “drawn to [patent-]ineligible subject matter,”
 Uniloc USA, Inc. v. Amazon.com, Inc., 243 F. Supp. 3d 797,
 811 (E.D. Tex. 2017), and this court affirmed that judgment
 on August 9, 2018, after the Final Written Decision in the
 present IPR was issued, 733 F. App’x 1026 (Fed. Cir. 2018).
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 UNILOC 2017 LLC   v. HULU, LLC                              9



 of § 103, enlargement of claim scope in violation of § 316(d),
 and indefiniteness in violation of § 112(a). Id. at *27–30.
      Uniloc requested a rehearing on August 31, 2018,
 J.A. 596–602 (Request for Rehearing), by which time this
 court had affirmed the federal-court judgment of invalidity
 of all original claims, see supra n.4. Uniloc argued that
 “[t]he PTAB misapprehended the law in concluding it is
 permissible in an IPR proceeding for the [PTAB] to con-
 sider a § 101 challenge” to its Substitute Claims. J.A. 597.
 As far as we have been shown, Hulu filed nothing at that
 point contending that the PTAB had lost any authority it
 had to consider the Substitute Claims given the final fed-
 eral-court invalidation of the original claims—a contention
 that would have called for vacatur of the Final Written De-
 cision rather than denial of rehearing. The PTAB denied
 Uniloc’s Request for Rehearing, concluding that § 101 eli-
 gibility may be considered by the PTAB in determining pro-
 posed substitute claim patentability in IPR proceedings.
 See Rehearing Denial, 2019 WL 343802, at *5. The USPTO
 Director designated the Rehearing Denial as precedential.
 See id.
                          DISCUSSION
         I. Standard of Review and Legal Standard
     “We review the PTAB’s factual findings for substantial
 evidence and its legal conclusions de novo.” Redline Detec-
 tion, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed.
 Cir. 2015) (citation omitted). To determine whether the
 PTAB’s interpretation of the statute is in accordance with
 the law, we review the statute pursuant to the two-step
 Chevron analysis. See Nan Ya Plastics Corp. v. United
 States, 810 F.3d 1333, 1341 (Fed. Cir. 2016); see also Chev-
 ron, U.S.A., Inc. v. Nat. Res. Def. Council, Inc., 467
 U.S. 837, 842–43 (1984). When reviewing an agency’s con-
 struction of a statute, we must first determine “whether
 Congress has directly spoken to the precise question at is-
 sue.” Chevron, 467 U.S. at 842. If the answer is yes, then
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 the inquiry ends, and we “must give effect” to Congress’s
 unambiguous intent. Id. at 842–43; see Sullivan v. Stroop,
 496 U.S. 478, 482 (1990) (“If the statute is clear and unam-
 biguous that is the end of the matter, for the court . . . must
 give effect to the unambiguously expressed intent of Con-
 gress.” (internal quotation marks and citation omitted)).
 We may find Congress has expressed unambiguous intent
 by examining “the statute’s text, structure, and legislative
 history, and apply[ing] the relevant canons of interpreta-
 tion.” Heino v. Shinseki, 683 F.3d 1372, 1378 (Fed.
 Cir. 2012) (internal quotation marks and citation omitted).
     If Congress has not directly spoken to the precise ques-
 tion at issue, we must consider “whether the agency’s an-
 swer [to the question] is based on a permissible
 construction of the statute.” Chevron, 467 U.S. at 843. The
 agency’s “interpretation governs in the absence of unam-
 biguous statutory language to the contrary or unreasona-
 ble resolution of language that is ambiguous.” United
 States v. Eurodif S.A., 555 U.S. 305, 316 (2009) (citing
 United States v. Mead Corp., 533 U.S. 218, 229–30 (2001)).
                   II. The Case Is Not Moot
     In response to an order of this court directing the par-
 ties to address whether the case is moot, Hulu asserts that
 this court lacks jurisdiction on the ground of mootness. The
 Director and Uniloc disagree. We reject the mootness con-
 tention.
      We may dismiss a case for mootness “only if ‘it is im-
 possible for [us] to grant any effectual relief whatever’ to
 [Uniloc] assuming it prevails.” Mission Product Holdings,
 Inc. v. Tempnology, LLC, 139 S. Ct. 1652, 1660 (2019) (cit-
 ing Chafin v. Chafin, 568 U.S. 165, 172 (2013)). In this
 case, it is readily possible to grant Uniloc effectual relief if
 Uniloc is right on the merits. Uniloc’s appeal brief argues
 that the PTAB is statutorily barred from rejecting a Sub-
 stitute Claim based on § 101. If Uniloc is correct, it is en-
 titled to a certificate adding its Substitute Claims to
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 UNILOC 2017 LLC   v. HULU, LLC                            11



 the ’960 patent, because the PTAB rejected all other
 grounds for finding unpatentability and Hulu has not chal-
 lenged the PTAB’s rulings in those respects. A judgment
 providing for addition of the Substitute Claims to Uniloc’s
 patent would be effectual relief.
     Hulu argues otherwise by making new arguments
 about how to read Uniloc’s contingent motion to amend and
 about the USPTO’s statutory authority. Specifically, Hulu
 contends that Uniloc’s motion to amend was not actually
 made “during the IPR” because it was contingent on the
 PTAB finding the original claims unpatentable—a finding
 that Hulu treats as ending the IPR. Relatedly, Hulu con-
 tends that, once the dispute in the IPR over the original
 claims was mooted by the final federal-court judgment of
 invalidity of those claims (which occurred after the Final
 Written Decision but before rehearing was sought), the
 USPTO lacked statutory authority to consider the proposed
 substitute claims. On these bases, Hulu suggests that the
 dispute over the Substitute Claims is moot because the
 statute precludes Uniloc from securing an addition of those
 claims to the patent. The Director, like Uniloc, disagrees.
      We reject Hulu’s arguments. First, under ordinary re-
 quirements for preservations of arguments, Hulu has
 waived these arguments. Before the PTAB, Hulu did not
 argue that the PTAB could not reach the motion to amend
 because the motion had to be read as resting on a contin-
 gency (finding the specified original claims unpatentable)
 that would already have ended the IPR. Nor did Hulu ar-
 gue to the PTAB in response to Uniloc’s petition for rehear-
 ing—which was filed after the federal-court invalidity
 judgment became final—that the Final Written Decision,
 or even just the part denying the motion to amend, must be
 vacated because the dispute over the original claims was
 moot and the PTAB had lost statutory authority to reach
 the proposed Substitute Claims. In this court, Hulu like-
 wise made no argument for lack of PTAB statutory author-
 ity to reach the Substitute Claims, either by filing a cross-
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 12                              UNILOC 2017 LLC   v. HULU, LLC



 appeal to secure a vacatur of the PTAB’s rulings and dis-
 missal of the IPR or by presenting any such argument in
 its brief as Appellee, which simply sought affirmance.
     A question of an agency’s statutory authorization ordi-
 narily is not a nonwaivable “jurisdictional” issue. See PGS
 Geophysical AS v. Iancu, 891 F.3d 1354, 1362 (Fed.
 Cir. 2018); see also Acoustic Tech., Inc. v. Itron Networked
 Solutions, Inc., 949 F.3d 1360, 1365 (Fed. Cir. 2020); Jal-
 bert v. SEC, 945 F.3d 587, 593–94 (1st Cir. 2019). Moreo-
 ver, in assessing whether there is an Article III case or
 controversy, a court ordinarily assumes the correctness of
 the plaintiff’s contentions on the merits. See, e.g., James v.
 J2 Cloud Servs., LLC, 887 F.3d 1368, 1372 (Fed. Cir. 2018);
 Rocky Mountain Helium, LLC v. United States, 841
 F.3d 1320, 1325 (Fed. Cir. 2018); Macy v. GC Servs. Ltd.
 Pshp., 897 F.3d 747, 759 (6th Cir. 2018); Judicial Watch,
 Inc. v. Kerry, 844 F.3d 952, 954–55 (D.C. Cir. 2016). Here,
 if Uniloc is right in its argument about the PTAB’s statu-
 tory authority—that the PTAB has authority to entertain
 the substitute claims even once the original claims are fi-
 nally invalidated and that the PTAB lacks authority to con-
 sider § 101 before issuing the substitute claims—or if
 Uniloc has waived its first argument, then the Director
 (who agrees with Uniloc on that argument and has not ad-
 dressed waiver) would issue the substitute claims, giving
 Uniloc concrete relief.
      We need not decide if there is some exception to the or-
 dinary application of waiver principles here. In any event,
 we reject on the merits Hulu’s arguments that the PTAB
 lacked statutory authority to reach the Substitute Claims
 and the USPTO lacks statutory authority eventually to add
 those claims to the patent if we were to agree with Uniloc
 that § 101 eligibility is an impermissible ground for reject-
 ing substitute claims in an IPR. Hulu cites no authority
 for treating the contingent motion—as the USPTO treated
 it and as Hulu treated it until responding to this court’s
 directive to address mootness—as anything but a standard
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 form of in-the-alternative pleading, in which the second al-
 ternative, contingent on rejecting the first, is part of the
 proceeding and may be reached in the same decision as the
 first. As far as we have been shown, it would be unprece-
 dented, and contrary to the established practice of consid-
 ering contingent motions to amend, to treat the
 contingency (finding original claims unpatentable) as end-
 ing the IPR so that the proposed substitute claims could no
 longer be considered. Nothing in 35 U.S.C. § 316(d), or in
 other provisions of the statute, requires such a dramatic
 restriction on the availability of amendments in an IPR.
 Nor does the wording of Uniloc’s particular motion to
 amend—requesting consideration of the Substitute Claims
 if the PTAB “finds” specified original claims unpatentable,
 J.A. 313—require such a surprising conclusion.
      Similarly, Hulu has pointed to no statutory language
 that provides a basis for concluding that, once original
 claims no longer present a live dispute, the PTAB and the
 USPTO lose authority to consider proposed substitute
 claims that were presented in a contingent motion timely
 filed during the IPR when the original claims did present a
 live dispute. The USPTO treats such a request to consider
 proposed substitute claims as having an independent con-
 tinuing presence in the proceeding, not dependent on a live
 controversy continuing as to the original claims. That
 treatment is reasonable. Hulu points to no contrary au-
 thority. Indeed, the USPTO’s treatment is consistent with
 § 316(d)’s express contemplation that a patent owner may
 drop original claims and seek to replace them with substi-
 tute claims. It is consistent with the Manual of Patent Ex-
 amining Procedure’s description of the operation of ex
 parte reexamination, which has long allowed consideration
 of added claims to continue once original claims in reexam-
 ination have been held invalid in a final federal-court judg-
 ment. MPEP § 2286. Moreover, when Congress replaced
 the inter partes reexamination provisions with the IPR
 provisions in the AIA, Congress did not carry forward pre-
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 14                              UNILOC 2017 LLC   v. HULU, LLC



 AIA § 317(b), concerning the termination of an inter partes
 reexamination based on parallel judicial proceedings.
     In reaching a contrary conclusion, the dissent relies on
 the word “substitute” in § 316(d), reasoning that there can-
 not be a substitute claim once the original claims have been
 finally been held invalid or cancelled. We disagree. The
 word “substitute” does not entail, as the dissent suggests it
 does, that the patentee must give what amounts to consid-
 eration—something of value—to obtain a replacement
 claim. Such a requirement is not necessitated by the ordi-
 nary meaning of “substitute” or by the use of the word in
 the IPR context, to which a notion of a bargain or exchange
 with the USPTO is foreign. The proposed replacement
 claims are “substitutes” no matter the value or continued
 existence of the original claims, as a replacement party is
 a “substitute” upon death of an original party. See Fed. R.
 Civ. P. 25(a); Fed. R. App. P. 43(a).
     In short, we see no mootness impediment to our juris-
 diction to consider Uniloc’s statutory contention about
 PTAB authority to consider § 101 eligibility for proposed
 substitute claims. As explained next, we conclude that the
 PTAB was authorized by statute to assess Uniloc’s pro-
 posed Substitute Claims for eligibility under § 101 and,
 finding the claims ineligible, to deny the motion to amend.
   III. The Text, Structure, and Legislative History of the
   IPR Statutes Confirm that the PTAB May Review Pro-
        posed Substitute Claims for Patent Eligibility
     The PTAB denied Uniloc’s Motion to Amend the ’960
 patent, concluding that the Substitute Claims were di-
 rected to patent-ineligible subject matter under 35 U.S.C.
 § 101. See Final Written Decision, 2018 WL 3695200,
 at *30. The PTAB concluded that, under the IPR Statutes,
 it is permitted to review and deny proposed substitute
 claims during IPR proceedings for patent ineligibility pur-
 suant to § 101. See Rehearing Denial, 2019 WL 343802,
 at *5. Uniloc contends that “[t]he [PTAB] erred as a matter
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 UNILOC 2017 LLC   v. HULU, LLC                              15



 of law” by basing its denial of the Motion to Amend on its
 § 101 determination. Appellant’s Br. 13. Specifically,
 Uniloc argues that the PTAB is limited in its review of pro-
 posed substitute claims to anticipation or obviousness, as
 provided by § 311(b). Id. at 14. We disagree with Uniloc.
     The PTAB correctly concluded that it is not limited by
 § 311(b) in its review of proposed substitute claims in an
 IPR, and that it may consider § 101 eligibility. The deter-
 mination is supported by the text, structure, and history of
 the IPR Statutes, which indicate Congress’s unambiguous
 intent to permit the PTAB to review proposed substitute
 claims more broadly than those bases provided in § 311(b).
 See Chevron, 467 U.S. at 842. First, the text of the IPR
 Statutes supports the conclusion that the PTAB may con-
 sider § 101 eligibility when reviewing substitute claims.
 The IPR Statutes plainly and repeatedly require the PTAB
 to determine the “patentability” of proposed substitute
 claims. Section 318 requires the PTAB “issue a final writ-
 ten decision with respect to the patentability of . . . any new
 claim added under [§] 316(d).” 35 U.S.C. § 318(a) (empha-
 sis added). It further provides that “the Director shall is-
 sue and publish a certificate . . . incorporating in the patent
 by operation of the certificate any new or amended claim
 determined to be patentable.” Id. § 318(b) (emphasis
 added). Moreover, it states that “[a]ny proposed amended
 or new claim determined to be patentable and incorporated
 into a patent following an [IPR]” will “have the same effect
 as” if it had been originally granted. Id. § 318(c) (emphasis
 added) (incorporating by reference 35 U.S.C. § 252). As we
 have concluded, a § 101 analysis constitutes a “patentabil-
 ity” determination. See Versata Dev. Grp., Inc. v. SAP Am.,
 Inc., 793 F.3d 1306, 1329–31 (Fed. Cir. 2015) (explaining
 that the use of the phrase “conditions of patentability” in
 the AIA extends to § 101 challenges); see also id. at 1330
 (“[B]oth our opinions and the Supreme Court’s opinions
 over the years have established that § 101 challenges
 [are] . . . patentability challenges.”); Aristocrat Techs.
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 16                               UNILOC 2017 LLC   v. HULU, LLC



 Austl. Ltd. v. Int’l Game Tech., 543 F.3d 657, 661 (Fed.
 Cir. 2008) (“It has long been understood that the Patent
 Act sets out the conditions for patentability in three sec-
 tions: [§§] 101, 102, and 103.” (citing Graham v. John
 Deere, 383 U.S. 1, 12 (1966))). The plain language of the
 IPR Statutes demonstrates Congress’s intent for the PTAB
 to review proposed substitute claims for overall “patenta-
 bility”—including under § 101—of the claims.
     Despite Uniloc’s claim to the contrary, see Appellant’s
 Br. 14, Congress did not intend § 311 to constrain the
 PTAB’s review of proposed substitute claims to anticipa-
 tion and obviousness, pursuant to § 102 and § 103, respec-
 tively, excluding other invalidity issues, such as those that
 might arise under § 101. Section 311 is confined to the re-
 view of existing patent claims, not proposed ones: it limits
 “[a] request to cancel as unpatentable [one] or more claims
 of a patent” to a “ground that could be raised under [§] 102
 or [§] 103[.]” 35 U.S.C. § 311(b) (emphases added). The
 plain language of the statute limits the provision to the IPR
 petitioner’s “request to cancel” a claim that is “of a patent,”
 but it does not so limit the PTAB’s evaluation of proposed
 substitute claims. Id. To “cancel” carries the ordinary
 meaning to “annul or destroy[,]” Mac’s Shell Serv., Inc. v.
 Shell Oil Prods. Co., 559 U.S. 175, 183 (2010) (internal quo-
 tation marks and citation omitted); see WEBSTER’S THIRD
 NEW INTERNATIONAL DICTIONARY (1961) (providing the def-
 inition of “cancel” as the “destr[uction] [of] the force, effec-
 tiveness, or validity”), which presupposes that which is
 being “cancelled” is already in effect. In § 311(b), the infin-
 itive “to cancel” is followed by its direct object, the phrase
 “[one] or more claims[.]” 35 U.S.C. § 311(b); see id. (“A pe-
 titioner in an [IPR] may request to cancel . . . [one] or more
 claims[.]”). When given its ordinary meaning, § 311(b) pro-
 vides that only claims that are in effect may be annulled.
 In an IPR, only the preexisting claims of the at-issue patent
 are in effect, as an IPR petition may only be brought of an
 already issued patent. See id. § 311(a) (“[A] person who is
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 UNILOC 2017 LLC   v. HULU, LLC                              17



 not the owner of a patent may file with the [USPTO] a pe-
 tition to institute an [IPR] of the patent.”). In the case of a
 substitute claim, there is no such prior “force, effectiveness,
 or validity,” as the substitute claim has never been ap-
 proved or issued by the USPTO. See id. § 318(a), (b). Re-
 latedly, a substitute claim is not part “of the patent,” as it
 has not been previously approved and issued by the
 USPTO, as § 318 itself expresses that a substitute claim
 shall be “incorporat[ed] in the patent” only after it is “de-
 termined to be patentable.” 35 U.S.C. § 318(b). Therefore,
 a substitute claim that has not been issued cannot be “can-
 cel[ed],” and so is not “of the patent” when proposed by the
 patent owner. Id. Accordingly, the limits of § 311(b) do not
 extend to the PTAB’s review of proposed substitute claims.
     Second, the structure and legislative history of the IPR
 Statutes support this conclusion. Regarding structure, the
 IPR Statutes proceed in chronological order from the IPR
 petition, to institution, and adjudication: §§ 311–313 pro-
 vide the rules for filing a petition, § 314 and § 315 address
 criteria for institution, § 316 guides trial conduct, and
 §§ 317–319 relate to settlements, final written decisions,
 and appeals. Section 311, as a provision applying to the
 petition phase of the proceedings, should not therefore bind
 a separate adjudication-stage provision, such as § 316.
     The IPR Statutes’ legislative history also confirms that
 the PTAB is permitted to review proposed substitute
 claims for patentability outside of anticipation and obvi-
 ousness. “Reexamination proceedings . . . are intended to
 ‘permit any party to petition the [US]PTO to review the ef-
 ficacy of a patent, following its issuance, on the basis of new
 information about preexisting technology that may have
 escaped review at the time of the initial examination.’” In
 re NTP, Inc., 654 F.3d 1268, 1275 (Fed. Cir. 2011) (altera-
 tion omitted) (quoting H.R. REP. No. 66-1307, 96th
 Cong., 2d Sess. (1980), at 3–4). As we explained in NTP,
 “[t]he scope of reexamination proceedings is limited to ‘sub-
 stantial new question[s] of patentability,’ 35 U.S.C.
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 18                              UNILOC 2017 LLC   v. HULU, LLC



 § 303(a) [(2006)], which are questions that have not previ-
 ously been considered by the [US]PTO,” NTP, 654 F.3d
 at 1275 (citation omitted). While we noted that the request
 for reexamination under § 302 may be based only on prior
 art citations and the patent owner’s written statements, id.
 (citing 35 U.S.C. §§ 301, 302), we cabined the scope of these
 limitations to the patent’s “original claims,” stating that
 “other challenges to the patentability of original claims—
 such as qualification as patentable subject matter under
 § 101 . . . —may not be raised in reexamination proceed-
 ings[,]” id. at 1275–76 (citing 35 U.S.C. §§ 301, 302) (em-
 phasis added). Moreover, we concluded that “[t]here is no
 statutory limitation during a reexamination proceeding
 prohibiting the examiner from conducting a priority analy-
 sis[,]” under 35 U.S.C. § 120, as a prohibition on such anal-
 ysis would “strip[] [the examiner] of a critical legal tool
 needed in performing a proper reexamination.” Id. at 1277.
 As we explained in NTP, it was Congress’s intent to permit
 the PTAB to address issues that “have escaped review at
 the time of the initial examination.” Id. at 1275 (quoting
 H.R. REP. No. 66-1307, 96th Cong., 2d Sess. (1980), at 3–4).
     Proposed substitute claims in an IPR proceeding have
 not undergone a patentability review by the USPTO, see 35
 U.S.C. § 316, and so the “substantial new questions of pa-
 tentability” that “have not previously been considered by
 the [US]PTO” include all patentability questions, including
 § 101 patent eligibility, NTP, 654 F.3d at 1275 (internal
 quotation marks, alteration, and citations omitted). Pro-
 hibiting the PTAB from reviewing patent eligibility would
 indeed “strip[] [the PTAB] of a critical legal tool[.]” Id.
 at 1277. While NTP addressed pre-AIA reexamination pro-
 ceedings, its reasoning is applicable here, as the underlying
 motivation for an IPR proceeding did not change with the
 AIA.      Regents, 926 F.3d at 1335 (explaining that
 “[a]lthough Congress changed the name from ‘reexamina-
 tion’ to ‘review,’” the “basic purposes” of “reexamin[ing] an
 earlier agency decision” remained); see H.R. REP. 112-98,
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 UNILOC 2017 LLC   v. HULU, LLC                              19



 pt. I, at 46–47 (2011) (explaining that the AIA’s alterations
 to the inter partes reexamination includes an “expan[sion]
 [of] the category of documents that may be cited” to, a “con-
 ver[sion] [of the] inter partes reexamination from an exam-
 inational to an adjudicative proceeding,” and a number of
 “improvements to th[e] proceeding”); USPTO REPORT TO
 CONGRESS ON INTER PARTES REEXAMINATION (2004), at 1
 (recommending three areas of improvement to the inter
 partes reexamination process by: clarifying estoppel provi-
 sions, providing petitioners with additional opportunities
 to provide input, and extending statutory deadlines).
 Moreover, § 311 is premised on the pre-AIA reexamination
 statute, providing analogous language and a comparable
 procedural position to the pre-AIA reexamination statute.
 Compare 35 U.S.C. § 311 (2012) (providing that a petitioner
 “may file with the [USPTO] a petition to institute an [IPR]
 of the patent[,]” “request[ing] to cancel as unpatentable
 [one] or more claims of a patent only on a ground that could
 be raised under [§] 102 or [§] 103 and only on the basis of
 prior art consisting of patents or printed publications”),
 with 35 U.S.C. § 302 (2006) (“Any person at any time may
 file a request for reexamination by the [USPTO] of any
 claim of a patent on the basis of any prior art cited under
 the provisions of [§] 301[.]”); see id. § 301 (2006) (providing
 prior art as “consisting of patents or printed publications
 which [the petitioner] believes to have a bearing on the pa-
 tentability of any claim of a particular patent”).
     As the USPTO explains, “if a patent owner seeking
 amendments in an IPR were not bound by § 101 and § 112,
 then in virtually any case, it could overcome prior art and
 obtain new claims simply by going outside the boundaries
 of patent eligibility and the invention described in the spec-
 ification[,]” Intervenor Br. 25, allowing patents with other-
 wise invalidated claims “to return from the dead as IPR
 amendments[,]” id. at 26. Because the proposed substitute
 claims have not been assessed for patentability by the
 USPTO, the PTAB achieves the purpose set forth by
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 20                               UNILOC 2017 LLC   v. HULU, LLC



 Congress to review “substantial new questions of patenta-
 bility” based on claims “that have not previously been con-
 sidered by the [US]PTO.” NTP, 654 F.3d at 1275 (internal
 quotation marks, alteration, and citations omitted). In-
 deed, Uniloc has not identified any other context under Ti-
 tle 35—e.g., original applications, reexaminations, reissue,
 etc.—in which the USPTO is required or authorized to
 newly issue a patent claim without ever having determined
 that the particular claim meets the statutory requirements
 for patentability. The result suggested by Uniloc—that the
 USPTO must issue the Substitute Claims without consid-
 ering § 101, and leave consideration of eligibility to post-
 issuance challenges—would therefore be grossly out of
 keeping with the statutory regime as a whole. The PTAB
 correctly concluded that it may consider § 101 patent eligi-
 bility when considering the patentability of proposed sub-
 stitute claims in an IPR. 5
     Uniloc contends that our decision in Aqua Products
 Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc), fore-
 closes the review of its Substitute Claims under § 101, see
 Appellant’s Br. 19–21. Specifically, Uniloc, in quoting the
 Aqua Products plurality, argues that because “[t]he struc-
 ture of an IPR does not allow the patent owner to inject a
 wholly new proposition of unpatentability into the IPR by
 proposing an amended claim[,]” and as a substitute claim
 must be narrower than the claim it replaces, “[w]hen the



      5   As the text, structure, and history of the IPR Stat-
 utes are unambiguous, we need not reach the issue of def-
 erence to the USPTO’s interpretation of the statute set
 forth in its precedential decision. See Nan Ya Plastics
 Corp., 810 F.3d at 1341 (“If Congress’s intent is clear, ‘that
 is the end of the matter; for the court, as well as the agency,
 must give effect to the unambiguously expressed intent of
 Congress.’” (quoting Chevron, 467 U.S. at 842–43)); see also
 Rehearing Denial, 2019 WL 343802, at *5.
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 UNILOC 2017 LLC   v. HULU, LLC                           21



 petitioner disputes whether a proposed amended claim is
 patentable, it simply continues to advance a ‘proposition of
 unpatentability’ in an ‘[IPR] instituted under this chap-
 ter.’” Id. at 19 (quoting Aqua Prods., 872 F.3d at 1306
 (quoting 35 U.S.C. § 316(e))). No opinion in Aqua Products
 garnered a majority, leaving the only holding as a burden
 of proof determination, concluding that the USPTO had im-
 properly adopted regulations assigning the burden of proof
 with respect to proposed substitute claims. 872 F.3d
 at 1327–28. The Aqua Products language Uniloc relies
 upon addresses only whether a petitioner challenging the
 proposed substitute claims bears § 316(e)’s burden of proof.
 Appellant’s Br. 19–21; see Aqua Prods., 872 F.3d at 1306
 (addressing whether the language of § 316(e), which all
 conceded applied to challenged claims, “applies equally to
 proposed substitute claims”). Aqua Products is silent as to
 whether a petition may raise a patent-ineligibility chal-
 lenge to a proposed substitute claim. Accordingly, Aqua
 Products does not foreclose the PTAB’s § 101 review of
 Uniloc’s Substitute Claims and subsequent denial of
 Uniloc’s Motion to Amend.
                          CONCLUSION
     We have considered Uniloc’s remaining arguments—
 including its argument that it should be given a second
 chance to address § 101 on the merits in the USPTO, hav-
 ing bypassed the full opportunity it already had—and find
 them unpersuasive. Accordingly, the Rehearing Denial of
 the U.S. Patent Trial and Appeal Board is
                         AFFIRMED
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    United States Court of Appeals
        for the Federal Circuit
                   ______________________

                    UNILOC 2017 LLC,
                        Appellant

                              v.

                HULU, LLC, NETFLIX, INC.,
                        Appellees

      ANDREI IANCU, UNDER SECRETARY OF
    COMMERCE FOR INTELLECTUAL PROPERTY
     AND DIRECTOR OF THE UNITED STATES
       PATENT AND TRADEMARK OFFICE,
                    Intervenor
              ______________________

                         2019-1686
                   ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2017-
 00948.
                  ______________________

 O’MALLEY, Circuit Judge, dissenting.
     Typically, when this court has finally adjudged a pa-
 tent claim invalid, it also refuses to consider any appeal
 that demands relief dependent on that claim and vacates
 any such relief that has been awarded by another tribunal.
 See e.g., ePlus, Inc. v. Lawson Software, Inc., 789 F.3d 1349,
 1361 (Fed. Cir. 2015); Fresenius USA, Inc. v. Baxter Int’l,
 Inc., 721 F.3d 1330, 1347 (Fed. Cir. 2013); see also Chrimar
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 2                                  UNILOC 2017 LLC   v. HULU, LLC



 Sys., Inc. v. ALE USA Inc., 785 F. App’x 854, 856 (Fed. Cir.
 2019), cert. denied, No. 19-1124, 2020 WL 3492668 (U.S.
 June 29, 2020). Here, rather than follow that usual proce-
 dure, the majority breathes life into a dead patent and uses
 the zombie it has created as a means to dramatically ex-
 pand the scope of inter partes review (“IPR”) proceedings.
 Because the Patent Trial and Appeal Board (“Board”) is es-
 topped from issuing substitute claims in place of the inval-
 idated claims of U.S. Patent No. 8,566,960 (“’960 patent”)
 and because, even if the Board could issue such claims, it
 would be improper for it to consider 35 U.S.C. § 101, I re-
 spectfully dissent.
                                I
      In 2016, Uniloc 1 filed several lawsuits in the Eastern
 District of Texas, alleging that Hulu, LLC and Netflix, Inc.
 (“petitioners”), among others, infringed the claims of the
 ’960 patent. See Uniloc USA, Inc. v. Amazon.com, Inc., 243
 F. Supp. 3d 797 (E.D. Tex. 2017). In March 2017, the dis-
 trict court dismissed the cases for failure to state a claim
 under Federal Rule of Civil Procedure 12(b)(6), holding all
 claims of the ’960 patent ineligible for patenting under
 § 101. Id. at 811. Uniloc appealed, and, on August 9, 2018,
 we summarily affirmed the district court’s decision. See
 Uniloc USA, Inc. v. Amazon.com, Inc., 733 F. App’x 1026
 (Fed. Cir. 2018). Uniloc did not seek Supreme Court re-
 view.




     1    The “Uniloc” entities that filed suit in district court
 are named Uniloc USA, Inc. and Uniloc Luxembourg S.A.
 Appellant in this case is Uniloc 2017 LLC. The technical
 separateness of those entities’ corporate identities is not
 relevant to this appeal; there is no dispute that the real
 parties in interest are the same in both proceedings. I thus
 refer to all as “Uniloc” throughout.
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 UNILOC 2017 LLC   v. HULU, LLC                              3



      Prior to the district court’s dismissal of Uniloc’s in-
 fringement actions, petitioners filed a petition for IPR with
 the Board, challenging all claims of the ’960 patent as an-
 ticipated or obvious over the prior art. The Board insti-
 tuted on all claims and grounds. Uniloc filed a patent
 owner response and a contingent motion to amend the in-
 dependent claims. The Board issued a final written deci-
 sion (“FWD”) on August 1, 2018. It held that petitioners
 had proven the unpatentability of original claims 1–8, 18–
 22, and 25, but had not proven the unpatentability of orig-
 inal claims 9–17, 23, and 24. The Board further denied
 Uniloc’s motion to amend, holding that those claims, while
 not otherwise unpatentable over the prior art and other-
 wise satisfying the statutory and regulatory prerequisites
 to amendment, were patent ineligible.
     In its FWD, the Board stated that it had previously ad-
 dressed § 101 grounds in the IPR context, citing Western
 Digital Corp. v. Spex Technologies, Inc., 2018 WL 1989599,
 at *2–3 (P.T.A.B. Apr. 25, 2018); Ariosa Diagnostics v. Isis
 Innovation Ltd., 2014 WL 4381564, at *31–32 (P.T.A.B.
 Sept. 2, 2014). J.A. 58–59. It then said that, in its view, it
 made sense to do so when evaluating proposed substitute
 claims, in addition to addressing the §§ 102 and 103
 grounds raised in the petition. 2



     2    The Board’s reference to Western Digital and Ari-
 osa is curious. In Western Digital, the Board addressed
 whether a narrowing amendment that coincidentally ap-
 pears to correct a potential § 101 problem in a challenged
 claim (for example, a problem identified in a parallel dis-
 trict court proceeding) would be improper. W. Dig. Corp.,
 2018 WL 1989599, at *2–3. The Board simply held that,
 where the amendment satisfies the statutory and regula-
 tory criteria for amendments in an IPR, the mere fact that
 it might also help avoid a separate § 101 challenge is not
 disqualifying. Id. It said nothing about whether a
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 4                               UNILOC 2017 LLC   v. HULU, LLC



     Uniloc requested rehearing as to only the proposed
 amended claims, which the Board denied on January 18,
 2019. In its denial, the Board engaged directly with the
 statutory language. It focused first on the language of 35
 U.S.C. § 311(b):
     A petitioner in an inter partes review may request
     to cancel as unpatentable 1 or more claims of a pa-
     tent only on a ground that could be raised under
     section 102 or 103 and only on the basis of prior art
     consisting of patents or printed publications.
 The Board explained that § 311(b) governs the petition, not
 the petitioner’s response to a patent owner’s motion to
 amend. Section 316(d), the statutory provision allowing for
 amendment, it reasoned, is not limited to §§ 102 and 103.
 In the Board’s view, the distinction between the grounds
 for challenging original claims and substitute claims is fur-
 ther reinforced by the treatment of the claims in § 318. J.A.


 petitioner or the Board itself could raise a § 101 challenge
 to an otherwise compliant amendment.
      The citation to Ariosa fares no better. There, the
 Board’s entire discussion was premised on the conclusion
 that the patent owner had the obligation to prove patenta-
 bility of its amendment—answering any questions about
 its propriety in that context, including § 101 questions
 posed in a district court proceeding. See Ariosa Diagnos-
 tics, 2014 WL 4381564, at *31–32. But, Ariosa predates
 Aqua Products v. Matal, 872 F.3d 1290 (Fed. Cir. 2017),
 where we made clear that the burden to prove patentability
 of a proposed amendment could not be placed on the patent
 owner precisely because the petitioner had the burden of
 establishing invalidity under the grounds asserted in the
 petition, which are limited by statute to challenges under
 §§ 102 and 103.
      Notably, the majority does not cite either to support its
 conclusion.
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 UNILOC 2017 LLC   v. HULU, LLC                                5



 77 (“Section 318(b) . . . reiterates this distinction, providing
 that, if we issue a final written decision, ‘the Director shall
 issue and publish a certificate canceling any claim of the
 patent finally determined to be unpatentable, confirming
 any claim of the patent determined to be patentable, and in-
 corporating in the patent by operation of the certificate any
 new or amended claim determined to be patentable.’”) (em-
 phases in original).
     The Board further reasoned that its ability to consider
 § 101 is consistent with its practice of considering § 112
 when deciding proposed amended claims. The Board thus
 concluded that nothing precludes it from evaluating substi-
 tute claims through the §101 lens and declined rehearing.
 The Board’s denial of Uniloc’s request for rehearing was
 designated as precedential.
     Uniloc appeals.
                                  II
      As an initial matter, contrary to the conclusion reached
 by the majority, this case is moot. “[A]n appeal should . . .
 be dismissed as moot when, by virtue of an intervening
 event, a court of appeals cannot grant any effectual relief
 whatever in favor of the appellant.” Calderon v. Moore, 518
 U.S. 149, 150 (1996) (quotation marks omitted). The ma-
 jority asserts that, in the event Uniloc is successful on the
 merits, there is some possibility of relief. Maj. 11. My col-
 leagues are mistaken.
      In this case, relief is possible only if, in the event of a
 remand, the Board has authority to issue substitute claims.
 See 35 U.S.C. § 316(d)(1)(B) (allowing a patentee to “pro-
 pose a reasonable number of substitute claims”); § 318(a)–
 (b) (governing the incorporation of claims added via the op-
 eration of § 316(d)); 37 C.F.R. § 42.121(a)(3) (“The pre-
 sumption is that only one substitute claim would be needed
 to replace each challenged claim . . . .” (emphasis added)) .
 Completing such a substitution requires that there be
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 6                               UNILOC 2017 LLC   v. HULU, LLC



 original claims to substitute out for the new claims—i.e., in
 the words of the Patent Office itself, the patentee must “re-
 place” a challenged claim with a substitute. 3 See Substi-
 tute, Oxford English Dictionary (3d ed., 2012 update) (“An
 object, practice, action, etc., which takes the place of an-
 other; a replacement”); Substitution, Oxford English Dic-
 tionary (3d ed., 2012 update) (“The action or an act of
 putting one person or thing in place of another; the fact of
 being put in another’s place.”). In the context of an IPR,
 this means that, in exchange for a substitute claim, a pa-
 tent owner must be capable of relinquishing a patent right.
 This is a necessary part of the statutory scheme, moreover,
 as it ensures that the claims issued from IPR, having not


     3    The majority contends that its understanding of
 the statutory scheme on this point is consistent with the
 United States Patent Office’s treatment of similarly situ-
 ated claims in inter partes reexamination proceedings.
 Maj. 13 (citing MPEP § 2286). Inter partes reexamination
 proceedings are, however, governed by entirely different
 statutory language than the language relevant here. In an
 inter partes reexamination, “the patent owner shall be per-
 mitted to propose any amendment to the patent and a new
 claim or claims, except that no proposed amended or new
 claim enlarging the scope of the claims of the patent shall
 be permitted.” 35 U.S.C. § 314(a) (pre-AIA). In the IPR
 context the Board is not merely considering “new” claims,
 it    is   considering     proposed     “substitute   claims.”
 § 316(d)(1)(B). A substitute is of an entirely different char-
 acter than something new. The Board itself has said that,
 for this reason, “[a]n inter partes review is neither a patent
 examination proceeding nor a patent reexamination pro-
 ceeding.” Ariosa Diagnostics, 2014 WL 4381564, at *30.
 And, that “proposed substitute claims will be added di-
 rectly to the patent, without examination, if the patent
 owner’s motion to amend is granted.” Id. (emphasis omit-
 ted).
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 UNILOC 2017 LLC   v. HULU, LLC                              7



 themselves undergone a separate examination, share a di-
 rect lineage from claims that were not otherwise invali-
 dated on non-102 and 103 grounds.
     After our affirmance of the district court’s ineligibility
 determination, and once the time expired for Uniloc to seek
 Supreme Court review of that affirmance, it did not possess
 any patent rights that it could give up in exchange for a
 substitute claim. It owned nothing and could not, there-
 fore, substitute its old claims for new ones. 4 If Uniloc were
 to prevail in this appeal and return to the Board, the Board
 would be without power to effectuate a substitution. The
 finality of our invalidity judgment should therefore be the
 end of the inquiry in this case. See Fresenius, 721 F.3d at
 1344 (explaining that, based on the structure of the stat-
 utes governing IPRs, a final judgment of invalidity in one
 proceeding forecloses relief based on a patent claim in a
 parallel proceeding).
     Despite a final judgment of invalidity of all original
 claims of the ’960 patent, the majority declares, without ex-
 planation, that the Board could grant Uniloc the relief it
 requests and proceeds to focus its entire analysis on the
 contingent nature of Uniloc’s motion to amend. Maj. 10–
 14. Although I agree with the majority that the contingent
 nature of the motion to amend is unimportant, I do not
 agree with the majority that Appellees somehow waived
 any argument that this matter is moot by not raising this




     4    To analogize to ownership of real property, if a
 court finally determines that a deed to property is defective
 such that the property belongs to someone else, the former
 “owner” cannot “substitute” that property for a new par-
 cel—even if the owner is in the middle of closing a sale. The
 former “owner” has nothing to give up and, indeed, never
 had anything to bargain with in the first place.
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 8                                UNILOC 2017 LLC   v. HULU, LLC



 issue prior to our invitation to address it. 5 Because moot-
 ness implicates Article III’s case or controversy require-
 ment—a threshold jurisdictional issue—a party cannot
 waive it. See Genesis Healthcare Corp. v. Symczyk, 569
 U.S. 66, 71–72 (2013); Iron Arrow Honor Soc’y v. Heckler,
 464 U.S. 67, 70 (1983). It is, moreover, well established
 that threshold jurisdictional questions can be raised at any
 time. Schering Corp. v. United States, 626 F.2d 162, 167
 (C.C.P.A. 1980). And we have a duty to independently


     5    The majority contends, “[a] question of an agency’s
 statutory authorization ordinarily is not a nonwaivable ‘ju-
 risdictional’ issue.” Maj. 11. The issue of our jurisdiction
 is distinct from a challenge to the agency’s authority.
 While, for example, a party may waive an argument that
 an agency did not have authority to institute on only some
 grounds raised in a petition, see PGS Geophysical AS v.
 Iancu, 891 F.3d 1354, 1361–62 (Fed. Cir. 2018), or an argu-
 ment that a petition was untimely filed, see Acoustic Tech.,
 Inc. v. Itron Networked Sols., Inc., 949 F.3d 1360, 1365
 (Fed. Cir. 2020), it cannot waive an argument that we lack
 jurisdiction based on mootness resulting from a proper un-
 derstanding of what relief, if any, the Board could provide
 in the event of a remand.
     The majority further asserts, “in assessing whether
 there is an Article III case or controversy, a court ordinarily
 assumes the correctness of the plaintiff’s contentions on the
 merits.” Maj. 12. Three of the cases cited by the majority
 address standing, not mootness. See James v. J2 Cloud
 Servs., LLC, 887 F.3d 1368, 1372 (Fed. Cir. 2018); Rocky
 Mountain Helium, LLC v. United States, 841 F.3d 1320,
 1325 (Fed. Cir. 2018); Macy v. GC Servs. Ltd, 897 F.3d 747,
 759 (6th Cir. 2018). None stand for the proposition that we
 must assume that a plaintiff is correct in its interpretation
 of a statute. See, e.g., Judicial Watch, Inc. v. Kerry, 844
 F.3d 952, 954–55 (D.C. Cir. 2016) (discussing factual alle-
 gations).
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 inquire into our jurisdiction, even absent a party raising
 the issue. Yarway Corp. v. Eur-Control USA, Inc., 775 F.2d
 268, 273 (Fed. Cir. 1985). The majority’s focus on Appel-
 lees’ failure to raise their mootness arguments earlier is,
 therefore, misplaced.
     The majority further places a great deal of weight on
 whether the Board has authority to issue substitute claims
 in an ongoing IPR after it holds the original claims invalid.
 This misses the point. The issue before us is not the extent
 to which the Board can consider a contingent motion to
 amend, in an ongoing, non-final IPR. Rather, the question
 we must answer is whether the Board can consider a re-
 quest to substitute claims where, in a parallel proceeding
 with a final judgment, the original claims have been held
 invalid. As I explain above, the final judgment forecloses
 consideration of the merits of this appeal and should be
 given proper effect. 6



     6    It is also worth noting that the majority’s determi-
 nation that this IPR can continue, after a final judgment of
 invalidity in the district court case, is inconsistent with re-
 cent policy statements adopted by the Board. In a prece-
 dential opinion, the Board announced six factors to
 consider when deciding whether it should exercise its dis-
 cretion to institute an IPR when a parallel district court
 case is ongoing:
     1. whether the court granted a stay or evidence ex-
     ists that one may be granted if a proceeding is in-
     stituted;
     2. proximity of the court’s trial date to the Board’s
     projected statutory deadline for a final written de-
     cision;
     3. investment in the parallel proceeding by the
     court and the parties;
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                               III
     After concluding that an invalid patent can serve as a
 vehicle to reach the merits of this appeal, the majority an-
 nounces that, when it comes to substitute claims, the Board
 can engage in a full-blown examination. This revelation
 runs contrary to the plain language of the statute and the
 policy of efficiency that underlies the IPR system.
                               A
     The America Invents Act (“AIA”) IPR provisions estab-
 lish a clear and intuitive structure for efficiently processing
 claims challenged by a petitioner. 35 U.S.C. §§ 311–319.
 Section 311(b) establishes the “scope” of inter partes re-
 view. A petitioner “may request to cancel as unpatentable
 1 or more claims of a patent only on a ground that could be
 raised under section 102 or 103 and only on the basis of
 prior art consisting of patents or printed publications.”
 § 311(b).




      4. overlap between issues raised in the petition and
      in the parallel proceeding;
      5. whether the petitioner and the defendant in the
      parallel proceeding are the same party; and
      6. other circumstances that impact the Board’s ex-
      ercise of discretion, including the merits.
 Apple Inc., v. Fintiv, Inc., No. IPR2020-00019, 2020 WL
 2126495, at *2 (P.T.A.B. Mar. 20, 2020). These discretion-
 ary factors strongly indicate that the Board views parallel
 district court cases as highly relevant to the continued rel-
 evance of an IPR proceeding. Where, as here, the district
 court proceeding has eliminated all the claims subject to
 the IPR, the Board’s own policy supports declaring that
 IPR over.
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      After institution, § 316, titled “Conduct of Inter Partes
 Review,” controls the proceeding and includes a subsection
 that allows a patentee to amend its patent by either
 (1) canceling any challenged claim or (2) proposing a rea-
 sonable number of substitute claims for any challenged
 claim. § 316(d)(1). The substitute claims “may not enlarge
 the scope of the claims of the patent or introduce new mat-
 ter.” § 316(d)(3). The governing regulations, implementing
 the limitations set out in § 316(d)(3), provide that the
 Board may deny a motion to amend if the amendment does
 not satisfy the statutory requirements—i.e., if it expands
 the claim scope, introduces new matter, or if it “does not
 respond to a ground of unpatentability involved in the
 trial.” 37 C.F.R. § 42.121(a)(2); see also Aqua Prod., Inc. v.
 Matal, 872 F.3d 1290, 1301 (Fed. Cir. 2017).
     Governing the end of IPR proceedings, § 318 is titled
 “Decision of the Board.” It provides, “[i]f an inter partes
 review is instituted and not dismissed under this chapter,
 the [Board] shall issue a final written decision with respect
 to the patentability of any patent claim challenged by the
 petitioner and any new claim added under section 316(d).”
 § 318(a) (emphasis added). It also requires the Director to
 issue a certificate in accordance with the decision, once the
 decision is final. § 318(b).
     The majority focuses narrowly on the literal text of the
 three provisions discussed above and fails entirely to con-
 tend with the clear framework of the IPR provisions. Plain
 language interpretation requires more than cherry picking
 provisions out of context. We “must read the words ‘in their
 context and with a view to their place in the overall statu-
 tory scheme.’” King v. Burwell, 135 S. Ct. 2480, 2483, 192
 L. Ed. 2d 483 (2015) (quoting FDA v. Brown & Williamson
 Tobacco Corp., 529 U.S. 120, 133 (2000)).
    The majority starts with the text of § 318 and so will I.
 The majority contends that the term “patentability” should
 be understood as having two distinct meanings in the
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 12                               UNILOC 2017 LLC   v. HULU, LLC



 context of § 318. Maj. 14–16. That is, the majority takes
 the position that “patentability,” which appears only once
 in the relevant provision, means one thing as to “any pa-
 tent claim challenged by the petitioner” and something en-
 tirely different as to “any new claim added under section
 316(d).” See § 318(b). Understanding a single word to con-
 vey two different meanings in a statute is inconsistent with
 basic principles of statutory interpretation. Cf. Credit Ac-
 ceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1053
 (Fed. Cir. 2017) (“The normal rule of statutory interpreta-
 tion is that identical words used in different parts of the
 same statute are generally presumed to have the same
 meaning.” (brackets omitted) (quoting IBP, Inc. v. Alvarez,
 546 U.S. 21, 22 (2005))). Thus, although outside the spe-
 cific context of this statutory scheme we have stated that
 § 101 is a patentability provision, see Aristocrat Techs.
 Austl. Ltd. v. Int’l Game Tech., 543 F.3d 657, 661 (Fed.
 Cir. 2008), that fact cannot control here. Instead, we must
 discern an appropriate, single meaning for a term that is
 used only once in § 318(a). The sole meaning of patentabil-
 ity must be, therefore, the one contemplated by § 311(b).
 Even the majority agrees that, as to challenged claims, “pa-
 tentability” means patentability over §§ 102 and 103
 grounds based on limited categories of prior art. Absent
 some clear intent to give a single word two highly different
 meanings, we must give “patentability” one meaning in
 this statute. The meaning that undisputedly applies to
 challenged claims is the one we must apply universally. 7



      7   I recognize that § 318(b) further provides “the Di-
 rector shall issue and publish a certificate . . . incorporating
 in the patent by operation of the certificate any new or
 amended claim determined to be patentable.” 35 U.S.C.
 § 318(b) (emphasis added). This additional language, how-
 ever, is clearly in reference to § 318(a), cannot be read as
 expanding the scope of the Board’s review, and is identical
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     The majority, notably citing no legislative history, next
 declares, “Congress did not intend § 311 to constrain the
 [Board’s] review of proposed substitute claims to anticipa-
 tion and obviousness . . . .” Maj. 16. In support of this
 conclusion, my colleagues parse the language of § 311(b)—
 explaining that the provision only applies to those claims
 which may be canceled. Id. at 16–17. This discussion is
 beside the point and says nothing about Congress’s intent
 as to the scope of patentability issues that may be consid-
 ered in an IPR. It is true that a petitioner may only chal-
 lenge and seek to cancel issued claims in a petition—unless
 the petitioner is clairvoyant it could not possibly do more.
 That undisputed truth does not, however, speak to whether
 Congress intended the limitations on “scope” found in
 § 311(b) to apply to substitute claims.
     Looking at the statutory framework as a whole, “[t]he
 structure of an IPR does not allow the patent owner to in-
 ject a wholly new proposition of unpatentability into the
 IPR by proposing an amended claim.” Aqua Prod., Inc., 872
 F.3d 1290, 1306 (Fed. Cir. 2017). The patent owner may
 only propose narrowed claims that address the issues
 raised in the petition. See 37 C.F.R. § 42.121(a)(2). Con-
 trary to the conclusion the majority reaches by cabining the
 IPR “scope” provision, the overall structure indicates that
 Congress intended to limit the Board’s authority to a re-
 view of the specified patentability grounds. To the extent
 the “chronological” nature of the IPR Statutes bears on this
 question, § 311 comes first, setting the parameters of what
 may be considered throughout the proceeding. Substitute
 claims come into existence only after the scope of the IPR
 has been set. It follows that Congress did not need to
 rearticulate a parameter already expressed in prior provi-
 sions: IPRs are limited to §§ 102 or 103 and to prior art



 to the language the provision uses when addressing chal-
 lenged claims.
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 14                               UNILOC 2017 LLC   v. HULU, LLC



 consisting of patents or printed publications. And, as dis-
 cussed above, the fact that Congress failed to describe sep-
 arate standards for evaluating challenged claims and
 substitute claims conclusively supports such an under-
 standing
      Still reaching for history (legislative or otherwise) to
 support its position, the majority moves to the history of
 pre-AIA reexamination proceedings. Maj. 17–18. Much
 like the majority’s consideration of claims that can be can-
 celed in an IPR, the majority’s discussion of reexamination
 is irrelevant to the question of whether § 101 is properly
 considered in the context of an IPR. Reexamination, as is
 clear from its name, is by its very nature an examination
 with a different scope than IPRs. See discussion supra
 note 3.
     To justify its rationale, the majority looks to In re NTP,
 Inc., 654 F.3d 1268 (Fed. Cir. 2011), for support; they find
 very little. In NTP, we held, consistent with the reexami-
 nation statutes, that § 101 was not an appropriate patent-
 ability challenge to raise in reexamination and reached the
 innocuous conclusion that “[t]here is no statutory limita-
 tion during a reexamination proceeding prohibiting the ex-
 aminer from conducting a [§ 120] priority analysis.” Id. at
 1275–77. But § 120 is not a patentability provision (which
 appear in Chapter 10 of Title 35, entitled “Patentability of
 Inventions”). Rather, § 120 is a procedural provision fall-
 ing under Chapter 11 of Title 35, “Application for Patent.”
 Our statement in NTP that the Board had access to a nec-
 essary tool for considering a patent’s priority is thus not the
 least bit relevant to the scope of the Board’s substantive
 authority for examining patentability. See id. at 77. What
 is relevant is the language of the statute actually at issue
 in this case, which clearly prohibits consideration of pa-
 tentability challenges other than §§ 102 and 103.
     Still focusing on NTP, the majority transforms that
 clear holding into a supposed articulation of a general
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 UNILOC 2017 LLC   v. HULU, LLC                               15



 policy inviting resort to all examination requirements
 wherever there may be “substantial new questions of pa-
 tentability.” Maj. 18–19. But, in NTP we explained, with-
 out qualification, that:
     The scope of reexamination proceedings is limited
     to “substantial new question[s] of patentability,” 35
     U.S.C. § 303(a), which are questions that have not
     previously been considered by the PTO, Swanson,
     540 F.3d at 1379. These new considerations must
     be based only on “prior art consisting of patents or
     printed publications.” 35 U.S.C. § 301; see id. § 302.
     Thus, other challenges to the patentability of orig-
     inal claims—such as qualification as patentable
     subject matter under § 101 or satisfaction of the
     written description and enablement requirements
     of § 112—may not be raised in reexamination pro-
     ceedings.
 In re NTP, Inc., 654 F.3d at 1275–76 (emphasis added).
 Oddly, the majority views this language as somehow sup-
 porting its conclusion that proposed substitute claims must
 be subject to a full examination in the IPR context. I disa-
 gree. NTP actually supports the opposite conclusion, by
 reference to the specific reexamination statute at issue and
 the limitations articulated therein. That is precisely what
 we must do here. Even if NTP meant to create an exception
 to the § 101 exclusion it called out, moreover, and intended
 to apply it to the as yet unenacted AIA, amending a claim
 in response to prior art raised in a petition, in the manner
 contemplated by the IPR statutes, does not somehow inject
 a new question of patentability as to the claim—substan-
 tial, or otherwise. If the challenged patent claims were in-
 valid under § 101 prior to amendment, amending them to
 be narrower is not going to create a “new” question of pa-
 tentability. At worst, the claims would be invalid just as
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 16                              UNILOC 2017 LLC   v. HULU, LLC



 they were before. At best, the patentee may have resolved
 the § 101 issue by amendment. 8
     Concerns about 35 U.S.C. § 112 fill out much of the re-
 mainder of the majority’s opinion. See Maj. 19–20. These
 concerns are also misguided and misplaced. Section
 316(d)(3) mandates that substitute claims not add new
 matter or enlarge the scope of the claims. 35 U.S.C.
 § 316(d)(3) (“An amendment under this subsection may not
 enlarge the scope of the claims of the patent or introduce
 new matter.”). In order to ensure compliance with the stat-
 ute, the Board must necessarily discern the scope of the
 claims and evaluate whether the matter claimed is in the
 specification. This process may look a great deal like the
 inquiry required by § 112 and, indeed, the Board may
 choose to use our indefiniteness and written description
 case law as a guide. That does not, however, transform the
 Board’s process of deciding whether the claims comply with
 the statute into a patentability analysis under § 112. Sec-
 tion 112 is not, moreover, a patentability provision. Like
 § 120, it appears in Chapter 11 of Title 35, “Application for



      8   The parties quibble about whether a narrower or
 more detailed claim could somehow move from patent eli-
 gible to patent ineligible under our § 101 case law. See Ap-
 pellee’s Br. 28–29 (stating, without example, that such a
 result is possible); Intervenor’s Br. 26–27 (theorizing a
 claim where the added point of novelty in a substitute
 claim, beyond the limitations in the issued claims, is a fun-
 damental business practice); Appellant’s Reply Br. 6–7
 (noting that the Director’s hypothetical is farfetched and
 contingent on the Board first finding the challenged claims
 invalid). The mental gymnastics necessary to imagine the
 situations described by the Director and Appellees are suf-
 ficient for me to conclude that this is not a legitimate con-
 cern. And it is certainly not one that could not be addressed
 in District Court.
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 UNILOC 2017 LLC   v. HULU, LLC                              17



 Patent.” Thus, as applied to substitute claims, § 112 may
 properly be viewed as a “tool” the Board can use in deciding
 whether the claims comply with the statute. See In re NTP,
 Inc., 654 F.3d at 1277.
     Finally, the majority attempts to diminish the signifi-
 cance of the Aqua Products plurality opinion by implying
 that its discussion of the overall IPR statutory scheme was
 directed only to “whether a petitioner challenging the pro-
 posed substitute claims bears § 316(e)’s burden of proof.”
 Maj. 20–21. I respond only by noting that the Aqua Prod-
 ucts plurality opinion was joined by five of the eleven
 judges participating in that matter, and only one dissent
 questioned the opinion’s statement of the statutory
 scheme. See Aqua Prod., Inc., 872 F.3d at 1306–14 (O’Mal-
 ley, J., joined by Newman, J., Lourie, J., Moore, J., and
 Wallach, J.). When faced with a question closely related to
 the one we address today, a majority of the court declined
 to adopt an interpretation of § 318(a) that gives two sepa-
 rate operative meanings to the requirement that the Board
 determine “patentability” in the IPR context. Id. at 1345–
 52 (Taranto, J., dissenting, joined in relevant part by Prost,
 C.J., Chen, J., and Hughes, J.). Given this history, it is
 clear to me that Aqua Products is highly relevant to our
 resolution of this case.
                                  B
     My colleagues’ conclusion that, when it comes to sub-
 stitute claims, anything goes, is also contrary to the policy
 supporting the IPR system. IPRs are meant to be an effi-
 cient, cost-effective means for adjudicating patent validity.
 See H.R. REP. NO. 112–98, pt. 1, at 48 (2011). They are
 not intended to also serve as a means for full-blown exam-
 ination. Consistent with this, the legislative history is
 clear that substitute claims serve to preserve for the pa-
 tentee the narrower patent right that is merited in view of
 the art. See Patent Quality Improvement: Post-Grant Op-
 position: Hearing Before the Subcomm. on Courts, the
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 18                               UNILOC 2017 LLC   v. HULU, LLC



 Internet, and Intellectual Property of the H. Comm. on the
 Judiciary, 108th Cong. 10 (2004) (statement of PTO Gen-
 eral Counsel James A. Toupin: “By providing for the possi-
 bility of amendment of challenged claims, the proposed
 system would preserve the merited benefits of patent
 claims better than the win-all or lose-all validity contests
 in district court.”).
      The majority opinion opens substitute claims to an ex-
 amination equivalent to that undertaken during patent
 prosecution, in an inter partes environment. The major-
 ity’s reasoning requires, in effect, that the Board consider
 all manner of prior art (not just the limited categories men-
 tion in § 311(b)), as well as all other criteria normally ad-
 dressed by an examiner, to fulfill its § 318(a) obligation
 prior to issuing new claims. 9 Presumably, a petitioner will
 now be free to raise any of these issues in response to a
 patentee’s motion to amend. The already mammoth task
 of examining claims in the context of an ex parte prosecu-
 tion will be fully shifted to an inter partes, litigation driven
 proceeding that is overseen not by an examiner but by an




      9  In stark contrast to the majority’s position, the
 Precedential Opinion Panel recently made clear that it
 does not view the Board as independently fulfilling an ex-
 aminational function. See Hunting Titan, Inc. v. Dynaener-
 getics Europe Gmbh, No. IPR2018-00600, 2020 WL
 3669653, at *4–6 (P.T.A.B. July 6, 2020) (holding that the
 Board should decide proposed substitute claims on grounds
 other than those raised by a petitioner in only rare circum-
 stances).
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 Administrative Patent Judge. 10 The inefficiencies of this
 process are apparent. 11
      Accordingly, in my view, the process the majority ap-
 proves today runs in the face of the efficient resolution an-
 ticipated by Congress. It also improperly places an
 examination process in the hands of an administrative
 judge.
                                  IV
     This case was dead on arrival—there were no live
 claims remaining in the ’960 patent. I see the dead patent
 for what it is—a legal nullity incapable of supporting any
 further proceedings. I would end the case with that reve-
 lation. The majority, however, views the ’960 patent as an
 opportunity and takes it. It declares that dead patents can
 walk, at least as far as needed to die again on the same
 § 101 sword that killed it two years ago. That sword, how-
 ever, does not exist in the IPR context. The Board can can-
 cel claims and find proposed substitute claims



     10   Given the majority’s focus on reexamination pro-
 ceedings, it is worth pointing out that, in those proceed-
 ings, an examiner, not an Administrative Patent Judge,
 takes the first pass at determining patentability. See 35
 U.S.C. § 305; MPEP § 2253
      11  The inefficiency the Majority introduces is also un-
 necessary. Substitute claims are not unexamined—they
 are narrower versions of claims that already went through
 examination, including under § 101.          See 37 C.F.R.
 § 42.121(a)(2); Aqua Prod., 872 F.3d at 1314–15. To the
 extent any defect exists in proposed substitute claims, they
 “remain subject to challenge in various future proceedings,
 including subsequent IPRs, ex parte reexaminations, dis-
 trict court litigations, or through the Director’s ability to
 initiate an ex parte reexamination pursuant to 37 C.F.R. §
 1.520.” Aqua Prod., 872 F.3d at 1315.
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 unpatentable, certainly. It simply does not have statutory
 authority to do so based on § 101. Accordingly, I dissent.
