PTAB Holds All Claims Unpatentable under §101 in PGR Proceeding

U.S. Patent US9691090 is directed to methods of operationalizing privacy compliance.  On October 10, 2019, PTAB held all claims of the ‘090 patent unpatentable under 35 USC §101 as directed to abstract ideas as a result of a PGR challenge.  Avepoint v. Onetrust  While it may not come as a surprise to many that claims describing such a method might fall victim to 35 USC §101, the decision is a reminder that while IPR proceedings can be instituted only on the basis of challenges under 35 USC §102 and §103, PGR proceedings can be based on challenges under §112 and §101, as well.  Given the Federal Circuit’s recent holding in American Axle AAM v Neapco, owners of patents directed to technology not previously thought to be vulnerable to Section 101 rejections or challenges might find themselves unpleasantly surprised to be served PGR Petitions raising Section 101 issues.