PTAB overreach allows patent to be invalidated under section 101 and is modeled by other courts.

First, using the printed matter doctrine, the PTAB could expand the scope and power of IPRs to invalidate patents for ineligible subject matter under § 101. While the AIA supports an IPR petition can challenge claims under §§ 102 and 103,186 the AIA does not explicitly state that those claims must be invalidated under §§ 102 and 103. In Praxair, the majority distorted a clear § 103 nonobviousness analysis into a quasi-§ 101 eligibility analysis.1 87 If the patent clearly was obvious over the prior art, the majority should have left out the printed matter doctrine and followed the traditional non-obviousness analysis. The majority invalidated claims because they added ineligible subject matter (mental process or abstract idea) to ineligible information that was printed matter.' 88 Praxair may have a substantial impact on IPR petitions because the Federal Circuit allowed claims challenged under § 103 to be invalidated under § 101 based on the printed matter doctrine. This suggests that the PTAB may be able to expand the reach of future IPRs to invalidate patents under § 101 or, even further, allow petitions that bring subject-matter eligibility claims. Allowing the printed matter doctrine in IPRs may give power to the PTAB that Congress did not intend when it created the AIA postgrant proceedings. Additionally, IPR has the capacity to hear more challenges than the other post-grant proceedings because it has a lower institutional threshold and can hear patent filed under both the first-to-invent and first-to-file regimes.1 89 Combining those factors with Praxair's printed matter doctrine, future IPR proceedings will have more power and discretion to invalidate patents, thereby increasing the PTAB's influence over subject-matter eligibility under § 101.

Second, with the help of the Federal Circuit, the PTAB incorporated the printed matter doctrine into the Alice-Mayo two-step test. The PTAB addresses § 101 issues in different forums, like ex parte appeals. 9 ° This gives the PTAB many opportunities to develop the law surrounding subject-matter eligibility.' 9 ' Since the Federal Circuit's opinion, the PTAB cited Praxair about fifteen times in different ex parte appeals.' 92 From those cases, seven cases cite and discuss Praxair's use of the printed matter doctrine to determine whether the application is invalid under § 101. 93 In each case the PTAB affirmed examiners' § 101 rejections for patent applications because the claims were directed to printed matter that were not patent eligible subject matter.1 94 As a result, these cases show that examiners and the PTAB have incorporated the printed matter doctrine into the Alice-Mayo framework. The PTAB's application of the printed matter doctrine in subject-matter eligibility analysis is significant to note because the PTAB's jurisprudence is often adopted or followed by courts.'195