Last week, the U.S Court of Appeals for the Federal Circuit issued an opinion in SIPCO, LLC v. Emerson Electric Co., No. 2018-1635 (Nov. 17, 2020). The CAFC held that the Patent Trial and Appeal Board’s determination that a patent qualifies for covered business method (CBM) review is expressly and exclusively tied to the decision to institute the proceeding, and is thus unappealable under 35 U.S.C. § 324(e).
SIPCO sued Emerson for infringement of U.S. Patent No. 8,908,842 (“the ’842 patent”), entitled Multi-functional General Purpose Transceivers and Devices. In response, Emerson petitioned for CBM review of the ’842 patent. The Board instituted review and found that claims 1, 7, 9, 16, and 17 of the ’842 patent recited patent-ineligible subject matter under 35 U.S.C. § 101 and were unpatentable for obviousness under 35 U.S.C. § 103. SIPCO appealed. On appeal, the Federal Circuit reversed the Board’s determination that the ‘842 patent qualified for CBM review. Emerson petitioned for certiorari, and the Supreme Court vacated and remanded the Federal Circuit’s decision for further consideration in light of the intervening precedent set forth in Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020). In Thryv, the Supreme Court held that the Board’s decision on whether earlier litigation bars institution of inter partes review under 35 U.S.C. § 315(b) is final and unappealable under the “No Appeal” provision of 35 U.S.C. § 314(d).
On remand, applying the precedent established in Thryv to the materially identical “No Appeal” provision of 35 U.S.C. § 324(e), the Federal Circuit concluded the Board’s determination on whether a patent qualifies for CBM review is closely tied to the decision to institute the proceeding, and is thus unappealable. Because the “No Appeal” provision of § 324(e) barred judicial review of the threshold decision to institute CBM review of the ‘842 patent the Court concluded SIPCO’s challenge to the Board’s institution decision could not be reviewed. On the merits of the Board’s unpatentability decision, the Court affirmed the Board’s obviousness determination and, therefore, did not reach the question of patent-eligibility under § 101.