November 23, 2020 - Last Week in the Federal Circuit

Last Week in the Federal Circuit (November 16-20): A Beautiful Sunset for CBMs

It’s a few days before Thanksgiving and the sunsets are shorter and earlier, so we thought we’d discuss a CBM case before the sun completely sets on that procedure. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 4

Non-precedential opinions: 3

Rule 36: 1

Longest case pending from argument: Tie between Whitewater West Industries v. Alleshouse, Nos. 19-1852, 19-2323 and Vectura Limited v. GlaxoSmithKline LLC, No. 20-1054 (45 days)

Shortest case pending from argument (non-rule 36): Koninklijke Philips N.V. v. Iancu, No. 19-2040 (15 days)

Case of the week: SIPCO, LLC v. Emerson Electric Co., No. 18-1635 (Nov. 17, 2020)

Panel: Judges O’Malley, Reyna, and Chen, with Judge Chen authoring the opinion

You should read this case if: you filed a CBM case before the statutory sunset in September.

Even though Halloween is long gone (as is our candy), we thought we’d discuss a zombie case this week. First decided in September 2019, the original Federal Circuit decision in this case held that the Board erred in instituting CBM review on SIPCO’s patent—that is, the Board erroneously determined SIPCO’s patent recited a business method that was not excluded from review as a “technological invention.” That meant that SIPCO had beat the long odds (see post here) and prevailed as a patent owner in a PTAB case. (For those that don’t know what CBM is, it’s probably a little late now. The procedure sunset in September 2020, which means there are no more future cases although the Board and Court will still be deciding the pending ones.)

Emerson Electric, however, said not so fast. It filed a cert petition raising whether the Patent Office’s threshold determination that SIPCO’s patent qualified for CBM review was reviewable in an appeal from a PTAB final decision. That issue, of course, was similar to a then-pending case in the Supreme Court: Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020). And in Thryv, the Supreme Court held that the Patent Office decision as to whether earlier litigation bars institution of inter parties review under 35 U.S.C. § 315(b) is “final and nonappealable” under the “No Appeal” provision of 35 U.S.C. § 314(d). And as is common when the question presented in a pending cert petition may be affected by a recently decided Supreme Court decision, the Supreme Court GVR’d (granted the petition, vacated the decision, and remanded), here, in light of Thryv.

So SIPCO came back to life in the Federal Circuit. The Court noted that CBM review is subject to the near-identical “No Appeal” provision in 35 U.S.C. § 324(e), which states that “[t]he determination by the Director whether to institute a post-grant review under this section shall be final and nonappealable.” And the Court explained that the determination whether a patent qualifies for CBM review—that is, whether it claims a business method and is not a “technological invention”—is “expressly and exclusively tied to the decision to institute the proceeding.” The Federal Circuit thus concluded that Thryv makes clear that the threshold determination that a patent qualifies for CBM review is non-appealable under 35 U.S.C. § 324(e).

Having held that it couldn’t review whether SIPCO’s patent was a CBM, the Federal Circuit had to address patentability. The PTAB had determined the claims ineligible under § 101 and unpatentable under § 103. The Court side-stepped eligibility and addressed only obviousness—which really amounted to three claim construction issues, although the Court noted that substantial evidence supported the Board even under two of SIPCO’s preferred constructions. We’re not going to dive into those case-specific claim construction issues here—one of which briefly touches upon the ever-present issue of trying to import limitations from the specification into the claims. 

But as an aside, it you’ve been looking for a case stating the what-should-be-unremarkable proposition that just because a claim term had one meaning in one case doesn’t mean it has to have the same meaning in another case, this case is for you. The Court noted that just because it construed the term “low power RF signal” one way in an earlier case involving the same parties doesn’t mean that a similar term has the same meaning in a later case. The Court noted: “that case involved different patents, in entirely different patent families, with different specifications. We find it unsurprising that similarly worded claims may be construed differently when presented in such different contexts and different records.”

Enjoy Thanksgiving everyone.