Eligibility for CBM Review Is Not Appealable

Knobbe Martens
Contact

Knobbe Martens

SIPCO, LLC v. EMERSON ELECTRIC CO.

Before O’Malley, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board.

Summary: The Board’s determination that a patent qualifies for CBM review is non-appealable under 35 U.S.C. § 324(e).

Emerson petitioned the Patent Trial and Appeal Board (Board) for covered business method (CBM) review of SIPCO’s patent. The Board determined the patent qualifies for CBM review, instituted review, and issued a final written decision finding the challenged claims patent-ineligible under § 101 and obvious under § 103. The Federal Circuit vacated the Board’s decision, including its determination that the patent qualified for CBM review.

Emerson petitioned for a writ of certiorari to the U.S. Supreme Court based on 35 U.S.C. § 324(e), which prohibits appeals of the decision to institute CBM review. Emerson asserted that § 324(e) extends to prohibit appeals of the Board’s determination that a patent qualifies for CBM review. The Supreme Court granted Emerson’s petition, vacated the Federal Circuit’s opinion, and remanded for further consideration in light of the Supreme Court’s decision in Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020).

On remand in light of Thryv, the Federal Circuit agreed that § 324(e) extends to prohibit appeals of the Board’s determination that a patent qualifies for CBM review. In Thryv, the Supreme Court held that a no-appeal provision for inter partes review (IPR) prohibits appeals of the Board’s determination regarding whether an IPR petition is time barred. The Federal Circuit noted that, as set forth in Thryv and other precedent, judicial review is not available “where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.” Applying that rationale to the CBM context, the Federal Circuit reasoned that a patent’s qualification for CBM review is expressly and exclusively tied to the decision to institute the proceeding. The Federal Circuit therefore held that it was precluded from reviewing the Board’s determination that SIPCO’s patent qualifies for CBM review. The Federal Circuit affirmed the Board’s determination that the challenged claims would have been obvious, and did not reach the Board’s patentability decision under § 101.

Editor: Paul Stewart

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Knobbe Martens | Attorney Advertising

Written by:

Knobbe Martens
Contact
more
less

Knobbe Martens on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.