On June 15, 2020, the Supreme Court issued an Order in Emerson Elec Emerson Electric Co., Petitioner v. SIPCO, LLC, Case 19-966, stating “Petition GRANTED. Judgment VACATED and case REMANDED for further consideration in light of Thryv, Inc. v. Click-to-Call Technologies, LP, 590 U. S. ___ (2020).

In its cert petition, Emerson has requested the Supreme Court determine “Whether 35 U.S.C. 324(e) permits review on appeal of the Director’s threshold determination, as part of the decision to institute CBM review, that the challenged patent qualifies as a CBM patent.” And Emerson requested “[t]he Petition for a writ of certiorari should be held pending this Court’s decision in Thryv and either granted, vacated, and remanded in light of Thryv or granted and set for hearing on the merits, if the issues are not disposed of in Thryv.”

Emerson argued that “[t]his Court has repeatedly held it is inappropriate for an appellate court to review a tribunal’s preliminary determination as opposed to its merits determination (which is on a full record) that subsumes the preliminary issue.” Explaining “[i]nstitution determinations that are subsumed by merits determinations should not be reviewed on appeal. Rather, with the benefit of the entire record, appellate courts should review the merits determination alone. See Ortiz v. Jordan, 562 U.S. 180, 183-184 (2011). Congress adopted that same approach in the AIA, even going so far as to expressly preclude appellate review of the Board’s decision to institute proceedings. 35 U.S.C. 324(e).”

I think most practitioners have thought this should be the case. But we will wait and see what the Federal Circuit does with this case.