This morning, the Federal Circuit issued one precedential opinion in a patent case and one nonprecedential opinion in a patent case. Additionally, the court issued one Rule 36 judgment. Here are the introductions to the opinions and a link to the Rule 36 judgment.

SIPCO, LLC v. Emerson Electric Co. (Precedential)

This appeal has returned to us on remand from the Supreme Court of the United States. In its prior appearance in this court, SIPCO appealed from a final written decision of the Patent Trial and Appeal Board (Board) in a covered business method (CBM) review of SIPCO’s U.S. Patent No. 8,908,842 (’842 patent). After instituting CBM review, the Board found claims 1, 7, 9, 16, and 17 of the ’842 patent to recite patent-ineligible subject matter under 35 U.S.C. § 101. The Board also found the claims unpatentable for obviousness under 35 U.S.C. § 103 in view of U.S. Patent No. 5,157,687 (Tymes).

In determining that the ’842 patent qualifies for CBM review, the Board found that the patent is not excluded from review under the statutory “technological invention” exception. See America Invents Act (AIA), Pub. L. No. 112- 29, § 18(d), 125 Stat. 284, 331 (2011). Under 37 C.F.R. § 42.301(b), the Board is required to consider “whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.” Applying just the second part of this regulatory standard, the Board found that the patent contained no technical solution to a technical problem.

We reversed the Board’s finding that the ’842 patent does not satisfy the second part of the regulation defining “technological invention.” SIPCO, LLC v. Emerson Elec. Co., 939 F.3d 1301, 1313 (Fed. Cir. 2019), judgment vacated, 207 L. Ed. 2d 1049 (June 15, 2020). We then vacated and remanded for the Board to consider the applicability of § 42.301(b)’s first part.

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The Supreme Court’s decision in Thryv, we hold, makes clear that the threshold determination that SIPCO’s ’842 patent qualifies for CBM review is a decision that is nonappealable under 35 U.S.C. § 324(e). We therefore are precluded from reviewing SIPCO’s challenge to that threshold determination. As to the Board’s unpatentability decision, we affirm the Board’s determination that the challenged claims would have been obvious in view of Tymes without reaching the Board’s patent-ineligibility decision under § 101.

Koninklijke Philips N.V. v. Iancu (Nonprecedential)

The Patent Trial and Appeal Board (“Board”) instituted inter partes review of claims 1–12 of U.S. Patent No. 6,690,387, owned by Koninklijke Philips N.V. (“Philips”). The Board concluded that the challenged claims were unpatentable. Philips appealed.

Philips argues that, in deciding to institute inter partes review, the Board “incorrectly applied” its own precedent relating to fairness in rendering institution decisions, and that such “[m]isapplication of the [United States Patent and Trademark Office’s] own fairness standard violates the Due Process Clause and [amounted to arbitrary and capricious agency action under the] Administrative Procedure[] Act” (“APA”). Reply Br. 1. Specifically, Philips argues that the Board misapplied General Plastic Industrial Co. v. Canon Kabushiki Kaisha, No. IPR2016-01357, 2017 WL 3917706 (P.T.A.B. Sept. 6, 2017), as confirmed by Valve Corp. v. Electronic Scripting Products, Inc., No. IPR2019- 00062, 2019 WL 1490575 (P.T.A.B. Apr. 2, 2019). See, e.g., Reply Br. 4. Philips also disputes the merits of the Board’s final written decision.

We lack jurisdiction to entertain Philips’s APA challenge, which amounts to an appeal of the Board’s decision “whether to institute an inter partes review.” 35 U.S.C. §314(d); see Thryv, Inc. v. Click-to-Call Techs., LP, 140 S. Ct. 1367, 1370–74 (2020); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2136, 2139–42 (2016). We also conclude that Philips does not advance a colorable due process challenge to the institution decision.

As to Philips’s challenge to the Board’s invalidity determination, we have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). We affirm the Board’s decision as supported by substantial evidence and otherwise in accordance with the law. Accordingly, we affirm-in-part and dismiss-in-part.

Rule 36 Judgment