By Albert Liou and Alison Ibendahl

A November 17, 2020 decision by the Federal Circuit has extended the Supreme Court’s April 2020 decision in Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020), which held that institution decisions involving the time bar of 35 U.S.C. § 315(b) are not appealable, to also apply to determinations of whether a patent qualifies for covered business method (CBM) review. SIPCO, LLC v. Emerson Electric Co., No. 2018-1635 (Fed. Cir. Nov. 17, 2020). This follows the Federal Circuit’s earlier application of the Thryv holding to render unappealable determinations of whether a petitioner failed to identify all “real parties an interest,” in ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378, 1385–86 (Fed. Cir. 2020). In a unanimous decision, the panel in SIPCO held that a decision of the PTAB finding that a patent was not excluded from CBM review under the AIA’s “technological invention” exception was unappealable, and there is “no meritorious distinction between the application of § 314(d) to prohibit judicial review of § 315(b)’s time bar or § 312(a)(2)’s “real parties in interest” requirement and the application of § 324(e) to prohibit review of AIA § 18(b)’s restriction on CBM review to only certain patents.”

In 2016, Emerson Electric requested CBM review of SIPCO’s U.S. Patent No. 8,908,842 (“the SIPCO patent”). The AIA conditions institution of CBM review for only those patents that “claim[] a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” AIA § 18(b). The PTAB instituted a CBM review after finding the SIPCO patent did not disclose a technological invention. In a final written decision, the PTAB found claims of the SIPCO patent to recite patent-ineligible subject matter as well as being obvious in view of the prior art. SIPCO appealed, arguing that the PTAB improperly instituted CBM review by concluding that the patent did not disclose a technological invention. The Federal Circuit agreed and remanded the case to the PTAB to reconsider institution of the CBM review. But before the PTAB could do so, Emerson filed a petition for a writ of certiorari to the Supreme Court.  The Supreme Court granted the petition and remanded the case to the Federal Circuit to reconsider in light of Thryv.

Before SIPCO, the Federal Circuit’s practice was to review institution of CBM review for PTAB action outside the authority set by AIA § 18(d). See, e.g., Return Mail, Inc. v. United States Postal Service, 868 F.3d 1350, 1359 (Fed. Cir. 2017). But the Supreme Court in Thryv broadly interpreted the AIA “no-appeal” provision in 35 U.S.C. § 314(d), making any determination by the PTAB that is “closely tied” to the decision to institute inter partes review non-appealable. In SIPCO, the Federal Circuit found that the determination of whether a patent qualifies for CBM review is “expressly and exclusively tied to” the decision to institute a CBM review. As a result, under Thryv, a PTAB determination of whether a patent recites a “technological invention” is non-appealable.

SIPCO argued that the PTAB exceeded its authority in instituting the CBM review. However, the Federal Circuit clarified that the holding of Thryv governs regardless of whether the PTAB has exceeded its statutory authority by instituting proceedings. In a foot note, the court acknowledged that “Thryv has abrogated our practice of reviewing whether the Board’s institution of CBM review breached the limits on its authority imposed by AIA §18(d).”

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Albert Liou

Albert Liou focuses his practice on intellectual property law, including PTAB trials, litigation, counseling, and transactions. He is a seasoned patent and trade secret litigator, having representing clients in the software, computing, automotive, chemical, and high-tech industries.