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SIPCO, LLC v. Emerson Elec. Co.

United States Court of Appeals for the Federal Circuit

September 25, 2019, Decided



 [*1303]  Chen, Circuit Judge.

SIPCO, LLC (SIPCO) appeals a final written decision of the Patent Trial and Appeal Board (Board) in a covered business method (CBM) review of its 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 ineligible for patent protection under 35 U.S.C. § 101 and unpatentable for obviousness under 35 U.S.C. § 103. SIPCO appeals these findings, as well as the Board's determination that the '842 patent was subject to CBM review.

In determining that the '842 patent qualifies [**2]  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) § 18(d). Under 37 C.F.R. § 42.301(b), the Board must 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 here found  [*1304]  that the patent contained no technical solution to a technical problem.

We reverse the Board's claim construction of "low power transceiver" and its finding that the '842 patent does not satisfy the second part of the regulation defining "technological invention." § 42.301(b). Because the Board did not address the applicability of § 42.301(b)'s first part, we vacate and remand for consideration consistent with this opinion.


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939 F.3d 1301 *; 2019 U.S. App. LEXIS 28935 **; 2019 U.S.P.Q.2D (BNA) 360233; 2019 WL 4656205

SIPCO, LLC, Appellant v. EMERSON ELECTRIC CO., Appellee

Subsequent History: As Corrected September 27, 2019.

Petition for certiorari filed at, 01/30/2020

Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. CBM2016-00095.

Emerson Elec. Co. v. SIPCO, LLC, 2018 Pat. App. LEXIS 4519 (P.T.A.B., Jan. 16, 2018)



patent, low-power, transmission, transceiver, invention, signals, transmitter, technological, user, specification, remote, technical problem, transmits, embodiment, recites, central location, filtering, receives, extrinsic evidence, construing, distance, network, solved, skill, ordinary person, communications, limitations, importing, terms, feet

Patent Law, Infringement Actions, Claim Interpretation, Aids & Extrinsic Evidence, Jurisdiction & Review, Standards of Review, De Novo Review, Substantial Evidence, Claim Interpretation, Administrative Law, Judicial Review, Arbitrary & Capricious Standard of Review, Subject Matter