980 F.3d 865
Fed. Cir.2020Background
- SIPCO’s U.S. Patent No. 8,908,842 claims a two-step wireless communication scheme using a low-power transceiver, an interface to a central location, and a controller (claims 1 and 17 representative).
- The PTAB instituted a covered business method (CBM) review, found several claims patent-ineligible under §101, and also found claims obvious under §103 in view of Tymes (U.S. Patent No. 5,157,687).
- The Board concluded the patent was not excluded from CBM review under the AIA §18(d) “technological invention” exception, having applied only the regulatory test’s second prong (technical solution to a technical problem).
- The Federal Circuit previously reversed the Board on that second-prong issue, remanded for consideration of the regulatory first prong, and the Supreme Court vacated that opinion and remanded in light of Thryv.
- On remand the Federal Circuit held that the Director’s threshold decision to institute CBM review is nonappealable under §324(e) (per Thryv) and affirmed the Board’s obviousness ruling over Tymes (without reaching §101).
- The court found substantial evidence supports the Board’s constructions and factual findings as to low-power transceivers, “instruction data,” and establishing a communication link using an address.
Issues
| Issue | SIPCO’s Argument | Emerson/Director’s Argument | Held |
|---|---|---|---|
| Appealability of CBM-institution decision | Board exceeded statutory authority; institution should be reviewable | Thryv and AIA §324(e) make institution threshold nonappealable | Nonappealable: §324(e) bars review of whether patent qualifies for CBM review |
| Low-power transceiver / obviousness | “Low power” requires limited-range transceiver; Tymes doesn’t disclose limited-range low-power transceivers | Tymes discloses a low-power, limited-range RF network; expert testimony supports obviousness | Affirmed obviousness; substantial evidence supports use of low-power limited-range transceivers in Tymes |
| “Instruction data” scope | Term requires code/instruction code that must be decoded; Tymes packets are not such code | Claims recite “instruction data” broadly; Tymes distress/response packets function as instruction data | Board correctly declined to import narrower “code” limitation; Tymes packets qualify as instruction data |
| “Establishing a communication link” using an address | Claim requires setting up a link that did not previously exist and using an address; Tymes doesn’t meet this | Tymes reassignment creates a new link via the newly assigned base station using device ID as address | Substantial evidence that Tymes establishes a new communication link using an address; limitation met |
Key Cases Cited
- Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020) (agency threshold institution decisions nonappealable under the AIA no-appeal provision)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) (judicial review limited where challenges are closely tied to PTO institution decisions)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (claim-construction principles)
- In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) (obviousness is a legal question based on factual findings)
- Rambus Inc. v. Rea, 731 F.3d 1248 (Fed. Cir. 2013) (substantial-evidence review of prior-art scope)
- AC Techs. S.A. v. Amazon.com, Inc., 912 F.3d 1358 (Fed. Cir. 2019) (review standard for claim-construction facts)
- ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020) (application of Thryv to petition/real-party-in-interest challenges)
- Yorkey v. Diab, 601 F.3d 1279 (Fed. Cir. 2010) (deference to Board credibility findings on expert witnesses)