It's a few days before
Precedential opinions: 4
Non-precedential opinions: 3
Rule 36: 1
Longest case pending from argument: Tie between
Shortest case pending from argument (non-rule 36):
Case of the week:
Panel: Judges O'Malley, Reyna, and Chen, with
You should read this case if: you filed a CBM case before the statutory sunset in September.
Even though
So SIPCO came back to life in the Federal Circuit. The Court noted that CBM review is subject to the near-identical "No Appeal" provision in 35 U.S.C. § 324(e), which states that "[t]he determination by the Director whether to institute a post-grant review under this section shall be final and nonappealable." And the Court explained that the determination whether a patent qualifies for CBM review—that is, whether it claims a business method and is not a "technological invention"—is "expressly and exclusively tied to the decision to institute the proceeding." The Federal Circuit thus concluded that
Having held that it couldn't review whether SIPCO's patent was a CBM, the Federal Circuit had to address patentability. The PTAB had determined the claims ineligible under § 101 and unpatentable under § 103. The Court side-stepped eligibility and addressed only obviousness—which really amounted to three claim construction issues, although the Court noted that substantial evidence supported the Board even under two of SIPCO's preferred constructions. We're not going to dive into those case-specific claim construction issues here—one of which briefly touches upon the ever-present issue of trying to import limitations from the specification into the claims.
But as an aside, it you've been looking for a case stating the what-should-be-unremarkable proposition that just because a claim term had one meaning in one case doesn't mean it has to have the same meaning in another case, this case is for you. The Court noted that just because it construed the term "low power RF signal" one way in an earlier case involving the same parties doesn't mean that a similar term has the same meaning in a later case. The Court noted: "that case involved different patents, in entirely different patent families, with different specifications. We find it unsurprising that similarly worded claims may be construed differently when presented in such different contexts and different records."
Enjoy
Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.
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