Today the Federal Circuit issued one precedential opinion in a patent case and one nonprecedential opinion in a patent case. Here are the introductions to the opinions.
SIPCO, LLC v. Emerson Electric Co. (Precedential)
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 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 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.
Intellectual Ventures I LLC v. EMC Corp. (Nonprecedential)
Intellectual Ventures I, LLC owns U.S. Patent No. 8,275,827, which describes and claims methods and systems for using storage available on network-attached devices. After IV filed suits alleging infringement of the ’827 patent, EMC Corp., Lenovo (United States) Inc., and NetApp, Inc. (collectively, EMC) filed two petitions in the Patent and Trademark Office (PTO) for inter partes reviews of certain claims of the ’827 patent under 35 U.S.C. §§ 311–319. The PTO’s Patent Trial and Appeal Board, acting as delegee of the PTO’s Director, 37 C.F.R. §§ 42.4, 42.108, instituted both reviews. The Board ultimately determined that several claims of the ’827 patent are unpatentable.
IV appeals. It argues that the Board erred in its claim construction of one claim limitation and that, under a proper construction, that claim limitation is not taught by the cited references. IV also argues that EMC, in its petitions, did not adequately set forth the basis for its challenge regarding another claim limitation. Finally, IV argues that the Board improperly relied on its own filling of gaps left by EMC’s evidence.
We conclude that the Board properly found the first claim limitation met for two reasons: for both IPRs, IV’s proposed claim construction is incorrect; for one IPR, even under IV’s construction, the cited reference discloses what the limitation requires. We also reject EMC’s challenge to the sufficiency of EMC’s petitions regarding the second claim limitation at issue. And we determine that the Board did not rely on improper gap filling in its obviousness analysis. We therefore affirm the Board’s decisions.