Like Dominoes: CBM Determination Held Not Appealable, PTAB Litigation Blog

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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.”

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