Thryv applies to CBM reviews, Fed Circuit confirms
The decision to review business method patents cannot be appealed, the US Court of Appeals for the Federal Circuit ruled yesterday, November 17.
In a precedential ruling, the Federal Circuit held that the US Patent and Trademark Office’s (USPTO) designation of a Sipco patent for covered business method (CBM) review is shielded from appeal by the US Supreme Court’s 2019 Thryv ruling.
In Thryv, the Supreme Court held that the Patent Trial and Appeal Board’s (PTAB) decision on whether an inter partes review (IPR) request was time-barred or not could not be appealed to the Federal Circuit.
The USPTO argued that the ruling also applied to its so-called “threshold determinations” on whether a patent qualifies for CBM review, another type of patent challenge. The office received the backing of Emerson Electric, which was looking to have a Sipco patent (US number 8,908,842) invalidated under the CBM review system.
In yesterday’s decision, the Federal Circuit held that under Thryv, the “threshold determination that Sipco’s ’842 patent qualifies for CBM review is a decision that is nonappealable”.
The ruling confirms that issues related to the PTAB’s “institution decisions”, on whether or not to review the validity of a patent, are effectively unappealable. Lawyers told WIPR last year that Thryv left the PTAB with “unchecked authority” on what patents should be reviewed.
“Although Sipco urges that the [PTAB] exceeded its authority in conducting a CBM review for a patent that Sipco contends is not a CBM patent, Thryv held that the ‘No Appeal’ provision barred judicial review of the threshold decision to institute IPR,” the Federal Circuit decision said.
The Federal Circuit said there was no “meritorious distinction” between the issues in Thryv, and the PTAB’s decision to institute a CBM review.
The court also upheld the PTAB’s decision to invalidate the Sipco patent under this system, finding that the patent would have been obvious in light of prior art cited by Emerson. The patent covered a transceiver designed to wirelessly transmit instruction signals to other devices.
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