N. Scott Pierce

On November 17, 2020, in SIPCO LLP v. Emerson Electric Co., No. 2018-1635, slip op. (Fed. Cir. Nov. 17, 2020), the Court of Appeals for the Federal Circuit extended the reasoning of the Supreme Court in Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020) barring appeal of decisions to institute inter partes review (IPR) under 35 U.S.C. § 314(d), and held that decisions made by the Patent Trial and Appeal Board (PTAB) to institute proceedings for covered business methods (CBMs) are not subject to appeal under 35 U.S.C. § 324(e). While the CBM transitional program of the America Invents Act (AIA) expired on September 16, 2020, the statutes applied when instituting and conducting review under the program were those of post-grant review (PGR) (under § 18(a)(1) of the AIA), and so the effect of the Federal Circuit’s decision in SIPCO is likely to be much more far-reaching.

In Part I of this article, we briefly summarized how O’Reilly v. Morse was relied upon in the denial for rehearing in the recent case of AAM v. Neapco to assert that a patent claim to a method of making a motor vehicle axle failed to qualify as patent eligible subject matter under 35 U.S.C. § 101. The concurring opinions concluded that claim 22 of the patent at issue, U.S. 7,774,911, “merely invoked” natural law, and did not describe what had been obtained in the patent. Consequently, as in O’Reilly v. Morse, the claim was “too broad, and not warranted by law.”  We also noted an apparent paradox in that, while claims cannot preempt natural law and must be supported by an enabling specification, they necessarily must be able to read on embodiments that incorporate later-developed technology. The key to resolving this dilemma is the notion of invention, which was the basis for the holding by the Court of the King’s Bench in Hornblower v. Boulton.