• Sep 25 2019
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  • Category: CAFC Updates

SIPCO appeals a final written decision of the Patent Trial and Appeal Board in a covered business method (CBM) review of its U.S. Patent No. 8,908,842 (relating to devices for communicating information from a previously unconnected, remote device to a central location using a two-step communication path through a set of intermediate nodes). After instituting CBM review, the Board found certain claims of the ’842 patent ineligible under 35 U.S.C. § 101 and obvious 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.  Applying just the second part of the two part test of 37 C.F.R. § 42.301, the Board here found that the patent contained no technical solution to a technical problem. The CAFC concludes that the Board’s claim construction fails to give appropriate meaning to the term “low-power” in “low-power transceiver,” and because of this the Board did not appreciate that the claims provide a technical solution to a technical problem.  Accordingly, the CAFC concludes that the Board’s ruling on this issue was thus arbitrary and capricious, reverses the Board’s claim construction and its finding that the ’842 patent does not define a “technological invention” under § 42.301(b), and vacates and remands for consideration or consideration of part one of 37 C.F.R. § 42.301. Judge Reyna filed a separate opinion that concurs with the decision to remand for consideration of part one of 37 C.F.R. § 42.301 and dissents with respect to the majority’s decision that rejects the Board’s claim construction.

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