{"id":2526,"date":"2019-09-25T23:06:27","date_gmt":"2019-09-26T03:06:27","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2526"},"modified":"2019-09-28T10:45:53","modified_gmt":"2019-09-28T14:45:53","slug":"board-misread-and-mischaracterized-features-of-the-claims-and-thus-failed-to-appreciate-that-the-claims-provide-a-technical-solution-to-a-technical-problem","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2526","title":{"rendered":"Board Misread and Mischaracterized Features of the Claims, and Thus Failed to Appreciate that the Claims Provide a Technical Solution to a Technical Problem"},"content":{"rendered":"\n

In Sipco, LLC v. Emerson Electric Co.<\/a>, [2018-1635] (September 25, 2019), the Federal Circuit reversed the PTAB’s construction of \u201clow power transceiver\u201d and its finding that U.S. Patent No. 8,908,842 does not satisfy the second part of \u00a742.301(b) defining \u201ctechnological invention.\u201d \u00a7 42.301(b). Because the Board did not address the applicability of the first part of \u00a7 42.301(b), the Federal Circuit vacated and remanded.<\/p>\n\n\n\n

The Board found that the term \u201clow-power\u201d as used in the claims did not necessarily require that the device transmit and receive signals only within a \u201climited transmission range.\u201d The Federal Circuit reversed, construing \u201clow-power\u201d to mean \u201ca device that transmits and receives signals at a power level corresponding to limited transmission range.\u201d<\/p>\n\n\n\n

The Federal Circuit found that the Board\u2019s conclusion that the claims recite an apparatus \u201cfor performing data processing or other operations used in the practice, administration, or management of a financial product or service\u201d under AIA \u00a7 18(d)(1) was not arbitrary and capricious. The definition of a covered business method patent is not limited to products and services of only the financial industry, or to patents owned by or directly affecting the activities of financial institutions such as banks and brokerage houses. \u00a7 18(d)(1) on its face covers a wide range of finance-related activities.<\/p>\n\n\n\n

While SIPCO argued before the Board and on appeal that because it disclaimed claims 3 and 4, the Board should not have relied on them in analyzing whether the \u2019842 patent is CBM eligible. However, SIPCO ultimately conceded at oral argument that a patent may be CBM eligible based on a single claim and that the Board could have properly relied on claims 3 or 4.<\/p>\n\n\n\n

The Federal Circuit then turned to the Board\u2019s decision as to whether the \u2019842 patent qualifies as a \u201ctechnological invention\u201d under \u00a7 18(d)(1). Section 18(d)(1) excludes \u201cpatents for technological inventions\u201d from CBM review. However, Congress did not define technological invention, instead leaving it to the USPTO to issue regulations for determining whether a patent is for a technological invention. 37 C.F.R. \u00a7 42.301:<\/p>\n\n\n\n

In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: [1] whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and [2] solves a technical problem using a technical solution.<\/p><\/blockquote>\n\n\n\n

If each part of this definition is satisfied, then the patent is not eligible for CBM review.<\/p>\n\n\n\n

The Federal Circuit held that the Board misread and mischaracterized the features of claim 1 in its analysis of dependent claims 3 and 4, it did not appreciate that the claims provide a technical solution to a technical problem, under part 2 of 37 C.F.R. \u00a7 42.301. The Federal Circuit said that the question of whether a patent is for a \u201ctechnological invention\u201d is fact-specific and must be considered on a case-by-case basis. The Federal Circuit said that the problem solved by the claims is technical in nature. The Board limited its characterization of the \u201cproblem\u201d being solved to an example problem provided in the background that is resolved by the claims\u2014automating machine service requests. But it is clear from both the claims and the specification that the claimed invention implements a communication system that connects an unconnected, remote device with a central station.<\/p>\n\n\n\n

The Federal Circuit identified the technical problem solved by the claims as: how to extend the reach of an existing communication system from a central location to a remote, unconnected device while protecting against unwanted interference with the transmitted signals. The Federal Circuit found that the claims solved this problem with a technical solution. Because SIPCO\u2019s claims combine certain communication elements in a particular way to address a specific technical problem with a specific technical solution, the Federal Circuit reversed the Board\u2019s finding that the patent does not satisfy the second part of its \u201ctechnological invention\u201d regulation.<\/p>\n\n\n\n

The Federal Circuit found that the Board did not analyze whether the \u2019842 patent satisfied the first part of \u00a7 42.301(b) because it found that the patent did not satisfy the second part. Rather than address this issue in the first instance on appeal, the Federal Circuit remanded the case for the Board to address the first part of \u00a7 42.301(b) under the proper claim construction.<\/p>\n\n\n\n

Judge Reyna dissented because the majority\u2019s opinion was contrary to basic tenants of claim construction set forth in Phillips, and the deference owed to underlying factual findings under Teva. Judge Reyna said that the majority reached its own construction by improperly reading a functional limitation into the claim from a preferred embodiment. Further, the Board\u2019s construction rests on factual findings that are supported by substantial evidence, including expert testimony on the meaning of the claim term \u201clow-power transceiver\u201d to a person of ordinary skill in the art.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Sipco, LLC v. Emerson Electric Co., [2018-1635] (September 25, 2019), the Federal Circuit reversed the PTAB’s construction of \u201clow power transceiver\u201d and its finding that U.S. Patent No. 8,908,842 does not satisfy the second part of \u00a742.301(b) defining \u201ctechnological … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[39,7],"tags":[],"class_list":["post-2526","post","type-post","status-publish","format-standard","hentry","category-cbmr","category-claim-constructino"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2526","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2526"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2526\/revisions"}],"predecessor-version":[{"id":2527,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2526\/revisions\/2527"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2526"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2526"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2526"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}