On September 24, 2019, the U.S. Court of Appeals for the Federal Circuit ruled in favor of Finnegan client SIPCO, vacating a Patent Trial and Appeal Board (PTAB) decision that invalidated certain claims of a SIPCO wireless communication patent. Emerson Electric had petitioned for covered business method (CBM) review of the SIPCO patent. The PTAB determined that the challenged claims of the patent were invalid under Alice and also obvious. However, in a precedential opinion, the Federal Circuit said that the PTAB “misread and mischaracterized” features of the invention during CBM review. The court also reversed the PTAB’s finding that the patented invention did not solve a “technical problem using a technical solution,” which is part of the threshold test for instituting a CBM review. Accordingly, the court vacated the PTAB’s invalidity findings and remanded for further proceedings.
