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, on remand from the Supreme Court, followed the reasoning of Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020).  Specifically, the Federal Circuit held that, just like 35 U.S.C. § 314(d) for inter partes review (IPR) under Thryv, decisions made by the Patent Trial and Appeal Board (PTAB) to institute proceedings for covered business methods (CBMs) under 35 U.S.C. § 324(e) are not reviewable.   The standard for inclusion within a decision to institute was, for the Court in both Thryv and SIPCO, essentially dictated by another Supreme Court decision, Cuozzo Speed Technologies, LLC v. Lee,  136 S. Ct. 2131 (2019) (barring review “of matters ‘closely tied to the application and interpretation of statutes related to’ the institution decision”).      After a brief introduction of the case by Yvonne Lee of WilmerHale and Scott Pierce of Foley Hoag, the group discussed the following:

1. The reasoning of the SIPCO decision to bar appeal of decisions to institute under 35 U.S.C. § 324(e).
2. Possible broader implications of the Supreme Court’s decision in Thryv, including other Board decisions that are not reviewable.
3. Fairness and efficiency of denying review of certain Board decisions.