Monday, September 30, 2019

CAFC addresses CBM in Sipco v. Emerson

The outcome:

We reverse the Board’s claim construction of “low
power transceiver” and its finding that the ’842 patent does
not satisfy the second part of the regulation defining “technological invention.” § 42.301(b). Because the Board did
not address the applicability of § 42.301(b)’s first part, we
vacate and remand for consideration consistent with this

Judge Reyna's partial dissent:

I respectfully dissent from the majority’s decision that
rejects the Board’s claim construction in favor of its own
construction. The record is clear in two respects. First, the
majority reaches its own construction by improperly reading a
functional limitation into the claim from a preferred
embodiment. Second, the Board’s construction rests on factual findings that are supported by substantial evidence,
including expert testimony on the meaning of the claim
term “low-power transceiver” to a person of ordinary skill
in the art. In the end, the majority does not explain why
the Board’s construction is so “clearly at odds with the
claim construction mandated by” the intrinsic record that
the extrinsic evidence on which the Board relied can be discounted entirely. Phillips v. AWH Corp., 415 F.3d 1303,
1318 (Fed. Cir. 2005). The majority explains only that it
prefers a different construction. Because the majority’s
opinion is contrary to basic tenants of claim construction
set forth in Phillips, and the deference owed to underlying
factual findings under Teva, I respectfully dissent.


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