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AC Technologies S.A. v. Amazon.com, Inc.

PTAB May Return to Non-Instituted Grounds on Reconsideration

AC Technologies S.A. v. Amazon.com, Inc., __ F.3d __, 2019 WL 138176 (Fed. Cir. Jan. 9, 2019) (Moore, Schall, STOLL) (PTAB) (2 of 5 stars)

Fed Cir affirms IPR decision canceling certain of AC’s patent claims as obvious. There was no due process defect in Board’s reliance, in a reconsideration decision, on an obviousness ground that was non-instituted for mootness in its (pre-SAS) institution decision. The Board did not exceed its statutory authority when it reconsidered its final decision and addressed the non-instituted ground. “Indeed, it would have violated the statutory scheme had the Board not done so.” Op. at 9 (citing PGS Geophysical, 891 F.3d 1354 (Fed. Cir. 2018)). The opinion notes that “after the Board decided to accept Amazon’s rehearing request and consider Ground 3, it permitted AC to take discovery and submit additional briefing and evidence on that ground.” Id. at 10. AC could have requested a hearing, but did not.

On the merits, the Board did not err in claim construction under BRI. The opinion discusses how the intrinsic evidence supported the Board’s interpretation. This was a case where AC’s claims were broad, even if its written description was more detailed. “Having broadly drafted its claims to encompass both [varieties of system], AC cannot now read features from preferred embodiments into its claims to bolster its validity arguments.” Op. at 12. And the Board’s factual findings were supported by substantial evidence.

KEYWORDS: INTER PARTES REVIEW; RECONSIDERATION; OBVIOUSNESS (YES)