AC TECHNOLOGIES S.A. v. AMAZON.COM, INC., Appeal No. 2018-1433 (Fed. Cir. January 9, 2019). Before Moore, Schall, and Stoll. Appealed from the Patent Trial and Appeal Board. (IPR Procedure)
Amazon filed a Petition for Inter Partes Review (IPR) at the Patent Trial and Appeal Board (PTAB). The Petition requested invalidation of AC’s patent in view of a prior art reference on three separate grounds: 1) all of the claims of AC’s patent would have been obvious under a narrow construction of the prior art reference; 2) the independent claim was anticipated under a broad construction of the prior art reference; and 3) the dependent claims would have been obvious under the broad construction of the prior art reference. The PTAB instituted review of Grounds 1 and 2, and stated that its analysis of Ground 1 rendered Ground 3 moot.
The PTAB agreed with AC that under the narrow construction of the prior art reference, the claims would not have been obvious under Ground 1. However, the PTAB found that under the broad construction, the independent claim was anticipated under Ground 2. The PTAB’s decision did not include a decision on Ground 3, because review had not been instituted on it. Amazon moved for consideration of Ground 3, and the PTAB solicited additional arguments, expert declarations, and supporting exhibits from both parties for consideration of Ground 3. The PTAB then ruled that the dependent claims were invalid for obviousness under Ground 3.
AC appealed, arguing that the PTAB procedurally erred and violated its due process rights by invalidating the dependent claims on a ground of review that it did not institute.
Did the PTAB err in invalidating claims based on a ground of review it did not institute? (continue reading)
Summary by: Brian Repper
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