In AC Technologies S.A., v. Amazon.com, Inc., [2018-1433] (January 9, 2019) the Federal Circuit affirmed the Final Written Decision of the PTAB ruling certain claims of AC Technologies S.A.’s U.S. Patent No. 7,904,680 unpatentable. AC complained that the Board, on reconsideration, invalidated claims based on a ground of unpatentability raised in their petition but not addressed in the original Final Written Decision, arguing that the Board exceeded its authority and deprived it of fair process by belatedly considering this ground.

The Federal Circuit disagreed, noting that precedent mandated that the Board consider all grounds of unpatentability raised in an instituted petition. The Board complied with due process, and AC did not persuade it that the Board erred in either its claim construction or its ultimate conclusions of unpatentability.  The Petition contained three grounds, Ground 1 alleged unpatentability giving the claims, and in particular, the term “computer unit” a narrow construction.  Grounds 2 and 3 asserted unpatentability over the same reference, giving “computer unit” a broader construction.

The Board invalidated claims based upon Grounds 1 and 2, but not three.  When the inconsistency was pointed out on request for rehearing, the Board address Ground 3.  The Federal Circuit said that no due process violation occurred here. As AC admits, 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. The Federal Circuit noted that alhough AC did not receive a hearing specific to Ground 3, it never requested one. Had AC desired a hearing, it should have made a request before the Board.