Docket No. 2018-1433 (IPR2015-01802)
MOORE, SCHALL, STOLL
January 9, 2019
Brief summary: Board’s reconsideration after FWD found not to violate AC’s due process since Board was obligated to consider all grounds and AC had an opportunity to respond.
Summary: AC appealed Board final written decision (FWD) finding certain claims of AC’s US 7,904,680 relating to data access and management unpatentable. The Board invalidated the remaining claims after reconsideration. AC argued that in its reconsideration decision “the Board exceeded its authority and deprived it of fair process by belatedly considering” “a ground of unpatentability raised…but not addressed in the” FWD. The Board’s reconsideration resulted from Amazon’s request for the same because the FWD “did not address whether claims 2, 4, and 6 would have been obvious if the host were treated as the ‘computer unit’, as Amazon had asserted in Ground 3” of its Petition. AC argued “that Ground 3 had never been part of the IPR” but “the Board determined that it should reach the challenge.” The parties “submitted additional arguments, expert declarations, and supporting exhibits” and the Board considered AC’s claim construction arguments. The Board ultimately “determined that nothing in the claims or the specification limited the claimed wireless network to a particular type of network, and it held that Amazon had proven claims 2, 4, and 6 unpatentable.” The FC panel explained that “[i]f the Board institutes an IPR, it must…address all grounds of unpatentability raised by the petitioner” (SAS, US 2018; Adidas, FC 2018; Bio Delivery Scis., FC 2018), and that “[t]his precedent forecloses AC’s argument”. Instead, the FC panel wrote, the Board “would have violated the statutory scheme” had it not reconsidered its decision (“neither § 314(b)’s timing requirements nor § 314(d)’s limits on appelability alter the Board’s statutory obligation to rule on all claims and grounds presented in the petition” (SAS)). The FC panel also “recognize[d] that SAS did not displace the Board’s responsibility to comply with due process” and explained that “parties before the Board must receive adequate notice of the issues the Board will decide as well as an opportunity to be heard on those issues” (Genzyme, FC 2016). And it concluded that “[n]o due process violation occurred here” since “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”, and AC never request a hearing specific to Ground 3 (Intell. Ventures, FC 2017). The FC panel also considered the Board’s construction of “the claim limitations reciting ‘piece(s)’” de novo (In re Man Mach, FC 2016; Teva, US 2015 (factual findings involving extrinsic evidence for substantial evidence)), and under the broadest reasonable interpretation standard (FN 1 explains that the Phillips claim construction standard applies to petitions filed on or after Nov. 13, 2018). The FC panel agreed with the Board’s construction based on the specification and claims (e.g., “Having broadly drafted its claims…, AC cannot now read features from preferred embodiments into its claims to bolster its validity arguments.” In re Van Guens, FC 1993). The FC panel also agreed with the Board’s finds of anticipation and obviousness (e.g., “a reference need to state a feature’s absence in order to disclose a negative limitation” (Sud-Chemie, FC 2009)). Thus, the Board decision was affirmed.