PTAB Must Consider All Grounds Raised In An Instituted Petition

In AC Technologies S.A. v. Amazon.com, the Federal Circuit confirmed the PTO's interpretation of SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018) (discussed in greater detail here) requiring that the PTAB address each ground of invalidity raised in an instituted petition in its final written decision. 912 F.3d 1358 (Fed. Cir. 2019).

As we previously discussed [ here], the patent office guidance issued after SAS requires the Board to institute both on all invalidity grounds and on all claims raised in an instituted petition–this despite the fact that SAS said only that review of all challenged claims was required, but was silent on a requirement that all grounds be reviewed. In AC Technologies, the Federal Circuit relied upon several of its recent cases to hold that precedent mandates that the Board consider all grounds of unpatentability raised in an instituted petition.