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ARTICLE · 30 JANUARY 2019

The PTAB Must Address All Grounds, Even After Final Written Decision

Jones Day
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Amazon.com, Inc. and Blizzard Entertainment, Inc. ("Amazon") filed a petition for inter partes review challenging the validity of AC Technologies S.A.'s ("AC") U.S. Patent No. 7,904,680.

United StatesIntellectual Property
Kenneth Luchesi
Kenneth Luchesi
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Amazon.com, Inc. and Blizzard Entertainment, Inc. ("Amazon") filed a petition for inter partes review challenging the validity of AC Technologies S.A.'s ("AC") U.S. Patent No. 7,904,680.  See IPR2015-01802.  Amazon asserted three grounds of unpatentability in the petition.  The Board instituted review on all challenged claims, but on only the first two grounds of unpatentability.  After a full trial and oral argument, the Board issued a final written decision finding some, but not all, of the claims unpatentable.  Amazon then moved for reconsideration, noting that in light of the Supreme Court's decision in SAS, the Board should have also considered the third ground.  The Board agreed, permitted both parties to submit additional arguments, expert declarations, and supporting exhibits, and then found the remaining claims invalid based on the third ground of unpatentability.  AC appealed the decision, arguing that the Board exceeded its authority and deprived it of due

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