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The Court of Appeals for the Federal Circuit on January 9, 2019, held that the Patent Trial and Appeal Board (PTAB) did not err procedurally when it invalidated the claims of a patent on a ground that it did not institute in its institution decision. AC Techs., S.A. v. Amazon.com, Inc., Fed. Cir., No. 2018-1433, 1/09/19.

The PTAB issued a final written decision ruling that certain claims of AC Technologies’ patent related to data access and management were unpatentable. On reconsideration, it invalidated the remaining claims of the patent based on a ground of unpatentability raised by Amazon in their petition but not addressed in the final written decision. AC Technologies appealed, arguing that the PTAB exceeded its authority. The Federal Circuit disagreed, stating that “precedent forecloses AC’s argument” and that the PTAB “would have violated the statutory scheme had the Board not done so.”