912 F.3d 1358
Fed. Cir.2019Background
- AC Technologies’ U.S. Patent No. 7,904,680 claims a data-management system that redundantly stores file "pieces" across storage units and uses measured data-transmission performance to copy and access data; dependent claims 2, 4, and 6 add a wireless‑network connection limitation.
- Amazon petitioned for inter partes review (IPR) relying on a single prior-art reference: Rabinovich ("Dynamic Replication on the Internet"), asserting anticipation/obviousness under three grounds tied to different mappings of the claimed "computer unit" to Rabinovich’s client or host.
- The PTAB instituted the IPR under the broader construction of "computer unit," instituting Grounds 1 and 2 but not Ground 3; the Board’s final written decision found most claims unpatentable over Rabinovich but left claims 2, 4, and 6 unresolved.
- Amazon moved for rehearing to raise Ground 3 (wireless‑network obviousness for claims 2, 4, 6); the Board granted rehearing, allowed supplemental briefing and evidence, and invalidated claims 2, 4, and 6 over Rabinovich.
- AC appealed, arguing the Board lacked statutory authority and denied due process by deciding a non‑instituted ground and contesting the Board’s claim construction ("pieces") and factual findings about Rabinovich’s replication counters (cnt(s,xs), cnt(E,xs)).
Issues
| Issue | Plaintiff's Argument (AC) | Defendant's Argument (Amazon) | Held |
|---|---|---|---|
| Whether the PTAB exceeded statutory authority by deciding a non‑instituted ground (Ground 3) | Board wrongly considered and decided Ground 3 after institution, exceeding §314(b) limits | SAS and subsequent Fed. Cir. precedent require the Board to address all grounds in an instituted IPR; remand or decision appropriate | Court held Board acted within authority and must address all grounds raised in an instituted petition; affirming rehearing decision |
| Whether Board violated due process by addressing Ground 3 without a separate hearing | AC lacked adequate notice/opportunity to be heard on Ground 3 | Board gave AC notice, allowed discovery, supplemental briefing, and evidence; AC did not request a hearing | Court held no due process violation; AC had opportunity to be heard and did not request additional hearing |
| Proper claim construction of "piece(s)" (must claims require storing only distinct pieces vs. whole file?) | "Pieces" requires storing distinct individual pieces; claims should not be read to cover whole-file redundant copying | Claims recite "at least one piece" and "pieces," permitting copying/storing multiple pieces up to an entire file; specification does not disclaim whole‑file storage | Court affirmed Board’s broad construction allowing whole-file storage as within claim scope |
| Whether Rabinovich discloses copying "independently of an access of the computer unit" and obviousness of wireless connection (claims 2,4,6) | Rabinovich’s replication relied on client access counts (cnt) so does not teach independent copying; wireless connection requires ad hoc direct host-to-host links not shown | Rabinovich’s cnt definitions do not require host access; cnt(E,xs) measures future demand; wireless connection limitation is broad and includes hubed wireless networks | Court found substantial evidence supporting Board’s factual findings that Rabinovich discloses independent copying and that connecting over a wireless network was obvious; affirmed invalidity of claims 2,4,6 |
Key Cases Cited
- SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018) (PTAB must institute all challenged claims or none; instituted reviews must address presented grounds)
- Adidas AG v. Nike, Inc., 894 F.3d 1256 (Fed. Cir. 2018) (PTAB must address non‑instituted grounds raised in instituted petitions on remand)
- BioDelivery Scis. Int’l, Inc. v. Aquestive Therapeutics, Inc., 898 F.3d 1205 (Fed. Cir. 2018) (post‑SAS precedent requiring consideration of non‑instituted grounds/claims)
- Wi‑Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) (courts enforce statutory limits on agency authority)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (standard of review for subsidiary factual findings in claim construction)
- In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993) (limitations from specification/embodiments should not be read into claims)
- Sud‑Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001 (Fed. Cir. 2009) (a reference can disclose a negative limitation by omission when it does not suggest the necessity of the omitted feature)