SAS forecloses argument that Board exceeded its statutory authority by addressing non-instituted ground

Published March 18, 2019

In January, the Federal Circuit decided AC Technologies S.A. v., Inc., et al., which held that the PTAB does not exceed its statutory authority when it renders a decision on grounds presented in an IPR petition but not instituted, as long as the PTAB complies with due process.

The Federal Circuit looked to the authorizing statute 35 U.S.C. §314(b) and cited the Supreme Court case SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) to interpret the statute, stating:

The Supreme Court recently clarified that this statutory language [35 U.S.C. §314(b)] “indicates a binary choice – either institute review or don’t.” If the Board institutes an IPR, it must issue a final written decision addressing all claims challenged by the petitioner.

The Federal Circuit found that the PTAB did not exceed its statutory authority when it reconsidered its final written decision and addressed non-instituted Ground 3. Further, the Court determined that, while the PTAB must still provide due process to the parties, the appellant provided briefing and evidence to the PTAB specifically on the non-instituted ground, and so had been heard on the non-instituted ground.