Lone Star Silicon Innovations LLC v. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office

Any person, other than the patent owner, may request initiation of inter partes review proceedings against an issued patent, by filing a petition with the Patent and Trademark Office that identifies challenged claims and the grounds asserted for each challenged claim. 35 U.S.C. §§ 311–12. The Patent Trial and Appeal Board (“PTAB” or “Board”) decides whether to institute trial, based on the information in the petition and, if filed, a patent owner preliminary response. 35 U.S.C. § 314. At the conclusion of an instituted trial, the Board issues a final written decision determining the patentability of any patent claim challenged by the petitioner. 35 U.S.C. § 318. The questions presented are:

1. whether, in inter partes review proceedings, the Board may issue a final written decision that invalidates duly issued patent claims based on a ground not asserted by the petitioner in the corresponding petition; and

2. whether judicial review is available to remedy the Board’s unauthorized final decision invalidating those claims based on a ground not asserted in the petition.