Whether the Patent Trial and Appeal Board may invalidate patent claims based on a ground not asserted by the petitioner

QUESTIONS PRESENTED 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.