Whether the Board has authority to consider unpatentability on a ground of obviousness that is not 'only on the basis of prior art consisting of patents or printed publications' in an inter partes review proceeding under 35 U.S.C. § 311(b)

QUESTION PRESENTED As part of the Leahy-Smith America Invents Act (2011), Congress created an inter partes review (‘IPR”) procedure to allow petitioners to challenge the validity of an issued patent in an administrative proceeding before the Patent Trial and Appeal Board (“Board”). In doing so, Congress carefully balanced the rights of patent owners and the interests of patent challengers by creating an administrative procedure constrained by several important restrictions. One such restriction, set forth in 35 U.S.C. § 311(b), is that a petitioner in an IPR may challenge the patentability of a patent claim “on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications” (emphasis added). Below, the Board instituted two IPRs and found the challenged claims of B/E Aerospace’s patents unpatentable on the basis of expert testimony, which was in turn based on unpublished, proprietary documents that are neither prior-art patents nor printed publications. The question presented is: In an inter partes review proceeding under 35 U.S.C. § 311(b), does the Board have authority to consider unpatentability on a ground of obviousness that is not “only on the basis of prior art consisting of patents or printed publications?”