A final decision in inter partes review (IPR) need not address claims raised in the original petition but denied review. Here, for example, the Board’s final decision was found to be proper even though it addressed only the claims as to which review was granted and omitted analysis of the remaining claims raised in the petition. “Section 318(a) only requires the Board to address claims as to which review was granted.”
Background / Facts: The patents on appeal here from IPR proceedings at the PTO are directed to computer software testing and debugging. The petition for inter partes review was filed for claims 1–15 and claims 20–33. The Board instituted review of claims 1–9, 11, and 28–29. After oral hearing, the PTO (Board) issued a final decision, but did not address the validity of claims 10, 12-15, 20-27, and 30-33.
Issue(s): Whether, because § 318(a) directs the Board to issue a final written decision with respect to “any patent claim challenged by the petitioner,” the Board’s final decision must address every claim raised in the petition.
Holding(s): No. “First, the text makes clear that the claims that the Board must address in the final decision are different than the claims raised in the petition. … Second, the statute would make very little sense if it required the Board to issue final decisions addressing patent claims for which inter partes review had not been initiated. … [W]e find no statutory requirement that the Board’s final decision address every claim raised in a petition for inter partes review. Section 318(a) only requires the Board to address claims as to which review was granted.”