The Patent Trial and Appeal Board (PTAB) denied petitioners’ request for rehearing of the judgment and final written decision by finding that they were not required to issue a final written decision on claims that were challenged in the petition, but for which review was not instituted.  

Compass Bank, Commerce Bancshares, Inc., and First National Bank of Omaha (petitioners) filed petitions to institute inter partes review (IPR) of several claims of the Intellectual Ventures’ patent, but the PTAB only instituted review of a single patent claim. Intellectual Ventures filed a request for adverse judgment and disclaimer of the challenged patent claim, and the PTAB entered a final written judgment against that claim. Petitioners filed a rehearing request contending the PTAB violated 35 U.S.C. § 318(a), which provides that the PTAB “shall issue a final written decision with respect to patentability of any patent claim challenged by the petitioner,” by interpreting “claim challenged” as only the claims for which IPR is instituted. The PTAB noted that the petitioners failed to consider 35 U.S.C. § 316, which allows the director of the PTO to prescribe regulations “setting forth the standards for showing of sufficient grounds to institute a review.” For example, 37 C.F.R. § 42.108 provides that the PTAB may deny review on some or all grounds of unpatentability for some or all of the challenged claims, and such denial is a decision not to institute IPR on that ground.  Other regulations provide instructions limiting adverse judgments and estoppel to claims or grounds that could have been raised during trial, which is “a contested case instituted by the board based upon a petition.” 37 C.F.R. § 42.2; see also 37 C.F.R. §§ 42.73(b),(d). Therefore, the PTAB was not persuaded that § 318(a) requires issuance of a final written decision regarding patentability for all patent claims challenged by the petition, and denied petitioner’s request for rehearing.

Compass Bank v. Intellectual Ventures II LLC, IPR2014-00719, Paper 22 (PTAB Mar. 9, 2015).