Board Updates Public on Manner of Designating Expanded Panel
As the Patent Trial & Appeal Board (PTAB) is now issuing an increasing number of Final Written Decisions (FWD) in addition to Institution Decisions, it is, not surprisingly, experiencing an increasing number of Requests for Rehearing. Many such Requests are seeking expanded panel review. To date, the Board has issued expanded panel decisions in a small handful of cases directed to fundamental questions of law and AIA trial practice. For example, expanded panels were used in Target Corp. v. Destination Maternity Corp., (IPR2014-00508), which was expanded twice to explore issue joinder authority of 35 U.S.C. §315(c), and Apple Inc., v. Rensselaer Polytechnic Instit., LLC., Case (IPR2014-00319) to explore 35 U.S.C. §315(b). Since these decisions, parties seeking rehearing have been asking for the same expanded panel treatment.
- AOL Inc. v. Coho Licensing LLC, Paper 12, No. IPR2014-00771 (24 March 2015)
- Conopco, Inc. v. Procter & Gamble Co., Paper 25, No. IPR2014-00506 (10 December 2014)
The intent of these informative decisions is clearly to eliminate such requests going forward. However, it seems likely that such requests, or “suggestions” will likely persist in one form or another.
[W]hether to expand the panel in an inter partes review matter on a “suggestion” [referring to an internal, PTAB suggestion] involves consideration of whether the issue is one of conflict with an authoritative decision of our reviewing courts or a precedential decision of the Board, or whether the issue raises a conflict regarding a contrary legal interpretation of a statute or regulation.
This explanation will undoubtedly be interpreted by some as an invitation to “suggest,” rather than request, an expanded panel based upon a perceived inconsistency with an earlier decision. Indeed, given the number of decisions issuing from the PTAB, and the lack of precedential value accorded to the overwhelming majority of them, it is becoming increasingly common to see directly conflicting opinions on legal issues such as privity, real-party-in interest, evidentiary issues, etc. While some such inconsistencies are simply a difference in the underlying facts, others are not as cleanly distinguished.