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.  

Last Friday the PTAB issued two informative decisions, which make clear that designation of an expanded panel is not by party request, but rather, and internal decision of the Board. 

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.

For example, in the AOL decision the Board explained that the mere existence of a dissent in an FWD does not entitle one to an expanded panel on rehearing.  In doing so, the PTAB highlighted instances where an expanded panel was appropriate, noting:

[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. 

Until the Board is able to reformulate the Standard Operating Procedures (SOP II) which govern the procedural requirements to designate decisions precedential (currently it is next to impossible given the requirement of a majority vote of all APJs, including those that are outside of the Trial Section), suggestions for expanded panels are likely to continue on this justification.  Steps taken now to increase consistency across PTAB panels will spare the agency unnecessary grief before the CAFC.