The PTAB has designated two of its earlier decisions relating to expanded panels as “informative.” The PTAB panels had denied requests for expanded panels in both these decisions. Informative decisions are meant to illustrate board procedure.
Most PTAB decisions are made by three-judge panels, but in rare instances, the board has used expanded panels to address important issues. For example, a seven-judge panel was recently used to resolve the issue whether companies challenging patents can join multiple petitions that they have filed into one proceeding. Losing parties now regularly request rehearing of final written decisions, seeking an expanded panel review of such decisions. The intent of the two decisions designated informative last week is to discourage litigants from seeking expanded panels.
The first decision, AOL v. Coho, makes clear that only the board’s Chief Judge has the authority to expand a panel on a “suggestion” from a judge or panel. Accordingly, parties are not permitted to request, and panels do not authorize, panel expansion. The decision notes that the standard operating procedure of the board creates no legally enforceable rights for the litigants. The AOL order further explains that the decision to expand a panel "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.“ The mere existence of a dissent in a decision does not entitle a party to an expanded panel on rehearing. Likewise, the second decision designated informative, Unilever v. Proctor & Gamble, explains that "the members of the board deciding an institution matter are not authorized to select themselves or, of their own accord, select other board members to decide the matter, upon request of a party or otherwise."
The board subsequently revised its standard operating procedure to clarify that, although a party may not request an expanded panel, a party is permitted to suggest the need for an expanded panel. Another important change to the SOP relates to the board’s pilot program allowing a single judge to make institution decisions, and subsequently adding participation of two additional judges for the trial and a final written decision.
AOL Inc. v. Coho Licensing LLC, No. IPR2014-00771 (PTAB Mar. 24 2015); Conopco, Inc. dba Unilever v. Procter & Gamble Co., No. IPR2014-00506 (PTAB Dec. 10 2014); PTAB SOP 1 § III.C. (Rev. 14) (May 8, 2015).