In Ethicon Endo-Surgery, Inc. v. Covidien LP, Appeal No. 2014-1771, the Federal Circuit upheld the USPTO’s practice of having the same PTAB panel institute and issue the final decision in an IPR.

Covidien petitioned for IPR of an Ethicon patent. A PTAB panel granted the petition, and later that same PTAB panel found all claims of the Ethicon patent obvious in view of the prior art. Ethicon appealed, arguing that under the AIA, separate panels must institute an IPR and issue the IPR’s final decision. Ethicon also argued that because the PTAB is initially exposed to a limited record it may prejudge the case before seeing the full record. This allegedly raises “serious due process concerns.”

The Federal Circuit held that where no other issues of procedural fairness are alleged, the USPTO’s assignment of a single panel to both institute and issue a final decision in an IPR does not violate due process. The Federal Circuit also determined that nothing in the structure or legislative history of the AIA reflects a congressional intent for separate PTAB panels to institute and issue the final decision for an IPR. On the merits, the Federal Circuit affirmed the PTAB’s finding that all claims of Ethicon’s challenged patent were obvious in view of the prior art.

Judge Newman dissented, concluding that the AIA requires that the PTO Director make the institution decision and the PTAB issue the final decision.