Expanded Does Not Equal “Stacking”

As I explained previously, an expanded panel at the PTAB is an exceedingly rare occurrence. But, as the Federal Circuit made clear in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.(here), on at least one occasion, PTAB panel expansion was utilized to drive uniformity on an inconsistently decided question of law (issue joinder). That is, an expanded panel was utilized to change the underlying decision in an issue joinder dispute. PTAB critics were quick to latch onto this “panel stacking” as evidence of an anti-patent bias. This criticism was even echoed by the Supreme Court during the Oil States argument.

Since that time, the Board has continued to utilize expanded panels on issues of importance without changing the underlying result. However, the recent panel stacking notoriety continues to haunt all expanded panel decisions.

Dispelling this perception, the Chief Judge clarified the purpose and framework of expanded panels during yesterday’s quarterly meeting of the Patent Public Advisory Committee (PPAC).

The slides presented to the PPAC explained that an expanded panel is rare, and ordinarily will not be used. That said, where appropriate, the current expanded panel practice was explained as exemplified by the recent General Plastic decision. The current practice seeks to ensure predictable and uniform application of agency policy; ensure that similarly situated parties, under the same facts, are treated the same; and provides notice to the public. The Chief Judge explained this current practice as:

• all expanded panel decisions explain the basis for expansion

• panel expanded without changing the underlying result

• emphasizes the underlying result or reasoning

• potential designation of decision as informative, and

• may consider the decision for precedential designation

The Chief emphasized that the only expanded panel decisions in AIA trials that changed the underlying result were, years earlier, and limited to questions of issue joinder. Target Corp. v. Destination Maternity Corp., Case IPR2014-00508, -00509; and, Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Case IPR2015-00762

More from yesterday’s presentation can be found (here).