May 8, 2015

Board Clarifies When Expanded Panel Can Consider an IPR Issue

By Matthew L. Cutler, Principal

In the aftermath of the decision by an expanded panel of PTAB judges in Target Corp. v. Destination Maternity Corp. (deciding, in a 4-3 decision, that both joinder of issues and joinder of parties is allowed in inter partes review proceedings), several parties have pushed various panels of PTAB judges to submit one issue or another to an expanded panel. Today, the PTAB designated two decisions as “Informative Decisions” – each clarifying the circumstances under which an expanded panel may be employed in an IPR proceeding.

In the first decision, AOL Inc. v. Coho Licensing LLC, IPR2014-00771, Petitioner sought rehearing by an expanded panel in view of a dissent that was filed in the Board’s decision to institute. In the second decision, Conopco, Inc. v. Procter & Gamble Co., IPR2014-00506, Petitioner sought an expanded panel to rehear the Decision to Institute, including the attendance of the Chief Administrative Patent Judge on the expanded panel.

In both decisions, the respective panels denied the requests for an expanded panel and explained the circumstances under which an expanded panel may be used in IPR proceedings. More specifically, the panel members from the Board do not have the authority to refer an issue to an expanded panel, by request of a party to the proceeding, or otherwise. “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.” Conopco, at 6. Instead, the Board explained, the Standard Operating Procedures indicate that the Chief Judge, acting on behalf of the Director, is given the sole authority to expand a panel “on a suggestion from a judge or panel.” Id.