{"id":9443,"date":"2017-11-27T17:13:41","date_gmt":"2017-11-27T23:13:41","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=9443"},"modified":"2018-01-10T16:06:04","modified_gmt":"2018-01-10T22:06:04","slug":"fact-check-how-frequent-is-ptab-panel-expansion","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=9443","title":{"rendered":"Fact check: How frequent is PTAB panel expansion?"},"content":{"rendered":"

In today’s oral argument of Oil States<\/em>, there was an exchange where the government’s representative was asked how frequently panels are enlarged by the Board. The answer given is shown below (with a chunk omitted for brevity):<\/p>\n

15\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 CHIEF JUSTICE ROBERTS:\u00a0 Does it<\/p>\n

16\u00a0\u00a0\u00a0 comport to due process to change the<\/p>\n

17\u00a0\u00a0\u00a0 composition of the adjudicatory body halfway<\/p>\n

18\u00a0\u00a0\u00a0 through the proceeding?<\/p>\n

19\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 MR. STEWART:\u00a0 This has been done on<\/p>\n

20\u00a0\u00a0\u00a0 three occasions.\u00a0 It’s been done at the<\/p>\n

21\u00a0\u00a0\u00a0 institution stage.<\/p>\n

22\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 CHIEF JUSTICE ROBERTS:\u00a0 So I’ll<\/p>\n

23\u00a0\u00a0\u00a0 rephrase the question.\u00a0 Was it illegal under<\/p>\n

24\u00a0\u00a0\u00a0 those three occasions?<\/p>\n

 <\/p>\n

…<\/p>\n

 <\/p>\n

11 \u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0MR. STEWART:\u00a0 I — I don’t know how<\/p>\n

12\u00a0\u00a0\u00a0 the institution decisions came out.\u00a0 This has<\/p>\n

13\u00a0\u00a0\u00a0 not been done at the merits stage, if you will,<\/p>\n

14\u00a0\u00a0\u00a0 when patentability was actually being — being<\/p>\n

15\u00a0\u00a0\u00a0 determined.\u00a0 But our primary point would be<\/p>\n

16\u00a0\u00a0\u00a0 that if there’s a constitutional flaw in that<\/p>\n

17\u00a0\u00a0\u00a0 procedure, then a person who is actually harmed<\/p>\n

18\u00a0\u00a0\u00a0 by its use in a particular case -\u00ad<\/p><\/blockquote>\n

You can view the whole exchange in the transcript at pages 45-47 [here<\/a>].<\/p>\n

I came away from reading that exchange thinking that the government was saying that the PTO has only expanded IPR\/CBM panels three times. \u00a0If that was the intended message to the Court, then I think the government needs to double-check its figures. \u00a0By the Chief Judge of the PTAB’s own slide presentation to PPAC on November 9, 2017 [Link],<\/a> there have been four expanded panels in 2017 alone. \u00a0Also, those do not include the expanded panels in IPR2013-00219 (Yissum),<\/span><\/del> IPR2014-00508 (Target), IPR2014-00319 (Apple), and IPR2015-00762 (Zhongshan). \u00a0If four expanded panels were used in 2017 alone, it appears that the PTO is using expanded panels with increasing frequency.<\/p>\n

Moreover, the substantive use of an expanded panel in Ex parte\u00a0Alappat<\/em> cannot be overlooked. \u00a0Granted, Alappat<\/em> was pre-IPR days. \u00a0However, the PTO showed in Alappat<\/em> that it is certainly willing to use an expanded panel for a substantive issue rather than just procedural issues. \u00a0For more on Alappat<\/em>, see the Federal Circuit’s en banc opinion, particularly Judge Mayer’s (and Judge Michel’s) dissent,\u00a0[here].<\/a><\/p>\n

Ex parte Alappat<\/em> was recounted in rather dramatic fashion in this FICPI publication [Link]<\/a>\u00a0 at pages 98-99, where it was noted that the original three-member Board panel was expanded by adding the Commissioner of the USPTO, “Deputy Commissioner Comer (a person with no patent background or expertise), Assistant Commissioner Samuels (a trademark expert with no patent background) as well as the Chair and Vice-Chair of the Board.” \u00a0The original three-member panel was subsequently out-voted 5-3.<\/p>\n

UPDATE 12\/21\/17<\/span>:<\/em><\/p>\n

A further expanded panel was used in IPR2017-01186 on December 19, 2017. \u00a0The Chief Judge of the Board, acting under authority delegated by the Director, expanded a three judge panel by adding himself, the Deputy Chief Judge of the PTAB, and two Vice Chief Judges. \u00a0The issue dealt with was the constitutional issue of sovereign immunity: \u00a0[ERICSSON INC. and TELFONAKTIEBOLAGET LM ERICSSON\u00a0v.\u00a0REGENTS OF THE UNIVERSITY OF MINNESOTA<\/a>].<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In today’s oral argument of Oil States, there was an exchange where the government’s representative was asked how frequently panels are enlarged by the Board. The answer given is shown below (with a chunk omitted for brevity): 15\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 CHIEF JUSTICE ROBERTS:\u00a0 Does it 16\u00a0\u00a0\u00a0 comport to due process to change the 17\u00a0\u00a0\u00a0 composition of the […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/9443"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=9443"}],"version-history":[{"count":13,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/9443\/revisions"}],"predecessor-version":[{"id":9520,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/9443\/revisions\/9520"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=9443"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=9443"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=9443"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}