The Patent Trial and Appeal Board (“PTAB”) posted a revision of its Standard Operating Procedure 1 (SOP 1) that covers the assignment of Administrative Patent Judges to merits panels, interlocutory panels, and expanded panels in appeals, interferences, and American Invents Act (“AIA”) Reviews. PTAB clarified that although a party may not request an expanded panel, a party is permitted to suggest the need for one. SOP 1, Section III.C, (Rev. 14) (May 8, 2015).
The revision was an expansion of two decisions regarding petitioner requests for expanding panels on rehearing of Board denials of inter partes review. The PTAB denied a request for rehearing before expanded panels in both Conopco, Inc. v. Procter & Gamble Company, Case IPR2014-00506 (PTAB Dec. 10, 2014) (Paper 25) (“‘506 IPR”) and AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771 (Mar. 24, 2015) (Paper 12) (“‘771 IPR”).
Both decisions stated that the Board panel members do not have authority to grant a request for panel expansion, citing the then-current SOP 1. The ‘771 IPR elaborated that Petitioners may suggest panel expansion if the issues presented in the request for rehearing raised (1) a conflict of legal authorities or (2) a conflict regarding a contrary legal interpretation of a statute regulation.
Neither the ‘771 IPR nor the ‘506 IPR are binding authority but serve to clarify that the Chief Judge, not a panel, may in his or her discretion act to expand a panel on a suggestion, not request, from a judge, panel, or party.
Now under the revision, PTAB has made clear that parties to AIA proceedings, such as post-grant review, also may suggest the need for an expanded panel.