Post-grant proceedings including IPRs, CBMs and PGRs are “heard by at least 3 members of the Patent Trial and Appeal Board.” 35 U.S.C. § 6(c). The following cases address attempts by the parties to request an expanded panel.
AOL Inc. v. Coho Licensing LLC, IPR2014-00771, Paper 12 (PTAB Mar. 24, 2015) (informative). Parties are not permitted to request, and panels do not authorize, panel expansion. The members of the Board deciding an institution matter do not select themselves, or other Board members, to decide the matter, upon request of a party or otherwise. The Board’s Standard Operating Procedures state that the Chief Judge, on behalf of the Director, may act to expand a panel on a “suggestion” from a judge or panel. Whether to expand the panel in an IPR matter on a “suggestion” involves consideration of whether the issue is one of conflict with an authoritative decision of our reviewing courts or a precedential decision of the Board, or whether the issue raises a conflict regarding a contrary legal interpretation of a statute or regulation. A dissent in the denial of institution based on the sufficiency of the evidence presented in the petition, by itself, is not a reason to expand the panel.
Unilever, Inc. v. Procter & Gamble Co., IPR2014-00506, Paper 25 (PTAB Dec. 10, 2014) (informative). The Board denied petitioner’s request for an expanded panel that includes the Chief Judge. The members of the Board deciding an institution matter are not authorized to select themselves or other Board members to decide the matter, upon request of a party or otherwise. According to the Standard Operating Procedure, the Chief Judge, on behalf of the Director, may act to expand a panel on a suggestion from a judge or panel. The Standard Operating Procedure creates “internal norms for the administration of the Board” but “does not create any legally enforceable rights.”
Hopkins Manufacturing Corp. v. Cequent Performance Prods., Inc., IPR2015-00616, Paper 11 (PTAB Nov. 4, 2015). Parties are not permitted to request panel expansion. The Board’s Standard Operating Procedures state that the Chief Judge, on behalf of the Director, may act to expand a panel on a “suggestion” from a judge or panel.
*Note: The Board revised its standard operating procedure to provide that, while a party may not request an expanded panel, a party may suggest the need for an expanded panel. Patent Trial and Appeal Board Standard Operating Procedure 1 §III.C. (Rev. 14) (May 8, 2015).