The following cases address attempts by the parties to change the composition of the panel of the Board appointed to adjudicate the review.
Mylan Pharmaceuticals Inc. v. Astrazenaca AB, IPR2015-01340, Paper 16 (PTAB May 2, 2016). The Board granted rehearing of a petition and instituted the proceeding against claims directed to a pharmaceutical compound. In the request for rehearing, petitioner objected to the inclusion on the panel of a former partner at the law firm representing patent owner. Petitioner did not allege a conflict of interest, but argued that the mere appearance of impropriety warranted rehearing and exclusion of the former partner. The former partner was replaced on the panel that instituted the proceeding. The institution decision did not address the replacement.
Coherus Biosciences Inc. v. Abbvie Biotechnology Ltd., IPR2016-00172, Paper 20 (PTAB June 29, 2016). The Board denied patent owner’s request for rehearing of the institution decision and rejected the implications that the panel composition was improper. Patent owner argued that the APJ who authored the institution decision: (1) was a lawyer in the Wilmington, Delaware office of the law firm of Petitioner’s counsel as of August 2014, (2) that office was the same office in which Petitioner’s back-up counsel also was located in August 2014, and (3) the authoring APJ and the back-up counsel appeared as co-counsel in two lawsuits. Patent Owner argued that this information shows an appearance of impropriety sufficient to justify reconsideration by a newly composed panel. The Board disagreed, noting that after one year has passed, a federal employee, such as an APJ, no longer has a “covered relationship” with a former employer. Further, the Board did not find that patent owner’s contentions provide a sufficient basis for requesting a newly composed panel. First, the rehearing request fails to address the Ethical Standards or explain why the information patent owner presents amounts to a “covered relationship” between any of the panel members and petitioner’s counsel. Indeed, no “covered relationship” within the meaning of 5 C.F.R. § 2635.502 exists—or existed at any time during the pendency of this case— between the authoring APJ and counsel for any party in the case, because the authoring APJ had severed her relationship with petitioner’s law firm more than a year before participating in the present case. Under the controlling regulation regarding covered relationships, patent owner failed to show an appearance of impropriety.