In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 2017 U.S. App. LEXIS 15923, Circuit Judge Dyk, in a concurring opinion joined by Circuit Judge Wallace, questioned “whether the practice of expanding panels where the PTO is dissatisfied with a panel’s earlier decision is the appropriate mechanism of achieving the PTO’s desire for uniformity.” Id. concurring slip op. at 4. This question arose in view of the Patent Trial and Appeal Board (PTAB) convening an expanded panel to consider Broad Ocean’s request for rehearing in the underlying inter partes review regarding the original three-Administrative Patent Judge panel decision to deny joinder under 35 U.S.C. § 315(b), (c). The newly expanded panel set aside the original panel’s decision and permitted joinder.
The enlargement of a PTAB panel upon rehearing raises two questions. Is the PTAB authorized to expand an original panel after it issues its decision? And does such an expansion of the panel after it issues its decision raise due process issues? Both of these questions were in front of the Federal Circuit in In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en banc), overruled on other grounds by In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). Continue Reading