Posts Tagged: "PTAB panel stacking"

On August 22nd, an order was entered in the inter partes review (IPR) proceedings currently ongoing between between VoIP-Pal and Cupertino, CA-based consumer device giant Apple Inc. The order removed the panel of administrative patent judges (APJs) that had been adjudicating the IPR, replacing them with Deputy Chief APJ Scott Boalick and Vice Chief APJs Jacqueline Bonilla and Michael Tierney. This is the second time the panel of APJs has been completely changed in this particular IPR proceeding. Originally, the panel had consisted of APJs Barbara Benoit, Lynne Pettigrew and Stacy Beth Margolies. Although no explanation was provided (as is typical with the PTAB) the panel was changed a few weeks after we reported that APJ Margolies had previously represented Apple in patent infringement proceedings in U.S. district court.

Those pointing to Alappat to support modern PTAB panel stacking are, however, grossly misstating the nature of the decision in Alappat, and ignoring the fundamental shift in the adjudicative responsibilities of the Board since passage of the America Invents Act (AIA)… As deeply troubling as Alappat is in terms of process and procedural fairness, the decision of the Federal Circuit to acquiesce to panel stacking in Alappat absolutely does not mean that panel stacking in contested cases under the AIA has been authorized by the Federal Circuit. Indeed, panel stacking, whether overt and on the record or as the result of secret internal deliberations within the PTAB, has never been authorized by the Federal Circuit relative to IPR, PGR and/or CBM proceedings. At some point whether panel stacking and admitted predetermination of outcomes is allowed in AIA contested cases will be a question of first impression at the Federal Circuit.

As we mark the close of yet another year, we’re provided with a perfect opportunity to look back on the previous twelve months and see what has transpired. No one could call it a good year for patent owners (except those with the largest pockets, of course) starting with the United States’ 10th-place ranking among national patent systems in the U.S. Chamber of Commerce’s IP Index, and it didn’t appear as though any weaknesses in uncertain patentability across the U.S. technological landscape were addressed in a positive manner this year. It’s inevitable that the ball will drop on New Year’s Eve and calendars everywhere will turn from 2017 to 2018. Whether the U.S. federal government will be able to stop the death knell sounding doom for our nation’s patent system, however, is still anyone’s guess and it seems far from likely.

Ruschke noted that his authority to expand the panels for PTAB trials doesn’t require him to notify the parties in the trial that the decision to expand the panel has been made. In response to questions on panel expansion, Ruschke noted that when the decision to expand the panel has been made, “the parties will find out in the decision when it issues at that point.” So decisions to expand panels are made in secret and parties in the trial only find out about panel expansion after a decision is reached… Interestingly, petitioner General Plastic requested a rehearing with an expanded panel but the expanded panel in that case found that PTAB’s governing statutes do not permit parties to request, or panels to authorize, expanded panels; panel expansion only lies within the Chief Judge’s discretion.