PTAB Chief Denies Dictating Results With Expanded Panels - Law360
`
`Page 1 of 3
`
`Portfolio Media. Inc. | 111 West 19th Street, 5th floor | New York, NY 10011 | www.law360.com
`Phone: +1 646 783 7100 | Fax: +1 646 783 7161 | customerservice@law360.com
`
`PTAB Chief Denies Dictating Results With
`Expanded Panels
`
`By Ryan Davis
`
`Law360, New York (February 1, 2018, 7:55 PM EST) -- The Patent Trial and Appeal Board’s
`chief judge pushed back Thursday on criticism from U.S. Supreme Court justices and
`others that the board can “stack the deck” and manipulate outcomes of cases by
`expanding panels, saying expansions aim to spotlight important issues, not dictate
`findings.
`
`At a meeting of the Patent Public Advisory Committee, Chief Judge David Ruschke said
`that the public has “a little bit of a misconception as to what's actually happening” when
`the board decides to rehear decisions with a larger group of judges than the three on the
`original panel.
`
`The board's goal is to use those expanded panels to send a message to other judges and
`the public that the case involves an important issue they should be aware of, and to
`ensure that the PTAB’s decisions are consistent with each other, he said.
`
`"When we expand a panel, it's meaningful, and you should be looking at that as a potential
`future change in jurisprudence or ... in terms of process and procedure before the board,"
`he said. "So that's what we're trying to do when it comes to our current panel expansion
`process."
`
`The board is not aiming to overturn panel decisions that leaders of the board disagree with
`or to stack the deck in favor of one result or another, Chief Judge Ruschke said. The board
`has convened many expanded panels in America Invents Act review cases, but only two of
`them have ended up with a different conclusion from the original panel, an outcome that
`should happen “rarely if at all,” he said.
`
`“Now that could be called flipping or that could be called stacking, but to me, that's a
`subset of expansion,” he said. “We have not done that in the last 18 months since I've
`been chief. That is something that we view as not a practice to do if we can avoid doing it
`to maintain uniformity.”
`
`Concerns about “panel-stacking” at the PTAB took center-stage at the Supreme Court
`during oral arguments in November in a case known as Oil States, in which the court will
`decide if AIA reviews are unconstitutional. Two justices said they worried that the board’s
`ability to expand panels could violate due process.
`
`Justice Neil Gorsuch said it appeared the board was saying it will “stack the deck with
`judges whom we like," while Chief Justice John Roberts said PTAB officials adding more
`judges makes the board appear to be "a tool of the executive activity, rather than anything
`resembling a determination of rights."
`
`https://www.law360.com/articles/1007003/print?section=ip
`
`3/23/2018
`
`INTELLECTUAL VENTURES II EX. 2006
`American Honda v. Intellectual Ventures II
`IPR2018-00348
`
`

`

`PTAB Chief Denies Dictating Results With Expanded Panels - Law360
`
`Page 2 of 3
`
`Those comments were spurred by a discussion in Oil States’ brief of a U.S. Patent and
`Trademark Office attorney's statement to the Federal Circuit during an argument that a
`panel was expanded because "the director is trying to ensure that her policy position is
`being enforced by the panels." Former USPTO Director Michelle Lee has disputed that
`characterization, telling Law360 last month that she never stacked panels during her
`tenure.
`
`Chief Judge Ruschke said Thursday that since he joined the board in 2016, the board’s
`practice has been that the only judges added to expanded panels are himself, the deputy
`chief judge and sometimes other board leaders, in order to send a signal that the issue is
`important. In the past, the judges added to panels were chosen randomly, but that is no
`longer the case, he said.
`
`"We are trying to take out the possibility that we are choosing judges because they will
`vote or have a history of voting on an issue in a certain way," he said. "That's not how we
`look at the expansion process and that's not how we've done it over the last two years."
`
`He acknowledged that when the chief judge sits on a panel with rank-and-file PTAB judges,
`“there might be some sort of, I guess, implicit pressure to vote the way of your boss, but
`one thing that we've tried to maintain and stress to the judge is when we sit on panels, we
`have a single vote,” just like the chief justice of the Supreme Court.
`
`He also noted that while parties are currently not notified that a panel has been expanded
`until the decision issues, the board is "strongly considering" revising its policies to provide
`notice in advance "for transparency reasons."
`
`Chief Judge Ruschke said that it's possible future expanded panels could reach a different
`result from the original panel, but "the ideal situation" is to go from a unanimous original
`decision to a unanimous expanded panel decision with the same outcome.
`
`The underlying goal of all expanded panels is to ensure that the PTAB's case law is
`consistent and that outcomes do not vary from panel to panel on the same issues, he said.
`
`"It would be intolerable for a patent owner, in my mind, to come and be treated one way
`in front of one panel and a second way in front of a different panel," he said. "So in those
`situations, we have expanded the panel in order to make sure that those patent owners or
`those petitioners are treated the same."
`
`He noted that in many cases, expanded panel decisions will be designated as informative,
`an action the chief judges can take unilaterally and means the holding is not binding but
`should guide future panels.
`
`They will also be considered for designation as precedential, which makes them binding
`and requires a vote by all 275 PTAB judges, Chief Judge Ruschke said. Making rulings
`precedential is "probably our best way to maintain uniformity," he said, and the board is
`examining its policies for ways to streamline the complex process.
`
`For instance, the board has a committee of judges that reviews decisions and identifies
`those involving important issues that are candidates for becoming precedential, and the
`chief judge said he takes its recommendations seriously.
`
`"It's a process that takes a while, but I think what we've done to it is fine-tune it so that
`the chances of success of moving cases through precedential process are much higher
`than they have been in the past," he said.
`
`He pointed to several decisions that have been made precedential in recent months,
`
`https://www.law360.com/articles/1007003/print?section=ip
`
`3/23/2018
`
`

`

`PTAB Chief Denies Dictating Results With Expanded Panels - Law360
`
`Page 3 of 3
`
`including one dealing with multiple petitions and one about evaluating whether
`patents are eligible for the AIA's business method patent review program.
`
`--Editing by Jack Karp.
`
`All Content © 2003-2018, Portfolio Media, Inc.
`
`https://www.law360.com/articles/1007003/print?section=ip
`
`3/23/2018
`
`