By Josh Nightingale and Matt Johnson

The USPTO has revised its standard operating procedure (SOP) governing the assignment of judges to panels in Patent Trial and Appeal Board (PTAB) cases.  The SOP, available here, provides guidance to Board administrative personnel for assigning panels of at least three administrative patent judges to ex parte appeals, reexamination appeals, reissue appeals, interferences, and AIA proceedings.  Among other things, the SOP details processes and considerations for initial panel assignments and provides reasons for why a panel may be changed or expanded.  Key provisions of the SOP are summarized below.

Guidelines for Panel Assignments.  The SOP includes provisions for avoiding conflicts of interest in panel assignments.  Each judge must provide a list of conflicts to Board personnel responsible for paneling, and a judge must not be paneled on any case in which he or she has a conflict.  Further, judges must inform Board personnel that re-paneling may be necessary upon becoming aware of a conflict in a particular case.

Judges’ technology preferences and experience levels can be factors in panel assignments.  The SOP states that each judge is characterized as having preferences in one or more technology areas (biotechnology/pharma, business methods, chemical, electrical, mechanical, and design), and Board personnel responsible for paneling should assign each case to a panel having appropriate technology preferences.  Board personnel will panel new judges with more experienced judges, and new judges should generally not be paneled on cases with other new judges or other less experienced judges.

The SOP also provides that AIA proceedings (i) challenging the same patent, or (ii) involving the same patent owner and related subject matter should be assigned to the fewest total judges as is practicable.  This practice promotes efficiency and consistency of results.

Panel Changes.  The SOP states that panel changes may occur when a judge recuses herself (e.g., upon becoming aware of a conflict of interest) or becomes unavailable (e.g., due to maternity or paternity leave, sick leave, etc.).  Panel changes may also be used to meet the PTAB’s deadlines.  The SOP makes clear that panel changes are disfavored and must be approved by the PTAB’s Chief Judge or Deputy Chief Judge.  Further, when a panel change has occurred, the Board will issue an order notifying the parties and providing the reason for the panel change.

Expanded Panels.  The SOP states that expanded panels with more than three judges are disfavored and ordinarily will not be used.  All decisions to use an expanded panel must be recommended by the PTAB’s Chief Judge and approved by the Director of the USPTO.  “An expanded panel may be used … to secure and maintain uniformity of the Board’s decisions, e.g., in related cases ordinarily involving different three judge panels.”  (SOP at 15.)  The SOP indicates that establishing binding agency authority on issues of exceptional importance is to be addressed by the Precedential Opinion Panel established in the USPTO’s Revised SOP 2, and not by expanded panels.  (Id. n.4.)

Expanded panels may be suggested by Board members, Patent Business Units, patent applicants, patent owners, and petitioners.  A member of the PTAB leadership monitors expanded panel requests, presents requests to the Chief Judge, and notifies parties as to whether requests are granted or denied.  If available, the judges on the initial panel shall be designated as part of the expanded panel.

Takeaways

Prior to the release of this SOP, the PTAB’s panel assignment process was largely unknown to the general public, and there have been concerns about the PTAB’s lack of transparency.  The release of this SOP shows that the PTAB is making an effort to be more transparent, and it should eliminate some of these concerns.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 225 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.