Is the USPTO PTAB “Panel Stacking” When Using Expanded Panels?

Over the past few years, the United States Patent and Trademark Office Patent Trial and Appeal Board (PTAB) has implemented the use of expanded panels in a number of cases, causing many to question the method of selection and objective of these panels. Critics have accused the USPTO of “panel stacking,” that is, hand selecting certain Administrative Patent Judges for expanded panels to ensure the final decision is aligned with the Director’s intentions.

Perhaps in response to this criticism, the Chief Judge of the Patent Trial and Appeal Board, David Ruschke, addressed the purpose and application of expanded panels during recent Patent Public Advisory Committee meetings. He highlighted that the Chief Judge has the discretion to expand a panel when deemed necessary with respect to four specific reasons detailed in the PTAB Standard Operating Procedure 1 (SOP1). Judge Ruschke noted that the first two reasons provided were of particular importance. These reasons relate to cases involving an issue of exceptional importance, or cases where an expanded panel is necessary in order to maintain uniformity of Board decisions. In a possible attempt to ease concerns and promote transparency regarding the intent of the expanded panel, the Chief Judge said they are now providing the reason for the expansion of the panel in the opinion.

The Chief Judge also demonstrated an adherence to the SOP’s guidelines by approving an expansion in ony four cases for fiscal year 2017. The low number of cases approved for expansion follows the intent of the SOP to minimize the use of expanded panels, and closer inspection of the particular cases also reveals that the stated reasons appear to be in line with the purposes for which expansions were intended. In each of these four cases, a unanimous three-panel decision resulted in a unanimous five or seven-panel decision. These results support the Chief Judge’s contention that expanded panels are being used to emphasize the importance of the case or to show where the jurisprudence is going.

The Chief Judge further implied that “panel stacking” has not been the intended use of expanded panels by emphasizing that the underlying result has only changed in two lines of cases. However, in 2015 an attorney for the USPTO made an admission during oral arguments in Yissum Research Development Co. v. Sony Corp. that acknowledged the practice of panel stacking was used, as well as expressing the belief it was legally permitted under the holding of In re Alappat. More recently, during oral arguments for Oil States Energy Service, LLC, v. Greene’s Energy Group, LLC, et al. when Chief Justice Roberts asked whether “panel stacking” comported with due process, the Deputy Solicitor General, Malcolm L. Stewart, stated that panels had been expanded in only three occasions and that he did not think it was illegal.  Many were upset that the Federal Circuit did not provide a substantive opinion regarding the practice of “panel stacking” in the Yissum case due to a Rule 36 affirmance; perhaps the Oil States opinion from the Supreme Court will offer more clarity.



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