Fed Circ asks Iancu to weigh in on panel precedence

The US Court of Appeals for the Federal Circuit has invited the US Patent and Trademark Office’s chief to tell the court what deference should be afforded to the newly-formed Precedential Opinion Panel (POP).

In September last year, WIPR reported that Andrei Iancu was launching the panel as part of an update to its Patent Trial and Appeal Board (PTAB) procedures to serve two primary functions.

First, “it may be convened to rehear matters in pending trials and appeals”, such as issues of exceptional importance, the USPTO said. Second, the POP may assist Iancu in “determining whether a decision previously issued by the PTAB should be designated as precedential or informative”.

The panel will typically comprise of Iancu, the USPTO’s commissioner for patents, Drew Hirshfeld, and the chief judge for the PTAB, Scott Boalick.

On Monday, August 12, the Federal Circuit asked Iancu to describe what deference, if any, he thinks the POP should be given, particularly in relation to Facebook v Windy City Innovations.

In the Facebook suit, the Federal Circuit is currently deliberating over whether the PTAB exceeded its statutory authority when it granted joinder to Facebook in order to add new claims and new issues to two instituted inter partes reviews.

“The board exceeded its statutory authority, abused its discretion, and has routinely done so, by erroneously concluding that section 315(c) allows for same-petitioner joinder, ie, the joining of a new petition filed after the one-year bar date to the petitioner’s own already-instituted IPR,” said Windy City in its brief.

In March, the POP decided that “issue joinder” is permissible at the PTAB’s discretion in Proppant Express Investments v Oren Technologies.

According to the panel, section 315(c) provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding

However, the POP added that it would only exercise its discretion in limited circumstances, to avoid undue prejudice to a party and where fairness requires it.

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