Federal Circuit Casts Shade on USPTO’s Stacked Panels

September 01, 2017
Patent Office Trials Blog

Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co., Ltd. (Federal Circuit 2016-232, August 22, 2017)

By David Emery

In a concurring opinion by Judge Timothy Dyk (joined by Judge Wallach), Judge Dyk expressed that there are “serious questions as to the Board’s (and Director’s) interpretation of the relevant statutes and current practices” when expanding Board panels. Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co., Ltd. (Federal Circuit 2016-232, August 22, 2017)(concurring opinion, p. 2)

The concurring opinion addressed two issues: joinder and expanded administrative panels.  While both issues were raised by the appellant Nidec, the Court did not decided these issues, which were moot because the PTAB’s invalidity judgement was affirmed on grounds not implicating joinder or the expanded panel.

To provide some background, an initial three judge panel instituted review on one of two grounds pursued by Broad Ocean.  The Board declined to institute on a second ground that relied on a translation of a foreign reference because the petitioner did not submit an affidavit attesting to the accuracy of the translation.  Broad Ocean later filed a second petition, which included the affidavit, and requested that the second petition be joined with the first petition.  However, the three judge panel held that the second petition was time barred pursuant to 35 U.S.C. §315(b), as it was filed 1 year after the Broad Ocean was served with a complaint. The panel found that the exception to the §315(b) bar based on joinder is limited to joinder by another party, and that the exception does not apply to joinder of a new issue by the same party.

In response, Broad Ocean filed a request for rehearing.  The Board, now expanded to five Administrative Patent Judges, granted the rehearing and set aside the original panel’s decision by interpreting §315(c) to include issue joinder, in addition to the well-recognized party joinder.  Nidec appealed the invalidity determination, the joinder decision and the PTAB’s use of an expanded panel.

The concurring opinion by Judge Dyk first addressed the PTAB’s joinder interpretation.  Addressing the interplay between sections (b) and (c) of §315, it was noted that section (c) does not explicitly allow a joinder of new issues.  In further dicta, the opinion reflected doubt that Congress would have intended that petitioners could introduce “time-barred” issues into a timely petition.

Interestingly, the opinion also characterized the expansion as a “practice of expanding panels where the PTO is dissatisfied with a panel’s earlier decision.”  While the Director proffered that this expansion is to “secure and maintain uniformity of the Board’s decisions,” the concurring opinion casts doubt on whether panel expansion is the appropriate mechanism to obtain uniformity.


Dave Emery

Email: demery