AOL Inc. v. Coho Licensing LLC

Informative decision only: persuasive authority, not binding precedent. When a party asks for rehearing by an expanded panel in an inter partes review, the Board will not treat the request as proper, because panel designation is within the sole authority of the Director (which may be delegated) and parties may not request expansion. A dissent from the denial of institution that rests on the sufficiency of the evidence in the Petition is, by itself, not a reason to expand the panel, because it shows neither an abuse of discretion nor a conflict with an authoritative decision, a precedential Board decision, or a contrary legal interpretation of a statute or regulation. No prior precedent directly addressed this issue in the text. The decision relies on the Board's Standard Operating Procedures (BPAI SOP 1 (Rev. 13)), which let the Chief Judge, on behalf of the Director, expand a panel on a suggestion from a judge or panel, and it cites Target Corp. v. Destination Maternity Corp., IPR2014-00508 (Paper 28), and Apple Inc. v. Rensselaer Polytechnic Instit., LLC, IPR2014-00319 (Paper 20), as examples where expansion was warranted. A petitioner denied institution over a split panel cannot use the dissent to obtain an expanded panel. It must show a real legal conflict, and it cannot use rehearing to fill gaps in the Petition. A patent owner can oppose any rehearing request that rests on a dissent over how persuasive the evidence is, and it can rely on the point that arguments and disclosures omitted from the Petition cannot have been overlooked. The decision cites no Federal Circuit, CCPA or Supreme Court authority. It relies on the statute, 37 C.F.R. § 42.71, § 42.104(b)(4) and § 42.104(a)(4). LEGAL TEST OR STANDARD: Whether to expand a panel on a suggestion involves consideration of whether the issue is one of conflict with an authoritative decision of our reviewing courts or a precedential decision of the Board, or whether the issue raises a conflict regarding a contrary legal interpretation of a statute or regulation. A dissent on the sufficiency of the evidence, by itself, shows neither an abuse of discretion nor a conflict. On the merits, rehearing requires showing that something was misapprehended or overlooked, and 37 C.F.R. § 42.71(d) requires the request to specifically identify where each matter was previously addressed. TRIGGERING FACTS: The Board denied institution of an inter partes review of Patent 8,024,395 B1 over a dissent. The dissent concerned whether the Petition sufficiently showed that the Spawn reference discloses transfer of subtasks to a sub-allocating computer. The Petitioner then asked for rehearing by an expanded panel, relying on the dissent. It also argued new Spawn disclosures and admitted prior art that were not developed in the Petition. Only a legal conflict, not a disagreement among judges over facts or evidence, could bring a request inside the rule. KEY QUOTE: "A dissent in the denial of institution based on the sufficiency of the evidence presented in the Petition, by itself, is not a reason to expand the panel." (Paper 12, p. 3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The decision cites Target Corp. v. Destination Maternity Corp., Case IPR2014-00508, slip op. at 56 (PTAB Feb. 12, 2015) (Paper 28), and Apple Inc., v. Rensselaer Polytechnic Instit., LLC., Case IPR2014-00319 (PTAB Dec. 12, 2014) (Paper 20) (per curiam), as examples of expansion based on inconsistent statutory interpretation. It also cites BPAI SOP 1 (Rev. 13) (Feb. 12, 2009). PRACTICE TIP: Do not ask the Board for an expanded panel, and do not treat a dissent over the sufficiency of the evidence as grounds for rehearing. Put every disclosure and argument for each limitation in the Petition, because the Board will not consider new explanations raised on rehearing.