In Ethicon Endo-Surgery, Inc. v. Covidien LP, [2014-1771](January 13, 2016), the Federal Circuit held that the same panel of the PTAB can make the decision to institute an IPR and the final written decision, and that the PTAB did not err in finding the claims obvious.
The Federal Circuit held that neither the statute nor the Constitution precludes the same panel of the Board that made the decision to institute inter partes review from making the final determination, rejecting Ethicon’s challenge that this process raises “serious due process concerns.” The Federal Circuit said that combining the decision to institute with the final decision in a single panel is less problematic than other procedures approved by the Supreme Court. The Federal Circuit said that both the decision to institute and the final decision are adjudicatory decisions that do not involve combining investigative and/or prosecutorial functions with an adjudicatory function, and found the procedure directly analogous to a district court determining whether there is “a likelihood of success on the merits” and then later deciding the merits of a case.
Even if not Constitutionally infirm, a procedure that requires a panel of the Board to decide to institute without receiving evidence from the patent owner, and then deciding whether they were wrong does seem to be biased against the Patent Owner. The USPTO proposed a pilot program, under which an IPR trial will be conducted by a panel of three APJs, two of whom were not involved in the determination to institute the IPR. The USPTO published a request for comments in the Federal Register on August 25, 2015, seeking public comment on the proposed pilot program, and the comment deadline was later extended to November 18, 2015. The AIPLA weighed-in in favor of the change, noting that it would remove the actual or perceived bias in the process.