AOL v. Coho Licensing (IPR2014-00771, Paper 12): No Party Requests for Expanded Panels, and No New Arguments on Rehearing

When a panel splits two to one in denying institution, a petitioner may hope that a larger panel will see things differently. AOL Inc. v. Coho Licensing LLC, IPR2014-00771, Paper 12 (entered March 24, 2015), explains why a party cannot ask for that, and restates the limits of a request for rehearing.

Background

AOL and Cloudera petitioned for inter partes review of a Coho Licensing patent, arguing that a reference called Spawn anticipated the claims. A majority of the panel denied institution because the petition did not show how Spawn disclosed transferring or allocating subtasks to a sub-allocating computer, as the claims required. One judge dissented.

The petitioners filed a request for rehearing “by an expanded panel” under 37 C.F.R. § 42.71(c) and (d). They argued that the dissent strongly favored rehearing and that the majority had misapprehended Spawn.

What the Board decided

Expanded panel. The Board held the request improper. Panel members do not choose themselves or add colleagues at a party’s request; designating panels is the Director’s authority under 35 U.S.C. § 6, which may be delegated. Under the Board’s standard operating procedures as they then stood, the Chief Judge could expand a panel on a suggestion from a judge or panel, but parties could not request expansion, and the procedures created no enforceable rights. Expansion had been used for matters such as conflicting interpretations of a statute, not for disagreements about the evidence. A dissent on the sufficiency of the petition’s evidence was not, by itself, a reason to expand.

Rehearing on the merits. Under § 42.71(d), the requesting party must identify what the Board misapprehended or overlooked and where it was previously addressed. The Board found that the request mostly offered new material:

• passages of Spawn on “spawning” subtasks and on the “leaf” of the task tree that the petition had not cited or explained for the disputed limitation;
• disclosure the petition had relied on for a different limitation; and
• reliance on admitted prior art and the knowledge of a skilled person, although the petition’s ground was anticipation by Spawn alone.

The Board could not have overlooked arguments that were never made. A rehearing request, it said, is not an opportunity to mend gaps in the petition. The petition had to explain how the construed claim is unpatentable and where each element is found in the prior art (§ 42.104(b)(4)), and it did not meet the § 314(a) reasonable likelihood threshold. Rehearing was denied.

The dissenting judge agreed that a split decision is not an invitation to seek an expanded panel, while maintaining that he would have instituted trial.

Why it matters

The decision makes two points that remain useful. First, the petition is the petitioner’s one opportunity to make its case for institution: each limitation must be tied to specific disclosures with explanation, as in Cisco v. C-Cation on incorporation by reference. See the basics of an IPR petition. Second, rehearing is narrow; it corrects errors in deciding what was presented, not omissions in what was presented.

Later developments

The procedures for review beyond the original panel have changed significantly. In 2018 the Board revised its standard operating procedures and created a Precedential Opinion Panel. After United States v. Arthrex, Inc. (2021), the USPTO established Director Review of Board decisions. These procedures have been revised more than once, so readers should check current USPTO guidance rather than relying on the 2015 framework described here.

Key takeaways

• Parties may not request an expanded panel; panel designation belongs to the Director.
• A split decision on the evidence is not, without more, a reason to expand a panel.
• A rehearing request must point to matters previously addressed; new arguments and new citations do not qualify.
• Institution depends on the petition as filed, which must explain where each element is found.