Takeaway: The fact that a panel of the Board issues a split decision is not by itself a reason to allow for review by an expanded panel.

In its Decision, the Board denied Petitioner’s request that an expanded panel be allocated to decide the merits of the request for rehearing the denial of institution, and denied Petitioner’s request for rehearing.

The Board noted that the rules do not permit a party to request panel expansion or a panel to authorize panel expansion. Rather, the Chief Judge may act to expand a panel on a “suggestion” from a judge or panel. Whether to expand the panel based upon a “suggestion” requires consideration of whether the issue is one of conflict with an authoritative decision of the reviewing courts or precedential decision of the Board, or whether the issue raises a conflict regarding a contrary legal interpretation of a statue or regulation. A dissent in the denial of institution based on the sufficiency of the evidence presented in the Petition is not, by itself, a reason to expand the panel because it does show an abuse of discretion or a conflict that weighs in favor of panel expansion.

Further, the Board found that the request for rehearing was improper because Petitioner included arguments in its request for rehearing that were not included in the Petition. Therefore, those grounds could not have been misapprehended or overlooked by the Board, as required for a request for rehearing.

In his dissent, Judge Capp agreed with the Board’s ruling regarding the expanded panel, but disagreed, for reasons previously stated, with the decision not to institute trial.

AOL Inc. and Cloudera, Inc. v. Coho Licensing LLC, IPR2014-00771
Paper 12: Decision Denying Petitioner’s Request for Rehearing
Dated: March 24, 2015
Patent 8,024,395 B1
Before: Miriam L. Quinn, Linda M. Gaudette, and William A. Capp
Written by: Quinn
Dissent by: Capp