In NIDEC Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., [2016-2321] (August 22, 2017), the Federal Circuit affirmed the Board’s determination that claims 1–3, 8, 9, 12, 16, and 19 of U.S. Patent No. 7,626,349 are invalid as anticipated or obvious.

The Board instituted review on the ground of obviousness over Bessler and Kocybik, but declined to institute review on the ground of anticipation
by Hideji, because Broad Ocean had failed to provide an affidavit attesting to the accuracy of the submitted translation of Hideji as required by 37 C.F.R. § 42.63(b).

Broad Ocean filed a second petition again asserting that the challenged claims are anticipated by Hideji, including the required affidavit, and requesting that the Board join the Second Petition with Broad Ocean’s already-instituted IPR involving the First Petition.  The Board again declined to institute review, this time on the grounds that the Petition was time-barred.

Broad Ocean requested a rehearing of the panel’s decision, which was granted by an expanded panel of five Administrative Patent Judges.  The expanded administrative panel set aside the original panel’s decision and
concluded that § 315(c) permits the joinder with the original IPR.

On appeal the parties agreed that, if the Federal Circuit affirmed as to obviousness, it need not address Nidec’s challenges to the procedural aspects of the Board’s joinder decision and its holding concerning anticipation by Hideji.  Because the Federal Circuit affirmed as to invalidity for obviousness, it did not have to reach the Board’s joinder decision.

Judges Dyk and Wallach wrote separate to express their concerns as to the United States Patent and Trademark Office’s position on joinder and expanded panels.  Although the panel did not decide the  propriety of joinder, the judges had “serious questions” as to the Board’s (and the Director’s) interpretation of the relevant statutes and current practices.  Judges Dyk and Wallach think it unlikely that Congress intended that petitioners could employ the joinder provision to circumvent the time bar
by adding time-barred issues to an otherwise timely proceeding.

Of greater note is Judges Dyk and Wallach’s concern about the PTO’s practice of expanding administrative panels to decide requests for rehearing.  Broad Ocean requested rehearing and further requested that the rehearing be decided by an expanded panel.  While Judges Dyk and Wallach recognized the importance of achieving uniformity in PTO decisions, they questioned whether the practice of expanding panels
where the PTO is dissatisfied with a panel’s earlier decision is the appropriate mechanism of achieving the desired uniformity.

It is difficult to image a practice more offensive to fair adjudication then adding judges to a panel to achieve a desired outcome.  It is outrageous to make parties participate in an adjudication where the outcome is predetermined by court packing.