United States: No Rehearing Response During POP Request Pendency

In Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-1393, Paper 19, (PTAB April, 7 2020), the Board denied briefing based on a lack of jurisdiction while the Precedential Opinion Panel request was pending. The question of when jurisdiction over a PTAB case transfers from the Board to the Precedential Opinion Panel is not clear.

In 2018, the USPTO created the Precedential Opinion Panel to establish binding authority at the PTAB. The PTAB's Standard Operating Procedure 2 (Revision 10) (SOP2) discusses the Precedential Opinion Panel review process. The process begins with a Screening Committee that reviews the requests for a Precedential Opinion Panel. After review, the Screening Committee sends its recommendations to the Director. The Director then decides whether to convene a Precedential Opinion Panel.

If a Precedential Opinion Panel is convened, the Panel will enter an order notifying the parties and the public that a Precedential Opinion Panel has been designated. The Precedential Opinion Panel "maintain[s] authority over all issues in the case while the case is under Precedential Opinion review." Although jurisdiction is with the Precedential Opinion Panel, the Panel may "delegate authority back to the prior Board panel assigned to the case to handle routine interlocutory matters, conduct conference calls, or attend to other matters outside of the intended scope of the Precedential Opinion Panel review, among other things."

Although the SOP2 details the procedure for the Precedential Opinion Panel review process, it does not provide clear guidance whether the jurisdiction transfers at the initiation of the request or the designation of the Precedential Opinion Panel. The Board in Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-1393, Paper 19, (PTAB April, 7 2020) believed the former when it denied briefing based on a lack of jurisdiction while the Precedential Opinion Panel request was pending.

In Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-1393, Paper 19, (PTAB April, 7 2020), Sand Revolution II LLC filed a petition for an inter partes review which was denied by the PTAB. After the denial, Petitioner requested a rehearing of the denial decision and that the PTAB's Precedential Opinion Panel reconsider the denial decision. The Patent Owner requested the Board's authorization to file additional briefing responding to Petitioner's request for rehearing. The Board denied the briefing request because the request to the Precedential Opinion Panel was still pending consideration, and, thus, the Board believed it did not have jurisdiction over the proceeding. Once the Precedential Opinion Panel request was denied, the Board then granted Patent Owner's additional briefing request. Specifically, the Board stated "jurisdiction over this proceeding has returned."

Takeaway:  The SOP2's lack of guidance over the transfer of jurisdiction and the Board's interpretation in Sand Revolution create an area for potential inconsistencies between the handling of different cases by the Board.  But at least this panel felt that it could not permit additional briefing during pendency of the POP request.

*Laura recently joined the New Lawyers Group in Jones Day's Atlanta Office.

Originally published February 19, 2021.

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