Two CAFC judges in Nidec case: we question whether the practice of expanding panels

The outcome was that appellant lost:


Nidec Motor Corporation (“Nidec”) appeals a final
written decision of the Patent Trial and Appeal Board
(“Board”) in an inter partes review (“IPR”). The Board
determined that claims 1–3, 8, 9, 12, 16, and 19 of U.S.
Patent No. 7,626,349 (the “’349 Patent”) are invalid as
anticipated or obvious. We affirm.



What the CAFC did not decide:


Both Broad Ocean and the Director argue that the
Board properly applied the joinder and time bar statutes
to allow joinder and institution in this case. Nidec disagrees.
We need not resolve this dispute. Nor need we
address the Director’s and Broad Ocean’s arguments that
the Board’s joinder determination is non-appealable in
light of 35 U.S.C. § 314(d)’s bar of judicial review for
institution decisions or Nidec’s argument that the Board’s
practice of expanding panels violates due process. For the
reasons set forth below, we affirm the Board’s conclusion
that all of the challenged claims are unpatentable as
obvious over Bessler and Kocybik. Because there is no
dispute that Broad Ocean timely filed the First Petition
(containing the obviousness ground), the issues on appeal
relating only to the Board’s joinder determination as to
anticipation ultimately do not affect the outcome of this
case. Both parties agree that, if we affirm as to obviousness,
we need not address Nidec’s argument that various
procedural aspects of the Board’s joinder decision require
reversal of its holding concerning anticipation by Hideji.
See Oral Arg. at 1:28–2:33 (June 8, 2017), available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
16-2321.mp3 (Nidec agreeing that we need not address
the anticipation ground based on Hideji in any respect if
we determine that the Board was correct in its obviousness
determination under Bessler and Kocybik).


Nidec loses:


The Board concluded that “the use of
sinewave commutation and independent Q and d axis
currents would have provided predictable results to
address known problems associated with other types of
motors.” J.A. 29. Nidec asks us to reweigh the evidence
the Board used to make its determination, which we may
not do. See In re Warsaw Orthopedic, Inc., 832 F.3d 1327,
1334 (Fed. Cir. 2016).



The opinion was per curiam. There was a two judge
concurring opinion which included:


Although we do not decide the issues here, we
have serious questions as to the Board’s (and the Director’s)
interpretation of the relevant statutes and current
practices.

(...)

The issue in this case is whether the time bar provision
allows a time-barred petitioner to add new issues,
rather than simply belatedly joining a proceeding as a
new party, to an otherwise timely proceeding. Section
315(c) does not explicitly allow this practice. We 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, whether the petitioner seeking to add new
issues is the same party that brought the timely proceeding,
as in this case, or the petitioner is a new party.



Of some interest as to the expanded panel:



Nidec alleges that the two administrative judges added
to the panel were chosen with some expectation that
they would vote to set aside the earlier panel decision.
The Director represents that the PTO “is not directing
individual judges to decide cases in a certain way.” Director
Br. 21 (quotation marks omitted). While we recognize
the importance of achieving uniformity in PTO decisions,
we question 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. But, as with the joinder issue, we need
not resolve this issue here. Nor need we address the
predicate issue of appealability.