Concerns Raised Regarding PTAB Rules on Joinder and Expanded Panels

In Nidec Motor Co. v. Zhongshan Broad Ocean Motor Co., No. 16-2321 (Fed. Cir. Aug. 22, 2017), the Federal Circuit affirmed the PTAB’s decision that claims directed to a low-noise HVAC system were invalid as obvious. Broad Ocean had requested joinder of two petitions, the first was instituted on obviousness grounds and the second was directed to only anticipation grounds. While the Board originally found the second petition was time barred, on rehearing, an expanded panel of five judges instituted review of the second petition and granted joinder.

On appeal, the Federal Circuit held that the prior art did not teach away from the asserted combination because it did not discourage use of the technology. The Court also found no need to examine the Board’s construction of the preamble term “HVAC system” because the Board stated that the prior art taught an HVAC system whether or not the preamble was limiting. Because the Court held the claims were invalid as obvious, it did not need to reach a conclusion as to the anticipation grounds or the Board’s joinder decision.

In a concurring opinion by Judge Dyk, and joined by Judge Wallach, the judges thought “serious questions” were raised regarding the Board’s position on joinder and expanded panels. The judges also expressed concern that the joinder provision should not apply to add new patentability issues and circumvent the time bar by adding time-barred issues to an otherwise timely proceeding. In their view, expanded panels were being used inappropriately; though the judges recognized the importance of uniformity in decisions, they questioned whether the practice of expanded panels was the appropriate mechanism to achieve uniformity.