Same PTAB Panel Can Institute and Decide Merits of an IPR

On January 13, 2016, a split Federal Circuit panel in Ethicon Endo-Surgery, Inc. v. Covidien LP, No. 14-1771, determined that having the same PTAB panel decide the merits of an instituted inter partes review petition does not violate the AIA or the Due Process Clause of the Constitution. The majority analogized the process to a district court determining likelihood of success on the merits and then the merits of the case, and also found that delegation was within the implied authority of agency heads and permitted under the AIA. Judge Newman dissented, stating that the AIA requires separating the institution and trial phases of inter partes review because institution is assigned to the Director and the trial phase is assigned to the PTAB. A discussion of Federal Circuit’s decision in Ethicon can be found on Finnegan’s AIA blog.