Federal Circuit Confirms That Same PTAB Panel Can Institute And Decide An IPR

In Ethicon Endo-Surgery, Inc. v. Covidien LP, a split Federal Circuit panel held that having the same PTAB panel that instituted an inter partes review also decide its merits does not violate the AIA or the Constitution. No. 2014-1771 (Fed. Cir. January 13, 2016). Ethicon, appealing the invalidation of a patent directed to surgical stapling devices, argued on appeal that this practice raised due process concerns and contravened the AIA's assignment of those functions.

As a preliminary matter, the majority held that 35 U.S.C. § 314(d) did not bar consideration of the issue. The Court held that Section 314(d) only bars appellate review of institution decisions and that Ethicon's challenge was to the PTAB's authority to make a final decision.