No need for PTAB to switch horses midstream: same panel can pen both institution and final written decisions.
In Ethicon Endo-Surgery, Inc. v. Covidien LP, the Federal Circuit confirmed the PTO’s policy of having a single panel conduct post-grant proceedings, from institution through final written decision. Against Judge Newman’s dissent, the majority of Judges Dyk and Taranto held this policy does not violate due process rights to an impartial decision-maker for the final written decision, as alleged by the patentee.
[Note that in August 2015 the USPTO asked for public comments on the possibility of a nonvoluntary pilot program under which a single ALJ would decide whether to grant any given petition to institute post-grant review (https://www.gpo.gov/fdsys/pkg/FR-2015-08-25/pdf/2015-21052.pdf). The public commentary period was extended to November 18, 2015.]
The majority also rejected Ethicon’s argument that the Board failed to properly consider evidence of commercial success, agreeing with the Board’s conclusion that numerous unclaimed features may have instead been responsible for the commercial success.
Strategy tip: As always, when submitting evidence of commercial success, make sure to establish a clear nexus between that commercial success and the patented invention.