802.04 Before Whom Held
An oral hearing is held before a panel of at least three judges of the Board. [ Note 1.] Judges may attend oral argument in person or remotely. [ Note 2.] Normally, an oral hearing panel consists of only three judges. If for some reason a judge on a panel of three that heard the oral argument is unable to participate in the final decision, another judge may be substituted at final decision for the unavailable judge, even though the substituted judge was not present at the oral hearing; no new oral hearing is necessary. [ Note 3.]
The Director of the USPTO or the Board may, in its discretion, use an augmented panel to hear a case. A decision to use an augmented panel may be made either upon the Director’s or the Board’s own initiative, or upon motion filed by a party to the proceeding. [ Note 4.]
For information concerning motions for an augmented panel hearing, see TBMP § 540. For further information concerning the constitution of Board panels, see In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545, 1547-51 (Fed. Cir. 1994) (en banc).
NOTES:
1. 37 C.F.R. § 2.129(a). See also Trademark Act § 17, 15 U.S.C. § 1067; Knickerbocker Toy Co. v. Faultless Starch Co., 467 F.2d 501, 175 USPQ 417, 420 n.8 (CCPA 1972) (where only one Board member's name appeared on decision, court presumed the proper number participated in decision).
3. See Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1732 n.1 (TTAB 2012) (change in composition of panel does not necessitate a rehearing of oral argument); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1560 n.1 (TTAB 2011) (same); Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1068 n.1 (TTAB 2011) (same). See also In re Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 3-4 (Fed. Cir. 1985) (statutory requirement that a case be heard "means judicially heard not physically heard"); Jockey International, Inc. v. Bette Appel Unltd., 216 USPQ 359, 360 (TTAB 1982). Cf. Plus Products v. Medical Modalities Associates, Inc., 211 USPQ 1199 (TTAB 1981), set aside on other grounds and new decision entered, 217 USPQ 464, 464 (TTAB 1983) (final decision rendered by only two Board members vacated); Ronson Corp. v. Ronco Teleproducts, Inc., 197 USPQ 492, 494 (Comm’r 1978) (final decision heard by three Board members but rendered by only two, vacated and oral hearing rescheduled); and Ethicon, Inc. v. American Cyanamid Co., 193 USPQ 374, 377 (Comm’r 1977) (petition to vacate decision denied).
4. See In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545, 1547-51 (Fed. Cir. 1994) (en banc) (Director has the authority under § 7 of the Patent Act (now § 6 of the Leahy-Smith America Invents Act) to convene an expanded panel which includes not only administrative patent judges, but also one or more of the senior executive officers of the USPTO identified in that section, including himself or herself). Cf. 15 U.S.C. § 1067 (containing similar provisions for the TTAB).
See also N.Y. Yankees Partnership v. IET Products & Services, Inc., 114 USPQ2d 1497 (TTAB 2015) (augmented seven-member panel used to sustain opposition regarding dilution by blurring claim); In re Lebanese Arak Corp., 94 USPQ2d 1215 (TTAB 2010) (augmented panel used to affirm examining attorney’s refusal to register the mark KHORAN as disparaging under Trademark Act § 2(a)); In re Ferrero S.p.A., 22 USPQ2d 1800 (TTAB 1992) (augmented panel used to overrule previous decision barring examining attorneys from requesting reconsideration), recon. denied, 24 USPQ2d 1061 (TTAB 1992); In re Johanna Farms Inc., 8 USPQ2d 1408, 1409 (TTAB 1988) (in view of issues presented, oral hearing held before augmented panel of eight Board members); In re McDonald’s Corp., 230 USPQ 210 (TTAB 1986) (augmented five-member panel); and In re WSM, Inc., 225 USPQ 883 (TTAB 1985) (augmented panel used to delineate rights in FCC "assigned" call letters for radio broadcasting services). See also In re Active Ankle Systems Inc., 83 USPQ2d 1532, 1534 (TTAB 2007) (an augmented panel is not necessary to reach the proper decision where the examining attorney relied on cases that are no longer good law); Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909, 909 n.1 (TTAB 1984) (augmented panel of eight members because of the importance of the issues). Cf. Federal Circuit Rule 35. Cf. also Fioravanti v. Fioravanti Corrado S.R.L., 1 USPQ2d 1304, 1305 (TTAB 1986) (case not appropriate for designation of augmented panel on request for en banc consideration).