Comments are Piling Up in Response to the USPTO’s Request Regarding Discretion to Institute AIA Trials

By IPWatchdog
December 2, 2020

“Stoll ‘propose[ed] that the USPTO consider promulgating a bright-line rule that precludes institution of an AIA trial against challenged claims if the petitioner is an entity or membership organization that is challenging claims on behalf of other entities, unless the petitioner discloses petitioner’s real parties in interest and all funding sources.’”

https://depositphotos.com/5437156/stock-photo-hand-pressing-comment-icon.htmlAs of December 1, 750 comments had been received in response to the United States Patent and Trademark Office’s (USPTO) “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board” (the Request), which was published in the Federal Register on October 20. Some notable submissions have been received from stakeholders including Senator Thom Tillis, Conservatives for Property Rights, Randy Landreneau, Robert Stoll and the Small Business Technology Council, and have been summarized below.

The Request

In the Request, the USPTO sought comments on considerations for instituting America Invents Act (AIA) trials related to serial and parallel AIA petitions, as well as proceedings in other tribunals. In particular, with respect to serial and parallel AIA petition, the USPTO specifically requested input on whether the Patent Trial and Appeals Board (PTAB) should “(a) altogether disregard whether the claims have previously been challenged in another petition, or (b) altogether decline to institute if the claims have previously been challenged in another petition.” The Office also requested input on whether the PTAB should “(a) altogether disregard the number of petitions filed, or (b) altogether decline to institute on more than one petition” when considering whether to institute more than one petition filed at or about the same time on the same patent. With respect to proceedings in other tribunals, the USPTO requested input on issues including whether the PTAB should “(a) altogether disregard such other proceedings, or (b) altogether decline to institute if the patent that is or has been subject to such other proceedings, unless the district court or the ITC has indicated that it will stay the action.”

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Senator Thom Tillis

Senator Thom Tillis, Chairman of the Senate Judiciary Committee Subcommittee on Intellectual Property, submitted comments in the form of a letter to Andrei Iancu, the Under-Secretary of Commerce for Intellectual Property and Director at the USPTO, expressing support for the recent reforms made by Iancu. Tillis said: “I fully believe you are within your statutory authority under the Leahy-Smith American Invents Act to make … changes and improvements to the PTAB process, and I support any and all measures to codify your actions in federal regulations. I believe codifying your actions in formal federal regulations will provide long-term certainty to our intellectual property system ensuring our role as the world’s leading innovation economy for years to come.”

Conservatives for Property Rights

Conservatives for Property Rights (CPR), a coalition of conservative and libertarian organizations that emphasizes the central importance of private property, including intellectual property, submitted comments expressing concern that the “PTAB has played a central role in undermining the integrity of the U.S. patent system,” while also expressing gratitude that the UPSTO is now examining ways more fully to weigh the factors, such as economic effects, patent system integrity, and timely, efficient management of USPTO and PTAB, which are important in “counterbalanc[ing] the interests of challenging parties in …quasijudicial administrative proceedings.” CPR strongly urged the USPTO to “preclude claims from being subject to more than one AIA proceeding, regardless of the circumstances,” thereby “closing off any prospect of parallel petitions or parallel proceedings.”

CPR noted that “such a rule would meet the very important ‘quick’ and ‘cost effective’ criteria for PTAB, while bringing greater certainty and reliability of the patent grant for the patent owner.”  The submission added:

Institution of a PTAB proceeding once a patent is being litigated in another forum should be disallowed” because, if it is the same petitioner, the party has already chosen its alternative for seeking to invalidate the patent. In addition, CPR asserted that the PTAB should always “give deference to any judicial developments involving the same patent and deny, end, or suspend administrative proceedings, in order to avoid arriving at different outcomes on the same patent and the same issues.

Randy Landreneau, President of US Inventor

Randy Landreneau, President of US Inventor, urged the USPTO to adopt regulations to govern the discretion to institute PTAB trials consistent with principles outlined in its comments. In particular, Landreneau noted that any adopted regulations must provide predictability to allows stakeholders to know in advance whether a petition will be permitted or denied for policy reasons. With respect to multiple petitions, Landreneau opined that a “petitioner, real party in interest, and privy of the petitioner should be jointly limited to one petition per patent” and that each “patent should be subject to no more than one instituted AIA trial.” He also expressed that each “petitioner seeking to challenge a patent under the AIA should be required to file their petition within 90 days of an earlier petition against that patent (i.e., prior to a preliminary response)” and that [p]etitioners filing within 90 days of a first petition against the same patent should be permitted to join an instituted trial.” Landreneau noted that the provisions he outlined should govern all petitions, but provided an exception in cases where there is “a showing of extraordinary circumstances approved by the Director, Commissioner, and Chief Judge.”

With respect to proceedings in alternate tribunals, Landreneau said that the “PTAB should not institute duplicative proceedings” and a “petition should be denied when the challenged patent is concurrently asserted in a district court against the petitioner, real party in interest, or privy of the petitioner and the court has neither stayed the case nor issued any order that is contingent on institution of review” or if “a trial is scheduled to occur within 18 months of the filing date of the petition.” He added that a “petition should be denied when the challenged patent has been held not invalid in a final determination of the ITC involving the petitioner, real party in interest, or privy of the petitioner.” Landreneau also commented on privy and stated that “an entity who benefits from invalidation of a patent and pays money to a petitioner challenging that patent should be considered a privy subject to the estoppel provisions of the AIA.”

Robert Stoll

Robert Stoll, Partner & Co-chair of the IP Group at Faegre Drinker Biddle & Reath LLP, and previous Commissioner for Patents at the USPTO, “propose[ed] that the USPTO consider promulgating a bright-line rule that precludes institution of an AIA trial against challenged claims if the petitioner is an entity or membership organization that is challenging claims on behalf of other entities, unless the petitioner discloses petitioner’s real parties in interest and all funding sources.” He noted that such a rule will result in greater transparency in the IPR process, thereby allowing the “PTAB to more accurately and fully assess all of the parties involved in determining whether a similar petition has already been addressed by the Board” in order to “promote greater efficiencies at the PTAB and ensure that the true intent of the AIA – to reduce patent litigation in any form – is achieved.”

Stoll also proposed that the USPTO adopt bright-line rules “preclud[ing] institution of an AIA trial against challenged claims if the petitioner is an entity or membership organization that is challenging claims on behalf of other entities, and any of the challenged claims have previously been challenged in another petition by the petitioner’s real party in interest” and “preclud[ing] institution of an AIA trial against challenged claims if any of the challenged claims have previously been challenged in another petition by an entity whose real parties in interest included the petitioner.”

Small Business Technology Council

The Small Business Technology Council (SBTC), “the nation’s largest association of small, technology-based companies in diverse fields,” submitted comments arguing that the AIA has had devastating effects on American innovation and “[m]uch of this deleterious effect has been the result of procedural rules for post-grant trials (e.g., IPRs) that were manifestly biased against patent owners.”

The SBTC urged the USPTO to undertake formal rulemaking to codify the rules that it currently applies through precedential opinions and noted that clarification of rules is necessary to “ensure that IPRs are conducted in a more predictable manner, and also to ensure that innovative small business are not burdened with duplicative and unwieldy proceedings that serve no purpose other than providing patent challengers a second bite at the apple.” With respect to serial petitions and parallel petitions, the SBTC expressed that a rule with case-specific analysis, such as that generally outlined in the PTAB’s precedential opinion in General Plastic, would be most beneficial to small businesses. In particular, the SBTC urged the USPTO to adopt its proposed framework wherein “[a] petitioner, real party in interest, or privy of the petitioner should be jointly limited to one petition per patent,” and “follow-on petitions are disfavored and will be denied except [when]: [t]he challenged patent was first asserted against the follow-on petitioner after the date on which the earlier petition was filed or [t]he follow-on petition was filed within 90 days of the earlier petition.” The SBTC noted that such a framework would substantially improve clarity and predictability, thereby preventing wasteful spending by both petitioners and patent owners.

With respect to proceedings in other tribunals, SBTC noted that a rule with case-specific analysis, such as that generally outlined in NHK-Fintiv, would benefit small businesses. In particular, the SBTC urged the USPTO to adopt a framework wherein a “petition shall be denied where the challenged patent is concurrently asserted in a district court or the International Trade Commission against the petitioner, real party in interest, or privy of the petitioner, and either: the district court or International Trade Commission is scheduled to adjudicate the validity of the challenged patent prior to the anticipated deadline for a final written decision if the post-grant trial were instituted; or the district court has not expressly indicated that it will stay its proceedings if review is instituted.”

The deadline for submitting comments via Regulations.gov is December 3, 2020.

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Discuss this

There are currently 6 Comments comments.

  1. Pro Say December 2, 2020 12:18 pm

    Take a look at what happened to the Roller Clutch Tools company:

    https://beta.regulations.gov/comment/PTO-C-2020-0055-0738

    Yet another misuse of IPRs against numerous small American companies and inventors . . .

    Most assuredly not what Congress intended with the AIA.

    Most assuredly not what our Country’s Founders intended with our Constitution.

  2. Curious December 2, 2020 12:37 pm

    Robert Stoll, Partner & Co-chair of the IP Group at Faegre Drinker Biddle & Reath LLP, and previous Commissioner for Patents at the USPTO, “propose[ed] that the USPTO consider promulgating a bright-line rule that precludes institution of an AIA trial against challenged claims if the petitioner is an entity or membership organization that is challenging claims on behalf of other entities, unless the petitioner discloses petitioner’s real parties in interest and all funding sources.”
    I like this one. The efficient infringers are always complaining about not knowing who is the “real” party who is suing them. I believe eliminating the practice of efficient infringers hiding behind other entities (e.g., Unified Patents) to avoid estoppel provisions in post-grant hearings to be warranted. They are gaming the system, and those kinds of games should be stopped.

  3. Pro Say December 3, 2020 6:34 pm

    . . . and added today . . . logic, reason, and wisdom from Senators Coons and Hirano:

    https://beta.regulations.gov/comment/PTO-C-2020-0055-0743

  4. Jeff Hardin December 5, 2020 3:23 pm

    Here’s an interesting look regarding the appearance of the “patent troll” rhetoric in the comments, and exactly when they began to show up. Interestingly, this fairy tale narrative came immediately when the deadline for providing public comments was extended, and following the publication of an eff.org article. Let’s hope the USPTO recalls Director Iancu’s position on such Orwellian “doublespeak” (and all sane people’s position as well) because those comments should be discarded.

    https://beta.regulations.gov/comment/PTO-C-2020-0055-0762

  5. anonymous December 5, 2020 7:38 pm

    Pro Say cited a public comment, which seems to have been moderated from this thread. It is worthwhile:
    https://beta.regulations.gov/comment/PTO-C-2020-0055-0754

  6. Anon December 6, 2020 9:14 am

    Mr. Hardin,

    Thank you for your post. However, I (still) have an issue with the view associated with “The People believe it is this group — the Inventors — who need to have the exclusive right to their discoveries secured. Inventors are not ‘patent trolls’.

    — in one very particular thrust —

    We may have touched upon this in the past, but I do believe that it is worth noting (again), that ANY view that espouses a substantive limitation on patent fights based on the owner of those rights disregards a critical aspect of the US Sovereign’s original set-up for the patent system in that the property right so secured was to be fully alieanable.

    It is NOT a small problem to seek to change this very basic point – and that NOT small problem does also turn around and BITE the individual inventors in the arse.

    But your point about ‘h1 jacking’ is a good one, and your notice of “This is not the first time hijacking of public comments on a government site has occurred. A similar event occurred in 2017 with net neutrality, and although the EFF created a tool for submitting comments directly from their website and were pinned for enabling the fake comments and still denied ownership, those comments indeed did occur nonetheless.” had an even more recent example: the comment period to the Director Iancu 2019 Patent Eligibility Guidance publication (circa February 2019).

    Note that this ‘h1 jacking’ was accompanied by truly Trojan Horse efforts that were successful in derailing efforts to fix the Broken Scoreboard of the legislating from the bench of the Supreme Court.