AIA Trial Rule Changes? PTO Notice & Comment

The USPTO is seeking comments on its rules for instituting AIA trials — especially cases involving multiple AIA petitions against the same patents.

https://www.federalregister.gov/documents/2020/10/20/2020-22946/request-for-comments-on-discretion-to-institute-trials-before-the-patent-trial-and-appeal-board

Comments due by Nov 19, 2020

The following comes from the Request for Comments:

ISSUES FOR COMMENT

The USPTO seeks comments on considerations for instituting AIA trials as it relates to serial and parallel AIA petitions, as well as proceedings in other tribunals. The questions enumerated below are a preliminary guide to aid the USPTO in collecting relevant information to assist in modifications, if any, to its current practices, and in the development of any possible rulemaking on this subject. The questions should not be taken as an indication that the USPTO has taken a position or is predisposed to any particular views. The USPTO welcomes comments from the public on any issues believed to be relevant to these topics, and is particularly interested in answers to the following questions:

Serial Petitions

1. Should the Office promulgate a rule with a case-specific analysis, such as generally outlined in General Plastic, Valve I, Valve II and their progeny, for deciding whether to institute a petition on claims that have previously been challenged in another petition?

2. Alternatively, in deciding whether to institute a petition, should the Office (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?

Parallel Petitions

3. Should the Office promulgate a rule with a case-specific analysis, such as generally outlined in the Consolidated Trial Practice Guide, for deciding whether to institute more than one petition filed at or about the same time on the same patent?

4. Alternatively, in deciding whether to institute more than one petition filed at or about the same time on the same patent, should the Office (a) altogether disregard the number of petitions filed, or (b) altogether decline to institute on more than one petition?

Proceedings in Other Tribunals

5. Should the Office promulgate a rule with a case-specific analysis, such as generally outlined in Fintiv and its progeny, for deciding whether to institute a petition on a patent that is or has been subject to other proceedings in a U.S. district court or the ITC?

6. Alternatively, in deciding whether to institute a petition on a patent that is or has been subject to other proceedings in district court or the ITC, should the Office (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?

Other Considerations

7. Whether or not the Office promulgates rules on these issues, are there any other modifications the Office should make in its approach to serial and parallel AIA petitions, proceedings in other tribunals, or other use of discretion in deciding whether to institute an AIA trial?

33 thoughts on “AIA Trial Rule Changes? PTO Notice & Comment

  1. 7

    The information is that Chien is pushing for trade secrets and weakening patents.

    I hope everyone realizes how bad this is for everyone but SV large firms.

    1. 7.1

      I hope everyone understands that the move to trade secrets is 100 percent what large SV corporations want. It will enable them to control their employees and take any technology that threatens their business.

      It will mean that employees can no longer write papers at conferences. It will mean that the corporations will have as property what is in the mind of the employee.

      I hope people can see that this is not creating a commons and not promoting innovation but is na kedly pandering to the large SV corporations.

  2. 6

    Presumably the impetus behind this Notice is the criticism leveled at the PTO Director about designation of PTAB decisions as “precedential.”

    In particular, the Director has designated a number of PTAB decisions addressing serial petitions, multiple proceedings, etc., as “precedential,” and thus binding on other PTAB panels. The problem with that approach is that it allows the Director to create new binding rules within the agency without going through the rulemaking process required by the Administrative Procedure Act (APA). That process requires, among other things, publication of the proposed rule in the Federal Register, a meaningful opportunity for the public to comment, etc., before the rule becomes operative. This Notice suggests that the PTO may be moving to address the criticism by converting existing “precedential” decisions into CFR regulations promulgated through proper APA rulemaking.

    Overall I think the answer to each of the questions should be “yes,” as formal rules on these issues would hopefully provide more clarity on how issues of serial petitions, parallel proceedings, etc., are resolved, and thus, create more consistency between PTAB panels addressing them.

    1. 6.1

      Yes, LR, albeit as to your last paragraph, I think [re the PTO No. 7 above] that there are some other and simpler solutions for some of the relatively small number of plural IPR petitions filed against the same patent. E.g., if that was due to patents with large numbers of extra claims that have plural petitions filed because the lawsuit complaint was ambiguous as to which claims are accused, could that not be handled in a required single petition by allowing a few extra pages beyond the normal page limit proportional to the number of extra claims? [This will really be needed if the PTO’s Gilbert Hyatt applications special examination group starts issuing patents with hundreds of claims.]

  3. 5

    The IPR rulemaking comments the PTO will actually get and pay attention to if effective, will primarily be from the AIPLA and other effective organizations. Especially if challenged as inconsistent with the AIA statute.

    1. 5.1

      Not following you, Paul.

      What is it that you think might be challenged as inconsistent with the AIA statute?

      1. 5.1.1

        E.g., what I expect to see challenged is “altogether decline to institute if the patent that is or has been subject to such other proceedings” especially if not the same parties or the same prior art and no valid indication of any comparable decision date. Especially if the “other proceeding” is the ITC and not binding on or preclusive of D.C. proceedings.

        1. 5.1.1.1

          How would that be inconsistent with the AIA statute, which provides a blank “institute at your discretion”…?

          1. 5.1.1.1.1

            If the AIA preclusion of PTO IPR declaration decision legal challenges were interpreted to that full extreme [which the Sup. Ct. has not], then by that logic why could not Iancu theoretically enact a rule denying any IPR institution he felt like denying? Obviously that is not going to happen.

            1. 5.1.1.1.1.1

              There is NO “obviously” as you state.

              Again, the AIA statute DOES provide a blank discretion.

              Where is the inconsistency?

              Please do not confuse a sense of what any Director may or may not do with their discretion. That is explicitly not on point here. What is on point is just how ‘blank’ the actual writing of the AIA statute is.

              And whether or not the Supreme Court has weighed in is ALSO not on point. Such would only be on point IF the Supreme Court DID intrude and write (from scratch) more legislation to change the AIA statute.

              Point blank: where in the currently written statute is anything to which an inconsistency could be asserted to be found?

              I am most definitely not saying that this ‘blank check’ approach was good legislative writing — merely commenting on the fact that a ‘blank check’ IS the result of that legislative writing.

              If I am in error (and I admit to that possibility), where in the current AIA statute am I off?

              1. 5.1.1.1.1.1.1

                A couple of things here. First, the statute does not provide anything close to a blank check authorizing the Director to deny IPR for any reason. The statutory basis for the Director’s discretion to refuse to institute IPR comes from Section 314(a), and it’s actually pretty thin:

                “The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. 314(a).

                The statute is actually stated in the negative — saying that the director “may not” institute IPR “unless” certain requirements are met. That language doesn’t really suggest a broad grant of discretion, to say the least, since it’s talking about what the Director is not permitted to do. True, the Supreme Court interpreted that language as inferring that the Director has discretion to institute, but that’s as far as the Court went.

                The Supreme Court did not provide any guidance on the extent of that discretion, and nor has the Federal Circuit. Not surprising, as as institution decisions are not reviewable on appeal under Section 314(d), and review of an institution decision is the only scenario in which an appellate court might have occasion to comment on institution discretion.

                All of this might change if that discretion is embodied in a set of rules and regulations promulgated under the APA. The APA allows those rules to be challenged in court (by patent owners, IPR petitioners and other stakeholders) on a variety of grounds, including as being allegedly inconsistent with the AIA and outside the scope of the Director’s rulemaking authority. At that point, it would be “game on,” and the federal courts could conceivably be in a position (for the first time) to provide guidance on the limits (if any) of the Director’s discretion.

                1. LR, the IPR statute I was referring to, relevant to this “decline to institute” issue, is 35 USC 314 (d): “No Appeal- The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” The 35 USC 314(a) you cited limits the Granting of IPR institutions.

  4. 4

    The American innovation question du jour for 2021:

    Will President Biden have the will and wherewithal to stand up to Big Tech for the good of America . . . with Chien whispering in his ear . . . and FAANGs stuck in his back?

    We should know with certainty within the first 100 days of his administration.

    1. 4.1

      100 days? Almost everything complained about on this blog is due to Congressional or Sup. Ct. or Fed. Cir. decisions over which Biden has no such control.
      And the continued dogma that more “conservative” judicial appointees will decide patent cases the way you like them defies objective observation of the authors of many of those prior decisions. The patent system is not on the Senate “litmus test,” and being pro-business is not necessarily tied to all pro-patent issues in many conservative judicial minds.

      1. 4.1.1

        I agree with Paul here (with the caveat that Biden may follow the Obama lead and invite in a record number of undocumented meetings with known anti-patent Big Tech folk, with commensurate record number of Freedom of Information act Request rejections (noting Obama ran not once but twice with a policy plank exactly contrary to what happened IN the patent sphere).

        So, while a LOT of damage may well happen outside of any Biden influence (the point from Paul with which I agree), this does NOT mean that Biden will have no negative influence (the rather large caveat i inserted).

      2. 4.1.2

        Paul — To insure clarity, my point is most assuredly not that Biden can fix all, nor even most, nor even a material portion of the unconstitutional eligibility decisions SCOTUS and the CAFC’s misapplications of such.

        He cannot.

        But, the IP approach and acts that he does have control over (including appointments) and material input on, do matter.

        As the de facto leader of the Democratic party, how he feels and what he says (and doesn’t say) concerning the importance of patents to American innovation will carry material weight across all of government; including but not limited to Congressional members (of all parties), the Courts, and indeed the Patent Office itself.

        Elections have consequences.

        Including IP consequences.

  5. 3

    All this won’t matter. Soon SV Joe will be appointing another Lee type of Director that will work as hard as it can to burn down the patent system.

    1. 3.1

      Colleen Chien is the SV Joe is going to use for his patent policy.

      Patents are ended. She is a Lemley protege who has absolutely no clue about technology or innovation.

      1. 3.1.1

        It is too bad that boards like this one have not tried to enforce ethical conduct among academics as Colleen Chien would be one that would suffer greatly if there were a way to file ethics complaints against her for her papers.

        I’ve read some of them. They are written in the same abstract style as Lemley’s where a presumption is made that all patents are bad and that all software has no structure and so forth. There are numerous cites that I do not think support her proposition and outrageous assumptions throughout her papers.

    2. 3.2

      I wonder if Iancu might stick around a bit…

      Iancu’s “Under President Trump’s leadership…” tweet plausibly indicates an interest in remaining in his position. With an unfriendly senate making it difficult to confirm his appointees, might not Biden just leave Iancu in place? Iancu has kept enough distance from Trump that no one will be demanding he leave just to scrape the taint from federal buildings. It seems pretty plausible to me that Biden’s people who oversee these issues could come to an agreement with Iancu, save their political capital for other fights, and let the position ride for a few years.

      1. 3.2.1

        Ben, really? You don’t miss a beat.

        What did Obama do to get Lee in ? Remember that.

        If SV Joe has picked Colleen Chien to run his IP show, then we can be certain that a new director whose marching orders will be to dismantle the patent system is coming in short order. We can be sure that SV is directing SV Joe and that he will do as he is told just like Obama did.

        We can count on more judicial activists judges that are anti-patent being appointed to the CAFC who are selected by SV.

        Be real Ben.

        1. 3.2.1.1

          “What did Obama do to get Lee in ? Remember that.”

          I honestly don’t know. Would you care to elaborate?

          Part of why I think it is plausible that Iancu could remain is that I do recall how M. Lee somehow stayed in her job into June of 2017. So Trump let the enemy’s director serve for four months, in a context where he had a friendly senate approving his appointees. Depending on how much resistance the senate puts up for Biden’s appointees, it seems perfectly possible that Biden will let Iancu sit for many months.

          Not to say I’m assigning a high probability to this outcome. It just seems far from absurd.

          1. 3.2.1.1.1

            Ben, what difference does a couple of months make? Maybe it will take Biden a few months to get around to appointing the anti-patent new director, but we know they are coming.

            Probably I could predict would it would be. I guarantee you that SV will select them and instruct SV Joe who to appoint.

      2. 3.2.2

        And yes I would bet big money on my prediction.

    3. 3.3

      What happened to “let’s give each other a chance?”

    4. 3.4

      Take off the political blinders to note that in recent years the PTO Director accused of coming the closest to doing that [with mass “quality=rejections” that added years to the pending application backlog] was appointed by a Republican president.] Wait to see what actually happens. In any case, the PTO Director cannot change any statutes or court decisions.

      1. 3.4.1

        Paul,

        Check yourself – the most recent incidence is Obama appointing Lee – and is directly on point to Night Writer’s post.

        In any case, the PTO Director cannot change any statutes or court decisions.

        True – but off point as to what the Director CAN do.

        You want to talk about blinders while carrying a pair FAR LARGER than Night Writer’s.

        1. 3.4.1.1

          That’s absolute nonsense, Snowflake.

          1. 3.4.1.1.1

            EVEN AFTER your obses10n was scrubbed from this particular thread, you join back in with that obsess10n with your latest meme/tell of cut-n-paste of the same comment made at least on a half a dozen threads…

            That does not tell a very good story for you.

            1. 3.4.1.1.1.1

              That’s absolute nonsense, Snowflake.

              1. 3.4.1.1.1.1.1

                That’s something on the order of 7 or 8 out of nine threads that you cut-n-pasted the same comment.

                What was your role at the patent office before you retired?

  6. 2

    Professor – here are my answers to the pop quiz.

    1. no
    2. b
    3. no
    4. b
    5. no
    6. b
    7. yes, when a large corporation steals a patented invention, they should not be allowed to use the PTAB as a weapon to avoid liability for their misdeeds; patents that are relied on to to build businesses and commercialize inventions should enjoy a presumption of validity and the right to a jury trial; the USPTO should stand behind inventors who are ripped off and should not misconstrue the meaning of our claims and cobble together prior art AFTER they have already granted our patent.

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