On October 20, 2020, the United States Patent and Trademark Office (“USPTO” or “Office”) published in the Federal Register “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board” seeking public comments on the appropriate considerations for instituting trials before the Patent Trial and Appeal Board (“PTAB”) under the Leahy-Smith America Invents Act (“AIA”). 85 FR 66502.

As explained in the Federal Register, even in cases where a petitioner satisfied the institution standard, the PTAB may exercise its discretion to deny a petition for review under the AIA.  The USPTO has provided substantial guidance about when the PTAB will exercise its discretion to deny an otherwise potentially meritous petition in its Trial Practice Guide, 77 FR 48756 (Aug. 14, 2012) and in over 40 decisions designated as precedential or informative.[i]

The USPTO is interested in the public’s view on its current policies and practices and whether there are any modifications the Office should make to its approach. Particularly, the USPTO is focused on three areas:

(1) Serial petitions where the same petitioner is challenging the same patent;

(2) Parallel petitions when different parties file petitions at or about the same time on the same patent; and

(3) Petitions directed to patents that are or have been subject to other proceedings in other tribunals including a U.S. district court or the International Trade Commission (“ITC”).

To date, over 743 comments have been posted by individuals, inventors, patent practitioners, businesses, and associations/organizations. Below is a brief overview of some of the major viewpoints.

Serial Petitions

Some commenters request a policy of only allowing one petition per patent in order to protect small businesses from overly burdensome litigation. Some commenters support a rule similar to the USPTO’s current view of allowing one petition per patent except in certain circumstances, such as where there are many claims at issue. Others argue that there should be no specified cap on the number of petitions because a predetermined cap is arbitrary and limits meritous arguments of invalidity.

Parallel Petitions

Many commenters agree that the relationship between petitioners should be considered in limiting petitions from different parties, particularly if the different petitioners are real parties in interest or in privity. Some commenters go a step further to request that each patent is subject to no more than one trial under the AIA, and all challenges to a patent under the AIA should be filed within 90 days of the first petition or be denied.

Other Tribunals

Several commenters believe the PTAB should not consider whether the patent is subject to proceedings in other tribunals because the evidence and constructions in other tribunals are different from those before the PTAB. These commenters believe that all meritous arguments should be allowed, particularly when a patent is being heavily asserted against others. Other commenters push back on specific Fintiv factors, particularly the factor looking at the proximity of the other tribunal’s trial date to the PTAB’s projected deadline for a final written decision. These commenters argue that the timing of trial dates in other tribunals, namely district court trial dates, are often out of the litigators’ hands and are frequently pushed back after the PTAB’s institution decision relying on the trial date. In contrast, other commenters believe that all petitions should be denied where the patent is subject to other proceedings in other tribunals because of the burdensome cost of litigation on small patent owners, which could lead to bankruptcy.

Overall, most commenters appear to support promulgation of some version of a rule regarding discretionary denials of PTAB proceedings. The USPTO has shown a strong interest in increasing transparency and providing clear guidelines regarding the PTAB and USPTO’s policies practices. We can expect the Office to continue to provide meaningful guidance, perhaps including the codification of policies regarding discretionary denials.

Public comments may continue to be submitted until December 3, 2020.

[i] See, e.g., General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, 2017 WL 3917706, at *7 (PTAB Sept. 6, 2017) (precedential) (providing a nonexclusive list of factors for “serial” petitions); Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, -00063, -00084, 2019 WL 1490575, at *1 (PTAB Apr. 2, 2019) (precedential) (explaining when different petitioners challenge the same patent, the PTAB considers any relationship between those petitioners when weighing the General Plastic factors); Apple Inc. v. Fintiv, Inc., IPR2020-00019, 2020 WL 2126495, at *2 (PTAB Mar. 20, 2020) (precedential) (describing nonexclusive factors considered when a parallel proceeding is co-pending in another tribunal).