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Legal Alert: USPTO Requests Comments on Discretion to Institute Trials Before the PTAB

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The USPTO announced in the Federal Register that it is seeking comments on considerations for instituting trials under the America Invents Act (AIA). Specifically, the USPTO is considering the codification of its current policies and procedures, or modification thereof, regarding its discretion to institute AIA trials.

While the AIA provides the relevant institution standards for AIA trials, it also gives the Director of the USPTO discretion to deny institution even where the petitioner has otherwise satisfied the statutory standard. The Director typically exercises this discretion in several scenarios, such as in cases where:

  • The petition is a "follow-on" or "serial" petition challenging the same patent as previously challenged
  • The petition does not meet the standards for institution as to all challenges presented
  • The petition is a "parallel" petition challenging the same patent at or about the same time as another petition
  • The petition concerns a patent that is in an advanced state of proceedings in the district courts or the International Trade Commission

When deciding whether to exercise its discretion to deny institution, the PTAB relies on a number of non-exclusive factors that it has established in various precedential decisions, including General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, Valve Corp. v. Elec. Scripting Prods., Inc., and Apple, Inc. v. Fintiv, Inc. The Office is now considering codifying these standards and perhaps modifying them through a formal rulemaking process to provide additional clarity to PTAB tribunals and practitioners.

The Request for Comments seeks 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

  1. 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?
  2. 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

  1. 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?
  2. 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

  1. 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?

Comments may be submitted through the Federal eRulemaking Portal. To submit comments via the portal, enter docket number PTO-C-2020-0055 on the home page and click "search." The site will provide a search results page listing all documents associated with this docket. Find a reference to this Request for Comments and click on the "Comment Now!" icon, complete the required fields, and enter or attach your comments.

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.