Oct 22, 2020Legal
White House Pushes Back on PTAB Rule Making Effort

Agency to Consider Further Public Comment

Over the past few months, Congress has been asked to investigate the Patent Trial & Appeal Board’s (PTAB) practice of denying AIA trial petitions in view of competing litigations. On top of that, the agency has been sued for applying these allegedly unlawful practices, and there is a mandamus pending on the same issues at the Federal Circuit.

In parallel, the agency had been pursuing a draft rule set to codify many of these controversial practices….a swan song of sorts for the outgoing Director. This effort has been closely scrutinized by White House Office of Information & Regulatory Affairs (OIRA) at the behest of many stakeholders.  Given the public outcry, ongoing litigation, and feedback to White House Office of Information & Regulatory Affairs (OIRA), the agency has now taken a step back to seek further public comment on its planned rule changes.

Today the Dept of Commerce issues a Request for Comments from the public on these issues. But, responses are due within a month – What’s the rush?

The Request for Comments (RFC) (here) seeks comment by November 18, 2020 on several issues. Specifically:

"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?

The one-month deadline for comments demonstrates an odd urgency given the ongoing litigation, which certainly will not be concluded by that date (at least not the APA matter).  It may be that the agency is tacitly acknowledging the risk that current discretionary practices are unlawful unless promulgated as proper APA “rules” in a notice-and-comment sense, and is hoping to beat the APA lawsuit to the punch.

As for the questions themselves, these are also a bit odd.  For example, questions 2, 4 and 6 essentially asks “should the agency simply decline to institute if the patent is subject to another proceeding that isn’t stayed, has filed more than one petition, or the claims have been challenged before.”  But, the agency has no power to legislate in this regard.  314(a) is not a license to rewrite patent policy that Congress has already written into the AIA statutes.

Likewise, questions 2, 4 and 6 (“should we disregard everything?”) appear designed to elicit a majority “no, you should take it into account” so that the agency can turn around 30 days from now and argue “see OIRA, we told you everyone wants us to do something about this” then simply republish what it is presumably already written as a draft rule package.

Assuming this effort concludes and draft rule set is published, it is highly unlikely that the rules would be finalized prior to the end of the current Director’s expected tenure. But with an interim Director almost certain for most of 2021, getting the ball rolling may be enough.

Stay tuned.

Scott A. McKeown is an author of the Patents Post Grant

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