The Comments Are In: More Have Their Say on USPTO Discretion to Institute AIA Trials

By Rebecca Tapscott
December 8, 2020

[iw_quote]“The time has come for intervention to correct the unintended consequences of the PTAB. Small practicing entities are a crucial source of innovation and competition, but implementation of the AIA has sidelined us largely due to cost and risk associated with AIA trials.” – comments of Josh Malone[/ipw_quote]

comments - 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” were received through the deadline of December 3, 2020. The Request was published in the Federal Register on October 20, 2020 and a total of 843 comments were received. IPWatchdog previously highlighted comments from individuals and organizations including Senator Thom Tillis, Robert Stoll, Conservatives for Property Rights, US Inventor’s Randy Landreneau and the Small Business Technology Council. Below are some additional highlights from the many submissions.

Josh Malone, Bunch o’ Balloons

Josh Malone, inventor advocate and inventor of Bunch O Balloons, submitted heartfelt comments asserting that unpredictability at the PTAB is “paralyzing” to inventors. He noted that he “strongly support[s] the premise of the [Request] that notice-and-comment rulemaking is necessary.”

In response to the specific questions in the request, Malone said that the USPTO should not issue more than one institution decision on the same patent and should not institute a review where the patent owner is engaged in an active district court proceeding. He also noted that the USPTO should prohibit institution of any petition filed against a patent held by a small practicing entity unless the patent owner consents to proceed before the PTAB; when the PTAB actually is a faster and less expensive alternative to district court, a small practicing entity will voluntarily consent to PTAB review.

Malone proposed the following rule be included in a Notice of Proposed Rulemaking: “Unless the patent owner consents, a petition for [America Invents Act] AIA review shall not be instituted if the patent owner meets the requirements of 5 U.S.C. §504(b)(1)(b) and actually reduced to practice or directed the actual reduction to practice at least one of the challenged claims.” He noted that such a rule would “mitigate a practice of market incumbents who pirate patented technology then leverage the cost and risk imposed by a PTAB to crush the smaller competitor.” He also asserted that such a rule would  move closer to achieving a balance that encourages invention, creates new businesses, and promotes competition while preserving the benefits of the AIA. Malone concluded:

The time has come for intervention to correct the unintended consequences of the PTAB. Small practicing entities are a crucial source of innovation and competition, but implementation of the AIA has sidelined us largely due to cost and risk associated with AIA trials. It is imperative that the patent system works to “promote progress in the useful arts” by “securing to inventors the exclusive right to their discoveries”. The analysis and recommendation presented for regulating the institution decision can rectify the problems, invigorate an army of inventors, and put our nation back on track to be the global leader in innovation.

Senators Christopher Coons and Mazie Hirono

Senators Christopher Coons and Mazie Hirono, members of the Senate Judiciary Committee Subcommittee on Intellectual Property, submitted comments expressing their support of formal rulemaking to promote further certainty regarding the exercise of the director’s discretion in instituting post-grant trial proceedings. The senators encouraged the USPTO “to promulgate rules to limit institution on previously challenged patent claims, to deter abusive or burdensome parallel petitions, and to discourage institution when the patent’s validity is already scheduled for timely resolution in another forum,” noting that such rules will provide certainty that “will benefit patent owners and challengers alike by decreasing costly duplicative litigation and encouraging parties to put their best foot forward in a single proceeding.”


The Alliance of U.S. Startups and Inventors for Jobs (USIJ) submitted comments in response to the Request noting that they support the use of precedential opinions related to the institution and trial of inter partes reviews (IPRs) to make the process more transparent and predictable, more likely to be fair to both patent owners and petitioners, and also to recognize the need “to reduce this prodigious effort to formal rulemaking, thereby providing at least some measure of assurance to  those inventors, companies and investors that are entirely dependent on their patents to justify the expenditure of time and resources in risky new projects.”

The USIJ supports a case-specific approach in serial petitions, parallel petitions and petitions in other tribunals. The USIJ noted that such an approach “would give the Director the flexibility to address circumstances in which the Office has a strong interest in reviewing a patent or that would result in a faster, less expensive outcome for the involved parties without encouraging the abuse and harassment of patent owners that has taken place in the past.”

The comments further noted that “in light of the prior history of abuse of IPR procedures and the devastating impact that serial IPRs have had on the integrity and reliability  of patents, USIJ does not believe that any patent that has been vetted in an earlier IPR proceeding should be subject to a further IPR except in the rare and narrow circumstance in which new prior art clearly would, on its face, invalidate the patent.

The USIJ set forth four principles that it believes should guide decisions to institute petitions:

1.) “the PTAB should keep in mind the ease with which petitions for IPR can be filed and the potential for abuse by large companies, particularly with respect to the repeated assertion of the same or nearly identical prior art,”

2.)  “petitioners do not have an indisputable “right” to a favorable institution decision, and there is nothing unjust in leaving challengers to raise validity arguments in the district court or ITC where doing so is essential to preserve fundamental fairness to the patent owner,”

3.) “once the validity of a patent claim has been ruled on by an Article Ill tribunal, principles of stare decisis should almost always preclude the PTAB from reaching a different result using the same prior art and arguments that previously were before the court. Indeed, after a district court has ruled in favor of the patent owner on the validity of a patent, there should be no reason to institute a discretionary IPR with respect to the same claims,” and

4.) “the PTAB should determine whether a petitioner has some demonstrable interest in the actual outcome of a validity challenge and should look skeptically on any petitioner without standing.”


The Institute of Electrical and Electronics Engineers, Inc. (IEEE-USA) submitted comments expressing support for the proposals contemplated in the Notice, and noted that they would “remove structural bias and improve fairness and balance in post-issuance patent reviews.” With respect to serial petitions, parallel petitions, and petitions on a patent subject to other proceedings, the IEEE-USA expressed its opinion that a rule with a case-specific analysis would “beneficially formalize the guidance of precedential decisions for case-by-case analyses where… petitions are filed.”

The IEEE-USA also proposed several factors that the USPTO should include in the regulations for instituting AIA trials. For example, economic considerations, including whether there is a disparity in the parties’ economic status under the USPTO entity size rules, and demonstration of economic hardship. The IEEE-USA also noted that the “integrity of the patent system” should be considered “to ensure that the patent system in the 21st century reflects the constitutional imperative.” It explained that an important aspect of the “integrity of the patent system” is resolving patent quality questions as early as possible during the term of an issued patent and proposed a regulation denying institution of IPRs for post-AIA patents when a petitioner fails to explain why it did not file a timely PGR challenge.

Other notable comments were submitted by the Innovation Alliance, inventors Jeff Hardin and Patricia Duran, and the Intellectual Property Owners Association.

The Author

Rebecca Tapscott

Rebecca Tapscott is an intellectual property attorney who has joined IPWatchdog as our Staff Writer. She received her Bachelor of Science degree in chemistry from the University of Central Florida and received her Juris Doctorate in 2002 from the George Mason School of Law in Arlington, VA.

Prior to joining IPWatchdog, Rebecca has worked as a senior associate attorney for the Bilicki Law Firm and Diederiks & Whitelaw, PLC. Her practice has involved intellectual property litigation, the preparation and prosecution of patent applications in the chemical, mechanical arts, and electrical arts, strategic alliance and development agreements, and trademark prosecution and opposition matters. In addition, she is admitted to the Virginia State Bar and is a registered patent attorney with the United States Patent and Trademark Office. She is also a member of the American Bar Association and the American Intellectual Property Law Association.

Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 3 Comments comments.

  1. Steve Morsa December 8, 2020 7:12 pm

    Another excellent idea:

  2. Jeff Hardin December 9, 2020 8:27 pm

    Nice, Steve!

    Rebecca, thank you for linking to my comment exposing the vast number of comments inciting the patent troll narrative.

    My primary comments are here, echoing many of the suggestions from the inventor community:

  3. ChrisW December 10, 2020 8:15 am

    Another well-written article. Thank you Rebecca.