‘Sacrifices’: PTAB Reform Act Would Limit Fintiv Denials

“[P]rior to the Trump Administration, the PTAB was a forum for gamesmanship by big tech…. This bill, which is a carefully crafted compromise requiring sacrifices from both sides of the issues, permanently ends through the use of legislation some of these practices.”  – Senator Tillis

https://depositphotos.com/16550547/stock-photo-business-man-in-risk.htmlThis article was updated on 6-16 to correct an error regarding the standing provision of the bill.

Senators Patrick Leahy (D-VT), John Cornyn (R-TX) and Thom Tillis (R-NC) today introduced the Patent Trial and Appeal Board (PTAB) Reform Act of 2022, which is meant to tackle gamesmanship at the PTAB.

In April, Senators Leahy and Tillis penned an op-ed that announced such a bill would be introduced “in the coming days”, but it never materialized.

The bill makes a number of key changes to PTAB procedures, including explaining that “the right to appeal shall extend at least to any dissatisfied party that reasonably expects that another person will assert estoppel against the party under section 325(e) as a result of the decision.” This would seemingly expand petitioners’ ability to appeal adverse decisions from the PTAB.

The bill also:

  • Mandates that PTAB judges follow the same code of conduct as United States judges;
  • requires that any subsequent changes made to the constitution of a three-judge panel of administrative patent judges must be noted in the record;
  • curbs serial petitions by prohibiting the Director from authorizing an IPR if there was previously an IPR from the same party that challenged the same patent claims;
  • clarifies some aspects of the process for Director Review under the Arthrex decision and prescribes a timeline for the U.S. Patent and Trademark Office to promulgate rules on other aspects;
  • covers expenses for small and micro entities at the PTAB in certain circumstances; and
  • stipulates that: “In deciding whether to institute an inter partes review proceeding, the Director shall not in any respect consider an ongoing civil action or a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 (19 U.S.C.15 1337).”

Leahy also proposed limits on discretionary denial in his Restoring the America invents Act bill, introduced last year. Many in the IP community have condemned this approach.

In the press release about the bill today, Tillis hinted that such provisions are necessary to give the bill a chance. He said:

“[P]rior to the Trump Administration, the PTAB was a forum for gamesmanship by big tech and they actively weaponized it as a way to bankrupt competitors, small businesses, and independent inventors. The Trump Administration’s reforms ended this abuse. This bill, which is a carefully crafted compromise requiring sacrifices from both sides of the issues, permanently ends through the use of legislation some of these practices – all while preserving the vital role of the PTAB in furthering innovation and U.S. economic growth, prosperity, and global dominance.

Another provision would address the issues raised by OpenSky Industries, LLC v. VLSI Technology LLC and Patent Quality Assurance, LLC v. VLSI Technology LLC by imposing sanctions for abuse of the IPR process, ‘‘including a petitioner deliberately delaying or losing, or offering to deliberately delay or lose, an instituted proceeding in exchange for consideration.’’

Today’s press release added that the bill “restores the benefits and fairness of PTAB review by removing any incentives for gamesmanship, removing opportunities for a challenger to continually harass a patent owner, ensuring parties have one opportunity to bring a meritorious challenge, and shedding light on internal Patent Office decisions.”

Cornyn called the bill “the product of hard, bipartisan work to achieve the right balance,” while Leahy said it “represents the Senate at its best – different sides coming together to achieve a thoughtful compromise that is greater than what either side could achieve alone.”

The announcement also included a description of the bill, myth vs. fact document, and section-by-section summary.

Image Source: Deposit Photos
Author: beachboyx10
Image ID: 16550547 

Share

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com 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 IPWatchdog.com. Read more.

Join the Discussion

13 comments so far. Add my comment.

  • [Avatar for Erfinder]
    Erfinder
    July 29, 2022 04:44 pm

    You don’t remove “a section” of a cancer. You excise it entirely!

    As long as PTAB has “a foot in the door”, this will happen again.
    Remove the PTAB and anything related ENTIRELY!

  • [Avatar for Erfinder]
    Erfinder
    July 29, 2022 04:27 pm

    In addition to abolishing the PTAB, the USPTO needs to
    1) add the years lost to the expiration date for the duration that all patents underwent PTAB insanity.
    2) reinstate (the 85%) invalidated patents in the inventors name.
    3) reimburse those inventors for the money they wasted at the USPTO, the inventions development, their attorneys fees (with treble damages for the agregiously unlawful actions)
    4) and issue a formal apology.

  • [Avatar for Erfinder]
    Erfinder
    July 28, 2022 03:08 pm

    The BILL leaves the door open for additional BS from large corps to steal/invalidate independent inventors technology.
    Just abolish PTAB !

  • [Avatar for Erfinder]
    Erfinder
    June 26, 2022 03:55 pm

    If you hire an organization to do a job for you, (i.e. add a room to your house), and they do the opposite (i.e., destroy a room in your house). . . You have a claim against them.
    Inventors hire the PTO to examine their invention (and issue a patent if it met their criteria). The PTO then destroys the patent (after they issued it). IMHO, You have a claim against them!
    DUH!

  • [Avatar for Anon]
    Anon
    June 18, 2022 11:16 am

    Sadly mike, I must concur with your analysis.

  • [Avatar for mike]
    mike
    June 17, 2022 11:37 pm

    I’ll add to my previous post.

    Tillis said that, pre-Trump, “the PTAB was a forum for gamesmanship by big tech and they actively weaponized it as a way to bankrupt competitors, small businesses, and independent inventors”, and that this bill “permanently ends through the use of legislation some of these practices”.

    However, this bill would codify that the “Director shall not in any respect consider an ongoing civil action”, even if, for example, the patent owner is scheduled for a trial in 6 months. An infringer would be able create a parallel proceeding and tie up an inventor at the PTAB, increasing costs, wasting time, and delaying a result. Even creating inconsistent results, for example.

    So tell me, how is the Director’s consideration of an ongoing civil action to deny institution “gamesmanship by big tech?”
    Oh wait, it’s not. The Director denying institution is only reasonable; it will create a faster and cheaper result for the inventor.

    In fact, the AIA’s legislative history shows that the PTAB and IPR process was designed to create a faster, cheaper alternative to district court ligitation. So, when district court ligitation actually results in a faster and cheaper option than the PTAB, and these Senators (Leahy, Tillis, Cornyn) raise Cain about it, we all can see their bluff. They don’t care about inventors by seeking a faster, cheaper alternative to district court ligitation. They never did. They want to keep those big tech donations coming in.

    Got it.

  • [Avatar for mike]
    mike
    June 17, 2022 11:15 pm

    This bill is a no go for all patent owners. It increases opportunities for success for infringers, and it does so at the patent owner’s expense, when all the patent owner is trying to do is enforce IP rights in court against infringers.

    The bill says that the “[d]irector shall not in any respect consider an ongoing civil action”, even if, for example, the patent owner is scheduled for a trial in 6 months. How is this a faster, cheaper alternative than district court, again? Because it’s not. It only gets in the way of the faster and cheaper resolution the court provides. An IPR will take AT LEAST 18 months: 6-8 months for an institution decision, and 12 months (at least) for a final written decision.

    This language of the bill — “INSTITUTION NOT TO BE DENIED BASED ON PARALLEL PROCEEDINGS. In deciding whether to institute an inter partes review proceeding, the Director shall not in any respect consider an ongoing civil action[]” — has got to go.

    “No dice”
    — All patent owners

  • [Avatar for concerned]
    concerned
    June 17, 2022 06:01 am

    Evidence- not address. Sorry.

  • [Avatar for concerned]
    concerned
    June 17, 2022 05:59 am

    My one and only visit to the PTAB resulted in a new rejection theory and a suggested remand back to the examiner so I could submit new evidence accordingly. This “new” evidence would be the exact same “old” evidence already on the record that led the PTAB to change rejection theory.

    The USPTO never addressed the same “old” evidence, why would the USPTO address the same “new” address?

    Sacrifices? Meet the “new” PTAB, same as the “old” PTAB, we won’t get fooled again.

  • [Avatar for Erfinder]
    Erfinder
    June 16, 2022 09:29 pm

    The PTAB needs to be 100% rescinded. STAT!

  • [Avatar for Pro Say]
    Pro Say
    June 16, 2022 08:57 pm

    p.s. Let’s see the actual, complete bill.

    While there are some provisions SEEMINGLY beneficial to inventors,the devil is indeed in the details.

    The headline and summaries give . . . while the details take away.

    And why are the good Senators Coons, Hirono, Cotton, and other Judiciary Committee members not on board?

    Why?

  • [Avatar for Pro Say]
    Pro Say
    June 16, 2022 08:17 pm

    Why is that every time Congress tosses around “compromise,” it’s independent inventors including those at small, innovative companies trying their level best to compete with the behemoth’s of industry (including privacy-invading, innovation-stealing, money-over-morals Big Tech) who end up getting s.c.r.e.w.e.d.

    Why is that, Congress?

    Here’s a better idea:

    Wait for Leahy to meander off to his grazing lands . . . and do away with the Death Squad PTAB first thing in 2023.

    It’s nothing but a pox on American innovation.

    You know it. Inventors know it. Infringers know it.

  • [Avatar for mike]
    mike
    June 16, 2022 07:02 pm

    It’s funny that the word “compromise” was mentioned here, when inventors were never invited to the table at the beginning when the AIA created the PTAB. “Compromise” here would only be inventors bidding against themselves.

    Expect strong resistance from anything that inventors would be giving up as a result of this bill.

    Try again, Senators.

Add Comment

Your email address will not be published.