By Matt Johnson

The Supreme Court has held the PTAB’s “decision to deny a petition is a matter committed to the Patent Office’s discretion,” and that there is “no mandate to institute review.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016).  Since the Court’s confirmation of the PTAB’s discretion to deny institution, how the PTAB wields that discretion under §§ 314(a), 325(d) has been a hot button issue at the Board.  In just the last 24 months, the PTAB has designated ten § 314(a) decisions (5 precedential, 5 informative), and four § 325(d) opinions (3 precedential, 1 informative).

The Board previously consolidated some of this guidance into its July 2019 update to the Trial Practice Guide and then requested stakeholder comments on the Office’s §§ 314(a), 325(d), policies.  Having received wide ranging initial input on how and when the PTAB should exercise its institution discretion, the Board has requested additional stakeholder insight.  The PTAB has requested thoughts on whether they should undertake rulemaking to codify the current approach on various institution discretion issues, and further on whether any of those approaches should be modified to include certain bright-line rules regarding what the Board can and cannot consider when deciding whether to exercise its §§ 314(a), 325(d) discretion.

The full Request for Comments Notice can be viewed here.  Comments are due by November 18, 2020.  The questions presented are as follows:

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?
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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.