To Deny or Not to Deny –Under Either 314(a) or 325(d) – It’s Approaching an Apex at the PTAB, District Court, and Federal Circuit

As a follow up to our May 2020 article, and taking no side in this article, I write to remind the bar that on November 19, 2020 the Comment period ends for the latest Federal Register Notice on maybe the hottest topic at the PTAB – what factors should the Board use to determine that a petition should be denied for either (1) having substantially the same art or arguments as a previous proceeding or (2) because a co-pending Court proceeding may decide substantially the same issues before the PTAB will render a final written decision.

On October 20, 2020, the Office issued a request for comments allowing about 30 days for response. The request posed these 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

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?

We also see the NHK-Fintiv issues playing out in District Court and in mandamus actions at the Federal Circuit.

Wherever you and your clients come out on these issues, if this come to fruition as a new set of proposed rules, the PTAB practice may change substantially over the next year. Even if the rules get caught up in district court or appellate litigation for a long time after they issue.

This article appeared in the November 2020 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.