Imagine That IP Law Blog

On September 29, 2021, Senators Patrick Leahy (D-VT) and John Cornyn (R-TX) introduced a bipartisan bill, “Restoring the America Invents Act.” The bill would roll back changes introduced by the courts and former USPTO Director Andrei Iancu. Specifically, the bill would “restore” aspects of the Patent Trial and Appeal Board (PTAB) and the inter partes review (IPR) and post-grant review (PGR) programs.

The purpose of the bill is “to address problems for small businesses and ordinary Americans caused by poor-quality patents” according to the Senators’ joint statement on the legislation. However, critics believe that the bill in its current form leans too much in favor of petitioners. The following elements of the proposed bill may be of particular concern to patent owners:

• Reduction of the Director’s discretion to deny IPRs. Currently, the Director must consider six factors, outlined in Apple Inc. v. Fintiv, Inc., when deciding whether to deny institution of an IPR petition challenging patent claims that are also being litigated in a parallel proceeding. The proposed bill would overrule the Fintiv, decision and limit the Director’s discretion to deny IPRs to instances where “the same or substantially the same prior art or arguments previously were presented to the Office.” This would restore a Petitioner’s ability to attack the same patent claims twice.
• IPR Filing Deadline. 35 U.S.C. § 315(b), provides that an IPR “may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner…is served with a complaint alleging infringement of the patent.” In Click-To-Call Tech. v. Ingenio, Inc., the Federal Circuit found that a voluntary dismissal without prejudice of a district court litigation does not reset the one-year time bar. The proposed bill directly contradicts the Click-To-Call decision and states that lawsuits that are dismissed without prejudice will no longer start the clock on filing an IPR petition.
• Authorization for U.S. governmental entities to file an IPR. In Return Mail Inc. v. United States Postal Service, the Supreme Court held that a government agency does not constitute a “person” in the context of the AIA statute. The proposed bill would overturn Return Mail, stating that “a governmental entity” may file an IPR petition.
• Promotion of Litigation Stays. The proposed bill lists factors a court should consider if a party seeks a stay of litigation regarding infringement of a patent that is also subject to an IPR. The factors include whether (1) the outcome of the IPR would simplify the issues in question in the civil action; (2) as of the date on which the stay if requested, discovery in the civil action is complete; (3) a stay would unduly prejudice the non-moving party or present a clear advantage for the moving party; and (4) a stay would reduce the burden of litigation on the parties and the court. These factors strongly encourage stays of the litigation. The provision further permits immediate interlocutory appeal of stay decisions. The factors and the ability to appeal may limit a patent owner’s ability to pursue litigation in court.
• Expansion of the Scope of IPRs. Currently, IPRs may only attack patentability on the grounds “raised under section 102 and 103 and only on the basis of prior art consisting of patents or printed publications.” The proposed bill would expand the basis to include “admissions in the patent specification, drawings, or claims” and “statutory or obviousness-type double patenting.” This would provide a petitioner with additional avenues to invalidate a patent.

Although these provisions may be concerning to patent owners, the overall consensus in the patent community is that the bill is unlikely to pass in its current form. It will be important to continue monitoring this bill and its future iterations, as it is likely to add more ways to challenge U.S. patents, thereby impacting patent owners’ rights.