AIPLA Comments on Discretion to Institute Trials Before the Patent Trial and Appeal Board December 3, 2020

The American Intellectual Property Law Association today filed a response to the USPTO’s October 20, 2020 request for comments on discretion to institute trials in inter partes review (IPR) and post grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB). The USPTO’s request solicits input on whether rulemaking is necessary and the type of rules it should adopt, but does not propose any rules.

The AIPLA response is supportive, in principle, of notice and comment rulemaking on the PTAB’s discretion to institute that would start from the tests articulated in the PTAB’s General Plastics and NHK/Fintiv precedential opinions. AIPLA suggests  that, as a general rule, the same patent should not be subject to repeated trial proceedings before the PTAB. The response advocates for rules that would disfavor serial petitions, including a presumption that once a patent has been challenged in an AIA trial proceeding, that patent should not be subject to repeated subsequent challenges. The response also advocates for rules that would adopt current practice regarding parallel petitions—in which the PTAB disfavors multiple challenges except when the petitioner justifies simultaneously filing multiple petitions. Separately, the response supports rulemaking that would define the PTAB’s discretion to institute when parallel proceedings exist in the district courts.