PTAB Reform Act: Senators Introduce PTAB Bill That Would Alter Institution Discretion, Address Arthrex Issues, and Expand Appeal Standing

On June 16, Senators Tillis, Leahy, and Cornyn introduced the “Patent Trial and Appeal Board Reform Act of 2022.” If passed, the bill would modify the PTAB’s ability to exercise discretion when deciding whether to institute an IPR or PGR proceeding, require the Director to oversee PTAB decisions, and add a provision for appellate standing to include a party that believes estoppel may be asserted against it, among other changes. In addition to the IPR changes discussed below,  the bill proposes similar changes to PGR proceedings. Notably, the bill includes new statutory provisions directed to:

• “Institution Not to be Denied Based on Parallel Proceedings”
• “Limit on repeated petitions”
• “Review by the Director”
• “Standing to Appeal”

The bill would amend Section 315 to add a subsection titled “Institution Not to be Denied Based on Parallel Proceedings,” which states 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 …, other than with respect to—(1) the bars specified in subsections [315(a)] and [315(b)]” or whether “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” This provision is notable because it would restrict the PTAB’s discretion under Apple v. Fintiv that allows the Board to consider, among other things, the trial date, resources expended, and overlap of arguments in parallel district court and ITC proceedings when determining whether to institute review. 

Also affecting institution discretion, the bill would introduce a provision titled “Limit on repeated petitions” that states “The Director may not authorize an inter partes review to be instituted if the Director has previously instituted an inter partes review or post-grant review that includes one or more of the same claims based on a petition that was filed on a different day by the same petitioner, or a real party in interest or privy of the same petitioner.’’ According to statements by the bill’s sponsors, this provision attempts to limit multiple petitions filed by the same party against the same claims of a patent.

The bill also amends the structure of the PTAB to attempt to conform it to the Appointments Clause and address perceived issues under the Supreme Court’s decision in Arthrex. The bill proposes a new subsection titled “Review by the Director” that specifies that “the Director may, on the initiative of the Director, review, and modify or set aside, [a] decision [of the PTAB]” and also allows parties to request review by the Director for institution decisions under Section 314 and final written decisions under Section 318(a). Additional provisions state that the Director’s decision should be written, “made part of the public record,” and “set[] forth the reasons for the review, modification, or setting aside of the decision of the [PTAB].”

The bill also modifies Section 319, buy adding a “Standing to Appeal” provision that states 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 315(e) as a result of the decision.” This provision may be an attempt to adjust the current framework that outlines when Article III standing is present on appeal such that a petitioner has standing to appeal.

Other provisions include statutory changes to the claim construction standard; setting timelines for review, rehearing, and remand decisions; prohibiting certain ex parte communications; and providing that “for any substitute claim … the burden of proving patentability, including under sections 101, 102, 103, and 112, shall be the same as in examination under section 131.’’

Senator Leahy’s office also published a description of the bill, a myth vs. fact document, and a section-by-section summary of the bill providing additional information.