9/11/2020
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`Congress Urged to Investigate PTAB Discretionary Denials | Patents Post-Grant
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`By Scott McKeown on June 30, 2020
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`https://www.patentspostgrant.com/congress-urged-to-investigate-ptab-discretionary-denials/
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`Supercell
`Exhibit 1015
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`Patents Post-Grant
`Patents Post-Grant
`Inside Views & News Pertaining to the Nation's Busiest Patent Court
`Inside Views & News Pertaining to the Nation's Busiest Patent Court
`Congress Urged to Investigate PTAB D iscretionary
`Denials
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`9/11/2020
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`Congress Urged to Investigate PTAB Discretionary Denials | Patents Post-Grant
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`Earlier this month, a coalition of stakeholder organizations sent letters to the House and Senate
`Judiciary Committees seeking an investigation into the Patent Trial & Appeal Board’s (PTAB)
`application of discretion under 35 U.S.C. § 314(a).  More particularly, the organizations argue that
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`House and Senate Judiciary Committees Alerted to “Signicant and Rapidly
`Growing Problem”
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`9/11/2020
`Congress Urged to Investigate PTAB Discretionary Denials | Patents Post-Grant
`the Board’s application of NHK Spring is “choking o access” to the PTAB and leading to a
`resurgence in patent litigation of questionable merit. The organizations ask that the USPTO report
`to Congress on these practices, and engage in formal rulemaking to guide agency practices.
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`Whether the requested action is provided or not, the continued application of 314(a) in the NHK
`context seems destined to end.
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`The vast majority of discretionary denials under NHK are favoring aggressive trial schedules of
`Texas district courts.  Once the PTAB denies institution based upon a looming district court trial
`date, thereaer,  the schedule tends to slip in significant regard.  With dockets in WDTX growing by
`leaps and bounds, and with COVID-19 complications, the aggressive scheduling is naturally
`suering.  At least one PTAB panel has seemingly caught on to the reality of the situation.
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`But, the letters to Congress highlight far more problematic issues for the agency.  That is, whether
`the agency should be applying discretion to deny consideration on the merits based upon
`litigation-based considerations Congress specifically addressed via statute.  And, even if such
`discretion were appropriate, whether that discretion can be applied to deprive stakeholders of
`access to the agency in the absence of traditional Administrative Procedure Act (APA) controls.
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`If Congress doesn’t step in to re-calibrate current practices, I expect the agency to be sued based
`upon the clear APA violations in the Eastern District of Virginia. Or, perhaps another route would be
`a mandamus to the Federal Circuit on the right to have a petition considered independent of
`“discretion” that conflicts with statutory mandates of the America Invents Act (AIA).
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`“
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`The letters (here) allude to the same issues, explaining:
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`Nothing in the statute suggests that an IPR should not be
`instituted based on the status of co-pending infringement
`litigation, and there is no airmative grant of discretion to deny
`institution based on the possibility of duplicative proceedings.    
`.     .     . The PTAB’s policy of favoring IPR only when there is no
`co-pending litigation, or the patents are being litigated in slow
`courts, is badly misguided and substantially undermines the
`intent of IPR.  ¶  This is even more concerning because the
`misguided policy regarding discretionary denials was adopted
`without any formal rulemaking process or opportunity for public
`comment. Instead, a panel of three PTO oicials can simply
`decide to make a decision binding on all PTAB judges. Moreover,
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`9/11/2020
`Congress Urged to Investigate PTAB Discretionary Denials | Patents Post-Grant
`the resulting decisions, which disproportionately favor denying
`IPR, have been found by courts not to be reviewable. As a result,
`PTAB policies governing discretionary denials bear none of the
`hallmarks of public engagement or judicial oversight we expect
`when agencies engage in statutory interpretation or rulemaking.
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`Given the more pressing national issues at present, and the upcoming election, I wouldn’t expect
`much out of Congress other than maybe a letter to the USPTO Director asking for some data.
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`In the meantime, the agency can either adapt to the reality of current district court schedules
`(which now must prioritize cancelled criminal trials over patent cases), or tempt further legal
`action from the public.  One way or the other, the NHK trend should not continue.
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