Feature

The Evolution of Patent Office Litigation Practice Under the AIA

A Review of Past Reform and a Look Ahead to Possible Changes on the Horizon

By Todd R. walters, Erin M. Dunston, Jonathan R. Bowser, Roger H. Lee, Kyle K. Tsui, Mythili Markowski, Christopher M. Cherry, David W. Leibovitch, and Shantanu C. Pathak

©2017. Published in Landslide, Vol. 9, No. 3, January/February 2017, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Five years ago, Congress enacted the Leahy-Smith America Invents Act (AIA), and the landscape for patent litigants has never been the same. Post-grant proceedings under the AIA (including inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review) have proven to be a relatively expedient, cost-effective option for parties seeking to contest the patentability of issued patent claims.1 Defendants in infringement actions have opted to have their invalidity case heard by the Patent Trial and Appeal Board (PTAB) in parallel AIA proceedings,2 and courts have been willing to stay such litigations pending the outcome of AIA proceedings.3

Perhaps not surprisingly given the AIA’s recent enactment, practitioners have expressed concern over various aspects of post-grant practice and procedure. The U.S. Patent and Trademark Office (USPTO) has demonstrated a willingness to address some of the concerns raised by practitioners by amending its rules and issuing precedential decisions. However, other areas of concern remain. Debates persist over issues such as the claim construction standard applied in AIA proceedings, and the discretion given to the PTAB by statute to deny institution based on redundancy. Recent reform efforts and potential changes that may be on the horizon are discussed below.

A Comparison with District Court Litigation

AIA proceedings compare favorably to district court litigation in many important aspects. Compared with district court litigation, AIA proceedings are expedient and inexpensive. By statute, the PTAB is required to render a final written decision within one year of instituting trial.4 In contrast, district court litigation can take several years to conclude. According to the American Intellectual Property Law Association (AIPLA), for lawsuits in the lowest-stakes category (less than $1 million at risk), median litigation costs were $600,000 in 2015.5 For the highest-stakes category (more than $25 million at risk), median litigation costs were $5,000,000.6 In contrast, costs for a post-grant proceeding are typically far less, generally in the $500,000 range.7 While patent cases in district court are typically heard by generalist jurists without any formal technical background, the administrative patent judges (APJs) who preside over AIA trials have technical backgrounds and substantial experience in patent law.8

In an IPR, a petitioner bears the initial burden of demonstrating that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged.9 As of August 31, 2016, there have been a total of 4,995 IPR petitions and 474 CBM petitions filed with the PTAB (see figs. 1–2).10 Of those petitions filed, decisions to institute trial were issued in 1,807 IPR proceedings and 211 CBM proceedings.11 In instituted AIA proceedings that reached final written decision, some or all of the challenged claims were deemed unpatentable 84 percent of the time.12 Thus, many parties have found AIA proceedings to be an effective means for challenging the patentability of issued patent claims.

 

 

 

 

Reform from Within: The USPTO’s Rule Changes and Precedential Decisions

Rule Changes

The USPTO has initiated reform by amending its rules governing procedure in AIA proceedings. On April 1 and 27, 2016, the USPTO announced several changes to practice before the PTAB. Four key changes were implemented, but several proposed amendments were not. Here we address those four changes, which took effect on May 2, 2016, and apply to all AIA petitions filed on or after that date and to any ongoing preliminary proceedings and trials.13

Changes That Made the Cut

Page Limits Replaced with Word Count Limits. For IPRs, the 60-page limit was replaced by a 14,000-word limit.14 For PGRs and CBMs, the 80-page limit was replaced by an 18,700-word limit.15 Replies by petitioners now have a 5,600-word limit, as opposed to the old limit of 25 pages.16 Page limits still apply for other pleadings such as motions to amend (25 pages), and motions for other relief (15 pages).17 Oppositions to motions and replies to oppositions have corresponding page limits.18

Preliminary Responses May Now Include Supporting Evidence. Patent owners may now include supporting evidence with their preliminary responses as a matter of right.19 Prior to the amendments, the PTAB did not want a mini-trial to decide whether there should be a trial. That sentiment has changed in response to commenters arguing for “a better balance of the opportunity to present evidence for both sides.”20

Any factual dispute created by testimonial evidence that is material to the institution decision will be resolved in favor of the petitioner solely for purposes of determining whether to institute a trial.21 Should the new testimonial evidence warrant a reply, a petitioner may seek leave to file a reply, which requires a showing of good cause.22

Phillips-Like Claim Construction Is Available, in Limited Circumstances. The default claim construction standard for PTAB proceedings remains the broadest reasonable interpretation standard.23 Now, either party may request a district court–type claim construction24 if that party certifies that the challenged patent will expire within 18 months from the entry of the notice of filing date accorded to petition.25 The PTAB’s commentary implies petitioners may be afforded an opportunity to address a Phillips-type construction analysis before patent owner is required to file its preliminary response.26

Rule 11–Type Certifications Are Now Required. The amendments greatly expanded the duty of candor provisions of 37 C.F.R. § 42.11. Every representation to the PTAB must now comply with the certification requirements of 37 C.F.R. § 11.18(b)(2).27 The PTAB now has the option of imposing an appropriate sanction, including attorneys’ fees.28

The foregoing changes are the culmination of “a nationwide listening tour” in 2014 and a Federal Register notice “asking for public feedback about the AIA trial proceedings.”29 The Federal Register notice makes clear that the USPTO “will continue to refine the rules governing AIA trials to continue to ensure fairness and efficiency while meeting all congressional mandates.”30

Precedential Decisions Rendered by the PTAB

Another means by which the USPTO has initiated reform is through the issuance of precedential decisions. The PTAB and practitioners have encountered several issues of first impression since the passage of the AIA, sometimes resulting in inconsistent decisions by PTAB panels. To guard against inconsistent decisions, the PTAB has, to date, designated eight opinions as precedential. A brief description of the PTAB’s precedential decisions is provided below.

Discovery

The scope of discovery in an AIA trial is generally much narrower than what is available in district court.31 In Garmin,32 the PTAB indicated that the following five factors are considered in determining whether a discovery request meets the required “in the interest of justice” standard33: (1) the movant must show more than a possibility or mere allegation that something useful will be found, (2) a party may not ask for the other party’s litigation positions and the underlying basis for those positions, (3) information a party can reasonably figure out or assemble without a discovery request would not be in the interest of justice to have produced, (4) the questions should be easily understandable, and (5) the requests must not be overly burdensome to answer, given the expedited nature of IPR.

In Bloomberg,34 the PTAB held that a good cause standard35 is applied for additional discovery in PGRs and CBMs, as opposed to the interest of justice standard applied for additional discovery in IPRs. In this order, the PTAB adopted Garmin discovery factors (1)–(5) for PGR and CBM proceedings, noting that the good cause standard is slightly lower than the interest of justice standard.

Time Bar

An IPR may not be instituted if the IPR petition is filed more than one year after the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.36 In Oracle,37 the PTAB clarified the meaning of “complaint alleging infringement” of 35 U.S.C. § 315(b). A complaint for infringement that was voluntarily dismissed without prejudice is not a “complaint alleging infringement of the patent” within the meaning of 35 U.S.C. § 315(b), because the dismissal without prejudice leaves the parties as though the action had never been brought.

In LG Electronics,38 the petitioner was served with a first complaint for infringement in 2008 and a second complaint for infringement in 2014 relating to the challenged patent. The 2008 complaint was dismissed both with and without prejudice. The PTAB rejected petitioner’s argument that the time bar should be measured from the second complaint. Because the 2008 complaint was dismissed both with and without prejudice, the dismissal of the earlier complaint did not leave both parties as though the action had never been brought.

Motion to Amend

A patent owner may file a conditional motion to amend one or more claims challenged in the proceeding.39 In Idle Free,40 the PTAB indicated that a patent owner has the burden of proof to demonstrate patentability of the proposed new claims over (1) the prior art of record, and (2) prior art known to the patent owner.

In MasterImage,41 the PTAB clarified the meaning of (1) “the prior art of record” and (2) “prior art known to the patent owner” as used in Idle Free. The PTAB held that (1) “the prior art of record” includes (a) any material art in the prosecution history of the patent; (b) any material art of record in the current proceeding, including art asserted in challenges not instituted by the PTAB; and (c) any material art of record in any other proceeding before the USPTO involving the patent. In addition, the PTAB indicated that (2) “prior art known to the patent owner” includes “no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of a Motion to Amend.”42

Real Parties in Interest

Under 35 U.S.C. § 312(a)(2), a petitioner must identify all real parties in interest as part of the petition. In Lumentum,43 the PTAB held that 35 U.S.C. § 312(a) does not define the PTAB’s jurisdiction to consider a petition. Rather, § 312(a) sets forth requirements that must be satisfied for the PTAB to give consideration to a petition, but a lapse in compliance with those requirements does not deprive the PTAB of jurisdiction over the proceeding, or preclude the PTAB from permitting such lapse to be rectified.

Estoppel

In Westlake Services,44 the PTAB held that estoppel under 35 U.S.C. § 325(e)(1) is applied on a claim-by-claim basis only if a final written decision has been issued for that claim.

Civil Action Bar

Under 35 U.S.C. § 325(a)(1), a PGR may not be instituted if “the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent” before filing the PGR petition. In SecureBuy,45 the PTAB held that the civil action bar provisions of 35 U.S.C. § 325(a)(1) apply to CBM reviews.

As the PTAB continues to adjudicate more AIA trials, practitioners would like the PTAB to designate more opinions as precedential to provide additional guidance.

PTAB Procedure for Remands from the Federal Circuit

Interestingly, the USPTO’s rules and Trial Practice Guide provide no guidance on the scope and procedure of remands from the Federal Circuit. Practitioners have had to piece together an understanding of the PTAB’s approach to remands from reviewing how individual PTAB panels have handled remanded cases.

In Ariosa Diagnostics, the Federal Circuit declined to instruct the PTAB on matters of scope in remand proceedings, including on whether to accept new evidence or briefings on remand.46 The court reasoned that 37 C.F.R. § 42.5(a) allows the PTAB to control its own proceedings consistent with governing statutes, regulations, and practices.47

The first PTAB trial appeal to be remanded, Microsoft v. Proxyconn,48 is most commonly cited by PTAB panels and practitioners. Upon remand from the Federal Circuit, the PTAB in Microsoft organized a telephone conference during which the parties attempted—though failed—to reach agreement on remand scope and procedure.49 The PTAB subsequently required the parties to each submit a brief limited to addressing the effects of the Federal Circuit’s decision as to the patentability of certain claims.50 The PTAB prohibited any new prior art or other evidence, and ordered that reply briefs could only be submitted upon prior authorization.51

PTAB orders are generally inconsistent with Microsoft, and with each other, in regard to page limits, due dates for remand briefs, and whether new arguments are permitted. Generally, the PTAB has consistently refused to admit new evidence on remand beyond the evidence considered in the final written decision or made of record before the Federal Circuit.52 For instance, the panel in Shaw expunged a video submitted with the petitioner’s remand brief because it was not previously considered.53

The PTAB has deviated from the practice of holding a telephone conference with the parties in an attempt to reach agreement on remand scope and procedure. In Corning,54 the panel instead asked the parties to confer with each other on all matters that must be reconsidered on remand, and on whether additional briefing and/or submission of new evidence should be required.55 The parties were then directed to file a joint paper or separate papers depending on whether an agreement was reached.56

The need for directives on remand practice has been publicly noted. In 2015, the AIPLA encouraged the PTAB to clarify the procedures to be followed on remands from the Federal Circuit.57 The USPTO has, however, not responded to the AIPLA’s comments on this point.

Claim Construction Standard Applied in AIA Proceedings

One area of potential reform is the claim construction standard applied in AIA proceedings. In patent law, two claim construction standards exist: the broadest reasonable interpretation (BRI) standard, and the ordinary and customary meaning standard (also known as the Phillips standard).58 Typically, the Phillips standard is applied by district courts, and the BRI standard is applied by the USPTO.

On June 20, 2016, the Supreme Court affirmed the Federal Circuit’s determination that the PTAB can use the BRI standard in AIA proceedings, holding that the USPTO’s adoption of the BRI standard in AIA proceedings was a reasonable exercise of its authority as delegated by Congress.59 However, there has been controversy over the standard used in AIA trials, and some practitioners believe that the Court did not sufficiently address the concerns of those advocating the Phillips standard in AIA proceedings.

Controversy behind the Claim Construction Standard in AIA Proceedings

When Congress drafted the AIA and created proceedings such as IPRs, Congress was silent as to the claim construction standard to be applied.60 Instead, Congress authorized the USPTO to promulgate the rules to implement these proceedings.61 Under this authority, the USPTO promulgated 37 C.F.R. § 42.100(b), which states that the PTAB will apply the BRI standard for any “claim in an unexpired patent that will not expire before a final written decision.” The USPTO stated that this “would be consistent with longstanding established principles of claim construction before the Office.”62

In the final rules published on August 14, 2012, the USPTO indicated that it had received comments suggesting that proposed § 42.100(b) exceeded the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2).63 The USPTO responded that 35 U.S.C. § 316(a)(2) and (4) provide the USPTO authority to prescribe the appropriate claim construction standard.64 The USPTO also stated that the BRI standard was consistent with features of the new proceedings such as the ability to amend claims, the preponderance of the evidence standard for determining patentability, and the absence of a presumption of validity.65

Judge Newman’s dissent in Cuozzo voiced the concerns of those advocating for the Phillips standard in AIA proceedings. Judge Newman argued that the BRI standard was an expedient in examination and reexamination, but did not have a place in IPRs because there is no “unfettered opportunity to amend,” noting the low number of motions to amend that had been granted by the PTAB.66 Judge Newman argued that IPRs were intended to be a surrogate for district court litigation and should therefore use the same claim construction standard as district courts.67 Judge Newman stated that the final rule departed from the “language, purpose and history” of the AIA and was therefore beyond the USPTO’s rulemaking authority.68

Cuozzo at the Supreme Court

The Court held that there was no obvious unfairness to patent owners through the application of the BRI standard in IPRs.69 The Court also indicated that the low success rates of motions to amend could be attributed to other factors, such as whether any of the proposed amendments could have saved the challenged patents.70 The Court also rejected the argument that the BRI standard would produce inconsistent results, noting that while it may be possible for a district court to find a patent claim to be valid and for the USPTO to later cancel the claim, such results had long been possible in the patent system.

Motions to Amend in AIA Proceedings

On May 9, 2016, the USPTO published a study that provided aggregated data regarding motions to amend.71 As of April 30, 2016, motions to amend had been presented in 192 proceedings. As shown in figure 3, subsequent developments negated the need for the PTAB to consider the motion to amend in 74 of these proceedings.

In the remaining 118 proceedings, the study considered the reasons why proposed substitute claims were denied entry. Table 1 was included with the study and identifies the various reasons why the motions to amend were denied.

Legislative Activity Regarding Claim Construction

Several patent reform bills have been proposed that would require the USPTO to apply the Phillips standard instead of the BRI standard in AIA proceedings.72 Although both the House and Senate passed various patent reform bills, no bills were completed. It is unlikely that additional patent reforms will be passed in the near term.

Options for Easing the Burden on Patent Owners

One of the concerns expressed by proponents of the Phillips standard in AIA proceedings is that motions to amend are rarely approved. There are signs the USPTO recognizes this difficulty and is beginning to address the situation. For example, the above study shows the USPTO is investing resources into understanding the problem.

One possibility for reducing the burden involves the PTAB issuing decisions that take into consideration the concerns of patent owners. For example, in Shinn Fu, the PTAB approved the grouping of prior art references based on their teachings, and the discussion of only a few representative claims in the motion to amend.73 Parties may find themselves before a panel receptive to different strategies that may help ease the burden on patent owners.

Redundancy as a Basis for Not Instituting AIA Proceedings

Another area of potential reform is the manner in which the PTAB treats petitions containing multiple challenges against the same claim. The PTAB has employed various techniques to comply with its mandate of issuing final written decisions within one year of institution,74 relying heavily on its broad discretion and regulatory authority for developing AIA proceedings.75 One such approach is the PTAB’s denial of institution for grounds of challenge that are deemed to be “redundant” with other grounds in the petition.

The PTAB has explained that a finding of “redundancy” can be used to deny institution for grounds of challenge where the presentation of a large number of grounds could jeopardize timely conclusion of the proceeding.76 The PTAB often denies allegedly redundant grounds without giving the petitioner the opportunity to provide input on the preferred ground(s) for PTAB consideration.77 Critics of the redundancy doctrine have argued that this approach leads to institution on weaker grounds, grounds that do not cover all of the originally targeted claims, and/or grounds that do not encompass all the legal theories presented. Furthermore, there is a concern that the PTAB dismisses alleged “redundant” grounds without substantive review.

Practitioners and the courts have questioned the equity and constitutionality of the PTAB’s “redundancy doctrine,” especially because the PTAB’s institution decisions are not appealable.78 There is also concern that the practice may permanently restrict a petitioner’s options going forward due to the possible application of estoppel to the redundant grounds.79

In Shaw,80 the Federal Circuit held that a PTAB decision dismissing several proposed grounds in an IPR petition as being redundant is not appealable. In a concurring opinion, Judge Reyna contemplated that estoppel may be applied against the redundant grounds in other forums (e.g., district courts or the United States International Trade Commission (USITC)) because the PTAB’s invocation of the redundancy doctrine represents, at least in some instances, a substantive decision.81 The USPTO has argued that estoppel does not apply to grounds deemed to be redundant because they never became part of the IPR proceeding.82 The USPTO’s position, however, may not provide much comfort because the PTAB routinely declines to institute proceedings when it considers the prior art and arguments to be recycled from noninstituted grounds in an earlier petition, even if additional prior art is included.83

Due to the uncertainties surrounding the procedure and the potential estoppel effect of the PTAB’s redundancy doctrine, further guidance is needed to ensure just and equitable outcomes.

Conclusion

The USPTO has recognized the need to change its procedure by amending its rules and designating precedential decisions. Nevertheless, many practitioners have expressed concerns over a need for further reform in various aspects of post-grant practice. Issues such as the procedure for remand may eventually be addressed by the USPTO by way of additional precedential decisions or rule changes. Changes in other, more controversial areas such as the claim construction standard and the PTAB’s use of the redundancy doctrine may require congressional action. Post-grant practice under the AIA has evolved considerably since its inception, and more changes and reform are likely to be on the horizon.

Endnotes

1. H.R. Rep. No. 112-98, at 40, 45 (2011).

2. Saurabh Vishnubhakat, Arti K. Rai & Jay P. Kesan, Strategic Decision Making in Dual PTAB and District Court Proceedings, 31 Berkeley Tech. L.J. 45, 76 (2016).

3. Id. at 84.

4. 37 C.F.R. §§ 42.100(c), .200(c), .300(c).

5. AIPLA, 2015 Report of the Economic Survey 37 (2015).

6. Id.

7. Id. at 38.

8. 35 U.S.C. § 6 (requiring that “administrative patent judges shall be persons of competent legal knowledge and scientific ability”).

9. Id. § 314(a).

10. USPTO, Patent Trial and Appeal Board Statistics 2 (Aug. 31, 2016), https://www.uspto.gov/sites/default/files/documents/2016-08-31%20PTAB.pdf.

11. Id. at 10–11.

12. Id.

13. See Amendments to the Rules of Practice for Trials before the Patent Trial and Appeal Board, 81 Fed. Reg. 18,750 (Apr. 1, 2016).

14. 37 C.F.R. § 42.24(a)(1)(i).

15. Id. § 42.24(a)(1)(ii), (iii).

16. Id. § 42.24(c)(1).

17. Id. § 42.24(a)(1)(v), (vi).

18. Id. § 42.24(b), (c).

19. Id. §§ 42.107(a), .207(a), .300(a).

20. 81 Fed. Reg. 18,750, 18,755 (Apr. 1, 2016).

21. Id. at 18,755–56.

22. Id. at 18,757.

23. See, e.g., 37 C.F.R. §§ 42.100(b), .200(b).

24. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).

25. 37 C.F.R. §§ 42.100(b), .200(b), .300(b).

26. 81 Fed. Reg. at 18,752.

27. 37 C.F.R. § 42.11(c).

28. Id. § 42.11(d)(2).

29. 81 Fed. Reg. at 18,750.

30. Id. at 18,751.

31. 37 C.F.R. § 42.51(b).

32. Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, No. IPR2012-00001, Paper No. 26 (P.T.A.B. Mar. 5, 2013) (precedential).

33. 37 C.F.R. § 42.51(b)(2)(i).

34. Bloomberg Inc. v. Markets-Alert Pty Ltd., No. CBM2013-00005, Paper No. 32 (P.T.A.B. May 29, 2013) (precedential).

35. 37 C.F.R. § 42.224(a).

36. 35 U.S.C. § 315(b).

37. Oracle Corp. v. Click-to-Call Techs. LP, No. IPR2013-00312, Paper No. 26 (P.T.A.B. Oct. 30, 2013) (precedential only as to section III.A.).

38. LG Elecs., Inc. v. Mondis Tech. Ltd., No. IPR2015-00937, Paper No. 8 (P.T.A.B. Sept. 17, 2015) (precedential).

39. 35 U.S.C. § 316(d)(1).

40. Idle Free Sys., Inc. v. Bergstrom, Inc., No. IPR2012-00027, Paper No. 26 (P.T.A.B. June 11, 2013) (informative).

41. MasterImage 3D, Inc. v. RealD Inc., No. IPR2015-00040, Paper No. 42 (P.T.A.B. July 15, 2015) (precedential).

42. Id. at 3.

43. Lumentum Holdings, Inc. v. Capella Photonics, Inc., No. IPR2015-00731, Paper No. 39 (P.T.A.B. Mar. 2, 2016) (precedential).

44. Westlake Servs., LLC v. Credit Acceptance Corp., No. CBM2014-00176, Paper No. 28 (P.T.A.B. May 14, 2015) (precedential).

45. SecureBuy, LLC v. CardinalCommerce Corp., No. CBM2014-00035, Paper No. 12 (P.T.A.B. Apr. 25, 2014) (precedential).

46. Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015).

47. Id.

48. Microsoft Corp. v. Proxyconn, Inc., No. IPR2012-00026, Paper No. 77 (P.T.A.B. Sept. 1, 2015).

49. Id. at 2.

50. Id. at 2–3.

51. Id. at 3.

52. See Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., No. IPR2013-00132, Paper No. 49, at 4 (P.T.A.B. June 3, 2016); Dell Inc. v. Acceleron, LLC, No. IPR2013-00440, Paper No. 46, at 3 (P.T.A.B. May 26, 2016); MotivePower, Inc. v. Cutsforth, Inc., No. IPR2013-00274, Paper No. 37, at 3 (P.T.A.B. Mar. 31, 2016); Ariosa Diagnostics v. Verinata Health, Inc., No. IPR2013-00276, Paper No. 49, at 4 (P.T.A.B. Jan. 13, 2016).

53. See Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., No. IPR2013-00132, Paper No. 52, at 2 (P.T.A.B. June 23, 2016).

54. See Corning Optical Commc’ns RF, LLC v. PC Broadband, Inc., No. IPR2013-00342, Paper No. 51 (P.T.A.B. May 20, 2016). Buchanan Ingersoll & Rooney PC represented, and is currently representing, Corning Optical Communications RF, LLC in this proceeding.

55. Id. at 2.

56. Id. at 2–3.

57. See Letter from Sharon A. Israel, President, AIPLA, to Michelle K. Lee, Dir., USPTO, Response to Proposed “Amendments to the Rules of Practice for Trials before the Patent Trial and Appeal Board,” 80 Fed. Reg. 50720 (August 20, 2015) (Oct. 21, 2015), available at https://www.uspto.gov/sites/default/files/documents/PTAB%20Rules%20Aug%202015%20IPO%20AIPLA%20Comments.pdf.

58. See Phillips v. AWH Corp., 415 F.3d 1303, 1313–14 (Fed. Cir. 2005).

59. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–45 (2016).

60. In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1278 (Fed. Cir. 2015).

61. See generally 35 U.S.C. §§ 316(a), 326(a).

62. Changes to Implement Inter Partes Review Proceedings, 77 Fed. Reg. 7041, 7044 (Feb. 10, 2012).

63. Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48,680, 48,697–98 (Aug. 14, 2012).

64. Id.

65. Id.

66. In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1287 (Fed. Cir. 2015) (Newman, J., dissenting).

67. Id. at 1288.

68. Id. at 1291.

69. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–45 (2016).

70. Id. at 2145.

71. Nathan Kelley, Further Insight Provided on PTAB Amendment Motions with New Study, Director’s F.: A Blog from USPTO’s Leadership (May 9, 2016), http://www.uspto.gov/blog/director/entry/further_insight_provided_on_ptab.

72. See, e.g., Innovation Act, H.R. 3309, 113th Cong. (2013); Patent Transparency and Improvements Act, S. 1720, 113th Cong. (2013); STRONG Patents Act of 2015, S. 632, 114th Cong.

73. Shinn Fu Co. of Am. v. Tire Hanger Corp., No. IPR2015-00208, Paper No. 24, at 19–20 (P.T.A.B. Apr. 22, 2016).

74. 35 U.S.C. §§ 316(a)(11), 326(a)(11).

75. See id. § 316(b); 37 C.F.R. § 42.108(a), (b).

76. See Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., No. CBM2012-00003, Paper No. 7 (P.T.A.B. Oct. 25, 2012).

77. See, e.g., Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., No. IPR2013-00132, Paper No. 9 (P.T.A.B. July 25, 2013).

78. See 35 U.S.C. § 315(e); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2141–42 (2016).

79. See, e.g., 35 U.S.C. § 315(e).

80. Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293, 1298–99 (Fed. Cir. 2016).

81. Id. at 1304 (Reyna, J., concurring).

82. Id. at 1305.

83. See, e.g., Nora Lighting, Inc. v. Juno Mfg., LLC, No. IPR2015-00601, Paper No. 13, at 11–12 (P.T.A.B. Aug. 12, 2015); BioDelivery Scis. Int’l, Inc. v. RB Pharm. Ltd., No. IPR2014-00998, Paper No.12, at 8–9 (P.T.A.B. Dec. 19, 2014); Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC, No. IPR2014-01080, Paper No. 17, at 5–6 (P.T.A.B. Oct. 31, 2014).