[Federal Register Volume 80, Number 164 (Tuesday, August 25, 2015)]
[Pages 51540-51542]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-21052]



United States Patent and Trademark Office

[Docket No.: PTO-P-2015-0055]

Request for Comments on a Proposed Pilot Program Exploring an 
Alternative Approach to Institution Decisions in Post Grant 
Administrative Reviews

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.


SUMMARY: The United States Patent and Trademark Office (USPTO) is 
requesting comments on a proposed pilot program pertaining to the 
institution and conduct of the post grant administrative trials 
provided for in the Leahy-Smith America Invents Act (AIA). The AIA 
provides for the following post grant administrative trials: Inter 
Partes Review (IPR), Post-Grant Review (PGR), and Covered Business 
Method Review (CBM). The USPTO currently has a panel of three APJs 
decide whether to institute a trial, and then normally has the same 
three-APJ panel conduct the trial, if instituted. The USPTO is 
considering a pilot program under which the determination of whether to 
institute an IPR will be made by a single APJ, with two additional APJs 
being assigned to the IPR if a trial is instituted. Under this pilot 
program, any IPR trial will be conducted by a panel of three APJs, two 
of whom were not involved in the determination to institute the IPR.

DATES: Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before October 26, 2015.

ADDRESSES: Comments must be sent by electronic mail message over the 
Internet addressed to: [email protected]. Electronic comments 
submitted in plain text are preferred, but also may be submitted in 
ADOBE[supreg] portable document format or MICROSOFT WORD[supreg] 
format. The comments will be available for viewing via the USPTO's 
Internet Web site (http://www.uspto.gov). Because comments will be made 
available for public inspection, information that the submitter does 
not desire to make public, such as an address or phone number, should 
not be included in the comments.

Administrative Patent Judge, Patent Trial and Appeal Board, by 
telephone at (571) 272-9797.

    Introduction: The first petitions for AIA post grant administrative 
trials were filed on September 16, 2012. Since then, over 3,600 
petitions have been filed, and over 1,500 trials have been instituted. 
The USPTO has thus far been able to meet the demands placed on its 
resources created by the unexpectedly heavy workload. The Patent Trial 
and Appeal Board (PTAB) has issued over 2,200 decisions on institution 
and over 450 final written decisions. In three-plus years, the PTAB has 
not missed one statutory or regulatory deadline. At the same time, the 
PTAB has reduced the backlog of ex parte appeals.
    Notwithstanding the success-to-date, the USPTO is pro-actively 
looking for ways to enhance its operations for the benefit of its 
stakeholders and therefore is interested in exploring alternative 
approaches that might improve its efficiency in handling AIA post grant 
proceedings while being fair to both sides and continuing to provide 
high quality decisions. Based upon comments received from the public 
through public fora and formal requests, the agency is considering a 
pilot program to test changing how the institution phase of a post 
grant proceeding is handled.
    Once trial is instituted, the AIA mandates that the resulting trial 
be conducted before a three-member panel of the PTAB. Generally, under 
current practice, the same panel of three administrative patent judges 
(APJs) decides whether to institute and, if instituted, handles the 
remainder of the proceeding, much like how federal district court 
judges handle cases through motions to dismiss, summary

[[Page 51541]]

judgment, and trial. But a three-judge panel of the PTAB is not 
required under the statute prior to institution, and the USPTO believes 
it is prudent to explore other potentially more efficient options, 
especially given that the number of petitions filed may continue to 
    To date and currently, the agency has intended to meet the resource 
demands on the PTAB due to both AIA post grant proceedings and ex parte 
appeals by hiring additional judges. Even with continued hiring, 
however, increases in filings and the growing number of cases may 
strain the PTAB's continuing ability to make timely decisions and meet 
statutory deadlines. Therefore, the agency wishes to explore and gain 
data on a potentially more efficient alternative to the current three-
judge institution model. Having a single judge decide whether to 
institute trial in a post grant proceeding, instead of a panel of three 
judges, would allow more judges to be available to attend to other 
matters, such as reducing the ex parte appeal backlog and handling more 
post grant proceedings.
    Background: As discussed previously, the AIA provides for IPR, PGR, 
and CBM trials, under which a petitioner may seek cancellation of one 
or more claims of a patent. The AIA provides that the Director decides 
whether to institute an IPR, PGR, or CBM trial. See 35 U.S.C. 314 and 
324. An IPR is not instituted unless there is a determination that the 
petition demonstrates that there is a reasonable likelihood that at 
least one of the claims challenged in the petition is unpatentable. See 
35 U.S.C. 314(a). A PGR or CBM is not instituted unless there is a 
determination that the petition, if unrebutted, demonstrates that it is 
more likely than not that at least one of the claims challenged in the 
petition is unpatentable. See 35 U.S.C. 324(a). Alternatively, a PGR or 
CBM may be instituted where the petition raises a novel or unsettled 
legal question that is important to other patents or patent 
applications. See 35 U.S.C. 324(b). Once instituted, and after a trial 
is conducted, the PTAB issues a final written decision with respect to 
the patentability of any patent claim challenged by the petitioner and 
any new claim added during the review. See 35 U.S.C. 318 and 328. The 
final determination in an IPR, PGR, or CBM must, with limited 
exceptions, be issued not later than one year after the date on which 
the institution of the IPR, PGR, or CBM is noticed. See 35 U.S.C. 
316(a)(11) and 326(a)(11); 37 CFR 42.100(c), 200(c), and 300(c).
    The authority to determine whether to institute and conduct a trial 
has been delegated to a Board member or employee acting with the 
authority of the Board. See 37 CFR 42.4; see also Rules of Practice for 
Trials Before the Patent Trial and Appeal Board and Judicial Review of 
Patent Trial and Appeal Board Decisions, 77 FR 48612, 48647 (Aug. 14, 
2012). As a result, neither the AIA nor the USPTO's rules require that 
an institution decision be made by a panel of multiple individuals 
within the USPTO. The AIA does, however, require that the final written 
decision in an IPR, PGR, or CBM be rendered by a panel of at least 
three APJs. See 35 U.S.C. 6(c). The PTAB has developed the practice of 
deciding whether to institute an IPR, PGR, or CBM trial via three-APJ 
panels, and then conducting the trial, if instituted, usually by the 
same three-APJ panel.
    Proposed Pilot Program: The USPTO is seeking input on whether to 
conduct a pilot program under which a single APJ would decide whether 
to institute an IPR trial, with two additional APJs being assigned to 
conduct the IPR trial, if instituted. Under this pilot program, any IPR 
trial will be conducted by a panel of three APJs, two of whom were not 
involved in the determination to institute the IPR.
    Conduct of Proposed Pilot Program: The USPTO is considering 
selecting certain petitions for inclusion in the proposed pilot program 
from among all IPR petitions filed during a specific period. The 
selection would continue for at least three and up to six months. The 
pilot program would be limited to IPRs. The USPTO would consider the 
results of this pilot program to determine whether and to what degree 
to implement this approach more generally in the future, for example, 
potentially only in response to an unusually high volume of petitions.
    Due to the inter partes nature of IPR trials and the need to avoid 
selection bias during the evaluation of the results, it is not 
practical to allow petitioners or patentees to request participation 
in, or exclusion from, the pilot program.
    Finally, it is possible that an IPR initially selected for the 
single-APJ pilot program will ultimately be determined unsuitable for 
inclusion in the pilot. In such a situation, the IPR would be removed 
from the proposed single-APJ pilot program.
    Assignment of Trial Panel under the Single-Judge Pilot Program: If 
the single-APJ decision results in institution of trial, the PTAB 
would, after institution, assign two additional APJs to the panel for 
rendering interlocutory decisions, as needed, and for issuing a final 
written decision on the merits. The PTAB may assign three new APJs to 
the panel, for example, in the rare circumstance that the APJ who 
granted the institution is not available to sit on the panel post 
institution or where, due to workloads, it would be more efficient to 
assign a new three-judge panel to the proceeding. When possible, the 
trial panel assignment would maintain the role of the single APJ as the 
judge generally managing the proceeding during trial. This would ensure 
that the judge most familiar with the IPR has the responsibility of 
coordinating interlocutory activity with the parties during trial.
    Scheduling Order: Typically, when trial is instituted, a scheduling 
order is entered concurrently with the decision on institution. To 
allow for coordination of deadlines and the trial panel's availability 
for oral argument and other due dates, the scheduling order in trials 
instituted pursuant to a decision under this pilot program will not be 
entered concurrently with the decision on institution. The PTAB expects 
that, after the trial panel is notified of the assignment, the panel 
will issue promptly a scheduling order for the IPR.
    Question for Public Comment: The USPTO is inviting written comments 
from any member of the public on the pilot program under consideration. 
Specifically, the USPTO is seeking comment on any issue relevant to the 
design and implementation of a pilot program under which an IPR trial 
is conducted by a panel of three APJs in which two of the APJs were not 
involved in the determination to institute the IPR. In particular, the 
USPTO is seeking public input on the following questions.


    1. Should the USPTO conduct the single-APJ institution pilot 
program as proposed herein to explore changes to the current panel 
assignment practice in determining whether to institute review in a 
post grant proceeding?
    2. What are the advantages or disadvantages of the proposed single-
APJ institution pilot program?
    3. How should the USPTO handle a request for rehearing of a 
decision on whether to institute trial made by a single APJ?
    4. What information should the USPTO include in reporting the 
outcome of the proposed single-APJ institution pilot program?
    5. Are there any other suggestions for conservation and more 
efficient use of the judicial resources at the PTAB?

[[Page 51542]]

    Dated: August 20, 2015.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2015-21052 Filed 8-24-15; 8:45 am]