A Guide to the Legislative History
`of the America Invents Act: Part II of II
`
`Joe Matal*
`
`Introduction
`This is the second Article in a two-part series about the legislative history
`of the recently enacted Leahy-Smith America Invents Act (“AIA”).1 The first
`Article addressed those sections of the AIA that apply to an application be-
`fore a patent has issued—principally, the bill’s amendments to §§ 102, 103,
`115, 122, and 135 of title 35, and several of the AIA’s uncodified provisions.2
`This second Article addresses those changes made by the AIA that apply only
`after a patent has been granted. It examines the legislative history of the AIA’s
`provisions concerning post-grant review of patents; inter partes proceedings;
`supplemental examination; the section 18 business-method-patent-review
`program; the new defense of prior commercial use; the partial repeal of the
`best-mode requirement; and other changes regarding virtual and false mark-
`ing, advice of counsel, court jurisdiction, USPTO funding, and the deadline
`for seeking a patent term extension. This second Article consists of two parts:
`Part I addresses sections of the U.S. Code that were amended by the AIA,
`and Part II addresses sections of the AIA that are uncodified.
`
`I. Sections of the U.S. Code That Are Amended by the AIA
`A. 28 U.S.C. §§ 1295(a)(1), 1338(a), and 1454: The Holmes
`Group v. Vornado Fix
`Section 19 of the AIA, at subsections (a) through (c), enacts the so-called
`Holmes Group3 fix.4 These provisions: (1) amend title 28 to clarify that state
`
`* Joe Matal has served as a Judiciary Committee Counsel to Senator Jon Kyl since 2002,
`except for when he served as the Minority General Counsel of the Judiciary Committee
`from May 2009 to January 2011 while Senator Jeff Sessions was the ranking member of the
`committee. The author thanks his wife, Maren, for her assistance and support during the
`drafting of these Articles.
`1 Pub. L. No. 112-29, 125 Stat. 284 (2011). The first Article appeared in volume 21,
`page 435, of the Federal Circuit Bar Journal. Joe Matal, A Guide to the Legislative History of
`the America Invents Act: Part I of II, 21 Fed. Cir B.J. 435 (2012).
`2 Matal, supra note 1, at 436.
`3 Holmes Grp., Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826 (2002).
`4 H.R. Rep. No. 112-98, at 81 (2011).
`
`
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`Electronic copy available at: http://ssrn.com/abstract=2088887Electronic copy available at: http://ssrn.com/abstract=2088887
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`AVAYA INC. AV-1021
`Avaya Inc. v. Network-1 Security Solutions, Inc.
`IPR2013-00071
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`612 The Federal Circuit Bar Journal Vol. 21, No. 4
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`High-technology companies, in particular, have noted that they are often sued by
`defendants asserting multiple patents with large numbers of vague claims, making it
`difficult to determine in the first few months of the litigation which claims will be
`relevant and how those claims are alleged to read on the defendant’s products. Current
`[i.e., pre-AIA,] law imposes no deadline on seeking inter partes reexamination. And
`in light of the present bill’s enhanced estoppels, it is important that the section 315(b)
`deadline afford defendants a reasonable opportunity to identify and understand the
`patent claims that are relevant to the litigation. It is thus appropriate to extend the
`section 315(b) deadline to one year.458
`The final Committee Report also noted that under § 325(b) of title 35,
`“[i]f a patent owner sues for infringement within 3 months of the patent’s
`issue, a pending petition for post-grant review or the institution of such a
`proceeding may not serve as a basis for staying the court’s consideration of the
`patent owner’s motion for a preliminary injunction.”459 Senator Kyl described
`the reasoning behind this provision during the March 2011 debates, noting
`that “[a] patent owner who sues during this period is likely to be a market
`participant who already has an infringer intruding on his market, and who
`needs an injunction in order to avoid irreparable harm.”460 He also noted that
`§ 325(b) “strengthens and carries over to post-grant review the rule of”461
`Procter & Gamble Co. v. Kraft Foods Global, Inc.,462 a case that applied the same
`rule to consideration of a request for an injunction during the pendency of
`a BPAI appeal of an inter partes reexamination.463
`Finally, it should be noted that pre-AIA § 317(b) of title 35, which required
`that an inter partes reexamination be terminated if a civil action involving
`the inter partes requester resulted in a final judgment that the patent is not
`invalid,464 was not maintained by the AIA in inter partes or post-grant review.465
`7. 35 U.S.C. §§ 315(c) and 325(c): Joinder
`As the final Committee Report noted, under §§ 315(c) and 325(c), “[t]he
`Director may allow other petitioners to join an inter partes or post-grant
`review.”466 During the Senate’s March 2011 debates on the AIA, Senator Kyl
`stated that the USPTO expected to allow liberal joinder of reviews:
`The Office anticipates that joinder will be allowed as of right—if an inter partes review
`is instituted on the basis of a petition, for example, a party that files an identical
`
`458 157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011).
`459 H.R. Rep. No. 112-98, 112th Cong., at 76 (2011).
`460 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl).
`461 Id. at S1376.
`462 549 F.3d 842 (Fed. Cir. 2008).
`463 Id. at 847.
`464 See 35 U.S.C. § 317(b) (2006).
`465 See H.R. Rep. No. 112-98, pt. 1, at 145 (2011).
`466 Id. at 76.
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`Legislative History of the America Invents Act: Part II of II
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`petition will be joined to that proceeding, and thus allowed to file its own briefs and
`make its own arguments. If a party seeking joinder also presents additional challenges
`to validity that satisfy the threshold for instituting a proceeding, the Office will either
`join that party and its new arguments to the existing proceeding, or institute a second
`proceeding for the patent.467
`Senator Kyl also emphasized, however, that §§ 315(c) and 325(c) give the
`USPTO discretion over whether to allow joinder.468 He noted that “[t]his
`safety valve will allow the Office to avoid being overwhelmed if there happens
`to be a deluge of joinder petitions in a particular case.”469
`Senator Kyl also commented on the time limit for allowing joinder.470 He
`noted that “[t]he Office has made clear that it intends to use this authority to
`encourage early requests for joinder and to discourage late requests.”471 He also
`noted the following litany of factors that the USPTO had informally indicated
`that it would consider when deciding whether and when to allow joinder:
`differences in the products or processes alleged to infringe; the breadth or unusualness
`of the claim scope that is alleged, particularly if alleged later in litigation; claim-
`construction rulings that adopt claim interpretations that are substantially different
`from the claim interpretatio used in the first petition when that petition’s interpretation
`was not manifestly in error; whether large numbers of patents or claims are alleged to
`be infringed by one or more of the defendants; consent of the patent owner; a request
`of the court; a request by the first petitioner for termination of the first review in view
`of strength of the second petition; and whether the petitioner has offered to pay the
`patent owner’s costs.472
`Finally, in his 2008 remarks on a substantially identical joinder provision
`in the bill that he introduced that year, Senator Kyl commented on the
`requirement that a joinder petition be “properly file[d].”473 He noted that
`these words were a term of art that had been given meaning in three recent
`cases,474 and that
`[t]he gist of these decisions is that a petition is properly filed when it is delivered and
`accepted in compliance with applicable rules governing filings, though particular
`
`467 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl).
`468 See id.
`469 Id.
`470 Id. (noting that this time limit is set pursuant to 35 U.S.C. § 316(a)(5)).
`471 Id.
`472 Id.
`473 154 Cong. Rec. S9988 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl). The sub-
`stantially identical provision is in S. 3600, 110th Cong. sec. 5(c), § 325(b) (2008).
`474 154 Cong. Rec. S9988 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl). The three
`cases that Senator Kyl cited are Artuz v. Bennett, 531 U.S. 4 (2000); Allen v. Siebert, 552
`U.S. 3 (2007); and Pace v. DiGuglielmo, 544 U.S. 408 (2005).
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`614 The Federal Circuit Bar Journal Vol. 21, No. 4
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`claims within filings be barred on other procedural grounds, and that time deadlines
`for filing petitions must be complied with in all cases.475
`
`8. 35 U.S.C. §§ 315(d) and 325(d): Multiple Proceedings and
`Repetitive Challenges
`As noted in the final Committee Report, §§ 315(d) and 325(d) allow the
`USPTO to “consolidate multiple proceedings or matters concerning the same
`patent and decline requests for repeated proceedings on the same question.”476
`Of particular note is the second sentence of § 325(d), which provides:
`In determining whether to institute or order a proceeding under this chapter, chapter
`30, or chapter 31, the Director may take into account whether, and reject the petition
`or request because, the same or substantially the same prior art or arguments previously
`were presented to the Office.477
`During the March 2011 debates, Senator Kyl stated that this provision
`“allows the Patent Office to reject any request for a proceeding, including
`a request for ex parte reexamination, if the same or substantially the same
`prior art or arguments previously were presented to the Office with respect
`to that patent.”478 Senator Kyl also commented on the interplay between this
`provision and the administrative estoppel created by subsection (e)(1) of
`§§ 315 and 325:
`The second sentence of section 325(d) complements the protections against abuse of
`ex parte reexamination that are created by sections 315(e) and 325(e). The estoppels
`in subsection (e) will prevent inter partes and post-grant review petitioners from
`seeking ex parte reexamination of issues that were raised or could have been raised
`in the inter partes or post-grant review. The Office has generally declined to apply
`estoppel, however, to an issue that is raised in a request for inter partes reexamination
`if the request was not granted with respect to that issue. Under section 325(d), second
`sentence, however, the Office could nevertheless refuse a subsequent request for ex
`parte reexamination with respect to such an issue, even if it raises a substantial new
`question of patentability, because the issue previously was presented to the Office in
`the petition for inter partes or post-grant review.479
`As noted previously,480 the second sentence of § 325(d) effectively replaces,
`for inter partes and post-grant review, the “newness” test that was imposed
`
`475 154 Cong. Rec. S9988 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl).
`476 H.R. Rep. No. 112-98, at 76 (2011); see also 154 Cong. Rec. S9988 (daily ed. Sept.
`27, 2008) (statement of Sen. Kyl) (commenting on a parallel provision in S. 3600, 110th
`Cong. (2008): “Section [325(d)] gives the PTO broad discretion to consolidate, stay, or
`terminate any PTO proceeding involving a patent if that patent is the subject of a postgrant
`review proceeding.”).
`477 Leahy-Smith America Invents Act, sec. 6(d), § 325(d), 125 Stat. at 308.
`478 157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl).
`479 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl).
`480 See supra notes 438–441 and accompanying text).
`
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