`
`
`
`No. 21-888
`IN THE
`Supreme Court of the United States
`_______________
`
`INTEL CORPORATION,
`
`Petitioner,
`
`
`JONATHAN STROUD
`JUNG HAHM
`
`UNIFIED PATENTS LLC
`4445 Willard Avenue
`Suite 600
`Chevy Chase, MD 20815
`(202) 805-8931
`
`WILLIAM G. JENKS
`Counsel of Record
`
`
`JENKS IP LAW PLLC
`1629 K ST., NW
`Suite 300
`Washington, D.C. 20006
`wjenks@jenksiplaw.com
`(202) 412-7964
`Counsel for Amici Curiae
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`VLSI TECHNOLOGY LLC, ET AL.
`Respondents.
`
`On Petition For A Writ Of Certiorari
`To The United States Court Of Appeals
`For The Federal Circuit
`
`BRIEF OF UNIFIED PATENTS, LLC, THE
`ALLIANCE FOR AUTOMOTIVE INNOVATION,
`AND CABLE TELEVISION LABORATORIES, INC.
`AS AMICI CURIAE
`IN SUPPORT OF PETITIONER
`
`
`MemoryWeb Ex. 2118
`Apple v. MemoryWeb - IPR 2022-00031
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`TTABLE OF CONTENTS
`INTERESTS OF AMICI CURIAE .............................. 1
`SUMMARY OF ARGUMENT ..................................... 4
`ARGUMENT ............................................................... 6
`I. THE QUESTION PRESENTED AFFECTS THE
`MAJORITY OF CASES IN THE NATION’S BUSIEST
`PATENT VENUE ................................................ 6
`A. The PTAB’s use of discretion to deny
`meritorious petitions has exploded ......... 8
`B. Nonstatutory factors are driving this
`growth in discretionary denials ............. 10
`C. The Court should not rely on the stale
`“process” proffered by the Government to
`rein in agency discretion ........................ 13
`II. THE PTAB PRECEDENTIAL DECISIONS ABUSE
`STATUTORY DISCRETION ................................ 16
`III. CONGRESS GRANTED THE DIRECTOR A SAFETY
`VALVE TO CONTROL THE PTAB’S BACKLOG,
`NOT A TOOL FOR MAKING POLICY ................. 21
`IV. THE FEDERAL CIRCUIT MAY ADDRESS THIS
`ABUSE ............................................................ 24
`CONCLUSION .......................................................... 27
`
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`ii
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`TTABLE OF AUTHORITIES
`
`Cases
`Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`2020 WL 2126495 (PTAB Mar. 20,
`2020) ........................................................... 9, 10, 11
`Cardinal Chem. Co. v. Morton Int'l, Inc.,
`508 U.S. 83 (1993) .................................................. 6
`Chevron, U.S.A., Inc. v. Nat. Res. Def.
`Council, Inc., 467 U.S. 837 (1984) ....................... 15
`Cooper Techs. Co. v. Dudas, 536 F.3d 1330
`(Fed. Cir. 2008) .................................................... 21
`Cuozzo Speed Techs., LLC v. Lee, 579 U.S.
`261 (2016) ................................. 5, 15, 16, 21, 25, 26
`Flight Attendants v. Zipes, 491 U.S. 754
`(1989) .................................................................... 16
`Halo Elecs., Inc. v. Pulse Elecs., Inc., 579
`U.S. 93 (2016) ....................................................... 16
`Martin v. Franklin Cap. Corp., 546 U.S.
`132 (2005) ............................................................. 16
`NHK Spring Co. v. Intri-Plex
`Technologies, Inc., No. IPR2018-00752,
`2018 WL 4373643 (PTAB. Sept. 12,
`2018) ................................................................. 9, 10
`Petrella v. Metro-Goldwyn-Mayer, Inc.,
`572 U.S. 663 (2014) .................................... 5, 18, 19
`SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348
`(2018) ........................................................ 16, 21, 25
`SCA Hygiene Prod. Aktiebolag v. First
`Quality Baby Prod., LLC, 137 S. Ct. 954
`(2017) .................................................................... 19
`SCA Hygiene Prod. Aktiebolag v. First
`Quality Baby Prod., LLC, 767 F.3d
`1339 (Fed. Cir. 2014) ....................................... 5, 18
`
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`SCA Hygiene Prod. Aktiebolag v. First
`Quality Baby Prod., LLC, 807 F.3d
`1311 (Fed. Cir. 2015) (en banc) ........................... 18
`Thryv, Inc. v. Click-to-Call Techs., LP, 140
`S. Ct. 1367 (2020) ........................................... 25, 26
`Unified Patents, LLC. v. Uniloc USA, Inc.
`et al., IPR2018-00199 (PTAB May 31,
`2019) ....................................................................... 2
`United States v. Arthrex, Inc., 141 S. Ct.
`1970 (2021) ........................................................... 25
`Whitman v. Am. Trucking Associations,
`531 U.S. 457 (2001) .............................................. 16
`SStatutes
`28 U.S.C. § 1295(a) ...................................................... 6
`35 U.S.C. § 2(b)(2)(B) ................................................ 15
`35 U.S.C. § 311(a) ................................................ 17, 26
`35 U.S.C. § 312(a) (2010) .......................................... 21
`35 U.S.C. § 313 (2010) ............................................... 21
`35 U.S.C. § 314(a) .................. 7, 8, 9, 11, 15, 16, 22, 26
`35 U.S.C. § 314(d) ................................................ 24, 25
`35 U.S.C. § 315(b) .......................................... 15, 17, 19
`35 U.S.C. § 315(c) ...................................................... 22
`35 U.S.C. § 316(a)(11) ......................................... 13, 23
`35 U.S.C. § 316(a)(2) ................................................. 15
`35 U.S.C. § 316(b) ...................................................... 22
`35 U.S.C. § 325(d) ...................................................... 20
`35 U.S.C. § 6(a) .......................................................... 26
`Leahy-Smith America Invents Act sec.
`6(c)(2)(B), Pub. L. No. 112-29, 125 Stat.
`284, 304 (2011) ..................................................... 22
`Other Authorities
`157 Cong. Rec. S1376 (daily ed. Mar. 8,
`2011) ..................................................................... 23
`
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`157 Cong. Rec. S1377 (daily ed. Mar. 8,
`2011) ..................................................................... 22
`H.R. Rep. No. 112-98, pt. 1 (2011) ............................ 26
`James Donald Smith, Patent Trial and
`Appeal Board Update 20 (Nov. 21,
`2013)
`available
`at
`https://www.uspto.gov/sites/default/file
`s/documents/20131121_PPAC_PTABU
`pdate.pdf ............................................................... 23
`Joe Matal, A Guide to the Legislative
`History of the America Invents Act:
`Part II of II, 21 Fed. Cir. B. J. 539
`(2012) .................................................................... 22
`John O. Curry, Comment, Avoiding
`Responsibility: The Case for Amending
`the Duty to Disclose Prior Art in Patent
`Law, 95 Wash. L. Rev. 1031 (2020) ..................... 14
`Request for Comments on Discretion To
`Institute Trials Before the Patent Trial
`and Appeal Board, 85 Fed. Reg. 66,502
`(Oct. 20, 2020) .......................................... 13, 14, 15
`Ryan Davis, Iancu Leaves Pro-Patentee
`Legacy As USPTO Director, Law360
`(Jan. 21, 2021) ...................................................... 14
`Unified Patents, 2020 Patent Dispute
`Report: Year in Review, (Jan. 1, 2021)
`available
`at
`https://www.unifiedpatents.com/insigh
`ts/2020-patent-dispute-report-year-in-
`review (“2020 Patent Year in Review”) ................. 8
`Unified Patents, 2021 Patent Dispute
`Report: Third Quarter in Review (Sept.
`30,
`2021)
`available
`at
`https://www.unifiedpatents.com/insigh
`ts/2021-patent-dispute-report-third-
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`Third
`(“2021
`quarter-in-review
`Quarter Review”) ............................................... 2, 9
`Unified Patents, 2021 Patent Dispute
`Report: Year in Review, (Jan. 3, 2022)
`available
`at
`https://www.unifiedpatents.com/insigh
`ts/2022/1/3/2021-patent-dispute-
`report-year-in-review
`(“2021 Patent
`Year in Review”)................................................. 2, 6
`USPTO, Inter Partes Reexamination
`Filing Data—September 30,
`2017,
`available
`at
`https://www.uspto.gov/sites/default/file
`s/documents/inter_parte_historical_sta
`ts_roll_up.pdf ....................................................... 21
`RRegulations
`37 C.F.R. § 1.56(b) ..................................................... 14
`37 C.F.R. § 1.56(b) (2011) .......................................... 14
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`BBRIEF OF UNIFIED PATENTS, LLC, THE
`ALLIANCE FOR AUTOMOTIVE INNOVATION, AND
`CABLE TELEVISION LABORATORIES, INC.
`AS AMICI CURIAE
`IN SUPPORT OF PETITIONER
`
`INTERESTS OF AMICI CURIAE1
`Unified Patents, LLC
`is a membership
`organization dedicated to deterring abusive non-
`practicing entities, or NPEs, from extracting nuisance
`settlements from operating companies based on
`patents that are likely invalid. Unified’s 250-plus
`members are Fortune 500 companies, start-ups,
`automakers,
`industry groups, cable companies,
`banks, manufacturers, and others dedicated to
`reducing the drain on the U.S. economy of now-
`routine baseless litigations asserting infringement of
`patents of dubious validity.
`Unified studies
`the ever-evolving business
`models, financial backings, and practices of NPEs.
`Unified monitors ownership data, secondary-market
`patent sales, demand letters, post-grant procedures,
`and patent litigation to track NPE activity. See, e.g.,
`Unified Patents, 2021 Patent Dispute Report: Year in
`Review
`(Jan.
`3,
`2022) available at
`https://www.unifiedpatents.com/insights/2022/1/3/20
`21-patent-dispute-report-year-in-review
`(“2021
`
`1 Pursuant to this Court’s Rule 37.2(a), all parties received
`timely notice of and consented in writing to the filing of this brief.
`Pursuant to this Court’s Rule 37.6, amici states that this brief
`was not authored in whole or in part by counsel for any party,
`and that no person or entity other than amici or their counsel
`made a monetary contribution intended to fund the preparation
`or submission of this brief.
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`2
`
`Patent Year in Review”); Unified Patents, 2021 Patent
`Dispute Report: Third Quarter in Review (Sept. 30,
`2021)
`available
`at
`https://www.unifiedpatents.com/insights/2021-
`patent-dispute-report-third-quarter-in-review (“2021
`Third Quarter Review”).
`Unified also files post-issuance administrative
`challenges—including inter partes review (“IPR”)
`petitions—against NPE patents
`it believes are
`unpatentable or
`invalid.
` This
`includes both
`international
`and
`domestic
`administrative
`challenges. Thus, Unified seeks to deter the assertion
`of poor-quality patents. Unified acts and litigates
`independently from its members. See, e.g., Unified
`Patents, LLC. v. Uniloc USA, Inc. et al., IPR2018-
`00199, Paper No. 33, 10 (PTAB May 31, 2019)
`(Unified members not real parties in interest to IPRs
`filed by Unified); id. (collecting PTAB decisions). In
`2021, Unified was the fifth most frequent IPR
`petitioner, and it was by far the leading third-party
`filer. 2021 Patent Year in Review, Fig. 18. Here,
`Unified is concerned with ensuring that IPR and other
`related Patent Office proceedings remain fair and
`cost-effective tools for any member of the public to
`protect itself from improperly issued patent claims.
`The Alliance for Automotive Innovation (“Auto
`Innovators”) is comprised of the manufacturers
`producing nearly 99% of new cars and light trucks
`sold in the U.S. as well as original equipment
`suppliers, technology and other automotive-related
`companies, and trade associations. Auto Innovators
`works with policymakers to support cleaner, safer,
`and smarter personal transportation that transforms
`the U.S. economy and sustains American ingenuity
`
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`and freedom of movement. Automakers invest
`billions each year in new technologies, including fuel-
`saving technologies, such as electrification, to
`transition to a low-carbon transportation future. A
`robust patent system—supported by high-quality
`patents that spur, not block, innovation—is essential
`to support and maintain America’s leadership in
`automotive innovation. Auto companies are major
`inventors, regularly appearing in the Patent Office’s
`“top-30” lists, and own hundreds of thousands of
`patents, which they rely on to protect their
`innovations. At the same time, auto companies are
`also increasingly subject to attacks from bad actors
`who allege patent infringement using low-quality
`patents that should never have issued. The Patent
`Office’s post-issuance proceedings are crucial to this
`system. The PTAB should not use discretion to
`routinely dismiss IPR petitions from members of the
`public that qualify under the statute. This lowers
`patent quality and hurts innovation in the American
`economy.
`Cable Television Laboratories, Inc. (“CableLabs”)
`is a nonprofit non-stock company qualified under the
`National Cooperative Research and Production Act.
`CableLabs has over 60 member companies worldwide,
`including members who represent approximately 85%
`of U.S. cable subscribers. The cable industry supports
`over 2.9 million jobs and contributes $421 billion to
`the U.S. economy. CableLabs’ members have faced
`numerous NPE suits.
` They understand NPE
`litigation, the evolving NPE business model, and the
`need for a less expensive alternative to litigation
`provided by
`the Patent Office’s post-issuance
`proceedings. That alternative is threatened, however,
`
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`by the overuse of agency discretion to dismiss those
`proceedings despite the statutory standards.
`SSUMMARY OF ARGUMENT
`patent
`Congress
`designed
`post-issuance
`proceedings to allow any interested member of the
`public to challenge a patent before the expert agency
`that issued it. When an operating company is sued on
`a patent that the company believes should not have
`issued, it uses these proceedings to petition the
`Government for redress. In IPR proceedings, the
`petition must show a reasonable
`likelihood of
`prevailing with respect to at least one challenged
`patent claim. Otherwise, the agency may not institute
`a review.
`Congress also limited the time for filing the IPR
`petition with the Patent Office. By statute, any
`person that doesn’t own the patent may file an IPR
`petition. But, if that person is an accused infringer,
`they have one year from service of the infringement
`complaint to file their petition. This one-year limit is
`effectively a statute of limitations on bringing post-
`issuance patent proceedings by accused infringers.
`The Patent Office, however, disagrees with
`congressional judgment regarding timeliness. Rather
`than honor the hard-and-fast time limit, the Office
`invokes its discretion to dismiss petitions brought too
`close to the district court trial date or that challenge
`patents that the district court has begun to consider.
`Amici recognize the Patent Office has some
`discretion on institution decisions. But it does not
`have discretion unbound and severed from the
`statute. The agency’s use of other timeliness “factors”
`in deciding whether to institute undermines the
`
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`statutory one-year bar. In Petrella and SCA, this
`Court made clear
`that courts may not use
`discretionary timeliness doctrines to negate hard-and-
`fast time limits set by Congress. No different rule
`should apply to the Patent Office.
`The Patent Office’s approach is an abuse of
`discretion. First, the agency uses discretion to
`supplant the time limit set by Congress. Second, even
`if there were a statutory gap, the agency does not
`promulgate regulations to fill that gap. Finally, a
`review of the statute and its legislative history shows
`that Congress intended the agency’s discretion to be a
`“safety valve” that could protect the PTAB from being
`overwhelmed by a backlog of IPR petitions. A hefty
`IPR backlog—like the then-existing backlog for ex
`parte appeals to the PTAB—could prevent the agency
`from completing the proceedings in the one year
`allotted for issuing a final written decision.
`The Federal Circuit incorrectly ruled that the
`courts could not even consider this abuse of discretion.
`See App. 4a-5a. As Petitioner demonstrates, that is
`incorrect. Direct appeal is available under Cuozzo,
`which reserved the courts’ ability to review questions
`of interpretation that have an impact beyond the
`individual institution decision. Here, the agency’s
`interpretation of the scope of its discretion has
`changed hundreds of institution decisions. In the
`alternative, mandamus is available to ensure that
`IPR petitioners receive the statutory year-to-file they
`are entitled to under the statute.
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` ARGUMENT
`I. THE QUESTION PRESENTED AFFECTS THE
`MAJORITY OF CASES IN THE NATION’S BUSIEST
`PATENT VENUE
`The Federal Circuit has exclusive jurisdiction
`over nearly all patent appeals, including all appeals
`from inter partes review, post-grant review, and
`reexamination of issued patents. See 28 U.S.C.
`§ 1295(a). Because of that exclusivity, the Federal
`Circuit’s rules are “a matter of special importance to
`the entire Nation.” See Cardinal Chem. Co. v. Morton
`Int'l, Inc., 508 U.S. 83, 89 (1993).
`That importance is heightened when the Federal
`Circuit refuses to hear an entire class of PTAB
`appeals. The PTAB is the Nation’s busiest venue for
`patent disputes. See 2021 Patent Year in Review, Fig.
`3 (reproduced below). In 2021, the PTAB received
`over 1,300 challenges to issued patents, primarily in
`the form of IPR petitions. Id. By comparison, no
`district court received even 1,000 patent complaints.
`And only two such courts received over 500
`complaints.
`
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`Moreover, most PTAB cases—85% by the Patent
`Office’s last count—have a co-pending district court
`litigation. See, e.g., David Ruschke & Scott R.
`Boalick, PTAB Update (Nov. 9, 2017), available at
`https://www.uspto.gov/sites/default/files/documents/2
`0171109_PPAC_PTAB_Update.pdf
`(“Approximately
`85% of IPRs in Fiscal Year 2017 have a co-pending
`district court case”). In many of these cases, the court
`stays proceedings until the PTAB completes its work.
`In many others, the district court proceeds after
`setting a trial date that appears to promise a speedy
`resolution.
`in each case with co-pending
`Regardless,
`proceedings in the courts and the Patent Office, IPR
`petitioners are forced to address and accommodate the
`discretionary factors found only in PTAB opinions.
`Otherwise, they risk non-institution even when their
`petition satisfies the statutory standards, including
`showing a “reasonable likelihood” of success on the
`merits. See 35 U.S.C. § 314(a). And the risk of non-
`institution, despite the merits, has soared.
`
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`AA. The PTAB’s use of discretion to deny
`meritorious petitions has exploded
`Until recently, the PTAB rarely invoked the
`Director’s discretion under Section 314(a). In 2016,
`for example, the PTAB denied just six petitions using
`Section 314(a) discretion. See Unified Patents, 2020
`Patent Dispute Report: Year in Review, (Jan. 1, 2021)
`available
`at
`https://www.unifiedpatents.com/insights/2020-
`patent-dispute-report-year-in-review (“2020 Patent
`Year in Review”), Fig. 14 (reproduced below). The
`PTAB’s prior restrained and measured use of Section
`314(a)
`discretion
`reflected
`congressional
`understanding that Section 314(a) was to be invoked
`sparingly and then only to control the PTAB’s docket.
`See Section III, infra.
`But today, the PTAB far too frequently invokes
`discretion to deny meritorious petitions. The PTAB
`uses discretion to dismiss over 10% of petitions. In
`2020, the PTAB rejected over 160 challenges under
`Section 314(a) by invoking the Director’s discretion.
`2020 Patent Year in Review, Fig. 14.
`
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`
`This enormous number of dismissals reflects a
`stark change in agency policy and a dramatically
`expanded use of discretionary denials. Starting in
`2018, the PTAB’s promulgation of a list of explicit
`factors to consider for discretionary denial (“NHK-
`Fintiv” or “Fintiv” factors) has led this explosion of
`discretionary denials. See NHK Spring Co. v. Intri-
`Plex Technologies, Inc., No. IPR2018-00752, 2018 WL
`4373643 (PTAB. Sept. 12, 2018); Apple Inc. v. Fintiv,
`Inc., IPR2020-00019, 2020 WL 2126495 (PTAB
`Mar. 20, 2020). By 2019, there were 84 Section 314(a)
`denials. Id. In 2020, Section 314(a) discretionary
`denials nearly doubled 2019’s record.2
`Parsing these denials further, the use of the NHK-
`Fintiv factors—challenged here—form the dominant
`framework for discretionary denials. See 2021 Third
`Quarter Review, Fig. 18 (reproduced below). While
`overall discretionary denials were down in 2021,
`
`
`2 Before 2016, the PTAB used this discretion so rarely that Amici
`are unaware of any study that analyzed discretionary denials.
`
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`NHK-Fintiv denials continued apace. The first three-
`quarters of 2021 saw nearly as many such NHK-
`Fintiv denials as all of 2020, which was by far the
`record year.
`
`
`
`The drop in overall denials appears attributable
`to lower numbers of two other types of discretionary
`denials—follow-on petition (“General Plastic”) denials
`and parallel petition denials. Though these types of
`discretionary denials are not at issue here, the lower
`numbers likely reflect IPR petitioners deciding not to
`bother filing certain types of petitions allowed by
`statute because of the likelihood of their denial using
`other nonstatutory factors. This would be consistent
`with the overall reduction in IPR petitions since 2018
`and the drop-off between 2020 and 2021. See 2021
`Patent Year in Review, Fig. 12 (reproduced in Section
`III, infra).
`BB. Nonstatutory factors are driving this
`growth in discretionary denials
`As Petitioner explains, the PTAB’s precedential
`decisions in NHK and Fintiv have introduced new
`
`
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`factors that weigh against IPR petitions that meet all
`statutory requirements, including, most importantly,
`satisfying the substantive standard for institution.
`See Pet. at 9-10; 35 U.S.C. § 314 (“a reasonable
`likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged”). Under
`Fintiv, the PTAB must consider six factors when it
`reviews a petition challenging a patent that is
`involved in an infringement suit.
`
`1. whether the court granted a stay or
`evidence exists that one may be
`granted if a proceeding is instituted;
`
`2. proximity of the court’s trial date to
`the Board’s projected
`statutory
`deadline for a final written decision;
`
`parallel
`the
`in
`3. investment
`proceeding by the court and the
`parties;
`
`4. overlap between issues raised in the
`petition
`and
`in
`the
`parallel
`proceeding;
`
`5. whether the petitioner and the
`defendant in the parallel proceeding
`are
`the
`same
`party;
`and
`
`6. other circumstances that impact
`the Board’s exercise of discretion,
`including the merits.
`See Apple v. Fintiv, 2020 WL 2126495, at *2.
`
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`Notably, the PTAB treats “the merits” as but one
`part of the sixth factor in considering discretionary
`denial in view of parallel district court proceedings
`under Fintiv. This approach reduces the main
`congressional concern—removing
`invalid patents
`from the economy—to an afterthought among a
`laundry list of nonstatutory factors. The Patent Office
`uses these nonstatutory factors to close its door to
`meritorious petitions. Petitions of a type that had
`been successfully protecting the public from invalid
`patents for many years before this explosive growth of
`discretionary denials.
`Fintiv factor two—the proximity of the trial date
`the PTAB’s
`statutory deadline—effectively
`to
`insulates plaintiffs that file in certain district courts
`from IPRs. See Pet. at 31-32. These courts set
`aggressive—sometimes fanciful—trial dates then
`revisit those dates after the Board uses discretion to
`deny a petition. Id.; id. at 12-13.
`The PTAB’s use of this factor is particularly
`troubling, given the ephemeral nature of the promised
`trial dates and uncertainty over venue in the Nation’s
`busiest patent district court. See, e.g., In re Apple
`Inc., 979 F.3d 1332, 1344 n.5 (Fed. Cir. 2020). As the
`Federal Circuit clarified for the Western District of
`Texas in the venue context, “scheduled trial dates are
`often subject to change.” Id. Especially when “the
`district court’s anticipated time to trial is significantly
`shorter than the district’s historical time to trial.” Id.
`The PTAB understands how long IPRs take and
`whether the Board can complete its work in the
`statutory time frame. Hence, the power to extend the
`statutory time limit for good cause and the discretion
`to deny petitions that threaten to overwhelm the
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`PTAB. See 35 U.S.C. § 316(a)(11). But, as shown in
`the Petition, the PTAB does not have particular
`expertise in predicting district court schedules. Pet.
`at 31-32.
`CC. The Court should not rely on the stale
`“process” proffered by the Government to
`rein in agency discretion
`In the parallel cases, the Government downplays
`the importance of the question presented, relying
`partly on a “pending agency process” that looks a little
`like notice-and-comment rulemaking but is not. See
`Mylan Labs Ltd. v. Janssen Pharma, N.V., No. 21-
`202, Brief for the Federal Respondent in Opposition
`at 20-21 (Nov. 2021); Apple Inc. v. Optis Cellular
`Tech. LLC, No. 21-118, Brief
`for the Federal
`Respondent in Opposition at 20-21 (Oct. 2021). The
`Court should not hesitate to grant certiorari here
`based on the cited process.
`First, there is no guarantee that the process will
`result in any changes to Patent Office practice or that
`the new Director will even continue the process. The
`Patent Office is no longer “currently soliciting” public
`comments. See Apple v. Optis, Fed. BIO at 20-21.
`The comment period closed over a year ago with no
`further action. In October 2020, the Patent Office
`issued a “Request for Comments on Discretion To
`Institute Trials Before the Patent Trial and Appeal
`Board.” 85 Fed. Reg. 66,502 (Oct. 20, 2020). The
`Office gave the public 30 days to respond and later
`extended that deadline by two weeks until Dec. 3,
`2020. See 85 Fed. Reg. 73437 (Nov. 18, 2020)
`(“Written comments must be received on or before
`December 3, 2020.”). Thus, it has been over a year
`since the comment period closed. In addition, the
`
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`Request was issued under the former head of the
`Patent Office, who resigned in January of 2021. See
`Ryan Davis, Iancu Leaves Pro-Patentee Legacy As
`USPTO Director, Law360 (Jan. 21, 2021).
`Such stale administrative requests may simply be
`left to languish. For example, in Sony Computer
`Entertainment America LLC v. 1st Media, LLC,
`No. 12-1086, this Court invited the views of the
`Solicitor General on a question of equitable remedies
`where a patent applicant has violated the Patent
`Office’s Rule 56 duty of candor. See Order List
`(May 13, 2013); see also Sony Computer, No. 12-1086,
`Petition for Writ of Certiorari at i. The Government
`recommended against certiorari, in part, because
`“[a]n ongoing PTO rulemaking may also impact the
`materiality component of the inequitable-conduct
`doctrine.” Sony Computer, No. 12-1086, Brief for the
`United States as Amicus Curiae at 19 (Sept. 2013)
`(citing 76 Fed. Reg. 43,632 (Jul. 21, 2011)). That
`Federal Register Notice was a “Notice of proposed
`rulemaking” and not a mere “Request for Comments.”
`See 76 Fed. Reg. at 43,632, col. 2. Nevertheless, the
`proposed rule was not implemented. The relevant
`section of Rule 56 remains unchanged. Compare 37
`C.F.R. § 1.56(b) with 37 C.F.R. § 1.56(b) (2011). A
`decade later, that process is still “ongoing.” See 81
`Fed. Reg. 74987 (Oct. 28, 2016) (proposing a different
`change to Rule 56(b)); see also John O. Curry,
`Comment, Avoiding Responsibility: The Case for
`Amending the Duty to Disclose Prior Art in Patent
`Law, 95 Wash. L. Rev. 1031, 1050 n.151 (2020)
`(“These changes have yet to be adopted.”).
`Second, the process relied on is a “Request for
`Comments,” not a proposed rule. See 85 Fed. Reg.
`
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`66,502 (Oct. 20, 2020). The Request indicates that the
`Office is merely “considering the codification of its
`current policies and practices, or the modification
`thereof.” Id. at 66,503, col. 1; see also id. at 66,506,
`col. 2, (“Should the Office promulgate a rule with a
`case-specific analysis, such as generally outlined in
`Fintiv…?”).
`Regardless of the public response, the Patent
`Office may consider rule changes unnecessary given
`the Solicitor General’s position that such rulemaking
`“procedures are not required” here. See Mylan v.
`Janssen, Fed. BIO at 19-20; but see 35 U.S.C.
`§ 316(a)(2)
`(requiring the Director to prescribe
`regulations “setting forth the standards for the
`showing of sufficient grounds to institute a review
`under section 314(a)”) and id. at § 2(b)(2)(B)
`(requiring the Patent Office to make its rules under
`general APA constraints).
`Finally, rulemaking is an exercise in gap-filling.
`Chevron, U.S.A., Inc. v. Nat. Res. Def. Council, Inc.,
`467 U.S. 837, 843 (1984). Here, there is no gap to fill.
`Nor does the Request identify any statutory holes that
`need filling by the factors promulgated in the
`precedential decisions. The statutory bar speaks
`directly to the timeliness between PTAB and district
`court proceedings. See 35 U.S.C. § 315(b) (“An inter
`partes review may not be instituted if the petition
`requesting the proceeding is filed more than 1 year
`after the date on which the petitioner … is served with
`a complaint alleging infringement of the patent.”).
`This Court found a similar lacking in SAS, which
`reviewed the Patent Office’s institution policies even
`after Cuozzo. “The Director may (today) think his
`approach makes
`for better policy, but policy
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`considerations cannot create an ambiguity when the
`words on the page are clear.” SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348, 1358 (2018). Here, as in SAS, the
`statute is clear, and the Patent Office has no room to
`codify its current practice, which merely gives PTAB
`panels power to undermine the statute. See id. No
`rulemaking exercise can cure that defect.
`III. THE PTAB PRECEDENTIAL DECISIONS ABUSE
`STATUTORY DISCRETION
`Amici recognize that “the agency’s decision to
`deny a petition is a matter committed to the Patent
`Office’s discretion.” Cuozzo Speed Techs., LLC v. Lee,
`579 U.S. 261, 273 (2016). And that Section 314(a)
`contains “no mandate to institute review.” Id.
`But “[d]iscretion is not whim.” Halo Elecs., Inc. v.
`Pulse Elecs., Inc., 579 U.S. 93, 103 (2016) (quoting
`Martin v. Franklin Cap. Corp., 546 U.S. 132, 139
`(2005)). In American law, “discretion is ‘rarely
`without limits,’ even when the statute ‘does not
`specify any limits.’” Id. (quoting Flight Attendants v.
`Zipes, 491 U.S. 754, 758 (1989)). When granting an
`agency discretion, Congress generally provides
`guidance that instructs the agency and cabins the
`discretion granted. See Whitman v. Am. Trucking
`Associations, 531 U.S. 457, 472-73 (2001). Indeed,
`Congress cannot convey “decisionmaking authority”
`on an agency without laying down an “intelligible
`principle” in the statute to guide that authority. Id.
`at 472. Otherwise, the agency’s authority would rest
`on unconstitutional grounds.
`Here, Congress has
`limited the Director’s
`discretion in multiple ways, though the Patent Office
`does not recognize those limits. Despite Congress’s
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`clear instructions, the PTAB precedential opinions
`extend that discretion to rebalance the statute as
`written—favori
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