tinitnl �tatrs �matt
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`COMMITTEE ON THE JUDICIARY
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`WASHINGTON, DC 2051�275
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`VIA ELECTRONIC TRANSMISSION
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`November 2, 2021
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`Mr. Andrew Hirshfeld
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`Commissioner for Patents
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`Performing· the Functions and Duties of the
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`Under Secretary of Commerce for Inteliectual Property and
`Director
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`600-Dulany St.
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`A1exandria� VA 22314
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`U.S. Patent and Trademark Office
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`DearActing Director Hirshfeld:
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`of the ("PT AB") application I �ite 'you today regarding the Patent Trial and Appeal Board's
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`precedenti_al decision in Apple Inc. v. Fintiv,
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`Jnc.1 While I strongly believe in the policies and
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`utility of Fintiv, I am concerned about how its current application is impacting patent litigation in
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`a single federal judicial district.
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`As you know, Fintiv instructs the PTAB not to institute an Inter Partes Review ("IPR")
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`procedure to challenge a patent's validity if the panel deems it to be more efficient to allow
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`parallel district court litigation to proceed based on a balancing test comprising six non­
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`dispositive factors.· Again, while I strongly support the policies underlying Fintiv, my concern
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`relates to the PT AB' s application of the second of these factors: the proximity of the court's trial
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`date to the PTA.B's projected statutory deadline for a final written decision. Specifically, I am
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`concerned that the PTAB 's historical practice of crediting unrealistic trial schedules. This has not
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`only produced outcomes that are untethered from the policy underpinnings of the Fintiv rule, but
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`it has also created harmful incentives for forum shopping and inappropriate judicial behavior.
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`The negative consequences are most pronounced in the Waco Division of the U.S. District Court
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`for the Western District of Texas. The sole judge in that division schedules very early trial dates
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`for all patent cases assigned to him. Often, these dates prove to be not just umealistic, but they
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`impossible to fulfill as multiple conflicting trials are frequently scheduled to occur on the same
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`date before the same judge in the same courtroom. However, because PTAB panels interpret
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`Fintiv to require scheduled trial dates to be taken at face value, panels have regularly exercised
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`discretion to deny institution of IPRs in deference to litigation pending before that district.
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`To be clear, I believe judicial conduct is partly to blame for this situation. Once a case has been
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`filed in the Waco Division, many defendants have found it all but impossible to persuade the
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`1 IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (designated precedential on May 5, 2020).
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`1
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`IPR2022-00208
`Apple EX1024 Page 1
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`division's sole judge to transfer the case to a more appropriate venue. In denying such transfers,
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`2 This misconduct
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`the court has repeatedly ignored binding case law and abused his discretion.
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`has resulted in a flood of mandamus petitions being filed at the Federal Circuit. The Federal
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`Circuit has been compelled to correct his clear and egregious abuses of discretion by granting
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`mandamus relief and ordering the transfer of cases no fewer than 15 times in just the past two
`years.3
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`Notably, in granting these petitions, the Federal Circuit has cast grave doubt on the reliability of
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`the Waco Division's trial schedules and claims regarding efficiency of adjudication. The
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`appellate comi has strongly criticized the division's improper reliance on purportedly greater
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`"congestion" in transferee comis in attempting to justify inappropriate denials of transfers under
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`28 U.S.C. § 1404(a). More specifically, the Federal Circuit has refused to credit the division's
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`overly optimistic assumptions regarding the time-to-trial in cases, admonishing the division's
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`judge that a "proper analysis" considers "the actual average time to trial rather than aggressively
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`scheduled trial dates. "4 Moreover,
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`the circuit court has also implicitly questioned whether even
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`a more accurate "proper analysis" based on precise caseload counts and the accurate time-to-trial
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`statistics produces a reliable assessment of relative court congestion, characterizing this analysis
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`as mere "speculation. "5
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`These unreliable and "aggressively scheduled trial dates" are the same ones that are relied on by
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`PTAB panels in applying Fintiv. Despite the Federal Circuit's conclusion that these dates are not
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`appropriate indicators of actual time-to-trial and that it is not "proper" to rely on them for
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`purposes of making transfer determinations, PTAB panels have generally continued to rely on
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`these dates and to treat them as credible predictors of time-to-trial for purposes of the Fintiv
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`2 See, e.g., In re: SK Hynix,
`Inc., No. 2021-113 at 2 (Fed. Cir. Feb. 1, 2021) (characterizing the Waco Division's
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`refusal to decide a transfer motion in a timely manner as "amount[ing] to egregious delay and blatant disregard for
`precedent").
`3 See In re DISH Network, LLC, No. 2021-182
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`(Fed. Cir. Oct. 21, 2021);
`Sys., Inc., No. 2021-173,
`In re NetScout
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`2021 WL4771756 (Fed. Cir. Oct. 13, 2021);
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`Media, LLC, No. 2021-172, 2021 WL4772805 (Fed.
`In re Pandora
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`Cir. Oct. 13, 2021); In re Google LLC, No. 2021-171, 2021 WL 4592280 (Fed. Cir. Oct. 6, 2021);
`In re Juniper
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`No. 2021-156, 2021 WL 4519889 (Fed. Cir. Oct. 4, 2021);
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`No. 2021-187, 2021 WL
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`Networks, Inc.,
`In re Apple,
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`4485016 (Fed. Cir. Oct. 1, 2021); In re Google LLC, No. 2021-170, 2021 WL 4427899 (Fed. Cir. Sep. 27, 2021);
`In
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`No. 2021-160, 2021 WL 4343309 (Fed. Cir. Sep. 24, 2021); In re Hutu, LLC, No. 2021-142,
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`re Juniper Networks,
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`2021 WL 3278194 (Fed. Cir. Aug. 2, 2021);
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`Inc., 852 F.App'x 542 (Fed. Cir. 2021);
`In re Uber Techs.,
`In re
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`Co., Ltd., 2 F.4th 1371 (Fed. Cir. 2021);
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`852 F.App'x 537 (Fed. Cir.
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`Samsung Elecs.
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`In re TracFone Wireless, Inc.,
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`20p); !111:e Apple Inc.,. 979 F.3d _1332_ (Fed. Cir. 2020);
`978 F.3d 1308 (Fed. Cir. 2020);
`In re Nitro Fluids LLLC,
`In
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`reAdooelnc., 823 F:App'x 929 (Fed. Cir. 2020).
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`Inc., No. 2021-156, 2021 WL 4519889 (Fed. Cir. Oct. 4, 2021) (citing
`2021
`4 In re Juniper Networks,
`in re Juniper,
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`WL 4343309, at *6) (emphasis added).
`5 In re Google LLC, No. 2021-170, 2021 WL 4427899 at 15 (Fed. Cir. Sep. 27, 202 l)(holding that "the district
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`court's speculation about what might happen with regard to the speed of adjudication is plainly insufficient to
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`wan-ant keeping this case in the Texas forum"); see also id.at 14 ("Where, as here, the district court has relied on
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`median time-to-trial statistics to support its conclusion as to court congestion, we have characterized this factor as
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`the 'most speculative' of the factors bearing on the transfer decision.") (internal citations omitted);
`In re Juniper
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`at 7 (characterizing comt congestion as the "most speculative" of the transfer factors) (quoting
`Networks
`In re
`Inc., 566 F.3d 1338, 1347 (Fed. Cir. 2009)).
`Genentech,
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`2
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`IPR2022-00208
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`6 While I strongly support the policy and principles underlying Fintiv, this particular
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`analysis.
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`practice seems wrong.
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`Based on the facts currently available to me, it is difficult to imagine any plausible justification
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`for the continued reliance on the demonstrably inaccurate trial dates set by the Waco Division. I
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`therefore ask that you undertake a study and review of this matter and consider whether Fintiv
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`should be modified to account for umealistic trial scheduling. I ask that you complete this review
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`and implement appropriate reforms based on your findings by no later than December 31, 2021.
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`Thank you for your prompt attention to this matter. I look forward to your reply. If you have any
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`questions, please do not hesitate to contact me.
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`Sincerely,
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`Thorn Tillis
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`Ranking Member
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`Subcommittee on Intellectual Property
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`6 Despite the unreliability of scheduled trial dates, PTAB panels nevertheless "usually take courts' trial schedules at
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`face value." Quest Diagnostics Incorporated v. Ravgen, Inc., IPR202 l-00788, Paper 23 at 31 (PTAB October 19,
`2021).
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`IPR2022-00208
`Apple EX1024 Page 3
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