‘Anited States Senate
`
`COMMITTEE ON THE JUDICIARY
`
`WASHINGTON, DC 20510-6275
`
`VIA ELECTRONIC TRANSMISSION
`
`November 2, 2021 |
`
`Mr. AndrewHirshfeld
`Commissionerfor Patents |
`Performing the Functions and Duties of the
`Under Secretary of CommerceforIntellectual Propertyand
`Director
`U.S. Patent and Trademark Office
`600 Dulany St.
`Alexandria, VA 22314
`
`DearActing Director Hirshfeld:
`I write youtoday regarding the Patent Trial and peal Board’s (“PTAB”) application ofthe
`precedential decision in Apple Inc. v. Fintiv, Inc.' While I strongly believe in the policies and
`utility of Fintiv, I am concerned about how its current application is impacting patent litigation iin
`a single federal judicial district.
`
`As you know,Fintiv instructs the PTAB notto institute an Inter Partes Review (“IPR”)
`procedure to challenge a patent’s validity if the panel deemsit to be moreefficient to allow
`parallel district court litigation to proceed based ona balancingtest comprising six non-
`dispositive factors. Again, while I strongly support the policies underlying Fintiv, myconcern
`relates to the PTAB’s application of the second ofthese factors: the proximity of the court’s trial
`date to the PTAB’s projected statutory deadline for a final written decision. Specifically, | am
`concerned that the PTAB’s historical practice of crediting unrealistic trial schedules. This has not
`only produced outcomesthat are untethered from the policy underpinningsof the Fintivrule, but
`it has also created harmful incentives for forum shopping and inappropriate judicial behavior.
`
`The negative consequences are most pronounced in the WacoDivisionofthe U.S. District Court
`for the Western District of Texas. The sole judge in that division schedules very early trial dates
`for all patent cases assigned to him. Often, these dates prove to be notjust unrealistic, but they
`impossibleto fulfill as multiple conflictingtrials are frequently scheduled to occur on the same
`date before the same judge in the same courtroom. However, because PTABpanelsinterpret
`Fintiv to require scheduledtrial dates to be taken at face value, panels have regularly exercised
`discretion to denyinstitution of IPRsin deferenceto litigation pending before that district.
`
`To be clear, I believe judicial conductis partly to blame forthis situation. Once a case has been
`filed in the Waco Division, many defendants have foundit all but impossible to persuade the
`
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (designated precedential on May5, 2020).
`
`1
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`APPLE
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`division’s sole judge to transfer the case to a more appropriate venue. In denying suchtransfers,
`the court has repeatedly ignored binding case law and abused his discretion. This misconduct
`has resulted in a flood of mandamuspetitions beingfiled at the Federal Circuit. The Federal
`Circuit has been compelled to correct his clear and egregious abusesofdiscretion by granting
`mandamusrelief and ordering the transfer of cases no fewer than 15 timesin just the past two
`years.?
`
`Notably, in granting these petitions, the Federal Circuit has cast grave doubton the reliability of
`the Waco Division’s trial schedules and claims regarding efficiency of adjudication. The
`appellate court has strongly criticized the division’s improperreliance on purportedly greater
`“congestion” in transferee courts in attempting to justify inappropriate denials of transfers under
`28 U.S.C. § 1404(a). More specifically, the Federal Circuit has refused to credit the division’s
`overly optimistic assumptions regarding the time-to-trial in cases, admonishing the division’s
`judge that a “proper analysis” considers “the actual averagetimetotrial rather than aggressively
`scheduled trial dates.”* Moreover,the circuit court has also implicitly questioned whether even
`a more accurate “proper analysis” based on precise caseload counts and the accurate time-to-trial
`statistics producesa reliable assessmentofrelative court congestion, characterizing this analysis
`as mere “speculation.’”*
`
`These unreliable and “aggressively scheduledtrial dates” are the sameonesthat are relied on by
`PTABpanels in applying Fintiv. Despite the Federal Circuit’s conclusion that these dates are not
`appropriate indicators of actual time-to-trial andthatit is not “proper” to rely on them for
`purposes of makingtransfer determinations, PTAB panels have generally continuedto rely on
`these dates andto treat them as credible predictors of time-to-trial for purposes of the Fintiv
`
`? See, e.g., Inve: SK Hynix, Inc., No. 2021-113 at 2 (Fed. Cir. Feb. 1, 2021) (characterizing the Waco Division’s
`refusal to decide a transfer motion in a timely manneras “amount[ing] to egregious delay andblatant disregard for
`precedent”).
`3 See In re DISH Network, LLC, No. 2021-182 (Fed. Cir. Oct. 21, 2021); In re NetScout Sys., Inc., No. 2021-173,
`2021 WL 4771756 (Fed. Cir. Oct. 13, 2021); Jn re Pandora Media, LLC, No. 2021-172, 2021 WL 4772805 (Fed.
`Cir. Oct. 13, 2021); In re Google LLC, No. 2021-171, 2021 WL 4592280 (Fed.Cir. Oct. 6, 2021); In re Juniper
`Networks, Inc., No. 2021-156, 2021 WL 4519889 (Fed.Cir. Oct. 4, 2021); In re Apple, No. 2021-187, 2021 WL
`4485016 (Fed. Cir. Oct. 1, 2021); Jn re Google LLC, No. 2021-170, 2021 WL 4427899 (Fed. Cir. Sep. 27, 2021); In
`re Juniper Networks, No. 2021-160, 2021 WL 4343309 (Fed. Cir. Sep. 24, 2021); In re Hulu, LLC, No. 2021-142,
`2021 WL 3278194 (Fed. Cir. Aug. 2, 2021); In re Uber Techs., Inc., 852 F.App’x 542 (Fed. Cir. 2021); In re
`Samsung Elecs. Co., Ltd., 2 F4th 1371 (Fed. Cir. 2021); In re TracFone Wireless, Inc., 852 F.App’x 537 (Fed. Cir.
`2021);-In re AppleInc.,979.F.3d 1332 (Fed. Cir. 2020); In re Nitro Fluids LLLC, 978 F.3d 1308 (Fed. Cir. 2020); In
`reAdobe Inc.,823 F.App’x 929 (Fed. Cir. 2020).
`* In re Juniper Networks, Inc., No. 2021-156, 2021 WL 4519889 (Fed. Cir. Oct: 4, 2021) (citing in re Juniper, 2021
`WL 4343309, at *6) (emphasis added).
`° In re Google LLC, No. 2021-170, 2021 WL 4427899 at 15 (Fed. Cir. Sep. 27, 2021) (holding that “the district
`court’s speculation about what might happen with regard to the speed of adjudication is plainly insufficient to
`warrant keeping this case in the Texas forum”); see also id.at 14 (“Where, as here, the district court has relied on
`median time-to-trial statistics to supportits conclusion as to court congestion, we have characterized this factoras
`the ‘most speculative’ of the factors bearingon the transfer decision.”) (internal citations omitted); /m re Juniper
`Networks at 7 (characterizing court congestion as the “most speculative” of the transfer factors) (quoting Jn re
`Genentech, Inc., 566 F.3d 1338, 1347 (Fed. Cir. 2009)).
`
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`analysis.° While I strongly support the policy and principles underlying Fintiv, this particular
`practice seems wrong.
`
`Based onthe facts currently available to me,it is difficult to imagine any plausible justification
`for the continued reliance on the demonstrably inaccuratetrial dates set by the Waco Division.
`therefore ask that you undertake a study and review of this matter and consider whether Fintiv
`should be modified to account for unrealistic trial scheduling. I ask that you complete this review
`and implement appropriate reforms based on your findingsby no later than December 31, 2021.
`
`I
`
`Thank you for your promptattention to this matter. I look forward to yourreply. If you have any
`questions, please do nothesitate to contact me.
`
`Sincerely,
`
`Thom Tillis
`Ranking Member
`Subcommittee on Intellectual Property
`
`° Despite the unreliability of scheduled trial dates, PTAB panels nevertheless “usually take courts’ trial schedules at
`face value.” Quest Diagnostics Incorporated v. Ravgen, Inc., IPR2021-00788, Paper 23 at 31 (PTAB October 19,
`2021).
`
`APPLE
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`