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`
`COMMITTEE ON THE JUDICIARY
`
`WASHINGTON, DC 2051CH>275
`
`VIA ELECTRONIC TRANSMISSION
`
`November 2, 2021
`
`Mr. Andrew Hirshfeld
`Commissioner for Patents
`Performing· the Functions and Duties of the
`Under Secretary of Commerce for Intellectual Property and
`Director
`U.S. Patent and Trademark Office
`600 Dulany St.
`Aiexandria~ VA 22314
`
`Dear Acting Director Hirshfeld: ·
`
`I write 'you today regarding the Patent Trial and Appeal Board's ("PTAB") application of the
`precedential decision in Apple jnc. v. Fintiv, Inc. 1 While I strongly believe in the policies and
`utility of Fintiv, I am concerned about how its current application is impacting patent litigation in
`a single federal judicial district.
`
`As you know, Fintiv instructs the PTAB not to institute an Inter Partes Review ("IPR")
`.
`.
`procedure to challenge a patent's validity if the panel deems it to be more efficient to allow
`parallel district court litigation to proceed based on a balancing test comprising six non(cid:173)
`dispositive factors .· Again, while I strongly support the policies underlying Fintiv, my concern ·
`relates to the PTAB's application of the second of these factors: the proximity of the court's trial
`date to the PTAB ' s projected statutory deadline for a final written decision. Specifically, I am
`concerned that the PTAB 's historical practice of crediting umealistic trial schedules. This has not
`only produced outcomes that are untethered from the policy underpinnings of the Fintiv rule, but
`it has also created harmful incentives for forum shopping and inappropriate judicial behavior.
`
`.
`
`The negative consequences are most pronounced in the Waco Division of the 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 not just umealistic, but they
`impossible to fulfill as multiple conflicting trials are frequently scheduled to occur on the same
`date before the same judge in the same courtroom. However, because PT AB panels interpret
`Fintiv to require scheduled trial dates to be taken at face value, panels have regularly exercised
`discretion to deny institution of IPRs in deference to litigation pending before that district.
`
`To be clear, I believe judicial conduct is partly to blame for this situation. Once a case has been
`filed in the Waco Division, many defendants have found it all but impossible to persuade the
`
`! IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (designated precedential on May 5, 2020).
`
`Petitioner Apple, Inc.
`Exhibit 1035 - Page 1 of 3
`
`

`

`division's sole judge to transfer the case to a more appropriate venue. In denying such transfers,
`the court has repeatedly ignored binding case law and abused his discretion. 2 This misconduct
`has resulted in a flood of mandamus petitions being filed at the Federal Circuit. The Federal
`Circuit has been compelled to correct his clear and egregious abuses of discretion by granting
`mandamus relief and ordering the transfer of cases no fewer than 15 times in just the past two
`years. 3
`
`Notably, in granting these petitions, the Federal Circuit has cast grave doubt on the reliability of
`the Waco Division's trial schedules and claims regarding efficiency of adjudication. The
`appellate comi has strongly criticized the division's improper reliance on purportedly greater
`"congestion" in transferee comis 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 average time to trial rather than aggressively
`scheduled trial dates. "4 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 produces a reliable assessment of relative court congestion, characterizing this analysis
`as mere "speculation. "5
`
`These unreliable and "aggressively scheduled trial dates" are the same ones that are relied on by
`PTAB panels in applying Fintiv. Despite the Federal Circuit's conclusion that these dates are not
`appropriate indicators of actual time-to-trial and that it is not "proper" to rely on them for
`purposes of making transfer determinations, PTAB panels have generally continued to rely on
`these dates and to treat them as credible predictors of time-to-trial for purposes of the Fintiv
`
`2 See, e.g., In re: 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 manner as "amount[ing] to egregious delay and blatant 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 WL4771756 (Fed. Cir. Oct. 13, 2021); In re Pandora Media, LLC, No. 2021-172, 2021 WL4772805 (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); In 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 Hutu, 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 F.4th 1371 (Fed. Cir. 2021); In re TracFone Wireless, Inc., 852 F.App'x 537 (Fed. Cir.
`2021);-fn 11e AppleJnc.,.979 F.3d 1332 (Fed. Cir. 2020); In re Nitro Fluids LLLC, 978 F.3d 1308 (Fed. Cir. 2020); In
`reAdobeinc., 823 F.App'x 929 (Fed. Cir. 2020).
`4 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).
`·
`5 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 support its conclusion as to comt congestion, we have characterized this factor as
`the 'most speculative' of the factors bearing on the transfer decision.") (internal citations omitted); In re Juniper
`Networks at 7 (characterizing comt congestion as the "most speculative" of the transfer factors) (quoting In re
`Genentech, Inc., 566 F.3d 1338, 1347 (Fed. Cir. 2009)).
`
`2
`
`Petitioner Apple, Inc.
`Exhibit 1035 - Page 2 of 3
`
`

`

`analysis. 6 While I strongly support the policy and principles underlying Fintiv, this particular
`practice seems wrong.
`
`Based on the facts currently available to me, it is difficult to imagine any plausible justification
`for the continued reliance on the demonstrably inaccurate trial dates set by the Waco Division. I
`therefore ask that you undertake a study and review of this matter and consider whether Fintiv
`should be modified to account for umealistic trial scheduling. I ask that you complete this review
`and implement appropriate reforms based on your findings by no later than December 31, 2021.
`
`Thank you for your prompt attention to this matter. I look forward to your reply. If you have any
`questions, please do not hesitate to contact me.
`
`Sincerely,
`
`Thorn Tillis
`Ranking Member
`Subcommittee on Intellectual Property
`
`6 Despite the unreliability of scheduled trial dates, PTAB panels nevertheless "usually take courts' trial schedules at
`face value." Quest Diagnostics Incorporated v. Ravgen, Inc. , IPR202 l-00788, Paper 23 at 31 (PTAB October 19,
`2021).
`
`3
`
`Petitioner Apple, Inc.
`Exhibit 1035 - Page 3 of 3
`
`