On September 30, 2021, IPWatchdog featured commentary from Chris Loh on the Restoring America Invents Act, a bill submitted by senators Patrick Leahy (D-VT) and John Cornyn (R-TX). The following is an excerpt:
The Restoring America Invents Act (RAIA) comprises a set of amendments that address certain procedural issues that have arisen in post-grant proceedings since the passage of the AIA in 2012. Most of the amendments favor IPR petitioners over patent owners, and several amendments directly contradict recent Supreme Court, Federal Circuit and Patent Trial and Appeal Board (PTAB) decisions. Given the general one-sidedness of the changes, I think that the bill is unlikely to pass in its current form.
Arguably the most significant of the RAIA amendments is the limitation on the Director’s discretion to deny institution of IPRs when parallel litigation on the same patent is pending. That amendment effectively nullifies the PTAB’s precedential 2020 Fintiv decision. The PTAB presumably designated the Fintiv decision precedential in order to conserve its resources in circumstances where it reasonably believed that a district court could more economically and expeditiously address overlapping validity issues. Preventing discretionary denials in those circumstances thus is likely to increase the PTAB’s workload, which may in turn negatively affect the quality of IPR decisions.
Another RAIA amendment would expand the grounds for IPRs and PGRs to include “admissions in the patent specification, drawings, or claims.” The amendment, however, doesn’t explain what constitutes an “admission.” If this amendment passes in its current form, I foresee a lot of fights over what portions of the specification, drawings or claims qualify as “admissions.”
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