By Michael Rosen

History buffs may recall that the Restoration took place nearly 400 years ago, heralding the
return of King Charles II of England from his continental exile and restoring
the rule of the Stuart family. In similar fashion in 2021, two key lawmakers
are seeking to restore the 2011 America Invents Act (AIA), the most significant reform of
the patent statute in decades, but they appear to be meeting more resistance
than the Stuarts did.

Last month, Sens. Patrick Leahy (D-VT) and John Cornyn (R-TX) introduced the Restoring the America Invents Act (RAIA) in an effort to revitalize the 10-year-old legislation, update it for contemporary times, and “protect the gains” it fostered. “High-quality patents are essential for spurring innovation,” Leahy and Cornyn declared in a press statement, “but poor-quality patents can be abused, costing start-ups, small businesses, American manufacturers, and nonprofits huge sums every year.” Specifically, the measure aims, per Cornyn, to “improv[e] the mechanism” for challenging patents and “ensur[e] there is a less expensive and more transparent option than drawn-out litigation.”

RAIA would empower the director of the US Patent and
Trademark Office (USPTO) to review decisions of the Patent Trial and Appeal
Board (PTAB) — the administrative court within the USPTO deputized by the AIA
to weed out bad patents. It would also, if appropriate, modify or set aside
those decisions — but only in a written opinion setting forth the director’s
reasoning. This provision appears consistent with the Supreme Court’s recent
ruling, explained here a few months ago, requiring board decisions to be
subject to review by the director.

The bill would also modestly expand the legal grounds for
potential invalidation of patent claims to include “admissions in the patent
specification, drawings, or claims” and so-called “double patenting.” And it
would suspend the one-year grace period for PTAB filings when a district court
litigant voluntarily dismisses their patent infringement complaint without
prejudice.

More controversially, the legislation would also sharply
limit the PTAB’s discretion to deny the institution of an invalidity
proceeding, thereby effectively overruling the board’s own decision in Apple v. Fintiv. That ruling identified numerous factors
for the PTAB to consider, including the overlap of issues between a district
court litigation and the parallel USPTO proceeding, the amount of investment in
the parallel litigation, and the timing of the PTAB filing. But RAIA would
permit the board to decline to initiate a proceeding only when “the same or
substantially the same prior art or arguments previously were presented to the
Office.”

Finally, the measure would compel district courts to
consider certain factors when deciding whether to suspend litigation when a
PTAB petition has been filed while also providing for the immediate appeal of
such decisions.

These last elements of the Leahy-Cornyn bill have provoked a
significant backlash.

In a press release, the Innovation Alliance, which comprises
technology companies like Qualcomm, AbbVie, and Dolby Laboratories, fretted
that RAIA would “reestablish PTAB trials as a parallel avenue, as opposed to an
alternative to district court trials” as the AIA originally intended. “The most
frequent users of the PTAB process are the same Big Tech companies that many in
Congress believe are already too powerful,” the Innovation Alliance continued.
“We believe this bill would help make them more powerful by giving them
additional tools to game the PTAB process,” to “increase the cost of enforcing
valid patents,” and to “place an often insurmountable burden on smaller
companies and inventors who don’t have the resources to continue fighting to
enforce their rights.” Gene Quinn of IP Watchdog was more blunt, assessing that RAIA would open “the floodgates for fresh,
new rounds of patent owner harassment by challengers and without any
consideration for whether another judicial officer has or will soon consider
the same issue.”

Other interest groups expressed support for the measure.
Joshua Landau, who writes for Patent Progress and serves as patent counsel for
the Computer & Communications Industry Association, which
strongly backed the original AIA, praised the new bill as “overwhelmingly positive for the
patent system and for innovation.” He asserted that RAIA

would roll back changes introduced by former USPTO Director Andrei Iancu and by the courts, restoring the America Invents Act (AIA) to what it was always intended to be — a cost-effective alternative to litigation, providing a way to accurately determine whether a patent should have been issued in the first place.

Judging from these and other reactions, RAIA appears to have
energized both proponents and antagonists, which likely means that passage in
its current form is highly uncertain. The AIA may not retake its crown quite so
easily as Charles II retook his.

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