,,ii #aagth ,,congress #ast ,session ,s4 #bhia ,,in ,,the ,,senate ,,of ,,the ,,united ,,states ,september #bi1 #bjba,mr4 ,leahy 7for himself and ,mr4 ,cornyn7 introduced the following bill2 which was read twice and referred to the ,committee on the ,judiciary ,a ,,bill ,to amend title #ce1 ,united ,states ,code1 to address matters relating to the ,patent ,trial and ,appeal ,board of the ,united ,states ,patent and ,trademark ,office1 and for other purposes4 #a4 ,short title ,this ,act may be cited as the ,restoring the ,america ,invents ,act4 #b4 ,patents ,title #ce1 ,united ,states ,code1 is amended-- 7#a7 in section #f-- 7,a7 in subsection 7c7-- 7i7 in the second sentence1 by striking ,only the and inserting ,the2 and 7ii7 by adding at the end the following3 ,after the constitution of a panel of the ,patent ,trial and ,appeal ,board under this subsection has been made public1 any changes to the constitution of that panel shall be noted in the record42 7,b7 by redesignating subsection 7d7 as subsection 7e72 7,c7 by inserting after subsection 7c7 the following3 7d7 ,review by ,director 7#a7 ,in general ,with respect to a final decision of the ,patent ,trial and ,appeal ,board-- 7,a7 the ,director may1 on the initiative of the ,director1 review1 and modify or set aside1 the decision2 and 7,b7 if the decision is issued under section #cah or #cbh1 a party to the applicable inter partes or post-grant review may request that the ,director review1 and modify or set aside1 the decision4 7#b7 ,requirement ,any review by the ,director under paragraph 7#a7 shall be issued in a separate written opinion that-- 7,a7 is made part of the public record2 and 7,b7 sets forth the reasons for the review1 modification1 or setting aside of the final decision of the ,patent ,trial and ,appeal ,board4 7#c7 ,timeline and bases for review ,not later than #ah months after the date of enactment of the ,restoring the ,america ,invents ,act1 the ,director shall promulgate rules addressing the following issues3 7,a7 ,with respect to review of a decision on the initiative of the ,director under paragraph 7#a77;,a7-- 7i7 the timeline under which the ,director may review the decision1 which shall be consistent with the requirements under section #cah7;e7 or #cbh7;e71 if applicable2 and 7ii7 the bases on which the ,director may review the decision4 7,b7 ,with respect to a request by a party under paragraph 7#a77;,b7-- 7i7 the timeline for submitting such a request2 7ii7 the content that the party is required to include in such a request2 7iii7 the bases on which the party may submit such a request2 and 7iv7 the timeline for any response or reply to such a request such that the request can be decided within the deadline imposed under section #cah7;e7 or #cbh7;e71 as applicable4 7#d7 ,rule of construction ,for the purposes of an appeal permitted under section #ada1 any decision on review issued by the ,director under this subsection shall be deemed a final decision of the ,patent ,trial and ,appeal ,board4 2 and 7,d7 in subsection 7e71 as so redesignated-- 7i7 in the first sentence-- 7,i7 by striking of this subsection and inserting of the ,restoring the ,america ,invents ,act2 7,,ii7 by inserting or the ,secretary after appointment by the ,director2 and 7,,iii7 by inserting or the ,secretary1 as applicable1 after on which the ,director2 and 7ii7 in the second sentence-- 7,i7 by inserting 1 or1 before the date of enactment of the ,restoring the ,america ,invents ,act1 having performed duties no longer performed by administrative patent judges1 after by the ,director2 and 7,,ii7 by striking that the administrative patent judge so appointed and inserting that the applicable administrative patent judge2 7#b7 in section #cjb1 in the first sentence1 by inserting 1 including a governmental entity1 after ,a person2 7#c7 in chapter #ca-- 7,a7 in section #caa-- 7i7 in subsection 7a71 in the first sentence1 by inserting 1 including a governmental entity1 after a person2 and 7ii7 in subsection 7b71 by striking under section #ajb and all that follows through the period at the end and inserting the following3 8under-- 7#a7 section #ajb or #ajc and only on the basis of-- 7,a7 prior art consisting of patents or printed publications2 or 7,b7 admissions in the patent specification1 drawings1 or claims2 or 7#b7 statutory or obviousness-type double patenting on the basis of-- 7,a7 patents or printed publications2 or 7,b7 admissions in the patent specification1 drawings1 or claims4 2 7,b7 in section #cad-- 7i7 in subsection 7a71 by striking ,the ,director may not authorize an inter partes review to be instituted unless and inserting the following3 ,subject only to the discretion of the ,director under section #cbe7;d77#d71 a petition that meets the requirements of this chapter shall be instituted if2 and 7ii7 in subsection 7d7-- 7,i7 by inserting or maintain after to institute2 and 7,,ii7 by striking section and inserting chapter2 7,c7 in section #cae-- 7i7 in subsection 7a77#a7-- 7,i7 by striking ,an inter partes and inserting the following3 7,a7 ,in general ,an inter partes 2 and 7,,ii7 by adding at the end the following3 7,b7 ,rule of construction ,subparagraph 7,a7 may not be construed to prevent an inter partes review from being instituted if a complaint in a civil action described in that subparagraph has been dismissed without prejudice4 2 7ii7 by striking subsection 7b7 and inserting the following3 7b7 ,patent owner's action 7#a7 ,in general ,an inter partes review may not be instituted if the petition requesting the proceeding is filed more than #a year after the date on which the petitioner1 real party in interest1 or privy of the petitioner is served with a complaint alleging infringement of the patent4 ,the time limitation set forth in the preceding sentence shall be subject to the following limitations3 7,a7 ,the time limitation shall not apply-- 7i7 to a request for joinder under subsection 7c72 or 7ii7 if the complaint is dismissed without prejudice4 7,b7 ,if new or amended claims issue from reexamination after the petitioner1 real party in interest1 or privy of the petitioner is served with the complaint1 an inter partes review of those claims may be instituted if the petition requesting the review is filed not later than #a year after the date on which the challenged claims are asserted in the action4 7#b7 ,request for stay 7,a7 ,in general ,if a party seeks a stay of a civil action brought under section #bha alleging infringement of a patent that is also subject to an inter partes review1 the court shall decide whether to stay the civil action based on whether-- 7i7 the outcome of the inter partes review will likely simplify the issues in question in the civil action and streamline the proceedings in the civil action2 7ii7 as of the date on which the stay is requested1 discovery in the civil action is complete2 7iii7 a stay1 or the denial thereof1 would-- 7,i7 unduly prejudice the nonmoving party2 or 7,,ii7 present a clear tactical advantage for the moving party2 and 7iv7 a stay1 or the denial thereof1 will reduce the burden of litigation on the parties to the civil action and the court4 7,b7 ,review ,a party may take an immediate interlocutory appeal from the decision of a district court of the ,united ,states under subparagraph 7,a74 ,the ,united ,states ,court of ,appeals for the ,federal ,circuit shall review the district court's decision to ensure consistent application of established precedent1 and such review shall be de novo4 2 7iii7 in subsection 7c7-- 7,i7 by striking ,if the ,director and inserting the following3 7#a7 ,in general ,if the ,director 2 and 7,,ii7 by adding at the end the following3 7#b7 ,estoppel ,any person joined as a party to an inter partes review1 and any real party in interest or privy of such person1 shall be estopped under subsection 7e7 to the same extent as if that person1 real party in interest1 or privy had been the first petitioner in that inter partes review4 2 7iv7 by striking subsection 7d7 and inserting the following3 7d7 ,multiple proceedings 7#a7 ,in general ,notwithstanding sections #ace7;a71 #bea1 and #beb1 and chapter #cj1 during the pendency of an inter partes review1 if another proceeding or matter involving the patent is before the ,office1 or if there is a pending application claiming the benefit of a common filing date to the patent under section #abj or #aba-- 7,a7 the parties shall notify the ,director2 and 7,b7 the ,director shall issue a decision determining the manner in which the other proceeding or matter may proceed1 including providing for stay1 transfer1 consolidation1 or termination of any such proceeding or matter4 7#b7 ,no extension ,a decision of the ,director under paragraph 7#a77;,b7 may not-- 7,a7 extend any statutory deadline under this chapter2 or 7,b7 terminate an inter partes proceeding in favor of an ex parte proceeding4 7#c7 ,presumption ,for the purposes of this subsection1 if the multiple proceedings described in paragraph 7#a7 are of like type and are filed reasonably close in time1 there shall be a rebuttable presumption that the ,director shall consolidate the proceedings under that paragraph4 2 and 7v7 in subsection 7e7-- 7,i7 in paragraph 7#a7-- 7aa7 by striking ,the petitioner in and inserting the following3 7,a7 ,estoppel against petitioner ,the petitioner in 2 7bb7 in subparagraph 7,a71 as so designated1 by inserting 1 after the time for appeal of the decision has expired or any such appeal has terminated1 after may not2 and 7cc7 by adding at the end the following3 7,b7 ,estoppel against patent owner ,the ,office may not issue to a patent owner any claim that is not patentably distinct from a claim that was issued and was subsequently-- 7i7 found to be unpatentable2 or 7ii7 canceled in any proceeding before the ,office1 including under section #ace1 #bea1 #bec1 #cja1 #caa1 or #cba4 2 and 7,,ii7 in paragraph 7#b7-- 7aa7 by inserting that the claim is not unpatentable after section #cah7;a72 7bb7 by inserting 1 after the time for appeal of the decision has expired or any such appeal has terminated1 after may not2 and 7cc7 by inserting or #adih after section #acch2 7,d7 in section #caf-- 7i7 in subsection 7a77#aa71 by inserting or consolidation under section #cae7;d7 after under section #cae7;c72 7ii7 in subsection 7c7-- 7,i7 by striking ,the ,patent and inserting the following3 7#a7 ,in general ,the ,patent 2 and 7,,ii7 by adding at the end the following3 7#b7 ,ex parte communication ,an officer who has review authority1 supervisory authority1 or disciplinary authority with respect to an administrative patent judge of the ,patent ,trial and ,appeal ,board 7or a delegate of such an officer71 and who is not a member of a panel described in section #f7;c71 shall refrain from ex parte communication with such a judge who is a member of that panel concerning any pending matter before that panel1 except as allowed under the ,code of ,conduct for ,united ,states ,judges4 2 and 7iii7 in subsection 7e7-- 7,i7 by striking ,in an and inserting the following3 7#a7 ,in general ,in an 2 7,,ii7 in paragraph 7#a71 as so designated1 by inserting of challenged patent claims after unpatentability2 and 7,,iii7 by adding at the end the following3 7#b7 ,claim amendment ,for any substitute claim proposed under subsection 7d7-- 7,a7 the patent owner shall have the burden of proving patentability1 including under sections #aja1 #ajb1 #ajc1 and #aab1 by a preponderance of the evidence2 7,b7 the ,patent ,trial and ,appeal ,board shall-- 7i7 examine the substitute claim2 or 7ii7 notwithstanding subsection 7c77#b71 refer the substitute claim to the ,director1 who shall cause an examination of the substitute claim to be made within the time limits for the applicable inter partes review2 and 7,c7 the ,director may establish1 by regulation1 fees for examination of the substitute claim in such amounts as the ,director determines to be reasonable1 taking into consideration the aggregate costs of examination4 2 7,e7 in section #cah-- 7i7 in subsection 7b71 by inserting 1 not later than #fj days after the date on which the parties to the inter partes review have informed the ,director that the time for appeal has expired or any appeal has terminated1 after the ,director shall2 and 7ii7 by adding at the end the following3 7e7 ,rehearing ,not later than #abj days after the date on which the ,patent ,trial and ,appeal ,board issues a final written decision under subsection 7a71 the ,board or the ,director shall finally decide any request for reconsideration1 rehearing1 or review that is submitted with respect to the decision1 except that the ,director may1 for good cause shown1 extend that #abj-;day period by not more than #fj days4 2 and 7,f7 in section #cai-- 7i7 in the first sentence1 by striking ,a party and inserting the following3 7a7 ,in general ,a party 2 and 7ii7 by adding at the end the following3 7b7 ,standing 7#a7 ,injury in fact ,for the purposes of an appeal described in subsection 7a71 injury in fact shall be presumed if the party appealing the decision-- 7,a7 reasonably expects that another person will assert estoppel against the party under section #cae7;e7 as a result of the final written decision that is the subject of the appeal2 or 7,b7 suffers any other concrete and particularized injury that-- 7i7 is fairly traceable to the final written decision that is the subject of the appeal2 and 7ii7 could be redressed through appellate review4 7#b7 ,estoppel ,if a court finds that a party lacks standing to bring an appeal described in subsection 7a7 under article ,,iii of the ,constitution of the ,united ,states1 that party shall not be estopped under section #cae7;e7 with respect to the underlying inter partes review4 2 and 7#d7 in chapter #cb-- 7,a7 in section #cba7;a71 by inserting 1 including a governmental entity1 after a person2 7,b7 in section #cbd-- 7i7 in subsection 7a71 by striking ,the ,director may not authorize a post-grant review to be instituted unless and inserting the following3 ,subject only to the discretion of the ,director under section #cbe7;d77#d71 a petition filed under section #cba that meets the requirements of this chapter shall be instituted if2 and 7ii7 in subsection 7e7-- 7,i7 by inserting or maintain after to institute2 and 7,,ii7 by striking section and inserting chapter2 7,c7 in section #cbe-- 7i7 in subsection 7a7-- 7,i7 in the subsection heading1 by striking ,infringer's ,civil ,action and inserting ,civil action2 and 7,,ii7 by adding at the end the following3 7#d7 ,request for stay 7,a7 ,in general ,if a party seeks a stay of a civil action brought under section #bha alleging infringement of a patent that is also subject to a post-grant review1 the court shall decide whether to stay the civil action based on whether-- 7i7 the outcome of the post-grant review will likely simplify the issues in question in the civil action and streamline the proceedings in the civil action2 7ii7 as of the date on which the stay is requested1 discovery in the civil action is complete2 7iii7 a stay1 or the denial thereof1 would-- 7,i7 unduly prejudice the nonmoving party2 or 7,,ii7 present a clear tactical advantage for the moving party2 and 7iv7 a stay1 or the denial thereof1 will reduce the burden of litigation on the parties to the civil action and the court4 7,b7 ,review ,a party may take an immediate interlocutory appeal from the decision of a district court of the ,united ,states under subparagraph 7,a74 ,the ,united ,states ,court of ,appeals for the ,federal ,circuit shall review the district court's decision to ensure consistent application of established precedent1 and such review shall be de novo4 2 7ii7 in subsection 7c7-- 7,i7 by striking ,if more and inserting the following3 7#a7 ,in general ,if more 2 and 7,,ii7 by adding at the end the following3 7#b7 ,estoppel ,any person joined as a party to a post-grant review1 and any real party in interest or privy of such person1 shall be estopped under subsection 7e7 to the same extent as if that person1 real party in interest1 or privy had been the first petitioner in that post-grant review4 2 7iii7 by striking subsection 7d7 and inserting the following3 7d7 ,multiple proceedings 7#a7 ,in general ,notwithstanding sections #ace7;a71 #bea1 and #beb1 and chapter #cj1 during the pendency of any post-grant review under this chapter1 if another proceeding or matter involving the patent is before the ,office1 or if there is a pending application claiming the benefit of a common filing date to the patent under section #abj or #aba-- 7,a7 the parties shall notify the ,director2 and 7,b7 the ,director shall issue a decision determining the manner in which the other proceeding or matter may proceed1 including providing for stay1 transfer1 consolidation1 or termination of any such proceeding or matter4 7#b7 ,no extension ,a decision of the ,director under paragraph 7#a77;,b7 may not-- 7,a7 extend any statutory deadline under this chapter2 or 7,b7 terminate an inter partes proceeding in favor of an ex parte proceeding4 7#c7 ,presumption ,for the purposes of this subsection1 if the multiple proceedings described in paragraph 7#a7 are of like type and are filed reasonably close in time1 there shall be a rebuttable presumption that the ,director shall consolidate the proceedings under that paragraph4 7#d7 ,considerations ,in determining whether to institute or order a proceeding under this chapter1 chapter #cj1 or chapter #ca1 the ,director may take into account whether1 and reject the petition or request because1 the same or substantially the same prior art or arguments previously were presented to the ,office4 2 and 7iv7 in subsection 7e7-- 7,i7 in paragraph 7#a7-- 7aa7 by striking ,the petitioner in and inserting the following3 7,a7 ,estoppel against petitioner ,the petitioner in 2 7bb7 in subparagraph 7,a71 as so designated1 by inserting 1 after the time for appeal of the decision has expired or any such appeal has terminated1 after may not2 and 7cc7 by adding at the end the following3 7,b7 ,estoppel against patent owner ,the ,office may not issue to a patent owner any claim that is not patentably distinct from a claim that was issued and was subsequently-- 7i7 found to be unpatentable2 or 7ii7 canceled in any proceeding before the ,office1 including under section #ace1 #bea1 #bec1 #cja1 #caa1 or #cba4 2 and 7,,ii7 in paragraph 7#b7-- 7aa7 by inserting that the claim is not unpatentable after section #cbh7;a72 7bb7 by inserting 1 after the time for appeal of the decision has expired or any such appeal has terminated1 after may not2 and 7cc7 by inserting or #adih after section #acch2 7,d7 in section #cbf-- 7i7 in subsection 7a77#aa71 by inserting or consolidation under section #cbe7;d7 after under section #cbe7;c72 7ii7 in subsection 7c7-- 7,i7 by striking ,the ,patent and inserting the following3 7#a7 ,in general ,the ,patent 2 and 7,,ii7 by adding at the end the following3 7#b7 ,ex parte communication ,an officer who has review authority1 supervisory authority1 or disciplinary authority with respect to an administrative patent judge of the ,patent ,trial and ,appeal ,board 7or a delegate of such an officer71 and who is not a member of a panel described in section #f7;c71 shall refrain from ex parte communication with such a judge who is a member of that panel concerning any pending matter before that panel1 except as allowed under the ,code of ,conduct for ,united ,states ,judges4 2 and 7iii7 in subsection 7e7-- 7,i7 by striking ,in a and inserting the following3 7#a7 ,in general ,in a 2 7,,ii7 in paragraph 7#a71 as so designated1 by inserting of challenged patent claims after unpatentability2 and 7,,iii7 by adding at the end the following3 7#b7 ,claim amendment ,for any substitute claim proposed under subsection 7d7-- 7,a7 the patent owner shall have the burden of proving patentability1 including under sections #aja1 #ajb1 #ajc1 and #aab1 by a preponderance of the evidence2 7,b7 the ,patent ,trial and ,appeal ,board shall-- 7i7 examine the substitute claim2 or 7ii7 notwithstanding subsection 7c77#b71 refer the substitute claim to the ,director1 who shall cause an examination of the substitute claim to be made within the time limits for the applicable inter partes review2 and 7,c7 the ,director may establish1 by regulation1 fees for examination of the substitute claim in such amounts as the ,director determines to be reasonable1 taking into consideration the aggregate costs of examination4 2 7,e7 in section #cbh-- 7i7 in subsection 7b71 by inserting not later than #fj days after the date on which the parties to the post-grant review have informed the ,director that the time for appeal has expired or any appeal has terminated1 after the ,director shall2 and 7ii7 by adding at the end the following3 7e7 ,rehearing ,not later than #abj days after the date on which the ,patent ,trial and ,appeal ,board issues a final written decision under subsection 7a71 the ,board or the ,director shall finally decide any request for reconsideration1 rehearing1 or review that is submitted with respect to the decision1 except that the ,director may1 for good cause shown1 extend that #abj-;day period by not more than #fj days4 2 and 7,f7 in section #cbi-- 7i7 in the first sentence1 by striking ,a party and inserting the following3 7a7 ,in general ,a party 2 and 7ii7 by adding at the end the following3 7b7 ,standing 7#a7 ,injury in fact ,for the purposes of an appeal described in subsection 7a71 injury in fact shall be presumed if the party appealing the decision-- 7,a7 reasonably expects that another person will assert estoppel against the party under section #cbe7;e7 as a result of the final written decision that is the subject of the appeal2 or 7,b7 suffers any other concrete and particularized injury that-- 7i7 is fairly traceable to the final written decision that is the subject of the appeal2 and 7ii7 could be redressed through appellate review4 7#b7 ,estoppel ,if a court finds that a party lacks standing to bring an appeal described in subsection 7a7 under article ,,iii of the ,constitution of the ,united ,states1 that party shall not be estopped under section #cbe7;e7 with respect to the underlying post-grant review4 4