JAPAN INTELLECTUAL PROPERTY ASSOCIATIONASAHI SEIMEI OTEMACHI BLDG.18F
6-1 Otemachi 2-chome
Chiyoda-ku Tokyo, 100-0004, JAPANTEL: 81 3 5205 3321
FAX: 81 3 5205 3391
URL: http://www.jipa.or.jp/

November 17, 2020
Hon. Andrei Iancu
Under Secretary of Commerce for Intellectual Property andDirector of the United States Patent and Trademark Office
United States Patent and Trademark Office
600 Dulany Street
Alexandria, Virginia 22314

Re: JIPA Comments to Request for Comments on Discretion To Institute Trials Before
the Patent Trial and Appeal Board

Dear Under Secretary Iancu:
We, the Japan Intellectual Property Association (JIPA), are one of the world'slargest organizations of IP users with a membership of 1,335 companies (as ofNovember 17th, 2020), most of which are Japanese companies. In light of the fact that
our member companies file numerous U.S. patent applications, JIPA has carefully
considered “Request for Comments on Discretion To Institute Trials Before the Patent
Trial and Appeal Board” published by the United States Patent and Trademark Office(USPTO) in the Federal Register of October 20, 2020.
We, JIPA, respectfully submit our comments on USPTO's proposed revisions tothe rules, as below. USPTO is kindly requested to take our comments into
consideration when deciding on the revisions to the rules.
(1) Serial Petitions
We agree to 2(a), which reads that an IPR is instituted regardless of whether
the same claims have previously been challenged in another petition.

This is because

denial of institution of an IPR based on an element irrelevant to the validity of a patent
allows continuous existence of the patent, which should have been primarily invalidated.
The existence of a patent that should be invalidated would impede innovations in US.
As a matter of course, if contents of a petition fail to allege the invalidity based on"reasonable likelihood" standard, an IPR should not be instituted as is conventionally1done.
If the Office will promulgate a rule in line with the current practices of USPTO,
some of factors in General Plastic having an ambiguous judgement criterion should beexcluded.

This is because when the judgement criterion is ambiguous, both a patent

owner and a petitioner are brought into uncertain predictability on the institution of anIPR.

The factors that can be clearly judged based on objective facts are only factors 1and 3. The rule should read that an IPR will not be instituted if both of the two factors
are met.
Factor 1: Whether the same petitioner previously filed a petition directed to thesame claims of the same patent
Factor 3: Whether, at the time of filing of the second petition, the petitioner had
already received a patent owner's preliminary response to the first petition or received
the Board's decision on whether to institute review in the first petition(2) Parallel Petitions
We agree to 4(a), which reads that an IPR is instituted regardless of thenumber of petitions filed at or about the same time on the same patent.

This isbecause, as same reason as in (1), the number of petitions is an element irrelevant tothe validity of a patent in deciding whether to institute plural IPRs.

At a stage where a

district court has not finalized a construction of claims, there is a possibility that plural
petitions of IPRs are filed in accordance with the number of types of claim
constructions. For example, two petitions are exemplified: a petition based on theclaim construction of a suspected infringer; and a petition based on the claim
construction used by a patent owner for infringement allegation. If institution of an IPR
is denied because plural petitions of IPRs have been filed, this significantly narrows
down the extent of possible measures of a petitioner, and thus we cannot agree to sucha situation.
(3) Proceedings in Other Tribunals
We agree to 6(a), which reads that an IPR is instituted regardless ofproceedings in other tribunals.

This is because, as same reason as in (1), factors

listed in Fintiv factors such as the degree of progress in a parallel proceeding in adistrict court, the degree of investment, and the schedule of a trial are elements
irrelevant to the validity of a patent. If denial of institution of an IPR depends on thedegree of progress in a district court, then a petitioner who desires that the validity of apatent should be examined by USPTO, an organization specializing in patents more2

than a district court, would lose one of measures of the petitioner.

This significantly

narrows down the extent of possible measures of a petitioner, and thus we cannot
agree to such a situation.
Yours faithfully

Akitoshi YAMANAKAManaging Director
Japan Intellectual Property Association3