U.S. GOVERNMENT PUBLISHING OFFICE

56–942 WASHINGTON : 2024

S. HRG. 117–898 

THE PATENT TRIAL AND APPEAL BOARD: 

EXAMINING PROPOSALS TO ADDRESS 

PREDICTABILITY, CERTAINTY, AND FAIRNESS 

HEARING 

BEFORE THE

SUBCOMMITTEE ON INTELLECTUAL 

PROPERTY 

OF THE

COMMITTEE ON THE JUDICIARY 

UNITED STATES SENATE 

ONE HUNDRED SEVENTEENTH CONGRESS 

SECOND SESSION 

JUNE 22, 2022 

Serial No. J–117–66 

Printed for the use of the Committee on the Judiciary 

( 

www.judiciary.senate.gov 

www.govinfo.gov 
(II) 

COMMITTEE ON THE JUDICIARY 

RICHARD J. DURBIN, Illinois, Chair 

PATRICK J. LEAHY, Vermont 

DIANNE FEINSTEIN, California 

SHELDON WHITEHOUSE, Rhode Island 

AMY KLOBUCHAR, Minnesota 

CHRISTOPHER A. COONS, Delaware 

RICHARD BLUMENTHAL, Connecticut 

MAZIE K. HIRONO, Hawaii 

CORY A. BOOKER, New Jersey 

ALEX PADILLA, California 

JON OSSOFF, Georgia 

CHARLES E. GRASSLEY, Iowa, Ranking 

Member 

LINDSEY O. GRAHAM, South Carolina 

JOHN CORNYN, Texas 

MICHAEL S. LEE, Utah 

TED CRUZ, Texas 

BEN SASSE, Nebraska 

JOSH HAWLEY, Missouri 

TOM COTTON, Arkansas 

JOHN KENNEDY, Louisiana 

THOM TILLIS, North Carolina 

MARSHA BLACKBURN, Tennessee 

JOSEPH ZOGBY, Chief Counsel and Staff Director 

KOLAN L. DAVIS, Republican Chief Counsel and Staff Director 

SUBCOMMITTEE ON INTELLECTUAL PROPERTY 

PATRICK J. LEAHY, Vermont, Chair 

CHRISTOPHER A. COONS, Delaware 

MAZIE K. HIRONO, Hawaii 

ALEX PADILLA, California 

THOM TILLIS, North Carolina, Ranking 

Member 

JOHN CORNYN, Texas 

TOM COTTON, Arkansas 

MARSHA BLACKBURN, Tennessee 

RAJIV VENKATARAMANAN, Majority Staff Director 

BRAD WATTS, Minority Staff Director 
(III) 

C O N T E N T S 

OPENING STATEMENTS 

Page 

Leahy, Hon. Patrick J. ............................................................................................ 1 

Tillis, Hon. Thom ..................................................................................................... 3 

WITNESSES 

Anderson, Jonas ....................................................................................................... 9 

Prepared statement .......................................................................................... 24 

Responses to written questions ....................................................................... 61 

Cain, David .............................................................................................................. 5 

Prepared statement .......................................................................................... 32 

Responses to written questions ....................................................................... 73 

Giles, Robert ............................................................................................................. 8 

Prepared statement .......................................................................................... 37 

Responses to written questions ....................................................................... 85 

Wilson, Tim .............................................................................................................. 6 

Prepared statement .......................................................................................... 56 

Responses to written questions ....................................................................... 100 

APPENDIX 

Items submitted for the record ............................................................................... 23 

(1) 

THE PATENT TRIAL AND APPEAL BOARD: 

EXAMINING PROPOSALS TO ADDRESS 

PREDICTABILITY, CERTAINTY, AND FAIRNESS 

WEDNESDAY, JUNE 22, 2022 

UNITED STATES SENATE, SUBCOMMITTEE ON INTELLECTUAL PROPERTY, COMMITTEE ON THE JUDICIARY, Washington, DC. 

The Subcommittee met, pursuant to notice, at 2:42 p.m., in Room 

226, Dirksen Senate Office Building, Hon. Patrick J. Leahy, Chair 

of the Subcommittee, presiding. 

Present: Senators Leahy [presiding], Coons, Tillis, and Blackburn. 

Also present: Senator Cruz. 

OPENING STATEMENT OF HON. PATRICK J. LEAHY, 

A U.S. SENATOR FROM THE STATE OF VERMONT 

Chair LEAHY. Okay, we have votes going on, and so Senators will 

be coming in and out. I’ve talked with Senator Tillis about this, 

and we’re going to try to keep the hearing going, even if some will 

have to leave. 

We’ve worked hard on this issue of patents. They do drive our 

economy. We know that. It allows innovators to do what they do 

best, while knowing they can get the benefits of their hard work. 

Good-quality patents give small businesses and inventors certainty 

they can defend their inventions from others who didn’t put in the 

work, and without the rights guaranteed by patents, the engine of 

our economy, American innovation, simply would not be as strong. 

Given the power that a patent conveys, a patent issued by the 

U.S. Patent and Trademark Office needs to actually represent innovation. There are serious consequences for our entire economy 

when the system permits enforcement of a patent that never 

should’ve been issued. Vermonters and small businesses all across 

the country have suffered these consequences. 

Several years ago, an out-of-state company asserted poor-quality 

patents against dozens of Vermont small businesses and nonprofits, demanding payments each and every time a business 

scanned a document and then emailed it. It was a scam, an egregious abuse of our patent system. That’s why I’m proud of the work 

we did in 2011 to pass the Leahy-Smith America Invents Act, the 

bipartisan piece of legislation, bicameral, the first real update of 

our patent laws in 50 years, but it allowed the public to take their 

concerns about a questionable patent back to the Patent Office for 

a more in-depth review. 
2 

Through proceedings created by the Leahy-Smith Act, the scams 

to email patents were brought back to the Patent Office. They were 

invalidated. They allowed Vermont companies and nonprofits to 

continue their work. The Patent Trial and Appeal Board, the 

PTAB, created under the act, resolved those disputes in a way 

that’s faster; more importantly, less expensive, more accurate than 

a district judge, because the disputes were overseen by trained patent judges under a strict deadline. 

In the past decade of PTAB’s existence, the public has brought 

thousands of patents to the Patent Office’s attention. The Patent 

Office has expertly addressed validity, reinforcing the strength of 

high-quality patents but then canceling ones that never should’ve 

been issued. As with any big new undertaking, that success has 

brought new questions on all the enacted laws, particularly those 

dealing with technologies and science, especially in an era when 

that is evolving so fast. They need to be revisited. They have to be 

updated from time to time. 

That’s why I’m thrilled that Senator Tillis, as the Senior Republican on this Committee, along with Senator Cornyn and I, just last 

week introduced the PTAB Reform Act of 2022. We had feedback 

from participants in the patent system, including the public broadly and businesses across the country, covering a vast array of sectors and technologies. We looked at concerns from all comers. The 

bill is a product of hard work and compromise and addresses the 

biggest concerns of stakeholders from across the spectrum. It can 

update the PTAB. 

It’s important for a number of reasons. One question, of course: 

If a petition to the Patent Office to review a patent is meritorious 

on its face, should the Patent Office decline review anyway? Many 

believe all meritorious patents should result in a review. Many others believe it’s heresy to patent owners to have the same members 

of the public able to request review of the same patent repeatedly 

over time, when the patent owner has already defended the patent. 

We addressed these issues, as we often do in the Senate, through 

compromise. 

While meritorious petitions to review a patent should generally 

be granted, serial petitions, over time, from the same or related 

parties will not be allowed. Another big question: Who has the authority to make a final validity decision? Civil servant PTAB judges 

or the politically appointed Director of the Patent Office? 

While the Supreme Court last year resolved that the Director is 

the final decision-maker, it left open the question of how the Director makes that decision, but we ensure that it must be open to the 

public. The public has a right to know. We should not have a patent system where any given PTO Director could influence and decree decisions behind the scenes, without transparency. 

We also addressed the concern raised by small business patent 

owners. They had to pay to apply for a patent, and they may have 

to pay again to defend at the PTAB. It’s expensive. We want to 

help small businesses shoulder the expense. Thus, if a small entity 

has not already decided to take the expense of litigation, the Patent 

Office will cover the expense of a PTAB proceeding for that small 

business. Now, we have an extraordinary group of witnesses here. 
3 

I’m excited to hear about their experience, what’s worked, what 

needs to change, how PTAB reform will fit into the overall picture. 

GlobalFoundries is one of Vermont’s biggest employers. It 

evolved from IBM, which it had been there. David Cain is a 

Vermont attorney. He’s been involved in several PTAB proceedings. 

He’s highly respected in the State of Vermont. He can tell us about 

his experiences in the semiconductor chip manufacturing industry. 

I know that Senator Tillis and Senator Cornyn share my belief 

that the patent system should work for all Americans, all sectors. 

I want to leave behind an even stronger patent system than what 

we were able to get through in the earlier patent bill, which I had 

the pleasure of working on. Senator Tillis, you’ve spent so much 

time on this. I’ll yield to you. 

STATEMENT OF HON. THOM TILLIS, 

U.S. SENATOR FROM THE STATE OF NORTH CAROLINA 

Senator TILLIS. Thank you, Mr. Chairman. Thank you for holding the hearing today on the PTAB. I also want to thank you for 

your leadership and your continued partnership. It’s allowed us to 

forge a path forward on this and many other important intellectual 

property related matters. You’re a good friend, and next Congress 

I’m going to miss you as a partner. 

Before I pass things over to our witnesses, I would like to provide 

some important context and history to what we’ll be discussing 

today. It should come as no surprise that the Chairman and I believe in the need for strong, reliable, predictable IP rights—something that we’ve championed for many years. When I speak to IP 

rights, I speak to all forms of IP: patents, trademarks, copyrights, 

and trade secrets. It’s because of this shared belief—why we’re convening this important hearing today. 

As anyone who follows my work in the Subcommittee knows, I’m 

a firm believer in strong patent rights, and they’re paramount to 

incentivizing American innovation, which fuels the growth of our 

country’s prosperity and economy. This growth, in turn, allows the 

U.S. to maintain its global dominance across numerous industries 

and its reputation as the world’s leading innovator. 

However, in order for patent rights to be truly strong, they have 

to be based on high-quality patents, which have undergone thorough review and meet all the requirements of patentability. That’s 

why I’ve made improving patent quality and patent examination 

process one of my key priorities. As we all know, no matter how 

much we improve the front-end examination process, low-quality 

patents, especially in business and software fields, often do get 

issued. That’s why the PTAB, the subject of today’s hearing, exists. 

It exists as an alternative to district court litigation and as a mechanism to weed out low-quality patents. 

The PTAB, when properly constructed and administered, can 

play a vital role in our innovation economy. Unfortunately, for far 

too long the PTAB hasn’t been fair—hasn’t been a fair and impartial forum that served its critical purpose. Instead, in years past, 

it’s been a literal death squad for patent rights and has been 

weaponized by various companies to potentially bankrupt future 

competitors. 
4 

Thankfully, during the last administration a number of policies 

were put into place by my good friend Director Iancu to crack down 

on this abuse, policies which I strongly support. Andrei’s reforms 

ensured that the PTAB was a truly fair and impartial forum for all 

parties and not simply a place where patents go to die. That’s why 

I’ve long supported trying to codify some of these reforms, because 

as good job—as good a job as Andrei did, a future PTO Director can 

undo all of those positive changes with the snap of a finger. That 

kind of volatility in how the PTAB functions, the lack of certainty, 

doesn’t create the type of innovation ecosystem that we need to ensure long-term research, development, and investment. 

My desire to provide long-term stability, certainly, at the PTAB 

and to permanently end some of the abuses that we’ve seen in the 

past is why I partnered with Senator Leahy to introduce compromise legislation, which has required both of us to sacrifice some 

of our priorities. The PTAB Patent Reform Act of 2022 ensures that 

inter parties disputes remains an alternative to litigation, while affording predictability, certainty, and fairness to the process for both 

the petitioners and the respective patent owners. 

The bill statutorily imposes the Phillips claim interpretation 

methods, stops abuse by serial petitioners, ends gamesmanship by 

Big Tech companies, adds greater transparency to decisions rendered by the PTAB, and prevents wild swings in terms of patent 

validity determination by providing consistently—consistency 

throughout the inevitable change of the USPTO leadership. I’m 

also particularly proud of the fact that this bill will provide financial support for individual inventors, small entities, and micro-entities to hold patents subject to a petition. This bill is a direct result 

of countless iterations and close collaboration with a diverse array 

of internal and external stakeholders. 

Let me be clear. This bill isn’t perfect, and it isn’t final. I’m pretty sure that when it’s final, it won’t be perfect, but it should be 

able to address most of the concerns that we have across valid 

opinions at either end of the spectrum. This is the beginning of a 

process. I hope everyone will take this opportunity to work with us 

to provide long-term certainty and stability at the PTAB. 

All ideas can and should be on the table. If you don’t like compromise—the compromise we’ve come up with, tell us, but don’t 

just tell us you hate it. Give us ideas on how to write a better bill 

that will, in your opinion, be a better compromise. 

Again, Mr. Chairman, I thank you for holding this hearing. I look 

forward to the testimony from the witnesses, but if I may, as a 

point of privilege, I’d like to take a brief moment to formally welcome and introduce the newest Member of my team, Peter-Anthony 

Pappas, who I have nicknamed ‘‘Juice.’’ I won’t get into the details. 

Peter’s back here behind me. 

Peter joins us on detail from the USPTO, where he’s a supervisory patent examiner. Peter also previously served as a special 

advisor to my good friend Dr. Iancu, when he was PTO Director. 

He brings a wealth of knowledge to this process, and he’ll be an 

integral part of the discussions we’ll have after this hearing. Welcome to the team, Peter. 

Chair LEAHY. Thank you, Senator Tillis. I know how hard you’ve 

worked on this. Senator Coons has worked on this, Senator Cornyn. 
5 

We look forward now to hearing from David Cain, please. I’ve already mentioned that he serves as patent counsel and legal director at GlobalFoundries, the largest semiconductor foundry, manufacturer with headquarters in the United States. He’s based at the 

Essex Junction, Vermont facility. JD from Pepperdine, engineering 

degree from Clarkson University, and highly respected in our 

State. Go ahead, Mr. Cain. 

STATEMENT OF DAVID CAIN, DIRECTOR OF 

INTELLECTUAL PROPERTY, GLOBALFOUNDRIES, 

BURLINGTON, VERMONT 

Mr. CAIN. Thank you. Good afternoon, Chairman Leahy, Ranking 

Member Tillis, and distinguished Members of the Subcommittee on 

Intellectual Property. Thank you for this opportunity to speak with 

you today about the important issue of PTAB reform. 

As Senator Leahy said, GlobalFoundries is one of the world’s 

leading semiconductor manufacturers, with production in the 

United States, Singapore, and Germany. Our feature-rich chips enable nearly every sector of the global economy. Of the five at-scale 

semiconductor foundries in the world, GF is the only one 

headquartered in the United States and is a proud, longstanding 

partner and supplier to the U.S. Department of Defense. 

The semiconductor industry today involves producing billions of 

transistors on a single chip and requires the most technically complex manufacturing in the world. GF’s success in this industry is 

born out of its innovation. GF’s U.S. sites have produced three of 

the world’s top 100 most prolific inventors of all time. Because of 

the RF technology innovation developed at GF’s Vermont facility, 

the smartphone in your pockets almost certainly contains a GFmade chip. Due to the importance of innovation to GF and the critical nature of the chips we manufacture, America’s patent system 

is exceptionally important to us. 

As an owner of more than 7,000 U.S. patents and as a U.S.-based 

manufacturer, GF seeks a fair and balanced IPR system for both 

patent owners and for petitioners. We count on the patent system 

to protect our investment in innovation and to prevent our business 

from being harassed by poor-quality patents. Every year, GF faces 

infringement claims for patents that had no business being issued 

in the first place, which needlessly hurts our ability to supply semiconductors to the world. The cost of each semiconductor patent litigation defense can easily reach $5 million and beyond. The resources directed toward such litigation could otherwise be invested 

in capital expansion, R&D, both creating further jobs. 

By passing the Leahy-Smith America Invents Act over a decade 

ago, Congress made huge progress in curtailing the abusive patent 

practices hurting American industry. Allowing for efficient patent 

review by the technically trained and patent-savvy judges of the 

PTAB provides an efficient and effective tool to defend against 

poor-quality patents. Bad patents can be dealt with for a fraction 

of the cost of litigation, while good patents can quickly be validated. Therefore, GF strongly supports efforts to improve the IPR 

system. 

The recent Fintiv-factor discretionary denial practice has limited 

the availability of IPR review and inserted unfairness into the sys-
6 

tem. For example, defendants can be—can be prevented from challenging a poor-quality patent at the PTAB merely because the district court sets an unrealistically early trial date that will rarely, 

if ever, be met. Faced with potential denial, defendants must rush 

to prepare a petition and may not have sufficient time to search 

for prior art and may be estopped from relying on other prior art 

later. 

These early petitions filed within a few months of a district court 

complaint can create extra work for the PTAB itself. Such petitions 

generally occur before the patent owner has identified which patent 

claims it will be asserting, as well as how broadly it will be construing those claims. Consequently, the PTAB will need to spend 

time reviewing claims that may never be asserted and may construe them for purposes of validity more narrowly than the patent 

owner will in their infringement case. 

The proposed PTAB Reform Act resolves these issues by solidifying the 1-year window for bringing IPR petitions, while also ensuring that petitioners are not allowed to bring serial challenges. 

These common-sense proposals provide fairness to both patent owners and petitioners. GF appreciates Congress’s commitment to fostering American innovation and strengthening the greatest patent 

system in the world. Thank you very much for allowing me to testify and share GF’s perspective today. 

[The prepared statement of Mr. Cain appears as a submission for 

the record.] 

Chair LEAHY. Thank you very much. Mr. Wilson. I would actually note that Mr. Wilson is Director of Patents in the legal division 

at SAS Institute, Inc., the data analytic software company. He 

began his legal career as a patent and intellectual property litigator with the firm of Jones Day, has a juris doctor’s from Syracuse 

University College of Law, bachelor’s degree from Pennsylvania 

State University. Mr. Wilson, please go ahead, sir. 

STATEMENT OF TIM WILSON, HEAD OF PATENTS 

AND INTELLECTUAL PROPERTY LITIGATION, 

SAS INSTITUTE, INC., CARY, NORTH CAROLINA 

Mr. WILSON. Thank you, Mr. Chairman. My name is Tim Wilson. 

I am patent counsel at SAS Institute. I also am an adjunct Professor at the Southern University College of Law, a great historically Black college and university law school, as well as I’m president of the Patent Quality Education and Training Foundation, 

where we try to help improve diversity in patent law through working with the Thurgood Marshall College Fund to help support 

HBCU graduates to getting into patent law. 

I’d like to thank Chairman Leahy, Ranking Member Tillis, and 

the Members of this Subcommittee for holding this hearing to explore potential reforms to the AIA. I’d specifically like to thank 

Chairman Leahy and Senator Cornyn for their leadership during 

the original negotiations with respect to the AIA. Because of their 

leadership, there was a great spirit of compromise. Even though it 

was often a difficult negotiation, it led to the most significant reform of the patent system since 1952. 

The American Invents Act has largely done its job by leading to 

a large decrease in the number of patent litigations. In 2011, we 
7 

had almost 8,000 patent litigations, and that has been brought 

back to between 3 to 4,000 annual patent litigations, and I think 

that’s a great thing. In a pre-AIA case that SAS faced, a company 

called Juxtacomm—they were a failed company that was left with 

a single patent who got funding from external sources to sue dozens and dozens and dozens of companies that actually made things, 

costing all of those companies millions of dollars and costing SAS 

between $5 and $8 million dollars just to get that patent thrown 

out by a judge on summary judgment—a huge waste of resources. 

As a holder of over 600 U.S. patents, SAS has always been interested in improved patent quality. We have a wide variety of inventors at SAS who work on the cutting edge of software technology. 

The two significant elements of the AIA discussions earlier were 

patent litigation reform and the creation of the PTAB. At some 

point during the negotiations, it became obvious that no meaningful con—no meaningful reform or compromise could be made related to patent litigation. It was a little disheartening to lose that 

element, but we continued to work together under the Chairman’s 

leadership, and the result, many stakeholders working together, 

was the PTAB. 

Recently, the PTAB decided the Fintiv case, which allowed the 

PTAB not to institute a petition that would otherwise meet the 

threshold for institution. That would be based on a complex set of 

balancing additional factors. This decision undermines the simple 

test that Congress set forth in the AIA and leads to potentially substantial uncertainty to the parties because good petitions may be 

denied. It also negatively impacts the public because invalid patent 

claims are arbitrarily allowed to survive review. As a patent owner, 

SAS appreciates that there may be abuses of the system by socalled serial petitions. We don’t believe that this is a pervasive 

problem, but we’re happy to participate in finding a solution to that 

problem, as well. 

It seems that we are once again looking to Chairman Leahy, 

Ranking Member Tillis, and Senator Cornyn for leadership on another PTAB reform act. I think it’s great to use the PTAB Reform 

Act as a framework to find a good compromise. Thank you, and I 

look forward to your questions. 

[The prepared statement of Mr. Wilson appears as a submission 

for the record.] 

Chair LEAHY. Thank you very much. I should note that Senator 

Tillis left to vote, and I don’t know what—— 

Chair LEAHY. Okay. We’ll be going back and forth. We’ll keep 

the—when somebody comes back, and then I can go and vote. 

Robert Giles is Senior Vice President and Chief IP Counsel at 

Qualcomm, Incorporated, where he’s responsible for designing and 

developing their Google IP portfolio. Received his JD from the 

George Washington University, bachelor’s from the University of Illinois, Urbana. Mr. Giles, it’s good to have you here. Please go 

ahead. 
8 

STATEMENT OF ROBERT GILES, SENIOR 

VICE PRESIDENT AND CHIEF INTELLECTUAL 

PROPERTY COUNSEL, QUALCOMM INCORPORATED, 

INNOVATION ALLIANCE, SAN DIEGO, CALIFORNIA 

Mr. GILES. Thank you very much. Chairman Leahy, Ranking 

Member Tillis, and Members of the Subcommittee, my name is Bob 

Giles, and I’m Senior Vice President and Chief Intellectual Property Counsel at Qualcomm. I appreciate this opportunity to testify 

on behalf of Innovation Alliance, a coalition of research and development based technology companies that believe a robust patent 

system is critical to U.S. technological leadership and our economic 

and national security. 

For decades, the constitutionally protected U.S. patent system 

has secured our global leadership position in incentivizing the research and development needed to invent groundbreaking technologies; however, in recent decades, our position has been threatened by judicial and legislative actions that weaken patent rights. 

To maintain the United States’ strategic interest, the PTAB must 

be reformed to achieve its statutory purpose as an efficient alternative to district court litigation. The STRONGER Patents Act 

would promote balance and fairness at the PTAB and would advance American innovation leadership. The PTAB Reform Act 

would do the opposite by weakening the U.S. innovation ecosystem. 

Robust patent protections are foundational to the U.S. economy 

and national security for two reasons. First, they serve to appropriately incentivize companies to invest in costly and risky longterm R&D needed for leadership in emerging technologies such as 

AI, IoT, 5G, and 6G. Second, patent rights facilitate commercialization, collaboration, and follow-on innovation by granting exclusionary rights in an invention for a limited time in exchange for 

public disclosure. 

Patent protections assure that rights to practice an invention can 

be readily bought, sold, or licensed, allowing patent owners to reinvest those revenues in further R&D. Despite the critical role that 

patents play in the U.S. economy, patents have been under attack 

in recent years by actions that impose substantial obstacles on inventors. Chief among these is how the PTAB has evolved. 

By permitting any party to challenge and invalidate a duly 

granted patent by a mere preponderance of the evidence, the PTAB 

has led to gamesmanship and the invalidation of patents at an 

alarmingly high rate. USPTO data show that the PTAB institutes 

IPR in nearly two-thirds of petitions filed. The data show—the data 

further show that once IPRs are instituted, they result in cancellations of at least 1 claim in 80 percent of the time and cancellation 

of every claim 60 percent of the time. These are high invalidation 

rates led—these high invalidation rates have led one former judge 

on the Federal circuit to call the PTAB a patent death squad, responsible for killing patent rights. 

Infringers have used the PTAB to harass and intimidate small 

companies. One example is Centripetal, an inventor of cybersecurity technology. Centripetal initially attempted to partner with 

Cisco and disclosed its patented technologies. In the end, the relationship broke down, but Cisco implemented Centripetal’s technology anyway. Centripetal had to resort to sue Cisco to defend its 
9 

patents in court. The court found that Cisco willfully infringed, ordering Cisco to pay $1.9 billion in damages. 

At the PTAB, Cisco sought to strengthen its negotiation position 

against Centripetal by challenging 9 patents, using 14 IPR petitions. The PTAB invalidated all of the claims of six of the patents 

and some of the claims of another patent—a much higher invalidity 

rate, as would be expected in district court. 

The Innovation Alliance urges Congress to pass the STRONGER 

Patents Act to strengthen U.S. competitiveness and global leadership. STRONGER would, one, empower U.S. inventors to protect 

their patent rights against infringers by implementing a commonsense framework for granting injunctions and overhaul the PTAB 

to ensure its proceedings are conducted in a fair and consistent 

manner, in line with Federal courts. Importantly, for example, 

STRONGER would prevent petitioners from filing a subsequent 

IPR petition on the same patent claim if the petitioner failed to 

show a reasonable likelihood of success in its first IPR. 

In contrast, the Innovation Alliance urges Senators to oppose the 

PTAB Reform Act because it would further tilt the playing field toward infringers. Specifically, the PTAB Reform Act eliminates the 

Fintiv doctrine, which allows the PTAB to apply discretion to deny 

institution of a petition in order to prevent abuse, promote efficiency, and conserve resources of the USPTO and individual parties. Further, it permits challengers to file an unlimited number of 

petitions against a single patent. It would also create a legally 

questionable back door, giving standing to parties who would not 

otherwise have it. These changes harm inventors and move the 

patent system in the wrong direction. 

Thank you again for inviting me to testify today. The Innovation 

Alliance stands ready to work with you to ensure that U.S. patent 

law promotes economic and national security. 

[The prepared statement of Mr. Giles appears as a submission 

for the record.] 

Chair LEAHY. Why, thank you, Mr. Giles. Professor Anderson is 

a professor of law at American University. His academic articles 

have been cited by the Supreme Court, the U.S. Court of Appeals 

for the Federal Circuit, and The New York Times. Professor Anderson clerked on the Court of Appeals at the Federal Circuit, practiced patent litigation at Latham & Watkins. I’ve spent a lot of 

time, not as an appellant but as a friend of many of the members 

of the Federal Circuit Court of Appeals, as the Professor probably 

knows. He received a JD from Harvard Law School, bachelor’s degree in physics from the University of Utah. Professor, please go 

ahead, sir. 

STATEMENT OF JONAS ANDERSON, PROFESSOR 

OF LAW, WASHINGTON COLLEGE OF LAW, 

AMERICAN UNIVERSITY, WASHINGTON, DC 

Professor ANDERSON. Good afternoon, Senators. Thank you, 

Chairman Leahy, Ranking Member Tillis, and the other Members 

of the Subcommittee for the invitation to testify. It’s an honor to 

testify on the predictability and fairness of proceedings at the Patent Trial and Appeal Board. 
10 

I’m a professor at American University, Washington College of 

Law, and my areas of expertise are in patent law, Federal courts, 

and intellectual property. A specific focus of my scholarship has 

been directed toward Federal courts, Federal district courts who 

seek to attract patent cases to their courtrooms. This court competition for patent cases I believe is a threat to the judiciary’s legitimacy, not just in patent law but across other areas of Federal law, 

as well. It is with this concern in mind that I will focus my testimony today. 

I will begin my testimony by briefly describing how the PTAB’s 

Fintiv ruling has been used by Federal district court judges who 

seek out patent cases and how that active solicitation of patent 

cases threatens to erode public confidence in the judiciary. In 2021, 

roughly 25 percent of all patent cases were heard by a single Federal district court judge. As Chairman Leahy and Senator Tillis reference in their November 2021 letter to Chief Justice Roberts, this 

extreme concentration of patent cases is troubling for the judiciary. 

I agree with Chairman Leahy and Senator Tillis’s views on the current problematic state of patent litigation. This extreme concentration of patent cases and judges actively encouraging plaintiffs to 

file in their courtrooms undermines the public perception of fairness in judicial proceedings. 

This hearing is about the PTAB. I believe the PTAB has been a 

great benefit for the U.S. patent system by providing a cost-effective means of challenging the validity of patents. This leads to a 

strengthening of the competitive landscape and is a positive for the 

American public. I also believe that the Fintiv decision of the PTAB 

has led to increased uncertainty. As Senator Tillis said in his November 2021 letter to the Director of the PTO, it has led to harmful 

incentives for forum shopping and inappropriate judicial behavior. 

Furthermore, just this morning, the PTO issued guidance on the 

application of Fintiv that limit Fintiv’s applicability. Today’s PTO 

guidelines are welcome, on the whole, but I would suggest that the 

PTO ought to rescind the Fintiv rule entirely. 

The PTAB’s Fintiv rule is based on the laudable notion that the 

PTAB ought not institute review of a patent if a district court or 

the ITC is going to issue a ruling on the patent’s validity at an earlier time. The current six-factor test provides virtually no certainty 

of outcome and, worse, is influenced by plaintiffs who can strategically, in an effort, file their cases in an effort to avoid PTAB review. Plaintiffs who want the PTAB—to avoid PTAB review can 

choose to file their case in a district court that has a reputation for 

not issuing stays and setting very early trial dates. These dates are 

not good indicators of when a district court will issue a decision. 

A recent study found that 94 percent of those trial dates relied 

on by the PTAB in Fintiv turn out to be inaccurate. The Fintiv ruling forces the PTAB to analyze the trial dates of district courts and 

to grapple with comparing the duplicative effort between the district court and the PTAB. Furthermore, it forces parties to waste 

attorney hours arguing about the six cumulative factors. A much 

better and easier solution would be to eliminate Fintiv entirely and 

limit the PTAB’s institution decision to those factors that are enumerated by Congress, including the 1-year ban. 
11 

Eliminating Fintiv would also have the benefit of eliminating the 

possibility that district courts that—set aggressive trial dates in an 

effort to preclude PTAB review. The PTAB would be freed from the 

labor-intensive analysis involved in Fintiv, and district courts 

would not be able to use trial dates in an effort to avoid PTAB review and thereby attract patent plaintiffs. Thank you for your time, 

and I look forward to your questions. 

[The prepared statement of Professor Anderson appears as a submission for the record.] 

Chair LEAHY. Thank you very much. I’ll begin with Mr. Cain. I 

think everybody knows there’s currently a chip shortage that’s affecting all Americans, as even car manufacturers of popular vehicles have them sitting in a—their lot just because they are missing 

a few chips. Chip manufacturers like GlobalFoundries was, I believe, the exceptional facility in our home State—components, 

phones, cars, computers. 

Patents are an important part of your business. I understand 

GlobalFoundries has over 7,000 U.S. patents. When we passed the 

Leahy-Smith America Invents Act 11 years ago, we wanted to 

make sure the Patent Office could take a second look at patents 

that are of particular relevance to the public and review them and 

so on. In your experience, Mr. Cain, has the PTAB been a fair adjudicator of patent validity? Make sure you—— 

Mr. CAIN. Thank you, Senator. Certainly. We’ve very much been 

happy with the PTAB, both as a patent owner and as a petitioner. 

As you said, there’s an extreme amount of innovation going on at 

our facilities. Every chip we put out must have hundreds, if not 

thousands, of pieces of innovation inside of it, and we do count on 

the system to protect that innovation. We’ve seen very fair and 

very reasoned decisions coming out of the PTAB as to the validity 

of those patents. 

Chair LEAHY. Do you consider the PTAB judges preferable to an 

ordinary court and jury? 

Mr. CAIN. PTAB judges are specially positioned with their technical background and the fact that they live and breathe patent 

law every day. It is their bread and butter, novelty and non-obviousness. They have a better look at such issues than almost anyone 

in the world. 

Chair LEAHY. I had a dear friend of mine, Judge Linn, who now 

has senior status within the Federal circuit, and I remember talking to him about some of these patent cases and realized this is a 

specialized area. Let me ask Professor Anderson: I’ve always 

thought that the PTAB can be a forum predictable and fair, but a 

previous Patent Office Director began using the discretion that’s in 

the Patent Act to deny review of patents based on the status of ongoing litigation in district courts, without regard to the merits. 

That kind of discretionary denial injected uncertainty, I believe, 

into the patent system. 

I understand that just today Director Vidal—and we mentioned 

this—released new guidance cutting back on the impact of that policy. I believe the statute should be as predictable as possible. Professor, my understanding is projected trial dates are inaccurate 94 

percent of the time. A discretionary denial policy built around this, 
12 

I feel, would cause uncertainty and unpredictability in the patent 

system. Do you agree? 

Professor ANDERSON. Yes, Chairman, I definitely agree. Even 

worse than that, I think there’s some gamesmanship involved in 

where you file your case in order to avoid the PTAB. I mentioned 

there is one district court that has 25 percent of patent cases, and 

one of the appeal to plaintiffs, I gather, is that filing in that courtroom makes it less likely that PTAB will review your patent, under 

the Fintiv case. That’s why I think this act goes a long ways—and 

the PTO’s actions this morning go a long ways—toward limiting 

that discretion. 

Chair LEAHY. In fact, going on that, Senator Tillis and I wrote 

to the judicial conference about the ability of patent owner plaintiffs not only to pick the venue but to pick the precise judges. I 

think what you’re referring to is a district court judge’s promise to 

patent owner plaintiffs the trial date will be soon enough that they 

can deny them—discretionary denial at the PTAB. Twenty-five percent of the district court patent litigation in this whole country is 

being handled by that single judge. Does that skew the patent litigation in this country? 

Professor ANDERSON. Yes. I think having 25 percent of the patent 

cases or any type of case before one judge is not the system that 

the Constitution or Congress designed. I have been given that— 

think having that many cases, that much power in one judge’s 

hands is not something we want to encourage, for sure. 

Chair LEAHY. Thank you. I’m going to go and vote. I want to turn 

it over to Senator Tillis, who knows this Committee inside and out. 

Thank you. 

Senator TILLIS [presiding]. Thank you all, again, for being here. 

I worked in research and—oh, and it’s especially good to see somebody representing SAS here. Jim Goodnight is truly an American 

success story, and SAS is actually a product that I had some involvement in the implementation of, back in my days at 

Pricewaterhouse. Speaking of my days at Pricewaterhouse, anytime 

I have a thorny subject that I’m trying to sort out with my business 

clients, I try to get people into the room, all of whom I respect and 

all of whom I want to produce a good outcome for the company and 

now for this bill. I ask them a simple question: ‘‘Give me a red, yellow, green.’’ 

Just going down the line, we’ll start with Mr. Cain. Tell me what 

you think is good, that is, green; yellow, needs work; red, a problem. Then we’ll go down the line. That gives y’all time to prepare. 

Mr. CAIN. Are you asking what’s good in the proposed bill? 

Senator TILLIS. Yes. Red, yellow, green. What’s good? You don’t 

even have to talk about the good. Give me the yellow and the red. 

Mr. CAIN. The worst case is yellow. This is a move in the right 

direction, across the board. Much more green. 

Senator TILLIS. Good. Mr. Wilson. 

Mr. WILSON. Yes, I would say that, you know, the bill has not 

everything we want. You know, if it was our choice, we would remove the discretion from the Director and from the PTAB not to 

institute good petitions, but I think there’s a fair compromise here 

amongst all of the interests and, like you said, putting everyone in 

the room is probably the best thing to do. We support this process. 
13 

We think, you know, all of the compromises that have occurred so 

far have been positive, and, you know, I think yellow is probably 

where we are across the board. 

Senator TILLIS. Mr. Giles. 

Mr. GILES. Thank you very much. First, I’d like to express our 

appreciation for being involved in this discussion. It’s a very worthwhile topic, and we are very dedicated to making sure that the patent system is as strong as it possibly can be. It is—as you mentioned in your opening remarks, it is foundational to the American 

economy and to innovation throughout this country. 

There are—I do believe there has been some compromise in this 

bill. The adoption of the Phillips standard for claim construction, 

to unify that across the district courts and the PTAB, I think is a 

step in the right direction. Overall, we look to the provisions that 

are set out in the STRONGER Patents Act that would be a little 

bit more fair and balanced with the patentee in mind. I would say, 

you know, if you’re going to force me to say red, yellow, green, I 

would say it’s yellow, because I do believe the process is moving, 

but we still stay in line with the STRONGER Patent side. 

Senator TILLIS. Mr. Anderson. 

Professor ANDERSON. Thank you. I would say this is mostly a 

green bill. I am in favor of much of what’s in here. I would like— 

Mr. Wilson said—would like to see certain other things in the bill 

that aren’t there, but this is a compromise, and I recognize that, 

and this is a good bill, overall. 

Senator TILLIS. I just want to restate what I said in the opening 

statement. Before I joined Pricewaterhouse, I worked in research 

and development at Wang Laboratories up in Boston, so we were 

constantly iterating through ideas and refining the product. We 

used a simple—similar methodology for engaging stakeholders. 

Anyone out there who’s saying, ‘‘Boy, I wish they’d mention that 

red item,’’ I’m telling you, ‘‘Come to the table and let us examine 

a way that we can make this a win-win, but we have to make 

progress.’’ 

I think with that, I’m particularly interested, after the hearing, 

if you could give some more meat around the bones, on the yellows, 

to get them to green or blue-green. Help us do that. 

Give us feedstock for future discussions that we’ll have. I’m committed to engaging as many people as possible. Hopefully we can 

satisfy some. We won’t be able to satisfy all, but that’s the nature 

of the work that we do up here. Senator Coons. 

Senator COONS. Thank you, Senator Tillis. I’d like to thank you 

and Chairman Leahy for the chance to work with you. I appreciate 

your opening comment that this bill isn’t perfect or final but the 

beginning of a process, and I look forward to working with you on 

that. 

I think reforms that position IPRs as an efficient alternative to 

district court litigation, which was really the original core intent of 

the AIA, are needed, but looking over this bill, I’m concerned that 

eliminating the PTO’s ability to consider co-pending litigation in 

deciding whether to institute is a step in the wrong direction, because I think hard-wiring parallel proceedings into the AIA increases costs by encouraging duplicative proceedings. In my view, 

that doesn’t benefit the public or the patent system. Any statutory 
14 

provision to address serial petitions also has to adequately protect 

versus repeated attacks on potentially valid patents. 

As you know, I’m committed to the STRONGER Patents Act, 

which I’ve worked on for a number of years, and it would limit the 

ability to obtain multiple and repeated AIA review proceedings. I 

appreciate the efforts of my colleagues and friends, Senators Leahy 

and Cornyn and Tillis, to bring together stakeholders and explore 

these thorny issues and try and come to a workable compromise, 

and I look forward to continuing to work with you to strengthen 

patent quality, the patent system, and to come up with a workable 

solution. Mr. Giles, if I could, just at the outset, what are the benefits to the public and the patent system of evaluating concerns 

about redundant and duplicative proceedings in deciding whether 

or not to institute an AIA trial? 

Mr. GILES. Thanks very much. The Fintiv doctrine allows the 

PTAB to review whether or not its resources are beneficial to the 

process of resolving the dispute, and if you were to remove that— 

that discretion from the PTAB, you’re much more likely to have 

parallel proceedings going on at the same time: one in district court 

and one in the PTAB. The way that the system is set out right 

now, especially if you remove the Fintiv discretion on behalf of the 

PTAB, that will astronomically increase costs for small businesses 

to be able to assert their patent rights. 

It’s not easy to assert a patent in district court, it’s not easy to 

defend a patent at the PTAB, and it’s incredibly costly to do both. 

To layer on a burden of having to do that in two jurisdictions at 

the same time is very detrimental, to—especially to small companies that are trying to assert their patent rights. 

Senator COONS. Thank you. Mr. Cain, why don’t we pursue that 

line? In terms of the interests of small inventors, in particular, 

what’s the benefit to them if accused infringers can pursue patentability issues in both an IPR and district court proceeding at the 

same time? 

Mr. CAIN. Thank you. Specifically for small inventors? One of the 

really thoughtful sections of this proposed bill calls for the IPR defense for such small entities to be handled, to be paid for by the 

PTO itself, which I think is an exceptional benefit. 

Senator COONS. How viable do you think that is, and what kind 

of cost do you think that might add up to? 

Mr. CAIN. I don’t know the statistics, but in my experience, it’s 

very—very infrequent that a small or individual inventor is not 

only asserting their patent but is brought into the IPR system. 

Senator COONS. If I could, Mr. Wilson, there was a recent article 

in Bloomberg that said Fintiv denials are falling. It concluded that 

review was denied this year in less than 10 percent of cases in 

which the board evaluated the Fintiv factors, and it cites petitioner 

stipulations not to raise the same patentability issues in litigation 

if the PTAB institutes. Would requiring the so-called Sotera stipulations make IPRs a genuine, a valid alternative to litigation? 

Mr. WILSON. I think that one has to remember where we are 

when a PTAB petition has been filed—that we’re not just, out of 

the blue, filing a petition; that it’s a company, generally, who has 

been sued in district court first. And, so, when you say it’s a small 

company, a small inventor, you know—I think, you know, you ig-
15 

nore, perhaps, the financing that those entities have, either 

through a, you know, opportunity through a law firm or financing 

through what has been happening more and more—are kind of 

hedge fund money. When you say it’s a small inventor, you see— 

I think that’s a little bit misstating who—— 

Senator COONS. This question wasn’t, in fact—— 

Mr. WILSON [continuing]. It’s—— 

Senator COONS. My question to you wasn’t limited to small inventors. It was just about whether or not the Sotera stipulations 

are narrowing the number of Fintiv denials. If you’ll forgive me, 

I’m near the end of my time. Mr. Giles, just one last question, if 

I might. What’s the largest concern you’ve heard from patent owners that they want to see addressed in a PTAB reform bill? 

Mr. GILES. I’d say the largest (audio malfunction) that’s applied 

by the PTAB. At the PTAB proceedings, the evidentiary level is— 

or the burden of proof is preponderance of the evidence, which is 

much lower than it is in district court, which is clearly convincing 

evidence. This burden of proof has led to the significantly higher 

rates of invalidation at the PTAB than in the district court. The 

two venues are not on an even playing field, and if the PTAB is 

acting as a alternative, faster forum for the district courts, it 

should also align with the burden of proof—should also align there. 

Senator COONS. Thank you. Thank you to all the witnesses. Mr. 

Chairman, Mr. Acting Chairman, thank you. 

Senator TILLIS [presiding]. On behalf of the Chair, Senator 

Blackburn. 

Senator BLACKBURN. Thank you. Thank you to each of you for 

being here today. Mr. Giles, let me come to you. Over the last several years, a lot of our innovators in Tennessee, people who are 

smaller innovators or maybe they work for a large corporation— 

what they’ve seen is Big Tech companies end up coming at them 

on patent infringement. How can we ensure that PTAB is not enabling the larger tech companies to steal patents from small businesses and innovators? 

Mr. GILES. The analysis that I’ve seen, the data that I’ve seen, 

is that the Big Tech companies are actually the biggest users of the 

PTAB process. It was a process that was put in place with smaller 

inventors in mind, but as the use of the PTAB has progressed, it’s 

become more and more used by larger corporations to actually put 

pressure on smaller companies to try to force them to lower their 

negotiating position and to possibly so that they could acquire 

them. I think it was Chief Judge Michel that said—Judge Michel 

that called out the fact that these large corporations are using the 

PTAB in order to pressure smaller companies with patents to—to 

not pursue their rights, to relinquish their rights to these large corporations that then usurp them and not have to pay the royalties. 

Senator BLACKBURN. Then, the some estimates that have seen 

PTAB invalidates partially or fully, I think, 84 percent of the patents it fully adjudicates—so, talk to me a little bit about the trend. 

Does it indicate a problem with the PTO when it is originally 

granting the patents, or why is it that there is a change of heart 

in that process? What could be causing that invalidation rate? 

Mr. GILES. The invalidation rate by the PTAB is much higher 

than one would expect, and part of that is because of the burden 
16 

of proof that the PTAB uses. They actually use the same burden 

of proof that’s used during the prosecution process, when the Patent Office is examining an original application, but they use that 

in a much—the patentee is in a much more limited position during 

the PTAB proceedings and is unable to—very likely unable to 

amend the claims. I know that there’s one amendment allowed, but 

those are granted very, very rarely. By having this much lower 

burden of proof during the PTAB proceedings, it leads to these 

higher invalidation rates. 

Senator BLACKBURN. Okay. Then how should that be fixed? What 

are the steps we should take? Because when I’m talking to people 

that are innovating for the auto industry; innovating for, you know, 

electric engines; innovating in the music industry for delivery systems; innovating in health IT—they’re frustrated. 

Mr. GILES. Yes. You know, Qualcomm is a large innovator, as 

well, and we are innovating in many of those same areas. What we 

can do to try to fix that is to—is to equate the burden of proof in 

the PTAB proceedings with that in district court. It should be using 

a clear and convincing evidence standard instead of a preponderance of the evidence standard, to more align—— 

Senator BLACKBURN. Okay, so then—— 

Mr. GILES [continuing]. With—— 

Senator BLACKBURN [continuing]. How does that invalidation 

rate at PTAB compare to the district court? 

Mr. GILES. In the district court—these are rough numbers. In 

district court proceedings, you can expect about 30 percent of the 

claims are invalidated. In the PTAB proceedings, it’s at least twice 

that high, if not more. 

Senator BLACKBURN. Yes. It’s higher. Thank you, Mr. Chairman. 

Senator TILLIS. On behalf of the Chair, Senator Cruz. 

Senator CRUZ. Thank you, Mr. Chairman, and welcome to each 

of the witnesses. Our Founders included in the United States Constitution the protection not just of property rights but also specifically of intellectual property rights. Article I, Section 8 makes clear 

Congress’s duty to ensure the exclusive right of inventors. In fact, 

the word ‘‘right’’ only appears in the Constitution in two places— 

first, and forgettably, in a subject heading describing the rights of 

Members of Congress. The second place it appears is in the context 

of patents, specifically that the Constitution guarantees the rights 

of authors and inventors to secure the benefits of their writings 

and inventions. 

I have some concerns when those rights, which often amount to 

a person’s livelihood, can be stripped away by unaccountable bureaucrats, not elected nor appointed by the President nor confirmed 

by Congress. I know that my colleagues have been working hard 

on the PTAB Reform Act, and I applaud them for their efforts. I’m 

sure they would agree that their bill is an important one. 

As such, I would hope they would likewise agree that any bill 

that would significantly alter the patent landscape, affecting billions and billions of dollars a year and implicating America’s national competitiveness and maybe even our national security, 

should be entitled to a full and fair markup hearing, not a truncated, lightly attended hearing, but a full markup hearing by the 

Full Committee. 
17 

When the stakes are so high as they are in the context of billiondollar patents, the cost of unintended consequences could be disastrous, not just for inventors and companies, but for America. I 

would urge my colleagues on the Judiciary Committee, particular 

Chairman Durbin and Ranking Member Grassley, to schedule a 

markup hearing on this bill for the Full Committee. 

I do have significant concerns with PTAB itself. Its origins are 

somewhat suspect. Google, which enjoyed an amazingly cozy relationship with the Obama White House, sent their deputy counsel 

and their head of patent strategy, Michelle Lee, to head the PTO 

and establish PTAB. Interestingly, PTAB became a very friendly 

forum for Google and other Big Tech firms to challenge the rights 

of inventors. For example, in 2020, PTAB found 84 percent of the 

patents it fully reviewed to be invalid, and many patent owners 

that successfully defend their patents against Big Tech in district 

court are immediately dragged before PTAB, where they have to 

defend it anew. 

Big Tech obviously loves PTAB. Eighteen of the top 20 filers in 

PTAB are Big Tech. Out of the PTAB petitions filed by the top 10 

petitioners during 2021, Samsung, Apple, Google, Intel, and Microsoft collectively accounted for 81 percent of all such petitions. It 

isn’t just Big Tech that loves PTAB. China has also found PTAB 

is a useful tool toward invalidating American patents. Chinese 

companies such as ZTE and Huawei are prolific petitioners at 

PTAB. 

Again, the risks of getting this wrong are severe. If this bill 

should move forward, let’s do so under the full light of day, subject 

to a full and fair markup hearing. The American people deserve no 

less. 

Mr. Giles, I want to ask you a couple of specific questions. Number one, do you agree with what I just said, which is the consequences of changing this system are significant and should be 

considered carefully for unintended consequences? 

Mr. GILES. Yes, I fully agree with that. The consequences concerning that system are real, and they could have a tremendous effect on the United States economy and national security. 

Senator CRUZ. You also urge the passage of the STRONGER Patents Act. In your judgment, how would this act ensure fair proceedings? 

Mr. GILES. There are many ways that are listed in the—— 

Senator CRUZ. Apparently the patent on the microphone is expired. 

[Laughter.] 

Mr. GILES. We can work on the communication technology, here. 

Okay. There are a number of things laid out in the STRONGER 

Patents Act. One is increasing the burden of proof for PTAB proceedings. Another is limiting the number of proceedings that a petitioner could bring. You can’t bring subsequent proceedings. You 

can’t bring multiple proceedings at the PTAB to attack—serially attack, and to continue to attack, patent rights and put smaller companies at a disadvantage. There are a whole number of other protections laid out in the STRONGER Patents Act. 

Senator CRUZ. Thank you. 

Chair LEAHY [presiding]. Mr. Tillis. 
18 

Senator TILLIS. Thank you all. I just had a few things. I did ask 

you to go back and give me some more substance behind things 

that you would consider to be areas where you have concern: my 

yellow. Really quickly, rapid-fire, what are your thoughts regarding 

the introduced bill’s ban on institution of serial petitions? We’ll 

start with Mr. Anderson. 

Professor ANDERSON. That, for me, is a yellow. I’m not a big fan 

of reducing the opportunities to challenge patents, just like you— 

in district court, there’s no limitation on how often a patent can be 

defended. I don’t think you should have the same—I think the 

same thing should apply to the PTAB. 

Senator TILLIS. Mr. Giles. 

Mr. GILES. I think that provision goes part of the way but doesn’t 

go the whole way. I actually do think that petitioners should be required to limit the number of petitions that they are able to file altogether, not only serially, but in parallel. Right now, the bill 

seems to open up the door to parallel petitions, which I will say is 

actually very similar to the process that is undertaken in district 

courts. District courts always require the parties to limit the 

amount of claims that they bring, limit the amount of references 

that they use, limit the scope of the invalidity proceedings in district court. It should be more align—along those lines in the PTAB, 

as well. 

Senator TILLIS. Mr. Wilson. 

Mr. WILSON. Yes. We’re yellow on that. I think the thing that it 

forgets is that the reason that we’re at the PTAB is that cases— 

patent infringement cases have been filed against us. If we are, you 

know, honest about it, we want to be able to file our petitions. You 

know, the public is benefited by having the petitions filed because, 

you know, they’re often successful, and the patents that shouldn’t 

have been issued in the first place are not going to be the subject 

of litigation any longer. 

Senator TILLIS. Mr. Cain. 

Mr. CAIN. Thank you. As a patent owner and as a petitioner, we 

find that it strikes a good balance as a reasonable compromise for 

the patent system. 

Senator TILLIS. Okay. In the interest of time, I’m not going to 

take you—I wanted to get to some of the ones that hopefully we 

can get more feedback on. Things that I’d be interested in, if you 

could provide us with feedback after the Committee: the codification of the Phillips standard, the funding of small and micro-entities who face challenges at the PTAB, and I’ve got a couple of other 

ones in there. If you could drill down, I just really want your candid assessment of where we are, so that we can work together to 

make the bill better. Thank you, Mr. Chair. 

Chair LEAHY. Thank you, Senator Tillis. I’m looking at PTAB, 

and some of the biggest beneficiaries, of course, we know are small 

businesses, entrepreneurs. I worry about the specious patent assertions. A patent, if you have one, is not something that constitutionally can never be touched or looked at. I think of some of the 

baseless patents: sunglasses strap, a crustless peanut-butter-andjelly sandwich, or the method of swinging in a swing. You know, 

they’re ludicrous. 
19 

PTAB proceedings are a lot less expensive than litigation. I’m 

trying to figure out how to get the cost paid in full, including attorney’s fees, for small business patent owners. PTAB’s designed for 

small businesses and entrepreneurs, and I want to make sure it 

works for them. Let me ask a couple questions. 

Mr. Wilson, we’ve heard that discretionary denials of PTAB proceedings create uncertainty and unpredictability. I’m told that 

under a policy that requires filing PTAB proceedings long before 

the 1-year time bar, PTAB review becomes less useful from a business perspective. An accused infringer doesn’t know what patent 

claims will be asserted and has to file an overbroad petition to the 

PTAB. The accused infringer does not have time to do a thorough 

prior art search. The accused infringer has no way to know whether the Patent Office will deem the petition too late because of their 

amorphous public guidelines saying when it’s too late. 

After the PTAB’s discretionary denial policy was announced in 

the Fintiv case, what challenges has your business faced in the 

PTAB process, either in deciding to go to PTAB or the process of 

the proceedings? How’s that for an open question? 

Mr. WILSON. Thank you, Mr. Chairman. I think we are—have to 

be cognizant always that the way that you get to the PTAB is because someone has filed a lawsuit against you, and that’s, in my 

experience, never a good place to be. You have to analyze whether 

or not to spend the money to prepare a petition very quickly, with 

a lot of effort, and you have to go through that process while evaluating, ‘‘Well, maybe going to court is better,’’ or, ‘‘Maybe we ought 

to settle the case.’’ There’s a lot of factors up in the air while you’re 

trying to determine whether or not to go to the PTAB. It’s a very 

expensive process, either way, but I have to say, the PTAB is a 

much more cost-effective way to get to a decision, in my experience, 

than patent litigation. 

If we’re going to go outside of the statute that we all agreed to, 

the American Invents Act, and come up with additional considerations that the Patent Office is going to kind of unilaterally create 

and determine that, you know, we may now kind of randomly not 

accept a patent petition, a PTAB petition, that would’ve otherwise 

been acceptable, I think that is not doing us a service. I think that 

we should go back to the system that the American Invents Act 

was there—was created to do. 

Let me just remind my colleagues about a couple of things. One 

is, during the AIA negotiations we had small business—retailers, 

banking, auto makers, restaurateur—all here participating in the 

process. They’re not here this time, and I think it’s because the 

PTAB—the American Invents Act did its job. We shouldn’t necessarily change that by the Patent Office alone. 

Chair LEAHY. As a patent owner, you’d rather have your patent’s 

validity adjudicated by the PTAB with analysis? 

Mr. WILSON. Yes, Mr. Chairman, absolutely. I know when I’m 

thinking of asserting one of my patents against another company 

that I am likely to have that patent reviewed at the Patent Office 

through the PTAB process. It is part of the analysis that goes into 

determining whether or not to bring a case in the first place, what 

patents to bring, what claims to assert. All of those things are 
20 

things that we can adequately, you know, take into consideration 

before we determine to file suit. 

Chair LEAHY. Sort of following on this, Mr. Giles, I know the Innovation Alliance has had some concerns, but you’ve also provided 

a lot of feedback during the drafting of the PTAB. I know that I 

can speak for Senator Tillis and Senator Cornyn and myself: We’ve 

appreciated it, and we’ve addressed many, if not all, the grounds 

of your input, and so we’ve tried in earnest to address them. We 

recognize concerns about inventors being harassed with serial petitions. Isn’t it helpful that our bill ensures that inventors are immune from successive petitions by the same and closely related 

parties? 

Mr. GILES. Yes, it is helpful that the bill moves in that direction. 

It would be better if it went a few steps further, as outlined in the 

STRONGER Patents Act, which limits the number of petitions that 

can be filed altogether. 

Chair LEAHY. I appreciate that. We retain the Patent Office’s discretion to decline most proceedings. Do you support the Patent Office having discretion to deny institution? 

Mr. GILES. Yes. I do think—others have commented on the Fintiv 

situation, and I do think that the Patent Office should still be afforded the ability to deny institution based on the proceedings in 

a district court proceeding. Many of the—many of the issues that 

people have raised have been worked out by the Patent Office over 

the past few years. People are citing to—trial dates moving, and 

the data that underlies that is actually trial dates under the— 

under the COVID restrictions that were happening at the same 

time, so I don’t think it gives a very accurate depiction of when a 

trial date actually stays. The Director actually also came out today 

and cleared up the guidance—even though it was actually in the— 

in some of the orders by the PTAB judges already, but cleared up 

the guidance that—— 

Chair LEAHY. Do you agree with what the Director came out with 

today? 

Mr. GILES. I haven’t had a chance to completely analyze it. It 

just came out. 

Chair LEAHY. Okay. Let me make that as a question for the 

record. If you could respond, let us know whether you agree or disagree. If you disagree, why? Okay? 

Mr. GILES. Sure. 

Chair LEAHY. You’ll have plenty of time. 

Mr. GILES. Oh, yes. Yes. 

Chair LEAHY. We made PTAB affordable for small business owners. We covered their expenses, including attorney’s fees. Isn’t it 

helpful that our legislation makes the process completely free for 

small business inventors? 

Mr. GILES. Is that to me, sir? 

Chair LEAHY. Sure. 

Mr. GILES. Okay. I’ve looked over the provisions of the small 

business support portion of it. I would actually welcome a much 

more full dialog on that portion of it, because I do think there are 

some nuances to it, where it may not get to the point—to the point 

where it’s actually supporting a lot of the small businesses. 
21 

Chair LEAHY. Thank you. My last question is, Mr. Cain, I’m committed—and I know Senator Tillis is—to transparency throughout 

Government. At PTAB, the judge issues decisions, as you know, but 

we don’t know if behind the scenes the Patent Office Director or 

others acting on the Director’s behalf are influencing PTAB judges 

to decide certain cases in certain ways. Would it be beneficial to 

our patent system if the public knows when decisions are made by 

the Director rather than the independent PTAB judges and what 

the Director’s reasoning might be? 

Mr. CAIN. Thank you, Senator. It certainly would be very valuable to the public, patent owners, and petitioners. You want—in 

any area of the law, you want certainty and predictability, and the 

more transparent you can be, the less appearance of impropriety is 

likely. 

Chair LEAHY. Thank you. I have a number of letters of support 

from different groups, and if we have no objection, I’ll enter them 

into the record. 

[The information appears as a submission for the record.] 

Chair LEAHY. Shall we keep the record open for 7 days? We’ll 

keep the record open for 7 days, and if people have things either 

from your answers that you want to add to or change, feel free. Do 

you have anything further? 

Senator TILLIS. Yes. Mr. Chair, the record will be open for 7 

days. The dialog’s going to continue beyond that. 

Chair LEAHY. Oh, my, that’s for sure. 

Senator TILLIS. I just want to be absolutely certain—— 

Chair LEAHY. That’s called a New England understatement, even 

though it’s North Carolina. 

Senator TILLIS. You know, I just want to make it clear that we’re 

in the business of debate and compromise. That’s what we do. Senator Leahy and I do that every day. You can’t address a concern 

that you don’t know. I appreciate people coming forward, stating 

their opinions. My office is committed to listening to them. The 

only thing I don’t tolerate are guerilla tactics to try and undermine 

what we’re trying to do here. I don’t expect any of you to be in that 

category because you’re here testifying before us, but I would encourage anyone else who’s watching what we’re doing here to engage. Thank you, Mr. Chair. 

Chair LEAHY. Thank you, and we stand in recess. 

[Whereupon, at 3:59 p.m., the hearing was adjourned.] 

[Additional material submitted for the record follows.] 

(23) 

A P P E N D I X 

Miscellaneous submissions: 

Armitage, Robert A., Letter, June 20, 2022 ....................................................... 181 

Association for Accessible Medicines (AAM) Statement ................................... 142 

Centripetal Networks, Inc., v. Cisco Systems, Inc. ............................................. 109 

Conservatives for Property Rights, June 22, 2022 ............................................ 151 

Eagle Forum Education & Legal Defense Fund, June 22, 2022 ...................... 157 

Ehrlich, Marc and Underweiser, Marian, Statement, June 22, 2022 .............. 167 

Engine, Act/The App Association, Consumer Technology Association and 

Developers Alliance Letter, June 22, 2022 ....................................................... 136 

Medtronic Letter in Support for S. 4417, June 22, 2022 .................................. 160 

Mossoff, Adam, Statement, June 22, 2022 ......................................................... 143 

Public Interest Patent Law Institute Letter, June 29, 2022 ............................ 162 

Quality Patents Coalition (QPC) Joint Trades Letter, June 27, 2022 ............. 177 

Sauer, Charlie, Statement, June 22, 2022 ......................................................... 139 

United for Patent Reform (UFPR), June 21, 2022 ............................................ 216 
24 
25 
26 
27 
28 
29 
30 
31 
32 
33 
34 
35 
36 
37 
38 
39 
40 
41 
42 
43 
44 
45 
46 
47 
48 
49 
50 
51 
52 
53 
54 
55 
56 
57 
58 
59 
60 
61 
62 
63 
64 
65 
66 
67 
68 
69 
70 
71 
72 
73 
74 
75 
76 
77 
78 
79 
80 
81 
82 
83 
84 
85 
86 
87 
88 
89 
90 
91 
92 
93 
94 
95 
96 
97 
98 
99 
100 
101 
102 
103 
104 
105 
106 
107 
108 
109 
110 
111 
112 
113 
114 
115 
116 
117 
118 
119 
120 
121 
122 
123 
124 
125 
126 
127 
128 
129 
130 
131 
132 
133 
134 
135 
136 
137 
138 
139 
140 
141 
142 
143 
144 
145 
146 
147 
148 
149 
150 
151 
152 
153 
154 
155 
156 
157 
158 
159 
160 
161 
162 
163 
164 
165 
166 
167 
168 
169 
170 
171 
172 
173 
174 
175 
176 
177 
178 
179 
180 
181 
182 
183 
184 
185 
186 
187 
188 
189 
190 
191 
192 
193 
194 
195 
196 
197 
198 
199 
200 
201 
202 
203 
204 
205 
206 
207 
208 
209 
210 
211 
212 
213 
214 
215 
216 
217 
218 

Æ