II 

117TH CONGRESS 

1ST SESSION S. 2891 

To amend title 35, United States Code, to address matters relating to the 

Patent Trial and Appeal Board of the United States Patent and Trademark Office, and for other purposes. 

IN THE SENATE OF THE UNITED STATES 

SEPTEMBER 29, 2021 

Mr. LEAHY (for himself and Mr. CORNYN) introduced the following bill; which 

was read twice and referred to the Committee on the Judiciary 

A BILL 

To amend title 35, United States Code, to address matters 

relating to the Patent Trial and Appeal Board of the 

United States Patent and Trademark Office, and for 

other purposes. 

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled, 

3 SECTION 1. SHORT TITLE. 

4 This Act may be cited as the ‘‘Restoring the America 

5 Invents Act’’. 

6 SEC. 2. PATENTS. 

7 Title 35, United States Code, is amended— 

8 (1) in section 6— 


kjohnson on DSK79L0C42PROD with BILLS
2 

•S 2891 IS

1 (A) in subsection (c)— 

2 (i) in the second sentence, by striking 

3 ‘‘Only the’’ and inserting ‘‘The’’; and 

4 (ii) by adding at the end the fol5 lowing: ‘‘After the constitution of a panel 

6 of the Patent Trial and Appeal Board 

7 under this subsection has been made pub8 lic, any changes to the constitution of that 

9 panel shall be noted in the record.’’; 

10 (B) by redesignating subsection (d) as sub11 section (e); 

12 (C) by inserting after subsection (c) the 

13 following: 

14 ‘‘(d) REVIEW BY DIRECTOR.— 

15 ‘‘(1) IN GENERAL.—With respect to a final de16 cision of the Patent Trial and Appeal Board— 

17 ‘‘(A) the Director may, on the initiative of 

18 the Director, review, and modify or set aside, 

19 the decision; and 

20 ‘‘(B) if the decision is issued under section 

21 318 or 328, a party to the applicable inter 

22 partes or post-grant review may request that 

23 the Director review, and modify or set aside, 

24 the decision. 


kjohnson on DSK79L0C42PROD with BILLS
3 

•S 2891 IS

1 ‘‘(2) REQUIREMENT.—Any review by the Direc2 tor under paragraph (1) shall be issued in a sepa3 rate written opinion that— 

4 ‘‘(A) is made part of the public record; and 

5 ‘‘(B) sets forth the reasons for the review, 

6 modification, or setting aside of the final deci7 sion of the Patent Trial and Appeal Board. 

8 ‘‘(3) TIMELINE AND BASES FOR REVIEW.—Not 

9 later than 18 months after the date of enactment of 

10 the Restoring the America Invents Act, the Director 

11 shall promulgate rules addressing the following 

12 issues: 

13 ‘‘(A) With respect to review of a decision 

14 on the initiative of the Director under para15 graph (1)(A)— 

16 ‘‘(i) the timeline under which the Di17 rector may review the decision, which shall 

18 be consistent with the requirements under 

19 section 318(e) or 328(e), if applicable; and 

20 ‘‘(ii) the bases on which the Director 

21 may review the decision. 

22 ‘‘(B) With respect to a request by a party 

23 under paragraph (1)(B)— 

24 ‘‘(i) the timeline for submitting such a 

25 request; 


kjohnson on DSK79L0C42PROD with BILLS
4 

•S 2891 IS

1 ‘‘(ii) the content that the party is re2 quired to include in such a request; 

3 ‘‘(iii) the bases on which the party 

4 may submit such a request; and 

5 ‘‘(iv) the timeline for any response or 

6 reply to such a request such that the re7 quest can be decided within the deadline 

8 imposed under section 318(e) or 328(e), as 

9 applicable. 

10 ‘‘(4) RULE OF CONSTRUCTION.—For the pur11 poses of an appeal permitted under section 141, any 

12 decision on review issued by the Director under this 

13 subsection shall be deemed a final decision of the 

14 Patent Trial and Appeal Board.’’; and 

15 (D) in subsection (e), as so redesignated— 

16 (i) in the first sentence— 

17 (I) by striking ‘‘of this sub18 section’’ and inserting ‘‘of the Restor19 ing the America Invents Act’’; 

20 (II) by inserting ‘‘or the Sec21 retary’’ after ‘‘appointment by the Di22 rector’’; and 

23 (III) by inserting ‘‘or the Sec24 retary, as applicable,’’ after ‘‘on which 

25 the Director’’; and 


kjohnson on DSK79L0C42PROD with BILLS
5 

•S 2891 IS

1 (ii) in the second sentence— 

2 (I) by inserting ‘‘, or, before the 

3 date of enactment of the Restoring 

4 the America Invents Act, having per5 formed duties no longer performed by 

6 administrative patent judges,’’ after 

7 ‘‘by the Director’’; and 

8 (II) by striking ‘‘that the admin9 istrative patent judge so appointed’’ 

10 and inserting ‘‘that the applicable ad11 ministrative patent judge’’; 

12 (2) in section 302, in the first sentence, by in13 serting ‘‘, including a governmental entity,’’ after ‘‘A 

14 person’’; 

15 (3) in chapter 31— 

16 (A) in section 311— 

17 (i) in subsection (a), in the first sen18 tence, by inserting ‘‘, including a govern19 mental entity,’’ after ‘‘a person’’; and 

20 (ii) in subsection (b), by striking 

21 ‘‘under section 102’’ and all that follows 

22 through the period at the end and insert23 ing the following: ‘‘under— 

24 ‘‘(1) section 102 or 103 and only on the basis 

25 of— 


kjohnson on DSK79L0C42PROD with BILLS
6 

•S 2891 IS

1 ‘‘(A) prior art consisting of patents or 

2 printed publications; or 

3 ‘‘(B) admissions in the patent specifica4 tion, drawings, or claims; or 

5 ‘‘(2) statutory or obviousness-type double pat6 enting on the basis of— 

7 ‘‘(A) patents or printed publications; or 

8 ‘‘(B) admissions in the patent specifica9 tion, drawings, or claims.’’; 

10 (B) in section 314— 

11 (i) in subsection (a), by striking ‘‘The 

12 Director may not authorize an inter partes 

13 review to be instituted unless’’ and insert14 ing the following: ‘‘Subject only to the dis15 cretion of the Director under section 

16 325(d)(4), a petition that meets the re17 quirements of this chapter shall be insti18 tuted if’’; and 

19 (ii) in subsection (d)— 

20 (I) by inserting ‘‘or maintain’’ 

21 after ‘‘to institute’’; and 

22 (II) by striking ‘‘section’’ and in23 serting ‘‘chapter’’; 

24 (C) in section 315— 

25 (i) in subsection (a)(1)— 


kjohnson on DSK79L0C42PROD with BILLS
7 

•S 2891 IS

1 (I) by striking ‘‘An inter partes’’ 

2 and inserting the following: 

3 ‘‘(A) IN GENERAL.—An inter partes’’; and 

4 (II) by adding at the end the fol5 lowing: 

6 ‘‘(B) RULE OF CONSTRUCTION.—Subpara7 graph (A) may not be construed to prevent an 

8 inter partes review from being instituted if a 

9 complaint in a civil action described in that 

10 subparagraph has been dismissed without prej11 udice.’’; 

12 (ii) by striking subsection (b) and in13 serting the following: 

14 ‘‘(b) PATENT OWNER’S ACTION.— 

15 ‘‘(1) IN GENERAL.—An inter partes review may 

16 not be instituted if the petition requesting the pro17 ceeding is filed more than 1 year after the date on 

18 which the petitioner, real party in interest, or privy 

19 of the petitioner is served with a complaint alleging 

20 infringement of the patent. The time limitation set 

21 forth in the preceding sentence shall be subject to 

22 the following limitations: 

23 ‘‘(A) The time limitation shall not apply— 

24 ‘‘(i) to a request for joinder under 

25 subsection (c); or 


kjohnson on DSK79L0C42PROD with BILLS
8 

•S 2891 IS

1 ‘‘(ii) if the complaint is dismissed 

2 without prejudice. 

3 ‘‘(B) If new or amended claims issue from 

4 reexamination after the petitioner, real party in 

5 interest, or privy of the petitioner is served with 

6 the complaint, an inter partes review of those 

7 claims may be instituted if the petition request8 ing the review is filed not later than 1 year 

9 after the date on which the challenged claims 

10 are asserted in the action. 

11 ‘‘(2) REQUEST FOR STAY.— 

12 ‘‘(A) IN GENERAL.—If a party seeks a stay 

13 of a civil action brought under section 281 al14 leging infringement of a patent that is also sub15 ject to an inter partes review, the court shall 

16 decide whether to stay the civil action based on 

17 whether— 

18 ‘‘(i) the outcome of the inter partes 

19 review will likely simplify the issues in 

20 question in the civil action and streamline 

21 the proceedings in the civil action; 

22 ‘‘(ii) as of the date on which the stay 

23 is requested, discovery in the civil action is 

24 complete; 


kjohnson on DSK79L0C42PROD with BILLS
9 

•S 2891 IS

1 ‘‘(iii) a stay, or the denial thereof, 

2 would— 

3 ‘‘(I) unduly prejudice the non4 moving party; or 

5 ‘‘(II) present a clear tactical ad6 vantage for the moving party; and 

7 ‘‘(iv) a stay, or the denial thereof, will 

8 reduce the burden of litigation on the par9 ties to the civil action and the court. 

10 ‘‘(B) REVIEW.—A party may take an im11 mediate interlocutory appeal from the decision 

12 of a district court of the United States under 

13 subparagraph (A). The United States Court of 

14 Appeals for the Federal Circuit shall review the 

15 district court’s decision to ensure consistent ap16 plication of established precedent, and such re17 view shall be de novo.’’; 

18 (iii) in subsection (c)— 

19 (I) by striking ‘‘If the Director’’ 

20 and inserting the following: 

21 ‘‘(1) IN GENERAL.—If the Director’’; and 

22 (II) by adding at the end the fol23 lowing: 

24 ‘‘(2) ESTOPPEL.—Any person joined as a party 

25 to an inter partes review, and any real party in inVerDate Sep 11 2014 05:39 Sep 30, 2021 Jkt 019200 PO 00000 Frm 00009 Fmt 6652 Sfmt 6201 E:\BILLS\S2891.IS S2891

kjohnson on DSK79L0C42PROD with BILLS
10 

•S 2891 IS

1 terest or privy of such person, shall be estopped 

2 under subsection (e) to the same extent as if that 

3 person, real party in interest, or privy had been the 

4 first petitioner in that inter partes review.’’; 

5 (iv) by striking subsection (d) and in6 serting the following: 

7 ‘‘(d) MULTIPLE PROCEEDINGS.— 

8 ‘‘(1) IN GENERAL.—Notwithstanding sections 

9 135(a), 251, and 252, and chapter 30, during the 

10 pendency of an inter partes review, if another pro11 ceeding or matter involving the patent is before the 

12 Office, or if there is a pending application claiming 

13 the benefit of a common filing date to the patent 

14 under section 120 or 121— 

15 ‘‘(A) the parties shall notify the Director; 

16 and 

17 ‘‘(B) the Director shall issue a decision de18 termining the manner in which the other pro19 ceeding or matter may proceed, including pro20 viding for stay, transfer, consolidation, or ter21 mination of any such proceeding or matter. 

22 ‘‘(2) NO EXTENSION.—A decision of the Direc23 tor under paragraph (1)(B) may not— 

24 ‘‘(A) extend any statutory deadline under 

25 this chapter; or 


kjohnson on DSK79L0C42PROD with BILLS
11 

•S 2891 IS

1 ‘‘(B) terminate an inter partes proceeding 

2 in favor of an ex parte proceeding. 

3 ‘‘(3) PRESUMPTION.—For the purposes of this 

4 subsection, if the multiple proceedings described in 

5 paragraph (1) are of like type and are filed reason6 ably close in time, there shall be a rebuttable pre7 sumption that the Director shall consolidate the pro8 ceedings under that paragraph.’’; and 

9 (v) in subsection (e)— 

10 (I) in paragraph (1)— 

11 (aa) by striking ‘‘The peti12 tioner in’’ and inserting the fol13 lowing: 

14 ‘‘(A) ESTOPPEL AGAINST PETITIONER.— 

15 The petitioner in’’; 

16 (bb) in subparagraph (A), as 

17 so designated, by inserting ‘‘, 

18 after the time for appeal of the 

19 decision has expired or any such 

20 appeal has terminated,’’ after 

21 ‘‘may not’’; and 

22 (cc) by adding at the end 

23 the following: 

24 ‘‘(B) ESTOPPEL AGAINST PATENT

25 OWNER.—The Office may not issue to a patent 


kjohnson on DSK79L0C42PROD with BILLS
12 

•S 2891 IS

1 owner any claim that is not patentably distinct 

2 from a claim that was issued and was subse3 quently— 

4 ‘‘(i) found to be unpatentable; or 

5 ‘‘(ii) canceled in any proceeding before 

6 the Office, including under section 135, 

7 251, 253, 301, 311, or 321.’’; and 

8 (II) in paragraph (2)— 

9 (aa) by inserting ‘‘that the 

10 claim is not unpatentable’’ after 

11 ‘‘section 318(a)’’; 

12 (bb) by inserting ‘‘, after the 

13 time for appeal of the decision 

14 has expired or any such appeal 

15 has terminated,’’ after ‘‘may 

16 not’’; and 

17 (cc) by inserting ‘‘or 1498’’ 

18 after ‘‘section 1338’’; 

19 (D) in section 316— 

20 (i) in subsection (a)(11), by inserting 

21 ‘‘or consolidation under section 315(d)’’ 

22 after ‘‘under section 315(c)’’; 

23 (ii) in subsection (c)— 

24 (I) by striking ‘‘The Patent’’ and 

25 inserting the following: 


kjohnson on DSK79L0C42PROD with BILLS
13 

•S 2891 IS

1 ‘‘(1) IN GENERAL.—The Patent’’; and 

2 (II) by adding at the end the fol3 lowing: 

4 ‘‘(2) EX PARTE COMMUNICATION.—An officer 

5 who has review authority, supervisory authority, or 

6 disciplinary authority with respect to an administra7 tive patent judge of the Patent Trial and Appeal 

8 Board (or a delegate of such an officer), and who is 

9 not a member of a panel described in section 6(c), 

10 shall refrain from ex parte communication with such 

11 a judge who is a member of that panel concerning 

12 any pending matter before that panel, except as al13 lowed under the Code of Conduct for United States 

14 Judges.’’; and 

15 (iii) in subsection (e)— 

16 (I) by striking ‘‘In an’’ and in17 serting the following: 

18 ‘‘(1) IN GENERAL.—In an’’; 

19 (II) in paragraph (1), as so des20 ignated, by inserting ‘‘of challenged 

21 patent claims’’ after 

22 ‘‘unpatentability’’; and 

23 (III) by adding at the end the 

24 following: 


kjohnson on DSK79L0C42PROD with BILLS
14 

•S 2891 IS

1 ‘‘(2) CLAIM AMENDMENT.—For any substitute 

2 claim proposed under subsection (d)— 

3 ‘‘(A) the patent owner shall have the bur4 den of proving patentability, including under 

5 sections 101, 102, 103, and 112, by a prepon6 derance of the evidence; 

7 ‘‘(B) the Patent Trial and Appeal Board 

8 shall— 

9 ‘‘(i) examine the substitute claim; or 

10 ‘‘(ii) notwithstanding subsection 

11 (c)(2), refer the substitute claim to the Di12 rector, who shall cause an examination of 

13 the substitute claim to be made within the 

14 time limits for the applicable inter partes 

15 review; and 

16 ‘‘(C) the Director may establish, by regula17 tion, fees for examination of the substitute 

18 claim in such amounts as the Director deter19 mines to be reasonable, taking into consider20 ation the aggregate costs of examination.’’; 

21 (E) in section 318— 

22 (i) in subsection (b), by inserting ‘‘, 

23 not later than 60 days after the date on 

24 which the parties to the inter partes review 

25 have informed the Director that the time 


kjohnson on DSK79L0C42PROD with BILLS
15 

•S 2891 IS

1 for appeal has expired or any appeal has 

2 terminated,’’ after ‘‘the Director shall’’; 

3 and 

4 (ii) by adding at the end the fol5 lowing: 

6 ‘‘(e) REHEARING.—Not later than 120 days after the 

7 date on which the Patent Trial and Appeal Board issues 

8 a final written decision under subsection (a), the Board 

9 or the Director shall finally decide any request for recon10 sideration, rehearing, or review that is submitted with re11 spect to the decision, except that the Director may, for 

12 good cause shown, extend that 120-day period by not more 

13 than 60 days.’’; and 

14 (F) in section 319— 

15 (i) in the first sentence, by striking 

16 ‘‘A party’’ and inserting the following: 

17 ‘‘(a) IN GENERAL.—A party’’; and 

18 (ii) by adding at the end the fol19 lowing: 

20 ‘‘(b) STANDING.— 

21 ‘‘(1) INJURY IN FACT.—For the purposes of an 

22 appeal described in subsection (a), injury in fact 

23 shall be presumed if the party appealing the deci24 sion— 


kjohnson on DSK79L0C42PROD with BILLS
16 

•S 2891 IS

1 ‘‘(A) reasonably expects that another per2 son will assert estoppel against the party under 

3 section 315(e) as a result of the final written 

4 decision that is the subject of the appeal; or 

5 ‘‘(B) suffers any other concrete and par6 ticularized injury that— 

7 ‘‘(i) is fairly traceable to the final 

8 written decision that is the subject of the 

9 appeal; and 

10 ‘‘(ii) could be redressed through ap11 pellate review. 

12 ‘‘(2) ESTOPPEL.—If a court finds that a party 

13 lacks standing to bring an appeal described in sub14 section (a) under article III of the Constitution of 

15 the United States, that party shall not be estopped 

16 under section 315(e) with respect to the underlying 

17 inter partes review.’’; and 

18 (4) in chapter 32— 

19 (A) in section 321(a), by inserting ‘‘, in20 cluding a governmental entity,’’ after ‘‘a per21 son’’; 

22 (B) in section 324— 

23 (i) in subsection (a), by striking ‘‘The 

24 Director may not authorize a post-grant 

25 review to be instituted unless’’ and insertVerDate Sep 11 2014 05:39 Sep 30, 2021 Jkt 019200 PO 00000 Frm 00016 Fmt 6652 Sfmt 6201 E:\BILLS\S2891.IS S2891

kjohnson on DSK79L0C42PROD with BILLS
17 

•S 2891 IS

1 ing the following: ‘‘Subject only to the dis2 cretion of the Director under section 

3 325(d)(4), a petition filed under section 

4 321 that meets the requirements of this 

5 chapter shall be instituted if’’; and 

6 (ii) in subsection (e)— 

7 (I) by inserting ‘‘or maintain’’ 

8 after ‘‘to institute’’; and 

9 (II) by striking ‘‘section’’ and in10 serting ‘‘chapter’’; 

11 (C) in section 325— 

12 (i) in subsection (a)— 

13 (I) in the subsection heading, by 

14 striking ‘‘INFRINGER’S CIVIL AC15 TION’’ and inserting ‘‘CIVIL ACTION’’; 

16 and 

17 (II) by adding at the end the fol18 lowing: 

19 ‘‘(4) REQUEST FOR STAY.— 

20 ‘‘(A) IN GENERAL.—If a party seeks a stay 

21 of a civil action brought under section 281 al22 leging infringement of a patent that is also sub23 ject to a post-grant review, the court shall de24 cide whether to stay the civil action based on 

25 whether— 


kjohnson on DSK79L0C42PROD with BILLS
18 

•S 2891 IS

1 ‘‘(i) the outcome of the post-grant re2 view will likely simplify the issues in ques3 tion in the civil action and streamline the 

4 proceedings in the civil action; 

5 ‘‘(ii) as of the date on which the stay 

6 is requested, discovery in the civil action is 

7 complete; 

8 ‘‘(iii) a stay, or the denial thereof, 

9 would— 

10 ‘‘(I) unduly prejudice the non11 moving party; or 

12 ‘‘(II) present a clear tactical ad13 vantage for the moving party; and 

14 ‘‘(iv) a stay, or the denial thereof, will 

15 reduce the burden of litigation on the par16 ties to the civil action and the court. 

17 ‘‘(B) REVIEW.—A party may take an im18 mediate interlocutory appeal from the decision 

19 of a district court of the United States under 

20 subparagraph (A). The United States Court of 

21 Appeals for the Federal Circuit shall review the 

22 district court’s decision to ensure consistent ap23 plication of established precedent, and such re24 view shall be de novo.’’; 

25 (ii) in subsection (c)— 


kjohnson on DSK79L0C42PROD with BILLS
19 

•S 2891 IS

1 (I) by striking ‘‘If more’’ and in2 serting the following: 

3 ‘‘(1) IN GENERAL.—If more’’; and 

4 (II) by adding at the end the fol5 lowing: 

6 ‘‘(2) ESTOPPEL.—Any person joined as a party 

7 to a post-grant review, and any real party in interest 

8 or privy of such person, shall be estopped under sub9 section (e) to the same extent as if that person, real 

10 party in interest, or privy had been the first peti11 tioner in that post-grant review.’’; 

12 (iii) by striking subsection (d) and in13 serting the following: 

14 ‘‘(d) MULTIPLE PROCEEDINGS.— 

15 ‘‘(1) IN GENERAL.—Notwithstanding sections 

16 135(a), 251, and 252, and chapter 30, during the 

17 pendency of any post-grant review under this chap18 ter, if another proceeding or matter involving the 

19 patent is before the Office, or if there is a pending 

20 application claiming the benefit of a common filing 

21 date to the patent under section 120 or 121— 

22 ‘‘(A) the parties shall notify the Director; 

23 and 

24 ‘‘(B) the Director shall issue a decision de25 termining the manner in which the other proVerDate Sep 11 2014 05:39 Sep 30, 2021 Jkt 019200 PO 00000 Frm 00019 Fmt 6652 Sfmt 6201 E:\BILLS\S2891.IS S2891

kjohnson on DSK79L0C42PROD with BILLS
20 

•S 2891 IS

1 ceeding or matter may proceed, including pro2 viding for stay, transfer, consolidation, or ter3 mination of any such proceeding or matter. 

4 ‘‘(2) NO EXTENSION.—A decision of the Direc5 tor under paragraph (1)(B) may not— 

6 ‘‘(A) extend any statutory deadline under 

7 this chapter; or 

8 ‘‘(B) terminate an inter partes proceeding 

9 in favor of an ex parte proceeding. 

10 ‘‘(3) PRESUMPTION.—For the purposes of this 

11 subsection, if the multiple proceedings described in 

12 paragraph (1) are of like type and are filed reason13 ably close in time, there shall be a rebuttable pre14 sumption that the Director shall consolidate the pro15 ceedings under that paragraph. 

16 ‘‘(4) CONSIDERATIONS.—In determining wheth17 er to institute or order a proceeding under this chap18 ter, chapter 30, or chapter 31, the Director may 

19 take into account whether, and reject the petition or 

20 request because, the same or substantially the same 

21 prior art or arguments previously were presented to 

22 the Office.’’; and 

23 (iv) in subsection (e)— 

24 (I) in paragraph (1)— 


kjohnson on DSK79L0C42PROD with BILLS
21 

•S 2891 IS

1 (aa) by striking ‘‘The peti2 tioner in’’ and inserting the fol3 lowing: 

4 ‘‘(A) ESTOPPEL AGAINST PETITIONER.— 

5 The petitioner in’’; 

6 (bb) in subparagraph (A), as 

7 so designated, by inserting ‘‘, 

8 after the time for appeal of the 

9 decision has expired or any such 

10 appeal has terminated,’’ after 

11 ‘‘may not’’; and 

12 (cc) by adding at the end 

13 the following: 

14 ‘‘(B) ESTOPPEL AGAINST PATENT

15 OWNER.—The Office may not issue to a patent 

16 owner any claim that is not patentably distinct 

17 from a claim that was issued and was subse18 quently— 

19 ‘‘(i) found to be unpatentable; or 

20 ‘‘(ii) canceled in any proceeding before 

21 the Office, including under section 135, 

22 251, 253, 301, 311, or 321.’’; and 

23 (II) in paragraph (2)— 


kjohnson on DSK79L0C42PROD with BILLS
22 

•S 2891 IS

1 (aa) by inserting ‘‘that the 

2 claim is not unpatentable’’ after 

3 ‘‘section 328(a)’’; 

4 (bb) by inserting ‘‘, after the 

5 time for appeal of the decision 

6 has expired or any such appeal 

7 has terminated,’’ after ‘‘may 

8 not’’; and 

9 (cc) by inserting ‘‘or 1498’’ 

10 after ‘‘section 1338’’; 

11 (D) in section 326— 

12 (i) in subsection (a)(11), by inserting 

13 ‘‘or consolidation under section 325(d)’’ 

14 after ‘‘under section 325(c)’’; 

15 (ii) in subsection (c)— 

16 (I) by striking ‘‘The Patent’’ and 

17 inserting the following: 

18 ‘‘(1) IN GENERAL.—The Patent’’; and 

19 (II) by adding at the end the fol20 lowing: 

21 ‘‘(2) EX PARTE COMMUNICATION.—An officer 

22 who has review authority, supervisory authority, or 

23 disciplinary authority with respect to an administra24 tive patent judge of the Patent Trial and Appeal 

25 Board (or a delegate of such an officer), and who is 


kjohnson on DSK79L0C42PROD with BILLS
23 

•S 2891 IS

1 not a member of a panel described in section 6(c), 

2 shall refrain from ex parte communication with such 

3 a judge who is a member of that panel concerning 

4 any pending matter before that panel, except as al5 lowed under the Code of Conduct for United States 

6 Judges.’’; and 

7 (iii) in subsection (e)— 

8 (I) by striking ‘‘In a’’ and insert9 ing the following: 

10 ‘‘(1) IN GENERAL.—In a’’; 

11 (II) in paragraph (1), as so des12 ignated, by inserting ‘‘of challenged 

13 patent claims’’ after 

14 ‘‘unpatentability’’; and 

15 (III) by adding at the end the 

16 following: 

17 ‘‘(2) CLAIM AMENDMENT.—For any substitute 

18 claim proposed under subsection (d)— 

19 ‘‘(A) the patent owner shall have the bur20 den of proving patentability, including under 

21 sections 101, 102, 103, and 112, by a prepon22 derance of the evidence; 

23 ‘‘(B) the Patent Trial and Appeal Board 

24 shall— 

25 ‘‘(i) examine the substitute claim; or 


kjohnson on DSK79L0C42PROD with BILLS
24 

•S 2891 IS

1 ‘‘(ii) notwithstanding subsection 

2 (c)(2), refer the substitute claim to the Di3 rector, who shall cause an examination of 

4 the substitute claim to be made within the 

5 time limits for the applicable inter partes 

6 review; and 

7 ‘‘(C) the Director may establish, by regula8 tion, fees for examination of the substitute 

9 claim in such amounts as the Director deter10 mines to be reasonable, taking into consider11 ation the aggregate costs of examination.’’; 

12 (E) in section 328— 

13 (i) in subsection (b), by inserting ‘‘not 

14 later than 60 days after the date on which 

15 the parties to the post-grant review have 

16 informed the Director that the time for ap17 peal has expired or any appeal has termi18 nated,’’ after ‘‘the Director shall’’; and 

19 (ii) by adding at the end the fol20 lowing: 

21 ‘‘(e) REHEARING.—Not later than 120 days after the 

22 date on which the Patent Trial and Appeal Board issues 

23 a final written decision under subsection (a), the Board 

24 or the Director shall finally decide any request for recon25 sideration, rehearing, or review that is submitted with reVerDate Sep 11 2014 05:39 Sep 30, 2021 Jkt 019200 PO 00000 Frm 00024 Fmt 6652 Sfmt 6201 E:\BILLS\S2891.IS S2891

kjohnson on DSK79L0C42PROD with BILLS
25 

•S 2891 IS

1 spect to the decision, except that the Director may, for 

2 good cause shown, extend that 120-day period by not more 

3 than 60 days.’’; and 

4 (F) in section 329— 

5 (i) in the first sentence, by striking 

6 ‘‘A party’’ and inserting the following: 

7 ‘‘(a) IN GENERAL.—A party’’; and 

8 (ii) by adding at the end the fol9 lowing: 

10 ‘‘(b) STANDING.— 

11 ‘‘(1) INJURY IN FACT.—For the purposes of an 

12 appeal described in subsection (a), injury in fact 

13 shall be presumed if the party appealing the deci14 sion— 

15 ‘‘(A) reasonably expects that another per16 son will assert estoppel against the party under 

17 section 325(e) as a result of the final written 

18 decision that is the subject of the appeal; or 

19 ‘‘(B) suffers any other concrete and par20 ticularized injury that— 

21 ‘‘(i) is fairly traceable to the final 

22 written decision that is the subject of the 

23 appeal; and 

24 ‘‘(ii) could be redressed through ap25 pellate review. 


kjohnson on DSK79L0C42PROD with BILLS
26 

•S 2891 IS

1 ‘‘(2) ESTOPPEL.—If a court finds that a party 

2 lacks standing to bring an appeal described in sub3 section (a) under article III of the Constitution of 

4 the United States, that party shall not be estopped 

5 under section 325(e) with respect to the underlying 

6 post-grant review.’’. 

Æ 


kjohnson on DSK79L0C42PROD with BILLS