Post-grant review

(a) Real parties in interest Section 321 of title 35, United States Code, is amended by adding at the end the following: (d) Real party in interest For purposes of this chapter, a person that, directly or through an affiliate, subsidiary, or proxy, makes a financial contribution to the preparation for, or conduct during, a post-grant review on behalf of a petitioner shall be considered a real party in interest of that petitioner.. (b) Timing To issue decisions on rehearing Section 324 of title 35, United States Code, is amended by adding at the end the following: (f) Rehearing Not later than 45 days after the date on which a request for rehearing from a determination by the Director under subsection (c) is filed, the Director shall finally decide any request for reconsideration, rehearing, or review with respect to the determination, except that the Director may, for good cause shown, extend that 45-day period by not more than 30 days.. (c) Eliminating repetitive proceedings Section 325 of title 35, United States Code, is amended— (1) by redesignating subsections (c) through (f) as subsections (d) through (g), respectively; (2) by inserting after subsection (b) the following: (c) Single forum (1) In general If a post-grant review is instituted challenging the validity of a patent, the petitioner, a real party in interest, or a privy of the petitioner may not file or maintain, in a civil action arising in whole or in part under section 1338 of title 28, or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), a claim, a counterclaim, or an affirmative defense challenging the validity of any claim of the patent. (2) Considerations In determining whether to institute a proceeding under this chapter, subject to the provisions of subsections (a)(1) and (h), the Director may not reject a petition requesting a post-grant review on the basis of the petitioner, a real party in interest, or a privy of the petitioner filing or maintaining a claim, a counterclaim, or an affirmative defense challenging the validity of the patent in any civil action arising in whole or in part under section 1338 of title 28, or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337).; (3) by amending subsection (e), as so redesignated, to read as follows: (e) Multiple proceedings (1) In general Notwithstanding sections 135(a), 251, and 252, and chapter 30, after a petition to institute a post-grant review is filed, if another proceeding or matter involving the patent is before the Office— (A) the parties shall notify the Director of that other proceeding or matter— (i) not later than 30 days after the date of entry of the notice of filing date accorded to the petition; or (ii) if the other proceeding or matter is filed after the date on which the petition to institute an inter partes review is filed, not later than 30 days after the date on which the other proceeding or matter is filed; and (B) the Director shall issue a decision determining the manner in which the post-grant review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding. (2) Considerations In determining whether to institute a proceeding under this chapter, the Director shall, unless the Director determines that the petitioner has demonstrated exceptional circumstances, reject any petition that presents prior art or an argument that is the same or substantially the same as prior art or an argument that previously was presented to the Office.; (4) by amending subsection (f), as so redesignated, to read as follows: (f) Estoppel (1) In general A petitioner that has previously requested a post-grant review of a claim in a patent under this chapter, or a real party in interest or a privy of a petitioner, may not request or maintain another proceeding before the Office with respect to that patent on any ground that the petitioner raised or reasonably could have raised in the petition requesting or during the prior post-grant review, unless— (A) after the filing of the initial petition, the petitioner, or a real party in interest or a privy of the petitioner, is charged with infringement of additional claims of the patent; (B) a subsequent petition requests an inter partes review of only the additional claims of the patent that the petitioner, or a real party in interest or a privy of the petitioner, is later charged with infringing; and (C) that subsequent petition is accompanied by a request for joinder to the prior post-grant review, which the Director shall grant if the Director authorizes a post-grant review to be instituted on the subsequent petition under section 324. (2) Joined party Any person joined as a party to a post-grant review, and any real party in interest or any privy of such person, shall be estopped under this subsection and subsections (c)(1) and (e)(2) to the same extent as if that person, real party in interest, or privy had been the first petitioner in that post-grant review.; and (5) by adding at the end the following: (h) Federal court and International Trade Commission validity determinations A post-grant review of a patent claim may not be instituted or maintained if, in a civil action arising in whole or in part under section 1338 of title 28, or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), in which the petitioner, a real party in interest, or a privy of the petitioner is a party, the court, or the International Trade Commission, as applicable, has entered a final judgment that decides a challenge to the validity of the patent claim.. (d) Conduct of post-Grant review Section 326 of title 35, United States Code, is amended— (1) in subsection (a)— (A) by amending paragraph (5) to read as follows: (5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to— (A) the deposition of witnesses submitting affidavits or declarations; (B) evidence identifying the real parties in interest of the petitioner; and (C) what is otherwise necessary in the interest of justice;; (B) by amending paragraph (9) to read as follows: (9) setting forth standards and procedures for— (A) allowing the patent owner to move to amend the patent under subsection (d) to cancel a challenged claim or propose a reasonable number of substitute claims; (B) allowing the Patent Trial and Appeal Board to provide guidance on substitute claims proposed by the patent owner; (C) allowing the patent owner to further revise proposed substitute claims after the issuance of guidance described in subparagraph (B); and (D) ensuring that any information submitted by the patent owner in support of any amendment entered under subsection (d), and any guidance issued by the Patent Trial and Appeal Board, is made available to the public as part of the prosecution history of the patent;; (C) in paragraph (11)— (i) by striking section 325(c) and inserting section 325(d); and (ii) by striking and at the end; (D) in paragraph (12), by striking the period at the end and inserting; and; and (E) by adding at the end the following: (13) setting forth the standards for demonstrating exceptional circumstances under section 325(e)(2).; (2) by amending subsection (e) to read as follows: (e) Evidentiary standards (1) Presumption of validity The presumption of validity under section 282(a) shall apply to previously issued claims of a patent that is challenged in a post-grant review under this chapter. (2) Burden of proof In a post-grant review under this chapter— (A) the petitioner shall have the burden of proving a proposition of unpatentability of a previously issued claim of a patent by clear and convincing evidence; and (B) the petitioner shall have the burden of persuasion, by a preponderance of the evidence, with respect to a proposition of unpatentability for any substitute claim proposed by the patent owner.; and (3) by adding at the end the following: (f) Claim construction For the purposes of this chapter— (1) each challenged claim of a patent, and each substitute claim proposed in a motion to amend, shall be construed as the claim would be construed under section 282(b) in an action to invalidate a patent, including by construing each such claim in accordance with— (A) the ordinary and customary meaning of the claim as understood by a person having ordinary skill in the art to which the claimed invention pertains; and (B) the prosecution history pertaining to the patent; and (2) if a court has previously construed a challenged claim of a patent or a challenged claim term in a civil action to which the patent owner was a party, the Office shall consider that claim construction.. (e) Settlement Section 327(a) of title 35, United States Code, is amended by striking the second sentence. (f) Timing To issue trial certificates and decisions on rehearing Section 328 of title 35, United States Code, is amended— (1) in subsection (b), by inserting, not later than 60 days after the date on which the parties to the post-grant review have informed the Director that the time for appeal has expired or any appeal has terminated, after the Director shall; and (2) by adding at the end the following: (e) Rehearing Not later than 90 days after the date on which a request for rehearing of a final written decision issued by the Patent and Trial Appeal Board under subsection (a) is filed, the Board or the Director shall finally decide any request for reconsideration, rehearing, or review that is submitted with respect to the decision, except that the Director may, for good cause shown, extend that 90-day period by not more than 60 days. (f) Review by director (1) In general The Director may grant rehearing, reconsideration, or review of a decision by the Patent Trial and Appeal Board issued under this chapter. (2) Requirements Any reconsideration, rehearing, or review by the Director, as described in paragraph (1), shall be issued in a separate written opinion that— (A) is made part of the public record; and (B) sets forth the reasons for the reconsideration, rehearing, or review of the decision by the Patent Trial and Appeal Board. (g) Rule of construction For the purposes of an appeal permitted under section 141, any decision on rehearing, reconsideration, or review of a final written decision of the Patent Trial and Appeal Board under subsection (a) of this section that is issued by the Director shall be deemed to be a final written decision of the Patent Trial and Appeal Board.. (g) Timing To issue decisions on remand Section 329 of title 35, United States Code, is amended— (1) by striking A party and inserting the following: (a) In general A party; and (2) by adding at the end the following: (b) Timing on remand after appeal Not later than 120 days after the date on which a mandate issues from the court remanding to the Patent Trial and Appeal Board after an appeal under subsection (a), the Board or the Director shall finally decide any issue on remand, except that the Director may, for good cause shown, extend that 120-day period by not more than 60 days..