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A rule has implications for federalism

under Executive Order 13132,

(Federalism), if it has a substantial

direct effect on the States, on the

relationship between the national

government and the States, or on the

distribution of power and

responsibilities among the various

levels of government. We have analyzed

this proposed rule under that Order and

have determined that it is consistent

with the fundamental federalism

principles and preemption requirements

described in Executive Order 13132.

Also, this proposed rule does not have

tribal implications under Executive

Order 13175, (Consultation and

Coordination with Indian Tribal

Governments), because it would not

have a substantial direct effect on one or

more Indian tribes, on the relationship

between the Federal Government and

Indian tribes, or on the distribution of

power and responsibilities between the

Federal Government and Indian tribes.

If you believe this proposed rule has

implications for federalism or Indian

tribes, please contact the person listed

in the

FOR FURTHER INFORMATION

CONTACT

section.

E. Unfunded Mandates Reform Act

The Unfunded Mandates Reform Act

of 1995 (2 U.S.C. 1531–1538) requires

Federal agencies to assess the effects of

their discretionary regulatory actions. In

particular, the Act addresses actions

that may result in the expenditure by a

State, local, or tribal government, in the

aggregate, or by the private sector of

$100,000,000 (adjusted for inflation) or

more in any one year. Though this

proposed rule will not result in such an

expenditure, we do discuss the effects of

this proposed rule elsewhere in this

preamble.

F. Environment

We have analyzed this proposed rule

under Department of Homeland

Security Management Directive 023–01,

Rev.1, associated implementing

instructions, and Environmental

Planning Policy COMDTINST 5090.1

(series), which guide the Coast Guard in

complying with the National

Environmental Policy Act of 1969

(NEPA)(42 U.S.C. 4321–4370f). The

Coast Guard has determined that this

action is one of a category of actions

which do not individually or

cumulatively have a significant effect on

the human environment. This proposed

rule simply promulgates the operating

regulations or procedures for

drawbridges. Normally such actions are

categorically excluded from further

review, under paragraph L49, of Chapter

3, Table 3–1 of the U.S. Coast Guard

Environmental Planning

Implementation Procedures.

Neither a Record of Environmental

Consideration nor a Memorandum for

the Record are required for this rule. We

seek any comments or information that

may lead to the discovery of a

significant environmental impact from

this proposed rule.

G. Protest Activities

The Coast Guard respects the First

Amendment rights of protesters.

Protesters are asked to contact the

person listed in the

FOR FURTHER

INFORMATION CONTACT

section to

coordinate protest activities so that your

message can be received without

jeopardizing the safety or security of

people, places or vessels.

V. Public Participation and Request for

Comments

We view public participation as

essential to effective rulemaking, and

will consider all comments and material

received during the comment period.

Your comment can help shape the

outcome of this rulemaking. If you

submit a comment, please include the

docket number for this rulemaking,

indicate the specific section of this

document to which each comment

applies, and provide a reason for each

suggestion or recommendation.

We encourage you to submit

comments through the Federal

eRulemaking Portal at http://

www.regulations.gov. If your material

cannot be submitted using http://

www.regulations.gov, contact the person

in the

FOR FURTHER INFORMATION

CONTACT

section of this document for

alternate instructions.

We accept anonymous comments. All

comments received will be posted

without change to http://

www.regulations.gov and will include

any personal information you have

provided. For more about privacy and

submissions in response to this

document, see DHS’s eRulemaking

System of Records notice (85 FR 14226,

March 11, 2020).

Documents mentioned in this NPRM

as being available in this docket and all

public comments, will be in our online

docket at http://www.regulations.gov

and can be viewed by following that

website’s instructions. Additionally, if

you go to the online docket and sign up

for email alerts, you will be notified

when comments are posted or a final

rule is published.

List of Subjects in 33 CFR Part 117

Bridges.

For the reasons discussed in the

preamble, the Coast Guard proposes to

amend 33 CFR part 117 as follows:

PART 117—DRAWBRIDGE

OPERATION REGULATIONS

■ 1. The authority citation for part 117

continues to read as follows:

Authority: 33 U.S.C. 499; 33 CFR 1.05–1;

DHS Delegation No. 0170.1.

■ 2. Revise § 117.297 to read as follows:

§ 117.297 Little Manatee River.

The draw for the CSX Railroad Bridge,

mile 2.4 near Ruskin FL, shall operate

as follows:

(a) The bridge is normally maintained

in the closed position.

(b) The bridge is not tendered locally,

but will be monitored and operated by

a remote bridge tender. The draw must

open if at least three hours advance

notice is requested via marine radio

channel 9 VHF or telephone (813) 677–

3974.

be maintained, by the remote bridge

tender, with mariners near the bridge for

the safety of navigation. Visual

monitoring of the waterway shall be

maintained with the use of cameras.

Detection sensors shall be installed for

the detection of vessels approaching the

spans.

(d) The bridge shall not be operated

from the remote location in the

following events: Failure or obstruction

of the detection sensors, cameras or

marine radio communications. In these

situations, a bridge tender must be on-

site and locally operate the bridge.

Dated: October 7, 2020.

Eric C. Jones,

Rear Admiral, U.S. Coast Guard, Commander,

Seventh Coast Guard District.

[FR Doc. 2020–22607 Filed 10–19–20; 8:45 am]

BILLING CODE 9110–04–P

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 42

[Docket No. PTO–C–2020–0055]

Request for Comments on Discretion

To Institute Trials Before the Patent

Trial and Appeal Board

AGENCY

: Patent Trial and Appeal Board,

United States Patent and Trademark

Office, Department of Commerce.

ACTION

: Request for comments.

SUMMARY

: The United States Patent and

Trademark Office (Office or USPTO)

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Under Section 18 of the AIA, the transitional

program for post-grant review of covered business

method patents sunset on September 16, 2020. AIA

§ 18(a). Although the program has sunset, existing

CBM proceedings, based on petitions filed before

September 16, 2020, are still pending.

seeks public comments on

considerations for instituting trials

before the Office under the Leahy-Smith

America Invents Act (AIA). The USPTO

is considering the codification of its

current policies and practices, or the

modification thereof, through

rulemaking and wishes to gather public

comments on the Office’s current

approach and on various other

approaches suggested to the Office by

stakeholders. To assist in gathering

public input, the USPTO is publishing

questions, and seeks focused public

comments, on appropriate

considerations for instituting AIA trials.

DATES

: Comment date: Written

comments must be received on or before

November 19, 2020.

ADDRESSES

: For reasons of government

efficiency, comments must be submitted

through the Federal eRulemaking Portal

at https://www.regulations.gov. To

submit comments via the portal, enter

docket number PTO–C–2020–0055 on

the home page and click ‘‘search.’’ The

site will provide a search results page

listing all documents associated with

this docket. Find a reference to this

Request for Comments and click on the

‘‘Comment Now!’’ icon, complete the

required fields, and enter or attach your

comments. Attachments to electronic

comments will be accepted in ADOBE

portable document format or

MICROSOFT WORD

format. Because

comments will be made available for

public inspection, information that the

submitter does not desire to make

public, such as an address or phone

number, should not be included in the

comments.

Visit the Federal eRulemaking Portal

(https://www.regulations.gov) for

additional instructions on providing

comments via the portal. If electronic

submission of comments is not feasible

due to a lack of access to a computer

and/or the internet, please contact the

USPTO using the contact information

below for special instructions regarding

how to submit comments by mail or by

hand delivery, based on the public’s

ability to obtain access to USPTO

facilities at the time.

FOR FURTHER INFORMATION CONTACT

Scott C. Weidenfeller, Vice Chief

Administrative Patent Judge, by

telephone at 571–272–9797.

SUPPLEMENTARY INFORMATION

Background

Development of This Request for

Comments

On September 16, 2011, the AIA was

enacted into law (Pub. L. 112–29, 125

Stat. 284 (2011)), and in 2012, the Office

implemented rules to govern Office trial

practice for AIA trials, including IPR,

PGR, CBM,

and derivation proceedings

pursuant to 35 U.S.C. 135, 316, and 326

and AIA 18(d)(2). See Rules of Practice

for Trials Before the Patent Trial and

Appeal Board and Judicial Review of

Patent Trial and Appeal Board

Decisions, 77 FR 48612 (Aug. 14, 2012);

Changes to Implement Inter Partes

Review Proceedings, Post-Grant Review

Proceedings, and Transitional Program

for Covered Business Method Patents,

77 FR 48680 (Aug. 14, 2012);

Transitional Program for Covered

Business Method Patents—Definitions

of Covered Business Method Patent and

Technological Invention, 77 FR 48734

(Aug. 14, 2012). Additionally, the Office

published a Patent Trial Practice Guide

to advise the public on the general

framework of the rules and proceedings,

including the structure and times for

taking action in each of the new

proceedings. See Office Patent Trial

Practice Guide, 77 FR 48756 (Aug. 14,

2012). Since then, the Office has

designated more than 40 decisions in

such proceedings as precedential or

informative, and it has issued several

updates to the Trial Practice Guide that

were subsequently consolidated. See

Patent Trial and Appeal Board

Consolidated Trial Practice Guide (Nov.

2019) (Consolidated Trial Practice

Guide or CTPG), available at https://

www.uspto.gov/

TrialPracticeGuideConsolidated. In its

ongoing effort to achieve consistency

and fairness, the Office is considering

promulgating additional rules based on

this broad experience as it relates to

considerations for instituting AIA trials.

Discretion in Deciding Whether To

Institute AIA Trials

Director’s Discretionary Institution

Authority in General

By way of background, the Patent

Trial and Appeal Board (PTAB or

Board) institutes a trial on behalf of the

Director. 37 CFR 42.4(a); 35 U.S.C. 314.

In deciding whether to institute the

trial, the Board considers, at a

minimum, whether a petitioner has

satisfied the relevant statutory

institution standard. Even in cases

where a petitioner has satisfied the

institution standard, the statutes,

including 35 U.S.C. 314(a) and 324(a),

provide the Director with discretion to

deny a petition. See, e.g., 35 U.S.C.

314(a) (‘‘The Director may not authorize

an inter partes review to be instituted

unless . . .’’). The Supreme Court held

that ‘‘the agency’s decision to deny a

petition is a matter committed to the

Patent Office’s discretion,’’ and that

there is ‘‘no mandate to institute

review.’’ Cuozzo Speed Techs., LLC v.

Lee, 136 S. Ct. 2131, 2140 (2016).

The Director also is given broad

discretion under 35 U.S.C. 315(d) and

325(d) to determine the manner in

which ‘‘multiple proceedings’’ before

the Office involving the same patent

may proceed. Specifically, ‘‘the Director

may determine the manner in which the

. . . other proceeding or matter may

proceed, including providing for stay,

transfer, consolidation, or termination of

any such matter or proceeding.’’ Id.

Under 35 U.S.C. 316(a) and 326(a), the

Director shall prescribe regulations for

certain enumerated aspects of AIA

proceedings, and under 35 U.S.C.

2(b)(2)(A), the Director may establish

regulations that ‘‘shall govern the

conduct of proceedings in the Office.’’

Further, 35 U.S.C. 316(b) and 326(b)

require the Director to ‘‘consider the

effect of any such regulation [under this

section] on the economy, the integrity of

the patent system, the efficient

administration of the Office, and the

ability of the Office to timely complete

proceedings instituted under this

chapter.’’

Congress designed the AIA ‘‘to

establish a more efficient and

streamlined patent system that will

improve patent quality and limit

unnecessary and counterproductive

litigation costs.’’ H.R. Rep. No. 112–98,

pt. 1, at 40 (2011), 2011 U.S.C.C.A.N. 67,

69; see also S. Rep. No. 110–259, at 20

(2008). At the same time, Congress

instructed that ‘‘the changes made by

[the AIA] are not to be used as tools for

harassment or a means to prevent

market entry through repeated litigation

and administrative attacks on the

validity of a patent. Doing so would

frustrate the purpose of the section as

providing quick and cost effective

alternatives to litigation.’’ H.R. Rep. No.

112–98, at 48 (2011).

To achieve the appropriate balance

envisioned by Congress, the Office has

taken into account a variety of factors

when determining whether to institute a

proceeding. In so doing, the Office has

also taken into account the

considerations identified in 35 U.S.C.

316(b) and 326(b): The economy, the

integrity of the patent system, the

efficient administration of the Office,

and the ability of the Office to timely

complete instituted proceedings. The

Office has also worked to address the

emergence of repeated administrative

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attacks on the patentability of the same

patent claims and the harassment of

patent owners.

The case-specific analysis the Office

has developed attempt to balance

Congress’s intent for AIA proceedings to

be ‘‘quick and cost effective alternatives

to litigation,’’ on the one hand, with

‘‘the importance of quiet title to patent

owners to ensure continued investment

resources,’’ on the other hand. H.R. Rep.

No. 112–98, pt. 1, at 48 (2011). For

example, the Office has set forth, in

various precedential PTAB decisions,

various factors used in its case-specific

analysis. See, e.g., General Plastic Co.,

Ltd. v. Canon Kabushiki Kaisha,

IPR2016–01357, 2017 WL 3917706, at

*7 (PTAB Sept. 6, 2017) (precedential)

(providing a nonexclusive list of factors

that the Board considers when

evaluating discretionary denial of

follow-on petitions, also known as

‘‘serial’’ petitions, under 35 U.S.C.

314(a)); Valve Corp. v. Elec. Scripting

Prods., Inc., IPR2019–00062, –00063,

–00084, 2019 WL 1490575 (PTAB Apr.

2, 2019) (precedential) (Valve I)

(explaining that the Board considers any

relationship between petitioners when

weighing the General Plastic factors);

Valve Corp. v. Elec. Scripting Prods.,

Inc., IPR2019–00064, –00065, –00085,

2019 WL 1965688 (PTAB May 1, 2019)

(Valve II) (applying the first General

Plastic factor to a petitioner that joined

a previously instituted IPR proceeding

and, therefore, is considered to have

previously filed a petition directed to

the same claims of the same patent);

Apple Inc. v. Fintiv, Inc., IPR2020–

00019, 2020 WL 2126495 (PTAB Mar.

20, 2020) (precedential) (summarizing

the factors the Office has considered

when a patent owner argues for

discretionary denial under NHK Spring

Co., Ltd. v. Intri-Plex Techs., Inc.,

IPR2018–00752, 2018 WL 4373643

(PTAB Sept. 12, 2018) (precedential)

due to an earlier trial date).

These same considerations are also

represented in various informative

decisions. See, e.g., Sand Revolution II,

LLC v. Continental Intermodal Group-

Trucking LLC, 2020 WL 3273334 (PTAB

June 16, 2020) (informative) (applying

the factors set forth in the precedential

Fintiv decision to grant institution);

Apple Inc. v. Fintiv, Inc., IPR2020–

00019, 2020 WL 2486683 (PTAB May

13, 2020) (informative) (applying the

factors set forth in the precedential

Fintiv decision to deny institution);

Adaptics Ltd. v. Perfect Co., IPR2018–

01596, 2019 WL 1084284 (PTAB Mar. 6,

2019) (informative) (applying discretion

to deny a petition where the petition

lacks particularity in identifying the

asserted challenges that resulted in

voluminous and excessive grounds);

Deeper, UAB v. Vexilar, Inc., IPR2018–

01310, 2019 WL 328753 (PTAB Jan. 24,

2019) (informative) (applying discretion

to deny a petition where the petitioner

demonstrates a reasonable likelihood of

prevailing only as to 2 claims out of 23

claims challenged and only as to 1 of 4

asserted grounds of unpatentability);

Chevron Oronite Co. v. Infineum USA

L.P., IPR2018–00923, 2018 WL 5862245

(PTAB Nov. 7, 2018) (informative)

(applying discretion to deny a petition

where the petitioner demonstrates a

reasonable likelihood of prevailing only

as to 2 claims out of 20 claims

challenged).

As the Office explained in the

Consolidated Trial Practice Guide,

consideration of this case-specific

analysis is ‘‘part of a balanced

assessment of all relevant circumstances

in the case, including the merits.’’ CTPG

at 58 (discussing consideration of the

merits as part of a balanced assessment

of the General Plastic factors); see also

Fintiv, 2020 WL 2126495, at *2–3, 6–7

(discussing consideration of the merits

in the context of discretionary denial).

Informed by similar considerations,

the Office has also provided guidance

on the number of petitions typically

required by a petitioner to challenge the

same patent at or about the same time.

See CTPG 59–61 (first introduced in

Trial Practice Guide Update (July 2019)

at 26–28, available at https://

www.uspto.gov/TrialPracticeGuide3

(requiring petitioners to rank multiple

petitions filed at the same time that seek

to challenge the same patent)). The

Board explained that, based on its prior

experience, ‘‘one petition should be

sufficient to challenge the claims of a

patent in most situations.’’ Id. at 59. In

some cases, depending on

circumstances, ‘‘two petitions by a

petitioner may be needed, although this

should be rare.’’ Id. The Board,

however, concluded that it is ‘‘unlikely

that circumstances will arise where

three or more petitions by a petitioner

with respect to a particular patent will

be appropriate.’’ Id.

The Office is now considering

promulgating rules based on the

framework of the guidance provided in

these decisions and in the Consolidated

Trial Practice Guide, or a modified

framework as appropriate, based on

public input and further analysis. These

considerations form the impetus for this

request for comments and the questions

presented below.

Discretion Under 35 U.S.C. 314(a) and

324(a)

Addressing Serial Petitions

General Plastic, the Board

recognized the goals of the AIA and also

‘‘recognize[d] the potential for abuse of

the review process by repeated attacks

on patents.’’ 2017 WL 3917706, at *7

(citing H.R. Rep. No. 112–98, pt. 1, at 48

(2011)). To aid the Board’s assessment

of ‘‘the potential impacts on both the

efficiency of the IPR process and the

fundamental fairness of the process for

all parties,’’ General Plastic enumerated

a number of nonexclusive factors that

the Board will consider in a case-

specific analysis for exercising

discretion on instituting an IPR,

especially as to ‘‘follow-on’’ or ‘‘serial’’

petitions challenging the same patent as

challenged previously in an IPR, PGR,

or CBM proceeding. Id. at *8. The

General Plastic nonexclusive factors

include: (1) Whether the same petitioner

previously filed a petition directed to

the same claims of the same patent; (2)

whether, at the time of filing of the first

petition, the petitioner knew of the prior

art asserted in the second petition or

should have known of it; (3) whether, at

the time of filing of the second petition,

the petitioner had already received a

patent owner’s preliminary response to

the first petition or received the Board’s

decision on whether to institute review

in the first petition; (4) the length of

time that elapsed between the time the

petitioner learned of the prior art

asserted in the second petition and the

filing of the second petition; (5) whether

the petitioner provides an adequate

explanation for the time elapsed

between the filings of multiple petitions

directed to the same claims of the same

patent; (6) the finite resources of the

Board; and (7) the requirement under 35

U.S.C. 316(a)(11) to issue a final

determination not later than one year

after the date on which the Director

notices institution of review. Id. at *7.

Since General Plastic, the Office has

explained that the application of the

first General Plastic factor is not limited

to instances where multiple petitions

are filed by the same petitioner. For

instance, in Valve I, the Board denied

institution when a party filed follow-on

petitions for IPR after the denial of an

earlier IPR request of the same claims

filed by the party’s co-defendant. Valve

I, 2019 WL 1490575, at *4–5. The Board

held that when different petitioners

challenge the same patent, the Board

considers the relationship, if any,

between those petitioners when

weighing the General Plastic factors. Id.

The Office also explained, in Valve II,

that the first General Plastic factor

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applies to a later petitioner when this

petitioner previously joined an

instituted IPR proceeding and, therefore,

was considered to have previously filed

a petition directed to the same claims of

the same patent. Valve II, 2019 WL

1965688, at *4–5. The relationships

between petitioners in follow-on

petition scenarios depend on the

circumstances of the follow-on petition

scenario.

Addressing Timely Completion of

Proceedings and Efficient

Administration of the Office

General Plastic also includes

additional factors that are not limited to

the follow-on petitions but are more

generally directed toward the timely

completion of proceedings and efficient

administration of the Office. Under

SAS, if the Board decides to institute

based on one claim, it must institute on

all claims and grounds set forth in the

petition. SAS, 138 S. Ct. at 1359–60;

Adidas AG v. Nike, Inc., 894 F.3d 1256,

1258 (Fed. Cir. 2018) (‘‘[e]qual treatment

of claims and grounds for institution

purposes has pervasive support in

SAS’’). As explained in the

Consolidated Trial Practice Guide,

however, the Board may decide not to

institute the petition if it determines

that the petition meets the standards for

institution in relation to fewer than all

the challenges presented, even when the

petition includes at least one claim

subject to a challenge that otherwise

meets the criteria for institution. CTPG

at 64 (discussing Deeper and Chevron).

Likewise, the Board may decide not to

institute where deficiencies in the

petition, such as a lack of particularity

in identifying the asserted challenges,

result in voluminous and excessive

grounds. See Adaptics, 2019 WL

1084284, at *7–10.

Addressing Parallel Petitions

As explained in the Consolidated

Trial Practice Guide in relation to

parallel petitions challenging the same

patent at or about the same time, in the

Board’s experience, one petition should

be sufficient for a petitioner to challenge

the claims of a patent in most situations.

CTPG at 59. The Office has explained

that ‘‘[t]wo or more petitions filed

against the same patent at or about the

same time (e.g., before the first

preliminary response by a patent owner)

may place a substantial and unnecessary

burden on the Board and the patent

owner and could raise fairness, timing,

and efficiency concerns.’’ Id. The Office

has also explained that ‘‘multiple

petitions by a petitioner are not

necessary in the vast majority of cases.’’

Id. (‘‘To date, a substantial majority of

patents have been challenged with a

single petition.’’).

Nonetheless, the Office explained that

circumstances may exist in which more

than one petition may be necessary,

including, for example, when a patent

owner has asserted a large number of

claims in litigation or when there is a

dispute about priority date, thereby

requiring unpatentability challenges

under multiple prior art references. Id.

‘‘In such cases two petitions by a

petitioner may be needed, although this

should be rare.’’ Id. The Office also

explained that ‘‘based on prior

experience, the Board finds it unlikely

that circumstances will arise where

three or more petitions by a petitioner

with respect to a particular patent will

be appropriate.’’ Id. To aid the Board in

this case-specific analysis for

determining whether more than one

petition is necessary, the Office directed

the parties to address the issue in their

pre-institution filings. Id. at 59–60.

Addressing Proceedings in Other

Tribunals

The Consolidated Trial Practice Guide

explains that events in other

proceedings related to the same patent,

either at the Office, in U.S. district

courts or at the U.S. International Trade

Commission (ITC), may also impact the

institution decision. CTPG at 58. In a

prior precedential decision, for

example, the Board found that the

advanced state of a district court

proceeding was a factor weighing in

favor of not instituting under 35 U.S.C.

314(a), in addition to arguments under

35 U.S.C. 325(d). NHK, 2018 WL

4373643, at *7. Such advanced

proceedings in other tribunals have the

potential to undermine the intent that

AIA proceedings be quick and cost-

effective alternatives, and instead may

add costs, lengthen the proceedings, and

risk coordinate branches of the

Government having different outcomes

on similar facts.

Since designating NHK as

precedential, the Board has applied

nonexclusive factors that it considers in

a case-specific analysis when a patent

owner raises an argument for

discretionary denial based on a parallel

proceeding in another tribunal, such as

a U.S. district court. The Board recently

summarized these factors in Fintiv: (1)

Whether the court granted a stay or

evidence exists that one may be granted

if a proceeding is instituted; (2)

proximity of the court’s trial date to the

Board’s projected statutory deadline for

a final written decision; (3) investment

in the parallel proceeding by the court

and the parties; (4) overlap between the

issues raised in the petition and in the

parallel proceeding; (5) whether the

petitioner and the defendant in the

parallel proceeding are the same party;

and (6) other circumstances that impact

the Board’s exercise of discretion,

including the merits. Fintiv, 2020 WL

2126495, at *2–3. The Board explained

that ‘‘[t]hese factors relate to whether

efficiency, fairness, and the merits

support the exercise of authority to deny

institution in view of an earlier trial

date in the parallel proceeding.’’ Id. at

*3.

Public Input

The Office already has received input

from stakeholders on the Office policies

discussed above and on use of the

Office’s discretion in institution of an

AIA trial. The most prevalent input that

the Office has received from

stakeholders is that the case-specific

analysis outlined in the foregoing

precedential opinions and the

Consolidated Trial Practice Guide

achieves the appropriate balance and

reduces gamesmanship. Among other

things, stakeholders have indicated that

the Office’s use of discretion as outlined

above helps to ensure that (a) AIA

proceedings do not create excessive

costs and uncertainty for the patent

owner and the system, while (b)

meritorious challenges by petitioners

can be maintained.

However, some stakeholders have

proposed that the Office adopt a bright-

line rule that it should use its discretion

to preclude claims from being subject to

more than one AIA proceeding,

regardless of the circumstances. In other

words, once a trial is instituted against

certain claims, this proposal would

preclude the Office from instituting

further AIA trials that include

challenges by any party to any of the

same claims if the patent owner opposes

institution.

Other stakeholders have proposed

that the Office should only permit more

than one AIA proceeding if the follow-

on petitioner is unrelated to the prior

petitioner. A petitioner, a petitioner’s

real parties in interest, and privies of a

petitioner would be limited to filing a

single petition for a challenged claim,

regardless of the circumstances.

By contrast, the Office has received

input from some stakeholders proposing

that the Office adopt a bright-line

approach that there should be no limits

on the number of petitions that can be

filed or the number of AIA trials that

can be instituted against the claims of a

patent, so long as the petition complies

with statutory timing requirements, e.g.,

the one-year bar under 35 U.S.C. 315(b),

and meets the particular institution

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Federal Register / Vol. 85, No. 203 / Tuesday, October 20, 2020 / Proposed Rules

threshold of showing that at least one

claim of the patent is unpatentable.

The Office has also received input

from stakeholders proposing that the

Office adopt a bright-line rule that

precludes institution of an AIA trial

against challenged claims if the patent

owner opposes institution and any of

the challenged claims are or have been

asserted against the petitioner, the

petitioner’s real party in interest, or a

privy of the petitioner in a district court

or ITC action that is unlikely to be

stayed.

By contrast, the Office also has

received input from other stakeholders

proposing that the Office adopt a bright-

line rule to eliminate any consideration

of the state of any district court or ITC

actions involving the challenged patent,

so long as the petition complies with

statutory timing requirements and meets

the particular institution threshold of

showing that at least one claim of the

patent is unpatentable.

In light of the various contrasting

views from some stakeholders, the

Office solicits further public input on

what should be considered as part of a

balanced assessment of the relevant

circumstances when exercising its

discretion to institute an AIA trial.

Issues for Comment

The USPTO seeks comments on

considerations for instituting AIA trials

as it relates to serial and parallel AIA

petitions, as well as proceedings in

other tribunals. The questions

enumerated below are a preliminary

guide to aid the USPTO in collecting

relevant information to assist in

modifications, if any, to its current

practices, and in the development of

any possible rulemaking on this subject.

The questions should not be taken as an

indication that the USPTO has taken a

position or is predisposed to any

particular views. The USPTO welcomes

comments from the public on any issues

believed to be relevant to these topics,

and is particularly interested in answers

to the following questions:

Serial Petitions

1. Should the Office promulgate a rule

with a case-specific analysis, such as

generally outlined in General Plastic,

Valve I, Valve II and their progeny, for

deciding whether to institute a petition

on claims that have previously been

challenged in another petition?

2. Alternatively, in deciding whether

to institute a petition, should the Office

(a) altogether disregard whether the

claims have previously been challenged

in another petition, or (b) altogether

decline to institute if the claims have

previously been challenged in another

petition?

Parallel Petitions

3. Should the Office promulgate a rule

with a case-specific analysis, such as

generally outlined in the Consolidated

Trial Practice Guide, for deciding

whether to institute more than one

petition filed at or about the same time

on the same patent?

4. Alternatively, in deciding whether

to institute more than one petition filed

at or about the same time on the same

patent, should the Office (a) altogether

disregard the number of petitions filed,

or (b) altogether decline to institute on

more than one petition?

Proceedings in Other Tribunals

5. Should the Office promulgate a rule

with a case-specific analysis, such as

generally outlined in Fintiv and its

progeny, for deciding whether to

institute a petition on a patent that is or

has been subject to other proceedings in

a U.S. district court or the ITC?

6. Alternatively, in deciding whether

to institute a petition on a patent that is

or has been subject to other proceedings

in district court or the ITC, should the

Office (a) altogether disregard such

other proceedings, or (b) altogether

decline to institute if the patent that is

or has been subject to such other

proceedings, unless the district court or

the ITC has indicated that it will stay

the action?

Other Considerations

7. Whether or not the Office

promulgates rules on these issues, are

there any other modifications the Office

should make in its approach to serial

and parallel AIA petitions, proceedings

in other tribunals, or other use of

discretion in deciding whether to

institute an AIA trial?

Andrei Iancu,

Under Secretary of Commerce for Intellectual

Property and Director of the United States

Patent and Trademark Office.

[FR Doc. 2020–22946 Filed 10–19–20; 8:45 am]

BILLING CODE 3510–16–P

ENVIRONMENTAL PROTECTION

AGENCY

40 CFR Part 721

[EPA–HQ–OPPT–2020–0497; FRL–10015–

28]

RIN 2070–AB27

Significant New Use Rules on Certain

Chemical Substances (20–10.B)

AGENCY

: Environmental Protection

Agency (EPA).

ACTION

: Proposed rule.

SUMMARY

: EPA is proposing significant

new use rules (SNURs) under the Toxic

Substances Control Act (TSCA) for

chemical substances which are the

subject of premanufacture notices

(PMNs). This action would require

persons to notify EPA at least 90 days

before commencing manufacture

(defined by statute to include import) or

processing of any of these chemical

substances for an activity that is

designated as a significant new use by

this proposed rule. This action would

further require that persons not

commence manufacture or processing

for the significant new use until they

have submitted a Significant New Use

Notice (SNUN), and EPA has conducted

a review of the notice, made an

appropriate determination on the notice,

and has taken any risk management

actions as are required as a result of that

determination.

DATES

: Comments must be received on

or before November 19, 2020.

ADDRESSES

: Submit your comments,

identified by docket identification (ID)

number EPA–HQ–OPPT–2020–0497,

using the Federal eRulemaking Portal at

http://www.regulations.gov. Follow the

online instructions for submitting

comments. Do not submit electronically

any information you consider to be

Confidential Business Information (CBI)

or other information whose disclosure is

restricted by statute.

Due to the public health emergency,

the EPA Docket Center (EPA/DC) and

Reading Room is closed to visitors with

limited exceptions. The staff continues

to provide remote customer service via

email, phone, and webform. For the

latest status information on EPA/DC

services and docket access, visit https://

www.epa.gov/dockets.

FOR FURTHER INFORMATION CONTACT

For technical information contact:

William Wysong, Chemical Control

Division (7405M), Office of Pollution

Prevention and Toxics, Environmental

Protection Agency, 1200 Pennsylvania

Ave. NW, Washington, DC 20460–0001;

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