November 8, 2023

The Honorable Richard J. Durbin Chairman, Committee on the Judiciary United States Senate
Washington, DC 20510

The Honorable Lindsey O. Graham Ranking Member, Committee on the Judiciary
United States Senate
Washington, DC 20510

Dear Chairman Durbin and Ranking Member Graham,

The organizations joining this letter represent the nation’s leading microchip and technology manufacturers, automotive companies, financial services providers, Main Street retailers, construction companies, grocers, hotels, and restaurants, as well as respected think tanks and civil society groups focused on intellectual property policy.

We employ tens of millions of American workers, invest hundreds of billions of dollars each year in research and development, and make products that are critical to the health and well-being of the American people. We are the core of the U.S. economy.

Our businesses frequently are sued based on invalid patents that were improperly granted. The U.S. Patent and Trademark Office (USPTO) issues over 350,000 patents annually. In recent years, claims in more than 40% of challenged patents have been found to be invalid. Lawsuits asserting invalid patents exact a heavy toll on U.S. industry—they represent jobs lost and manufacturing investment foregone.

Patent validity reviews before the experts at the USPTO’s Patent Trial and Appeal Board (PTAB) are often the only reliable and accurate check on a patent’s validity. Indeed, when the USPTO recently experimented with arbitrary and legally questionable restrictions on PTAB review, the result was that a foreign hedge fund was able to obtain over $3 billion in damages awards against America’s leading chipmaker—based on patents that the USPTO has since acknowledged never should have issued.[1]

We do not believe that businesses confronted with invalid patents should be unreasonably impeded from seeking review of those patents at the PTAB.

Among other things, the PREVAIL Act would:

PREVAIL would damage America’s manufacturing base. The Administration and a bipartisan Congress have committed to strengthening domestic semiconductor manufacturing and persuading foreign companies to build chip fabs in the United States. PREVAIL would undercut these efforts. It would also harm American consumers. When Congress considered similar restrictions on access to PTAB review several years ago, the Congressional Budget Office concluded that such policies would cost U.S. taxpayers over $1 billion.

The Leahy-Smith America Invents Act (AIA) was a remarkable legislative achievement. Large, bipartisan majorities of Congress agreed to modernize America’s patent system to ensure that reliable, expert validity reviews could be conducted timely and efficiently—allowing valid patents to be enforced while invalid claims would be canceled. PREVAIL seeks to undo the important work and collaboration that resulted in the AIA. It would deny innovative manufacturers and job creators their benefit of the bargain, principally to the benefit of patent assertion entities that seek to monetize invalid patents. Congress should maintain and support the compromise that it reached in the AIA.

Rather than weakening review proceedings, the Committee would be better served by considering legislation to strengthen PTAB review and protect it from the type of political interference and ultra vires policies that have undermined perceptions of the PTAB’s legitimacy in recent years. We urge the Committee not to move forward with the PREVAIL Act.


ACT | The App Association
Alliance for Automotive Innovation
Bank Policy Institute
Business Software Alliance
Computer and Communications Industry Association
Consumer Technology Association
Electronic Transaction Association
High Tech Inventors Alliance
National Retail Federation
R Street Institute
Software & Information Industry Association
The Clearing House Association
United for Patent Reform

Read the original letter below:

[1] See OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064 (May 12, 2023); Patent Quality Assurance, LLC v. VLSI Tech. LLC, IPR2021-01229 (Jun. 13, 2023).