on apportionment of damages: Perhaps the greatest single obstacle to a patent reform compromise is how to calculate infringement damages, particularly, as in the high-tech world, when the infringing component is only part of a larger and more complex device. U.S. district courts currently use a flexible 15-factor test from a 1971 decision by the 2d U.S. Circuit Court of Appeals, Georgia Pacific Corp. v. U.S. Plywood-Champion Papers Inc.
on post-grant review: The second major issue dividing the stakeholders concerns how to challenge the validity of patents. Given the reality of practice before the U.S. Patent and Trademark Office (PTO), "We have no way to challenge a patent we think is invalid, absent litigation," said Michael T. Siekman, an intellectual property lawyer at Boston's Wolf, Greenfield & Sacks. [IPBiz notes that three of Thomson/WARF's patents on embryonic stem cells are currently being challenged by re-examination, with no litigation proceeding.] Big technology and the financial services industry are facing many lawsuits from people derogatorily called patent trolls, Siekman said. Companies are finding themselves in lawsuits in areas in which they never dreamt they would face lawsuits and on patents that seem laughable on their face, he added.
specifically of the second window of review: The House committee eliminated the "second window" and decided to expand an existing but limited procedure known as the inter-partes re-examination procedure, which allows third parties to challenge a patent on novelty grounds in the PTO. [IPBiz notes: the third Thomson/WARF patent is currently being challenged through inter partes re-exam.] The Senate bill still has the second window and, according to some, a very low threshold for challenges. By expanding the inter-partes procedure, "We know what we're working with. It seems to us a fairly good idea," said BIO's Sauer.
Coyle quoted Wegner: "In a nutshell, nothing is going to pass," said Harold Wegner, an intellectual property law partner in the Washington office of Foley & Lardner, who has witnessed more patent reform efforts in more years than he cares to count.