Thursday, June 04, 2015

A marked-up PATENT Act leaves the Senate Judiciary Committee on 4 June 2015

The PATENT Act, introduced in the Senate by Senate Judiciary Committee chairman Charles Grassley, Iowa Republican, and ranking member Patrick Leahy, Vermont Democrat, and backed by Charles Schumer, moved out of the Judiciary Committee on 4 June 2015.

The Washington Times noted:

During Thursday’s [June 4] markup, the Senate moved to amend its fee-shifting provision to allow a judge to consider “undue economic hardship to a named inventor or institution of higher education” when determining if “special circumstances” make a fee award unjust.

Despite the tweaks, The Innovation Alliance, whose members include Qualcomm and Dobly Labs, said “significant work” still needs to be done on the bill before it can be widely supported by stakeholders and the broader Senate.

“The Innovation Alliance will continue to advocate for common sense improvements to these provisions to ensure that the [bill] targets the existing abuse by some patent plaintiffs without creating new avenues for abuse by patent defendants in the future,” The Alliance said in a statement Thursday. “We can strengthen our patent laws without undermining intellectual property rights and crippling a system that is so important to incentivizing innovation and job creation in our country.”


The Washington Post notes that "post grant review" is being tweaked in the PATENT Act:

But critics of the review process say it's too easy to get a patent invalidated — and so new provisions have been added that could lead to fewer patents getting invalidated through post-grant review.


Note the pro-IPR piece in TheHill,

***Bloomberg included mention of Kyle Bass in discussing inter partes review

“Big Pharma has hired 100 lobbyists to lobby both the Senate and the House,” Bass said in an interview. “They’ve acted in an alarmist way that leads me to believe their intellectual property must not be as safe as they say it is.”

The drugmakers say his real motive is to make money by betting the petitions will cause stocks to fall.

“Use of the inter partes review process as a tool to manipulate markets is not what Congress intended,” Acorda Therapeutics Inc. said in a filing asking the agency to reject Bass’s petition to cancel a patent on the multiple sclerosis drug Ampyra.


***InvestorsHub notes:

The new version of the bill would require the PTAB to stop using the "broadest reasonable interpretation" standard for claim construction in AIA reviews, which makes it relatively easy to invalidate patents.

Instead, the bill would require the board to use the same claim construction standard as district courts, where invalidating patents is more difficult. That change is already included in a companion patent bill in the U.S. House of Representatives. [Goodlatte's Innovation Act]

The bill also states that parties are bound by the arguments they make regarding claim construction during inter partes review in any later proceedings before the PTAB or in district court.

It would require the PTAB to issue regulations to make clear that a party filing a petition or other submission to the board "does so under an obligation substantially similar to the obligations contained in Rule 11 of the Federal Rules of Civil Procedure."

Rule 11 allows courts to impose sanctions on attorneys who file a suit that is frivolous or lacks evidentiary support, and members of the committee said that imposing such an obligation would be effective at "preventing gamesmanship" in AIA reviews. [Query: how is this "Rule 11" to be enforced by the USPTO??]

In addition, the bill "makes explicit in statute that, for purposes of PTAB adjudications, patents are presumed to be valid," the leaders of the Judiciary Committee said.

However, it retains the present standard that petitioners have the burden of proving that a patent is invalid by a preponderance of the evidence. Some patent owners had urged the Senate to change the burden of proof in AIA reviews to the "clear and convincing" standard used in district court, which would make invalidation more difficult. [So, of what significance is the presumption of validity?]

The bill aims to limit multiple AIA challenges to the same patent in AIA reviews by making clear that the board has the discretion not to institute reviews when doing so "would not serve the interests of justice." It says the board can consider factors like whether the same arguments have already been decided in other proceedings or whether the patent is already subject to a proceeding. [What about a situation wherein the patent already survived district court and an IPR is subsequently brought?]

The bill would also allow patent owners to submit evidence in response to a petition to institute a review and would mandate that the PTAB panel that makes a final decision in a AIA review only have one member who decided whether to institute the review. As it is now, the same three judges make institution decisions and final decisions.

Committee members said they also plan to change to the process for amending patents in AIA reviews, which many patent owners have complained is too difficult. However, the committee said "further work is needed” on the language for that section. [As Judge Newman noted, this is in fact a big deal, and needs to be resolved.]

The revised bill would also change the estoppel provision for post-grant reviews. Rather than barring petitioners from later raising in district court anything they raised in a post-grant review and anything they "reasonably could have raised," as is currently the case, they would only be barred from raising things they actually raised.


***Separately, a comment related to the Hersh "plagiarism" matter on the Bin Laden story states:

It seems like yet another case in which people overvalue being "first" as opposed to actually getting something more widely accepted and understood.

What is that quote about the thing society apparently values the most is not the quality of something but its novelty? I can't find it.

One suspects in the patent world, society values most what actually changes the world ("innovation") rather than novelty ("invention").


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