Beware the NOT so Technical AIA Technical Amendments!
|Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: February 20, 2012 @ 3:41 pm
On Wednesday of last week I was in Washington, DC, and then on Thursday and Friday I traveled to New York City for the 6th Annual PLI Patent Institute. Over these days out and about I heard similar stories from well placed individuals in the industry. Had I heard it only once from one source I would have believed it to be true, given who was telling me, but I heard substantially the same thing from several very credible sources. The troubling news starts with the fact that a technical amendments bill to the America Invents Act (AIA) that is working its way around Capitol Hill, and in true government by ambush fashion it could work its way into a bill at any time! Everyone interested in stopping substantive changes to the AIA needs to be prepared to act fast! In fact, I understand that if the Stop Online Piracy Act (SOPA) had moved forward the AIA Technical Amendments bill would have been attached to it.
What is the big deal about technical amendments? The problem is that not all of the amendments will be “technical.” For example, there is a plot afoot to change the estoppel provisions in the AIA relative to post-grant review and inter partes review. As enacted, estoppel attaches relative to any ground raised or which reasonably could have been raised during the proceeding. There is an intense effort to have the technical amendments modify the estoppel provisions to provide estoppel only for that which was “actually raised,” thereby excising the “reasonably could have raised” language. This is obviously a substantive amendment, and a truly terrible idea.
For example 35 U.S.C. § 325(e) discusses how estoppel will be applied relative to a final written determination in a post-grant review proceeding. The newly enacted law says:
(1) PROCEEDINGS BEFORE THE OFFICE.— The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.
(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.— The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not assert either 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 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.
Similarly, 35 U.S.C. § 315(e) discusses how estoppel will be applied relative to a final determination in an inter partes review. The newly enacted law says:
(1) PROCEEDINGS BEFORE THE OFFICE.— The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
‘‘(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.— The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either 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 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
Those who watched the making of the America Invents Act are well aware that the inter partes review and post-grant review caused much concern within the industry. Post-grant review was a particularly contentious issue because many feared that after a lengthy patent prosecution the issuance of a patent could be held up further, perhaps indefinitely, by post-grant review proceedings. The way that fears were calmed was, at least in significant part, by having the estoppel provisions apply to not only issues raised, but which could have been raised. In this sense the utilization of either post-grant review or inter partes review became something of a “speak now or forever hold your peace.” That would all change if this technical amendment were enacted.
Congress well knew what they were doing when they included “reasonably could have raised,” and to say that something substantive is appropriate for a technical amendment bill, which should address non-substantive nuances, is nearly breathtaking. What is worse, the one thing that begs for technical amendment is the issue of best mode, which will not be addressed.
So what has Congress said about the estoppel provisions? On June 29, 2011, the House Judiciary Committee issued a Report on H.R. 1249 to the full House of Representatives, which says in part:
In utilizing the post-grant review process, petitioners, real parties in interest, and their privies are precluded from improperly mounting multiple challenges to a patent or initiating challenges after filing a civil action challenging the validity a claim in the patent. Further, a final decision in a post-grant review process will prevent the petitioner, a real party in interest, or its privy from challenging any patent claim on a ground that was raised in the post-grant review process.
(see page 77). The only way you prevent the mounting of multiple challenges by real parties and their privies is to have estoppel apply to both issues raised and issues that could have been raised. The addition of the language “reasonably could have been raised” was a direct attempt to circumvent serial challenges.
Moreover, in debate on the AIA in the United States Senate on September 8, 2011, Senator Jon Kyl (R-AZ) explained that because of the “enhanced estoppel” provisions in the bill it was imperative to extend the deadline within which to initiate an inter partes review to 1 year after the date on which the petitioner is served with a complaint alleging infringement of a patent. Senator Kyl said:
Current law imposes no deadline on seeking inter partes reexamination. And in light of the present bill’s enhanced estoppels, it is important that the section 315(b) deadline afford defendants a reasonable opportunity to identify and understand the patent claims that are relevant to the litigation. It is thus appropriate to extend the section 315(b) deadline to one year.
(see page S5429, bottom column 2 to top column 3).
The above pieces of legislative history are only illustrative of the wranglings both behind the scenes and out in the open relative to the estoppel provisions contained in the AIA. These estoppel provisions were central to the debate and a back-door attempt to unravel the delicate bargain reached smacks of cowardice and the back-room deals that make rational Americans wonder whether government works for the people. Seriously, unraveling something like this in a technical amendment would be the height of arrogance and might as well be Congress “flipping off” all those in the industry who legitimately and carefully participated in the legislative process. Why bother if behind the scenes after the dust has settled powerful lobbyists can change key terms with a so-called technical amendment?
In my opinion there would have been absolutely no chance that the America Invents Act would have passed if the estoppel provisions for post-grant review only applied to issues actually raised. Those who opposed the America Invents Act need to remain vigilant, as well as those who held your nose and swallowed hard. It is imperative that those with an agenda are not allowed to subvert the patent system and legislative process to accomplish things that never could have been accomplished in the light of day.
The technical amendments to the AIA will not simply make minor adjustments. Stay alert and beware!
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Posted in: America Invents Act, Congress, Gene Quinn, IP News, IPWatchdog.com Articles, Patent Reform, Patents
About the Author
Gene Quinn is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.