Lofgren, Issa Denounce Proposed PTAB Claim Construction Changes in Oversight Hearing

By Steve Brachmann
May 24, 2018

USPTO Director Andrei Iancu

On Tuesday, May 22nd, the House Judiciary Committee convened a hearing regarding oversight of the U.S. Patent and Trademark Office. Appearing before the committee to testify on the agency’s actions was USPTO Director Andrei Iancu. Among the major topics discussed by members of the committee were the agency’s authority to set fees collected from users, the potential diversion of those fees to other agencies within the Commerce Department, as well as recent changes proposed by Director Iancu to bring aspects of patent validity trials conducted by the Office into alignment with standards practiced in Article III district courts.

The written testimony submitted by Director Iancu to the Judiciary Committee spoke to a number of issues discussed during the day’s hearing, including patent pendency, patent eligibility, international IP policy as well as issues connected to patent validity trials conducted by the Patent Trial and Appeal Board (PTAB). In his opening statement, Judiciary Committee Chair Rep. Bob Goodlatte (R-VA) voiced great support for the PTAB and other aspects of the America Invents Act (AIA) which created post-grant validity proceedings and the PTAB agency. “The Committee’s efforts to deter patent trolling have been a resounding success,” Goodlatte said. As was pointed out later in the hearing, they’ve also had the effect of dramatically reducing the United States’ position in international rankings of national patent systems in recent years.

Although he did not appear at the hearing, Democratic Ranking Member Rep. Jerrold Nadler (D-NY) issued the following as part of a statement on the USPTO oversight hearing:

“The AIA represented the most significant overhaul of the patent system in a generation.  An important element of that legislation was the creation of a variety of procedures to challenge a patent’s validity after issuance by the PTO.  These administrative procedures—particularly the inter partes review, or IPR, process—are being used widely, and they have successfully eliminated many patents that should never have been granted in the first place… However, some stakeholders are concerned that while weeding out the bad patents, the IPR process is also invalidating many good patents, as well.  As a result, they say, the patent system has been severely weakened, and inventors—particularly small inventors—are suffering. Critics of IPR argue that if patent-holders are at too great a risk of having their patents later found to be invalid, they will be unable to attract investors and to make business decisions with any certainty.”

Rep. Zoe Lofgren (D-CA)

Nadler’s statement also spoke to the recent introduction of a proposed USPTO agency rule which would harmonize claim construction standards used in inter partes review (IPR) proceedings at the PTAB to align with claim construction standards utilized in U.S. district court. This particular action of Director Iancu seemed to be controversial in the view of several committee members, particularly the Committee’s Representatives hailing from California.

found it disturbing that the Director Iancu would circumvent the prerogative of Congress with recently announced proposed PTAB claim construction changes, though she admitted the decision wasn’t unlawful. She expounded for several minutes on issues of res judicata, which could tie the hands of the PTAB in light of district court or U.S. International Trade Commission (ITC) decisions regarding patent validity. “[This] would completely blow up what we were trying to do as a Congress,” Lofgren said. “It looks to me that the people who disagreed with [the AIA] and lost in the Congress, they went to the Supreme Court, they lost in the Supreme Court, and now they’re going to you, and you are reversing what the Congress decided to do and what the Court said was permissible to do.” Lofgren ran out of time during her questioning and was later yielded more time by Rep. Karen Bass (D-CA) where she continued to criticize Director Iancu’s proposed rule despite Iancu’s points that patentability standards shouldn’t differ simply based on the context of the venue where a validity challenge is brought. “That’s a law school answer,” Lofgren said. “And in the real world we have patent trolls out there holding people up.” (Note to the wise: “Patent troll” is a derogatory term for a political boogeyman that barely exists in the real world.)

Rep. Darrell Issa (R-CA)

Also voicing concerns over the change in claim construction standards was Rep. Darrell Issa (R-CA), efficient infringer ally, and himself a patent troll, and chair of the House IP Subcommittee. While Director Iancu noted significant similarities between PTAB proceedings and district court proceedings, including the record on the patent’s examination which is available for review, Issa noted that both inter partes and ex parte reexamination proceedings review patent validity de novo and that those reexamination proceedings differed significantly from district court proceedings. Issa also noted that the PTAB had the “bad habit” of not allowing claim amendments. “Because at the end of this, they may have the shambles of a patent, but they still have patentable material, can we have equally expedited process through ex parte reexamination?” Issa asked. He also asked Iancu to consider whether a quick reexam process could follow the conclusion of a PTAB trial “to empower the patent owner to legitimize whatever patentable material is left.”

Other members of the committee, by contrast, were able to better exercise their wisdom by pointing out issues of the deleterious effects of PTAB validity trials on American businesses and patent owners. Rep. Steve Chabot (R-OH) asked Director Iancu if there was evidence suggesting that large companies were using IPR proceedings as a tool to invalidate the intellectual property of smaller companies to prevent them from becoming competitive; Director Iancu did not have statistics on that specifically but said he was open to investigating any kind of abuse at the agency. Rep. Steve King (R-IA) questioned whether the passage of the AIA contributed in any way to the recent declines of the U.S. patent system in international rankings. While Iancu said that some aspects of the AIA have helped the U.S. patent system, he specifically cited the implementation of the IPR process as one issue that has harmed the U.S. patent system.

Multiple times throughout the hearing, Director Iancu made it clear that the USPTO’s fee setting authority, currently scheduled to end this September, is crucial to the agency for making sure it has the resources it needs to conduct its operations effectively. Both Reps. Chabot and Hank Johnson, Jr. (D-GA) noted their co-introduction of a House version of the BIG Data for IP Act which has been introduced into the U.S. Senate by Sen. Chris Coons (D-DE); this bill would extend the USPTO’s fee setting authority for 10 years. Elsewhere, Reps. Goodlatte and Raúl Labrador (R-ID) asked Iancu for assurances that the USPTO’s fee setting authority did not contribute to the potential diversion of user fees paid to the agency elsewhere within the Commerce Department under the Shared Services Initiative.

During his opening statement and at points throughout the questioning period, Director Iancu discussed his willingness to work with the House Judiciary Committee on issues regarding patentable subject matter under 35 U.S.C. § 101. While the language of that statute hasn’t changed much since the first Patent Act was passed in 1790, Iancu seemed to want to encourage the House Judiciary Committee to look at legislative changes to that statute in order to address patentability issues created by recent U.S. Supreme Court decisions in Alice and Mayo; Iancu noted that those decisions have increased the uncertainty regarding patentable subject matter, which is a major current issue with the U.S. patent system.

For more on this hearing see Gene Quinn’s coverage at here.

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 18 Comments comments.

  1. Curious May 24, 2018 11:35 am

    Darrell Issa cannot leave Congress soon enough. It is as simple as that.

  2. Valuationguy May 24, 2018 12:14 pm

    Zoe Lofgren’s comments and questions during the hearing show that she is 2x worse than Issa. She fully understands the advantages to her Silicon Valley constituents…. Google/Facebook/Apple (all of which she gets significant money from to protect their interests)… of having a easier claim construction in the PTAB proceedings….and will fight heavily for their corrupt interests.

    Better hope the Dems don’t take over after the Nov election or any pro patent reform effort will be poisoned.

  3. SVI (the inventor formerly known as silicon valley inventor) May 24, 2018 1:27 pm

    I had a good chuckle when Steve acknowledged that a patent troll is a derogatory term for a political boogeyman that barely exists in the real world. And then in the next sentence said Darrell Issa is himself a patent troll. Indeed, after his term ends he will barely exist in the real world.

  4. Night Writer May 24, 2018 3:35 pm

    Goodlatte gets a lot of his campaign money from Google.

    Also, you all should see what we are up against with this. There are people watching that want to burn the system down. They aren’t going to give up any territory easily.

  5. Night Writer May 24, 2018 5:07 pm

    Also, there never was a troll problem that was significant and saying that you got rid of the troll problem is a bit like saying that you got rid of the poison ivy by burning down the forest.

  6. Jason Lee May 24, 2018 5:42 pm

    Zoe Lofgren is based in the Capital of Silicon Valley, bought and paid for by the Silicon Valley Elites like Google and Apple who have killed the patent system in order to be able to steal patents from inventors with out the need to pay a licensing fee, and who have created the fake Boogeyman “Patent Trolls” to rob small IP holders. We know Silicon Valley Elites special interests help bring in the Alice ruling and the AIA Act and the PTAB its been death for patent inventors since. No one in their right mind should file for a patent in the United States there is NO protection or financial rewards for a small inventor just take a look at the inventor of “Bunch O Balloons”. The US is a sinking ship as they use to be #1 in the world for patents and are now are at #12 thanks to Google and Apple… These BIG companies like Google, Apple, Amazon need to be cut down to size and start to pay up the Billions they have stolen from small inventors, it’s disgraceful. They are killing the one thing that helped make Apple and Google the great success they are today BUT now its out of reach for the rest, thanks to the Bills and Laws Apple and Google helped create to keep the Billions/Trillion of dollars all to them selves. What a shame!!!

  7. BJ Tomas May 24, 2018 6:32 pm

    Mr. Issa based in California Zoe Lofgren is based in the Capital of Silicon Valley, bought and paid for by the Silicon Valley Elites like Google and Apple who have killed the patent system in order to be able to steal patents from inventors with out the need to pay a licensing fee, and who have created the fake Boogeyman “Patent Trolls” to rob small IP holders. We know Silicon Valley Elites special interests help bring in the Alice ruling and the AIA Act and the PTAB its been death for patent inventors since. No one in their right mind should file for a patent in the United States there is NO protection or financial rewards for a small inventor just take a look at the inventor of “Bunch O Balloons”. The US is a sinking ship as they use to be #1 in the world for patents and are now are at #12 thanks to Google and Apple… These BIG companies like Google, Apple, Amazon need to be cut down to size and start to pay up the Billions they have stolen from small inventors, it’s disgraceful. They are killing the one thing that helped make Apple and Google the great success they are today BUT now its out of reach for the rest, thanks to the Bills and Laws Apple and Google helped create to keep the Billions/Trillion of dollars all to them selves. What a shame!!!

  8. Hapless in Seattle May 25, 2018 9:10 am

    Re: Goodlatte… only a US Senator could celebrate the damage he and his committee have done. The 1952 Patent Act was not perfect, but it made our patent system the best in the world. Now these bought and paid for shills, complete hypocrites, clearly on the take, conjure ways to make things even worse.

  9. Mark Nowotarski May 25, 2018 9:45 am

    And in the real world we have [[patent trolls out there holding people up]] inventors trying to get a reasonably royalty for their inventions. (fixed it)

  10. Anon May 25, 2018 9:54 am

    Night Writer @ 5,

    I would not go so far as to say that there is no Tr011 problem whatsoever.

    In everyfield, one may find some bad actors, and in the patent field, undoubtedly this maxim would hold true.

    That being said, one must also be aware that the Tr011 problem has been a virulent source of propaganda and a piece in the capture of Congress by very specific parties who do NOT have anything else in mind except their own self-interests.

    Once that is understood, then many of the suggested “fixes” for the Tr011 problem are easily seen as NOT the fixes they purport to be.

    Quite in fact, when one considers the actual bad actors that may exist our there, one would also recognize that laws outside of the patent realm exist to deal with such bad actors (or, at a minimum, the type of “bad” that such actors engage in can and should be handled OUTSIDE OF the patent law realm.

    With this understanding, I would rephrase your statement as: there never was a Tr011 problem that was significant enough to make the changes made, or to pursue any additional changes still being sought by those who benefit at the expense of the innovation support system.

    That there are those, such as Lofgren that remain so audacious (or simply so incompetently believing in the propaganda) all the while “Rome burns,” only goes to show that we have far to go in releasing the holds that Efficient Infringers have on Congress. Lofgren may truly believe in her position as “the way forward,” and if so, that seems the more dangerous condition.

  11. j May 25, 2018 11:10 am

    Zoe Lofgren is based in the Capital of Silicon Valley, bought and paid for by the Silicon Valley Elites like Google and Apple who have killed the patent system in order to be able to steal patents from inventors with out the need to pay a licensing fee, and who have created the fake Boogeyman “Patent Trolls” to rob small IP holders. We know Silicon Valley Elites special interests help bring in the Alice ruling and the AIA Act and the PTAB its been death for patent inventors since. No one in their right mind should file for a patent in the United States there is NO protection or financial rewards for a small inventor just take a look at the inventor of “Bunch O Balloons”. The US is a sinking ship as they use to be #1 in the world for patents and are now are at #12 thanks to Google and Apple… These BIG companies like Google, Apple, Amazon need to be cut down to size and start to pay up the Billions they have stolen from small inventors, it’s disgraceful. They are killing the one thing that helped make Apple and Google the great success they are today BUT now its out of reach for the rest, thanks to the Bills and Laws Apple and Google helped create to keep the Billions/Trillion of dollars all to them selves. What a shame!!!

  12. step back May 26, 2018 8:30 am

    Lofgren forgot to mention …

    And in the real world we have Congress persons bought and paid for by interests adverse to the general welfare of We the People of what used to be the United States. Ain’t that a shame.

  13. PTO-Indentured May 26, 2018 2:41 pm

    Proposed 1st Questions for Next Congressional Smearing Hearing:

    Director Iancu please state for the record today, the extent you believe there is a strong correlation between anti-patent sentiments expressed in these patent related hearings, relative to biggest of contibutions paid by Top-Five technology companies to those stating such sentiments.

    Director Iancu, related to the first question, please state for the record the extent you believe there is a strong correlation between AIA is Great sentiments expressed in these patent related hearings, relative to biggest of contibutions paid by Top-Five technology companies to those stating such sentiments.

  14. PTO-Indentured May 26, 2018 2:46 pm

    First Two Questions to ask during Next Congressional Smearing Hearing

    Mr Iancu please state for the record today the extent you believe there is a strong correlation between anti-patent sentiments expressed in these patent related hearings, relative to biggest of contibutions paid by Top-Five technology companies to those stating such sentiments.

    Mr Iancu, related to the first question, please state for the record today the extent you believe there is a strong correlation between AIA is Great! sentiments expressed in these patent related hearings, relative to biggest of contibutions paid by Top-Five technology companies to those stating such sentiments.

  15. PTO-Indentured May 26, 2018 2:49 pm

    First Two Questions to ask during Next Congressional Smearing Hearing

    Mr Iancu please state for the record today the extent you believe there is a strong correlation between anti-patent sentiments expressed in these patent related hearings, relative to biggest of contibutions paid by Top-Five technology companies to those stating such sentiments.

    Mr Iancu, related to the first question, please state for the record today the extent you believe there is a strong correlation between AIA is Great! sentiments expressed in these patent related hearings, relative to biggest of contibutions paid by Top-Five technology companies to those stating such sentiments.

  16. PTO-Indentured May 26, 2018 2:52 pm

    First Two Questions to ask during Next Congressional Hearing (vs. Smearing)

    Mr Iancu please state for the record today the extent you believe there is a strong correlation between anti-patent sentiments expressed in these patent related hearings, relative to biggest of contibutions paid by Top-Five technology companies to those stating such sentiments.

    Mr Iancu, related to the first question, please state for the record today the extent you believe there is a strong correlation between AIA is Great! sentiments expressed in these patent related hearings, relative to biggest of contibutions paid by Top-Five technology companies to those stating such sentiments.

  17. PTO-Indentured May 26, 2018 3:02 pm

    Yikes! — 1000 pardons please — My IPW postings @13-15 did not show up (i.e., did not appear uploaded) after I posted them, perhaps due to strikethrough HTML delay?

    Well, I don’t know…maybe those two questions warranted repetition?

  18. Night Writer May 28, 2018 9:50 am

    @ Anon Night Writer @ 5, I would not go so far as to say that there is no Tr011 problem whatsoever.

    Let’s remember that OMB said there was no significant troll problem. It was the K Street lobbyist and likes of Lemley that generated a false narrative.

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