Legislation Introduced in House to Repeal the PTAB and the AIA

By Steve Brachmann
July 17, 2018

Congressman Thomas Massie (R-KY). Photo by Andrea Huber, used here with permission.

Congressman Thomas Massie (R-KY). Photo by Andrea Huber, used here with permission.

On June 28th, Congressman Thomas Massie (R-KY) introduced a bill into the House of Representatives known as the Restoring American Leadership in Innovation Act of 2018 (H.R. 6264). The bill, which is co-sponsored by Congresswoman Marcy Kaptur (D-OH) and Congressman Dana Rohrabacher (R-CA), would go a long way in rectifying the tremendous damage which has been wrecking the U.S. patent system in the years since the passage of the America Invents Act (AIA) of 2011.

There are 13 sections to Massie’s bill, many of which are geared towards the abolition of various statutes of the AIA. Perhaps the most salient portion of the proposed bill are sections regarding the abolishment of the Patent Trial and Appeal Board (PTAB) as well as the elimination of both inter partes review (IPR) and post-grant review (PGR) proceedings currently conducted by the PTAB. As the bill states, both IPR and PGR proceedings “have harmed the progress of science and the useful arts by subjecting inventors to serial challenges to patents.” The bill also recognizes that those proceedings have been invalidating patents at an unreasonably high rate and that patent rights should adjudicated in a judicial proceeding and not in the unfair adjudication proceedings which occur within the U.S. Patent and Trademark Office. Ex parte reexamination proceedings would be preserved by this bill as well.

The section of the bill that would abolish the PTAB would re-establish the Board of Patent Appeals and Interferences (BPAI), the agency which had existed within the USPTO prior to passage of the AIA. The BPAI would be directed to hear appeals from patent applicants as well as hold interference proceedings to determine priority and patentability of inventions which are claimed in U.S. patent applications. With the removal of IPR and PGR proceedings, the bill notes that the PTAB is no longer needed to conduct those proceedings. Outside of the context of ex parte reexamination proceedings, the BPAI wouldn’t be used to invalidate a patent which has issued.

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Another aspect of the AIA that would be repealed through passage of the Restoring American Leadership in Innovation Act is the first-to-file provision, returning the U.S. patent system to a first-to-invent system. The bill would also restore the one-year grace period that an inventor had prior to the AIA, allowing the inventor a full year before being compelled to file a patent application to cover his or her invention. This grace period enables an inventor more time to attract investment, conduct research and development and perfect the invention to improve the quality of the patent application that is eventually filed. The bill would also roll back the AIA’s best mode requirement which required an inventor to describe the “preferred embodiment” of an invention, which only served to limit what an inventor could claim as his or her invention.

This bill would also clear up the legal morass surrounding the patentability of certain types of inventions which has been created in recent years by U.S. Supreme Court decisions in cases like Alice and Mayo. It would amend 35 U.S.C. § 101, the statute governing the basic threshold for the patentability of inventions, such that any new and useful process, machine, manufacture, or composition of matter is patentable with the exception of any invention that “exists in nature independently of and prior to any human activity, or exists solely in the human mind.” The emphasis on human activity is critical for the patentability of important medical advances which have been damaged by the Supreme Court’s Mayo decision in which a diagnostic method for measuring drug metabolites to adjust the dosage of a drug was declared patent-ineligible. The language about inventions that “exist[] solely in the human mind” is clearly a reaction to Alice, where the Supreme Court declared that a computer system for completing financial transactions with the use of a third-party intermediary was patent-ineligible. This amendment to Section 101 would go a long way to restoring patentability in the personalized medicine and software fields, both of which are going to be incredibly valuable market sectors in the years to come.

Of course, Alice and Mayo are not the only places where the Supreme Court went awry and the Restoring American Leadership in Innovation Act would repeal SCOTUS’ decision in 2006’s eBay v. MercExchange, restoring injunctive relief to patent owners. Upon a finding of patent infringement, a court would presume that further infringement would cause a patent owner irreparable harm. An infringing party can overcome that presumption by presenting clear and convincing evidence that further infringement wouldn’t cause irreparable harm, but a patent owner would not be required to make or sell a product covered by the patent to show irreparable harm.

Further, Massie’s proposed bill would also undo SCOTUS’ 2017 decision in Impression Products v. Lexmark International, a case which restricted the rights of patent owners to sue for patent infringement. As the bill states, this decision has resulted in an inability of patent owners to exclude unlicensed customers from their supply chains. This particular statute is found in a section titled Restoring Patents as a Property Right and although Oil States isn’t directly referenced, this section would provide much needed relief to the court’s pronouncement of patents as public franchises. The bill would change U.S. patent code to say that “patents shall be recognized as private property rights” and further recognizes that patents are freely transferable as property through either assignment or licensing.

The bill, if passed, would also accomplish other goals for which supporters of the U.S. patent system have been asking for some time. Fee diversion at the USPTO would be eliminated by establishing a revolving fund for the agency at the U.S. Treasury. 35 U.S.C. § 102, which governs conditions of patentability based on novelty, would be amended so that information disclosed to the USPTO through patent applications aren’t considered prior art that could preclude the issuance of a patent. The automatic publishing of patent applications by the USPTO would be abolished, preventing the release of any information until a patent issues. The presumption of validity of a patent issued by the USPTO would also be restored and the bill would provide the presumption of validity for each individual claim of a patent independent of other claims, even if the claim is dependent upon another claim which has been declared invalid.

This bill, as written, is currently America’s best hope to restore sanity and prosperity to the U.S. patent system. It directly addresses issues with patentability of inventions and the patent opposition system which have been key weaknesses contributing to the demise of the nation’s system in international rankings and cited by the U.S. Chamber of Commerce in its recent 12th-place ranking for the United States’ patent system. No doubt this bill will be besieged by the usual cadre of well-financed Silicon Valley allies who worked so hard to get the AIA passed in the first place. Anyone who cares about the future of American innovation should get on the phone as soon as possible and call upon their Representative to support H.R. 6264 and stand up to the efficient infringer cabal which has turned the U.S. patent system into a shipwreck.

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 24 Comments comments.

  1. Valuationguy July 17, 2018 8:47 am

    Steve,
    Like you and Gene, I applaud most of the proposed changes but don’t you think that the failure to point out that this bill has ZERO chance of getting through the necessary subcommittees and Committee in the House of Reps (as currently constituted in Congress) leads your readers to EXPECT more change than is possible? Neither Issa (who controls the subcommittee) nor Goodlatte (who controls the Committee) is going to allow this bill to even come up for a vote.

    Rep. Massie MIGHT have better luck after January (since both Issa and Goodlatte are retiring this year)….which is when he will need to reintroduce his bill anyway since its a new Congress. An article analyzing who are the most probable NEXT subcommittee and Committee chairman might be in order (but of course subject to error due to the upcoming election potentially changing the mix).

  2. Ternary July 17, 2018 9:53 am

    Don’t just sit there. Do something! Write your District Representative to Congress to ask him/her if he/she is aware of HR 6264, Restoring American Leadership in Innovation Act of 2018, to undo the damage done by AIA to the US Patent System, formerly the best Patent System in the world, envy of allies and foes alike.

    Make a point of your involvement with US innovation and patents and request that your Representative supports getting HR 6264 to the floor and to support this Bill. Tell him/her that you will follow the progress of this bill through the House and that you consider to vote for a candidate that is in favor of HR 6264.

  3. B July 17, 2018 3:21 pm

    Christmas comes early

  4. Poesito July 17, 2018 5:03 pm

    I’ve been trying to contact Rep. Rohrabacher’s field office to find out what they believe will happen with the bill in this Congress. So far no calls returned.

    Ironically, Rohrabacher’s 48th district is adjacent to Issa’s soon to be ex-49th district. Are they friendly neighbors?

  5. Poesito July 17, 2018 5:10 pm

    I’ve gotten exactly one comment to.post in the last week or so. Four or five have disappeared into the aether[net]. Could there be a problem posting from a mobile device?

  6. Paul Morinville July 17, 2018 6:41 pm

    Poesita, Rohrbacher is a strong supporter. One of the strongest in Congress. Issa will not be there after December. We ran him out.

    Valuationguy, It would be great if it passed, however the chances are slim to none. What this does is grease the skids for next year and something will likely pass next year. It also places more pressure on eliminating the PTAB altogether. The Stronger Act preserves it and I view this as a fatal flaw. This is needed to push those on the fence over to our side to kill the PTAB. It also points discussion to what a patent is – a private property right – which is where discussion needs to be. The rest of the bill just makes it a private property right.

    for this bill to have any real effect, there must be people talking about on the Hill. That only comes with phone calls from constituents. If there is no fire back home this will go nowhere. Inventors are a very small constituency so all voices are needed and multiple calls are needed from each inventor or interested party.

    George Washington earned a surrender attacking a much larger force by having his troops pace back and forth on top of the hills surrounding the encampment to look like a larger force. This made his foe think he had a much larger force. We need to do the same by having everyone call multiple times and ask their friends and family to call too.

  7. Michael Zall July 18, 2018 7:29 am

    We need to get the AIPLA, IPO, etc. involved sooner rather than later. I am definitely for most of this, although provisional applications are very useful for independent inventors/entrpeneurs for various reasons well known by those who practice. Hopefully we can get reasonable discussions about all the provisions.

  8. Gene Dolgoff July 18, 2018 12:33 pm

    There are two additional issues that should be added into the discussion. First, all of the PTAB decisions that resulted in canceled (invalidated) claims should be reversed, reinstating the claims. Second, the criteria for obviousness of a proposed new claim needs to be redefined in a better way. Currently, petitioners can gather up an unlimited amount of prior art and claim that putting them all together makes a proposed new claim obvious and patent ineligible. In actuality, all new inventions are based on inventions that have come before, potentially making any new invention “obvious,” which is absurd. The petitioner should be required to show that the prior art combination they propose as evidence for obviousness would be feasible and would function to achieve the goal of the proposed new claim in a practical and cost-effective way. But, most importantly, if a market need for a product or service can be shown, for instance, by sales or published articles discussing the need or desirability for the product or service, which would utilize the idea contained in the proposed new claim, and an extended period of time, such as a year or more, has passed since such sales or published article, and no one has proposed or demonstrated use of the concept in the proposed new claim, then the claim should be accepted as non-obvious. In other words, if there was a need or desire for a product or service at least a year before a proposed new claim that would fill that need was submitted for patent, and if no one has thought to combine existing prior art to come up with the invention of the proposed new claim, those facts should be the best evidence that the combination is not obvious, regardless of the fact that cited prior art existed that might be combinable, resulting in the idea expressed in the proposed new claim.

    A new documentary, entitled “Invalidated: the shredding of the US patent system” will be released next week. There will be a live stream of a screening and panel discussion regarding the documentary on Tuesday, July 24, starting at 5 PM.

  9. Jason Lee July 18, 2018 1:53 pm

    NOOO chance this bill will pass, Silicon Valley elites own the vote. America has sold their soul to the devil. The companies that once used the patent system to help them get to the top have now shut the door from anyone trying to build up a new company. Google Apple FB and Amazon have no interest in anyone trying to knock them off their dominance. Thanks to Michelle Lee former head of the USPTO and former Google head have killed anyone’s chances in getting paid for their IP. Thanks in part to the AIA Act and the PTAB. Best place to file a patent will be China or maybe Europe (Germany). America has killed its patent system.

  10. EG July 18, 2018 2:46 pm

    To all:

    Let’s stop talking about H.R. 6264 as being DOA in this Congressional session. It’s good starting point for how to fix the mess created by both the AIA (Abominable Inane Act) and the Royal Nine (aka SCOTUS). Even getting Section 7(a) or something like it passed on patent-eligibility would be a great leap forward. Enacting those provisions in HR 6264 to eliminate PTAB and the IPR “killing zone” would be that much better.

  11. Mike Archbold July 18, 2018 7:15 pm

    It should be named “Restoring America’s Patent Trolls Act of 2018.”

  12. Anon July 19, 2018 12:24 pm

    Mr. Archbold,

    Tell me how much you know of the “PatentTr011s” meme that is so easily bandied about by you.

    Can you separate the propaganda from the actuality in that meme?

  13. Jason Lee July 20, 2018 8:38 am

    #mike archbold what’s wrong with someone paying a fee if they infring on your property right? So milke I’m going to come to your house sleep in your bed and eat your food and if you try to charge me I will call you a property troll I will then take you to court for trying to force me to pay for breaking into your property and using your house for free. And if I lose one case I have the right to keep suing you but since the PTAB does not like propert trolls like you I have about 85% chance in winning and I will continue to sleep in your bed and eat all your food because you are just a filthy greedy property troll. You will never win because the big guys like google Apple own the vote and the shareholders lover the stock price. America s greed has eaten it self into destruction. Most people do not care about the well being of America because they only love money.

  14. Mike Archbold July 20, 2018 6:34 pm

    That analogy gives me the creeps but setting that aside, admittedly I am no lawyer with a background in IP. But it seems like software patents are a very problematic affair, and I understand Alice at least. Software seems to be inherently similar to itself. I need to school myself more, but my understanding is the Obama era changes cut down on patent trolling quite a bit, isn’t that the case?

  15. Anon July 21, 2018 9:22 am

    Mr. Archbold,

    You are correct in that you need to school yourself more.

    The “Patent Tr011” problem was largely a fabrication of the anti-patent Big Corp, and the benefit of such was not how it was attempted to have been spun.

    It was directed to such lemmings as yourself, not knowledgeable in patents, innovation, or the law and the fact that it “sounds good” is just the nature of the propaganda.

    Critical thinking is necessary to get past the propaganda effect.

  16. Night Writer July 21, 2018 10:06 am

    >> Obama era changes cut down on patent trolling quite a bit, isn’t that the case?

    “patent trolling” is a myth. There were a few troubling problems, but the most unbiased agency in the USA the Office of Budget and Management examined this back in 2010 and said there was no problem.

    What Obama did was decimate the patent system. The AIA, stacking the CAFC with anti-patent judges with no science background, stacking the USPTO with Google employees, etc.

    Patents have dropped in value about 80 percent during the Obama presidency.

    What we see now is large corporations talking about dropping or de-emphasising patents. Likely what is going to happen is that R&D money will drop and innovation will come to a crawl in the USA.

    Also, there really isn’t such a thing as a software patent but an information processing patent. The reality is that there is no way to distinguish between an electrical circuit and a “software” patent. That is reality.

  17. PTO-Indentured July 21, 2018 10:27 am

    Hi Mike, thank you for taking some time to reflect and take a step back from, what was designed (contrived in a crafty manner) to produce in folks a knee-jerk reaction to there being some evil / mythical / disgusting creature lurking under a bridge who can’t wait to lunge out–and of all things–dare to enter into a rental agreement (under win/win terms) with someone who values and wants to make, use and/or sell the creature’s invention, issued under a scrutiny and authority of the USPTO.

    This insidious narrative, largely amounting to not more than The Emperor’s New Clothing, was part of ‘the story’ sold to the Obama administration. That a handful of US monolithic tech companies (having established their own dynasties relying in-part on key software IP) such as Google ‘Search’, Apple ‘iTunes’ and Amazon ‘One-Click’, were afraid, and felt threatened if any others should also be allowed to ‘play in their reindeer games’.

    Make no mistake, this has been an on-going highly-financed, albeit thinly-veiled campaign, as even a cursory review of other articles in the IPW blog reveals. The campaign’s goal (for well over a decade) has had little to do with objectivity, and instead has had as its primary aim a fear-engendering subjectivity. Fueled by as much as an eight-figure payola-like ‘influencings’, for example, by a single one of the above tech firms in just one year, many ‘learned’ to drink the Kool-Aid.

    Why do they do it? The campaign yielded AIA / PTAB “patent-death squads”, a major tech-firm hand-picked Patent Commissioner, defenseless US patents, a PTO timidity of stewardship (seen throughout its secret SAWS years), a relegating of the US patent system (under AIA) from #1 ranked in the world to 12th ranked, a reducing at the same time of patents filed by US independent inventors from 30% to about 4%. But most importantly it ‘innovated’: a decade of Efficient Infringement and commensurate with such takings — an estimated trillion+ in dollars of US innovation / IP irreversibly lost.

    My hope, particularly in view of the devastating train-wreck that is ‘AIA’, that others like yourself, will take a moment to objectively reflect–putting aside the campaign’s intended engendered fear–and find how we have all been sold (for over a decade) the Emperor’s New Clothes.

    my hope is that

  18. Mike Archbold July 21, 2018 1:08 pm

    Actually it would probably be helpful if some of you would join my fb group:

    https://www.facebook.com/groups/iaidc
    This is the “independent AI developers consortium.”

    There are about 200+ members now. The forum is mostly for learning about the business side. Rarely do you hear somebody talking about taking out a patent due to the cost, complexity, and uncertainty. It seems more likely to be useful for hardware than software. The comments I do hear are in favor of trade secret. It seems that the most viable route is to hide your software behind an API and hope you don’t get hacked.

    Thanks for the comments except the guy who anon who insults my intelligence behind veil of anonymity.

  19. Anon July 21, 2018 5:29 pm

    That you take my agreeing with you – and explaining why – as insulting your intelligence says far more about you than it does about me.

    Words OUGHT to sting at times. It’s a rough and tumble world – your feelings “bruised” here are nothing compared to those suffering real devastation to their innovation efforts.

    The “out yourself” comment is likewise a sign of your (own professed) need to educate yourself.

  20. B July 21, 2018 7:36 pm

    @ Night Rider

    “What Obama did was decimate the patent system. The AIA, stacking the CAFC with anti-patent judges with no science background, stacking the USPTO with Google employees, etc.

    Patents have dropped in value about 80 percent during the Obama presidency.”

    Yeah, Reyna and Taranto alone are grounds for impeachment. Hell, the CAFC website won’t even publish Taranto’s or Reyna’s degree other than a B.A. for Taranto. Reyna’s Hispanic background, however, is heavily emphasized.

    Kara Stoll is also an Obama appointee, and a lot of the decisions she signed on to, such as electric power Group, are highly disappointing. However, she seems to have opened her eyes and/or hired a few competent clerks in the last year.

  21. Anon July 21, 2018 11:15 pm

    The quote on stinging words:

    Words ought to be a little wild, for they are the assault of thoughts on the unthinking.”

    John Maynard Keynes

  22. Night Writer July 22, 2018 10:49 am

    >Kara Stoll is also an Obama appointee,

    Basically, everyone after O’Malley was appointed by Google. Stoll was a replacement for Rader. Stoll had a really bad reputation in patent circles. She was known as being mean and arrogant and competent but it was all about her.

    Just a wretched human to appoint to the CAFC. And there is no doubt in my mind that she got a call from an Obama administrative person that said now can we count on you to those patents under control? She said yes. And that promise is something that has a powerful affect on a person’s mind particularly people like Stoll.

    That is what Obama gave us. Taranto did have litigation experience and I think he has a BA in Math from Harvard. He came from the DOJ which gave us Benson and is notoriously anti-patent.

    Anyway, I could go on, but each of the appointments were people that you could expect to be anti-patent and people that would agree to get those patents under control. Chen was a bit of a surprise as he hasn’t been as anti-patent as he was at the PTO. At the PTO he was brutal. I heard his oral arguments and him speak. He came across as the most anti-patent person I’ve heard other than Lemley. He ended up switching a bit upon appointment.

  23. B July 22, 2018 2:21 pm

    @Night Writer

    “She was known as being mean and arrogant and competent but it was all about her.” Of the various CAFC judges I have appeared before “mean and arrogant” would not be my opinion of her.

    “[Taranto] came from the DOJ which gave us Benson and is notoriously anti-patent”

    Benson as a moronic decision. Perhaps the correct outcome, but the holding is brain dead. That you clueless Supreme Court.

    “Chen was a bit of a surprise as he hasn’t been as anti-patent as he was at the PTO.” Solicitors have a different job than judges.

    BTW, Nathan Kelley doesn’t come across any more pro-patent than Chen did, and the CAFC adores him and is ready to perform a head and neck massage any time he appears.

    FYI, I suspect that Kelley recently left the PTO

  24. Night Writer July 24, 2018 7:08 am

    @23 B

    Regarding Stolll, this is the thing. She was to replace Rader. What was expected was a person of integrity with a deep understanding of patent law. Someone like Rich that really understood patent law. Not a Renya who had zero experience with patent law and zero science background.

    What we got was a person with little integrity and a bad character. A person who knew something about patent law, but basically used it to get ahead and didn’t really care. She was well-known not to be a heavy hitter, but a taker and user.

    We got common trash when we were promised a Rich type of person.

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