As Momentum For a 101 Fix Builds on Capitol Hill, A Look at the Revived Senate IP Subcommittee’s Leadership

By Eileen McDermott & Gene Quinn
February 26, 2019

Last week, Senator Chris Coons (D-DE) and Senator Thom Tillis (R-NC)—respectively, Ranking Member and Chair of the Senate Judiciary Committee’s Subcommittee on Intellectual Property, which was resurrected on February 7 for the first time since 2007—met with Congressman Doug Collins (R-GA) and others for their second bipartisan meeting in three months in search of a possible legislative solution to the patent eligibility crisis facing biotechnology, medical diagnostics and software related innovations. The same players met in December to begin discussing the issue, and stakeholders are now being told that they should join the conversation sooner rather than later if they want their voices to be heard.

Today, the Senate IP Subcommittee will meet for a hearing (which won’t be webcast) titled “Examining the 2019 Annual Intellectual Property Report to Congress.” That report was released this month by the Office of the U.S. Intellectual Property Enforcement Coordinator and focused on the Trump Administration’s four-part strategic approach to IP, which comprises:

  • Engagement with trading partners;
  • effective use of all legal authorities, including trade tools;
  • expanded law enforcement action and cooperation; and
  • engagement and partnership with the private sector and other stakeholders.

With the Senate IP Subcommittee back up and running and the seeming momentum on fixing patent eligibility law, it’s worth taking a look at the Subcommittee’s leadership and what their collective experience could mean for substantive change.

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Chairman

Thom Tillis (R-NC) 

Born on August 30, 1960 into a working-class family, Senator Thom Tillis became a top-level executive at PricewaterhouseCoopers and IBM by the age of 36. After a 22-year private sector career, Tillis was elected to the North Carolina House of Representatives in 2006 and was selected by his peers to serve as Speaker of the House from 2011 to 2014. As Speaker, Tillis played an instrumental role in reforming North Carolina’s tax and regulatory codes. Tillis was elected to the Senate in 2014, narrowly defeating Democrat incumbent Kay Hagan, winning by approximately 50,000 votes (or 1.7% margin). Tillis currently serves on five Senate Committees: the Committee on Armed Services; the Committee on Banking, Housing, and Urban Affairs; the Committee on the Judiciary; the Committee on Veterans’ Affairs; and the Special Committee on Aging.

Tillis has been active on IP issues in recent years. With respect to patents, during the markup of the PATENT Act, Senator Tillis submitted two amendments. The first would extend the sunset date on Covered Business Method (CBM) review. Currently, as a result of the AIA, CBM will sunset 8 years after it became effective, which would be September 16, 2020. Under the Tillis Amendment, CBM would not sunset for an additional 8 years, or until September 16, 2028. The biotechnology and pharmaceutical industries were undoubtedly extremely pleased with his second proposed Amendment, which would make it impossible for an IPR to be filed against pharmaceutical patents or patents that cover biological products that have been approved by the FDA. In October 2015, Tillis co-sponsored the Defend Trade Secrets Act of 2015, which was signed into law in 2016.

In a statement announcing the Senate IP Subcommittee in January 2019, Tillis said:

“In recent years our country has been faced with a number of challenges in our intellectual property system, from rampant theft from state actors like China, to confusion among innovators and inventors about what is even patentable. These issues are causing our nation’s economy to lose billions of dollars annually and threaten our country’s long-term technological dominance.”

Ranking Member

Senator Chris Coons (D-DE)

Christopher A. Coons (D-DE)

Senator Chris Coons (D-DE) represents Delaware in the United States Senate. He was elected in 2010 and reelected to a full six-year term in 2014.

A scientist by training who received a B.A. in Chemistry from Amherst College prior to attending Yale Law School, Coons spent eight years working in the private sector for an advanced materials manufacturing company in Delaware prior to being elected to the Senate. Thus, Coons knows firsthand how important intellectual property protections are to promoting investments in breakthrough technologies and cures.

On the Senate Judiciary Committee, he has fought to strengthen and modernize the nation’s patent system and establish new protections for American inventions and innovations. Senator Coons’ intellectual property priorities include providing a federal forum for victims of trade secret theft; modernizing U.S. patent law via the Support Technology and Research for Our Nation’s Growth (STRONG) Patents Act, which he first introduced in 2015; protecting U.S. consumers from counterfeit goods; and promoting global protection of IP rights. Among the focuses of the STRONG Patents Act are eliminating fee diversion from the USPTO and “ensuring balance” in post-grant proceedings.

Senator Coons has remarked that “it is important for us to look hard at the ways in which the patent system has been mischaracterized, and how those who rely on it to defend their inventions and innovations have been mischaracterized in the debate and discussions of the last few years.” A Senator who is so in tune with the issues facing inventors and patents is rare, and his leadership on the Senate’s IP Subcommittee signals potential for real change in the near future.

Majority (Republican) Members

Senator Lindsey Graham (R-SC)

Senator Graham, the senior Senator from South Carolina and current Chairman of the Senate Judiciary Committee, was elected to the Senate in 2002 and re-elected in 2008 and 2014. Prior to being elected to the Senate, Graham was elected to the House of Representatives in 1994 to represent South Carolina’s 3rd Congressional District, the first Republican elected to serve that District since 1877. Before being elected to the House, Graham served on active duty with the Air Force from 1982 to 1988. Upon leaving active duty he joined the South Carolina Air National Guard. Graham continues to serve in the Air Force Reserves and is currently a Colonel assigned as a Senior Instructor at the Air Force JAG School. In the Senate, Graham has been primarily focused on issues relating to the military, foreign policy and terrorism. His current Committee assignments include Appropriations, Budget, Foreign Relations, and Judiciary. Senator Graham has not been intimately involved with intellectual property matters. He does not have much of a track record to speak of with respect to either patent or copyright issues. The fact that an IP Subcommittee has been created while he holds the gavel for the full Judiciary Committee could indicate a willingness to move IP legislation, allowing those Senators who care about the issue to work to bring matters of importance to the entire Committee. Those watching inside the beltway are waiting, and watching.

Senator Chuck Grassley (R-IA), Chairman

Senator Grassley was born on September 17, 1933, in New Hartford, Iowa. He has been a farmer, a sheet metal shearer, assembly line worker and a politician. Prior to being elected to the Senate in 1980 he served in the House of Representatives for three terms and he also served in the Iowa Legislature. Grassley presently serves as Chairman of the Committee on Finance and is a member of the Committee on Agriculture, Nutrition and Forestry; Committee on the Budget; and Joint Committee on Taxation. He is a strong supporter of the development of wind, solar, biodiesel, biomass and ethanol as a sustainable, domestic, renewable energy source, which is not surprising since he comes from the heart of America’s farmland. Grassley is a pragmatic politician. In April 2014, when large entities were pushing hard for the latest round of patent reform to pass, Grassley pumped the brakes, acknowledging that there were significant differences of opinion on the need for additional reform. “Sometimes it takes more time than we’d like, but the end result is a better product. I’m willing to sacrifice a little time to develop a bipartisan bill that we can all support.”  Grassley’s pragmatic approach slowed things down during the 113th Congress, but Grassley (along with other Senators on the Judiciary Committee) introduced the PATENT Act in the 114th Congress. Throughout the 114th Congress, Grassley’s staff was aggressively searching for stories about small businesses being abused by patent trolls, which he could use to give patent reform momentum. That never materialized, despite the fact that the PATENT Act was able to pass the Judiciary Committee despite a vocal minority. With respect to copyright reforms, in 2015 Grassley and Leahy called for a study of the Copyright Office and the role of copyright in a digital economy. In December 2016, Senator Grassley expressed an interest in modernizing the Copyright Office and also giving the Copyright Office more independence and decision-making authority relative to its own IT, budget and staffing. In May 2017, he introduced S. 1010, the Register of Copyrights Selection and Accountability Act. The bill would amend the copyright law to require that the Register of Copyrights is appointed from a list of individuals recommended by a panel including the Speaker of the House, the President pro tempore of the Senate, majority and minority leaders in both houses of Congress and the Librarian of Congress. The bill would also require the Register of Copyrights to have experience in copyright law and to be capable of supervising a chief information officer responsible for managing modern IT systems.

Senator John Cornyn (R-TX)

Senator Cornyn was born on February 2, 1952. Cornyn was raised in San Antonio and is a graduate of Trinity University and St. Mary’s School of Law, both in San Antonio. Cornyn also earned a Masters of Law from the University of Virginia Law School in 1995. Prior to being elected to the Senate in 2002, Cornyn served as a district judge in Texas before being elected to the Texas Supreme Court, where he served for nearly seven years between 1991 and 1997. In 1998, Cornyn was elected as Texas Attorney General, serving in that position for several years until his election to the Senate in 2002. Senator Cornyn served as Chairman of the National Republican Senatorial Committee for the 2010 and 2012 election cycles, and as Minority Whip in the 113th Congress.  He currently sits on the Senate Finance, Intelligence, and Judiciary Committees, and 2013 until 2018 served as the Republican Whip, the second-highest ranking position in the Senate Republican Conference. Despite his leadership duties, Cornyn has been actively involved in supporting and proposing patent legislation. For example, in May 2013, Cornyn submitted legislation that would make loser-pay provisions applicable to both plaintiff and defendant. In November 2014, Cornyn also promised the Senate would take up patent reform once again in the 114th Congress. Cornyn was a supporter of the PATENT Act during the 114th Congress, which passed the Judiciary Committee, but then stalled. With respect to copyright matters, Cornyn joined forces with Senator Diane Feinstein (D-CA) back in 2003 and again in 2005 to introduce legislation aimed at combating the growing threat that copyright piracy poses to consumers, the entertainment industry, and the U.S. economy.

Senator Michael S. Lee (R-UT)

Senator Michael Lee was born on June 4, 1971, in Mesa, Arizona. He was elected to the Senate in 2010 and currently serves as Chairman of the Antitrust, Competition Policy and Consumer Rights Subcommittee of the Judiciary Committee; as the Chairman of the Water and Power Subcommittee of the Energy and Natural Resources Committee; the Commerce Committee; and this year became the Chairman of the Joint Economic Committee, where he is overseeing the Social Capital Project. Lee is a graduate of Brigham Young University with a Bachelor of Science in Political Science, and he is also a graduate of BYU’s Law School in 1997. After leaving law school Lee went on to serve as law clerk to Judge Dee Benson of the U.S. District Court for the District of Utah, and then with future Supreme Court Justice Judge Samuel A. Alito, Jr. on the U.S. Court of Appeals for the Third Circuit. Lee is one of the most prominent leaders of the Tea Party movement. He successfully challenged three term Republican Senator Bob Bennett in the Republican primary, earning the Republican nomination, which in Utah generally assures victory in the general election. A vocal and outspoken critic of the Obama Administration, and sometimes antagonist to Senate Republican leaders, Lee has focused on conservative and libertarian issues while in the Senate. Lee has also focused at least some attention on patent matters. Lee gave a speech about patents and innovation in February 2013 at a Computer & Communications Industry Association (CCIA) event in 2013. In September 2013 he co-authored an article with Senator Leahy in Politico, which focused on the problem of abusive litigation tactics. Lee subsequently co-authored the Senate patent reform bill (with Senator Leahy) that was introduced in 2013. Lee was a co-sponsor of the PATENT Act during the 114th Congress. He was also on the list of potential Supreme Court nominees released by then candidate Donald Trump prior to the election.

Senator Ben SasseSenator Ben Sasse (R-NE)

Ben Sasse was elected to the Senate in 2014, winning each of Nebraska’s 93 counties, and securing the second-largest margin for a new senator in the history of the state. Sasse, a constitutional conservative, campaigned on restoring the Constitution to its rightful place and encouraging a more constructive politics. A fifth-generation Nebraskan, Sasse is a graduate of Fremont High School, and attended Harvard University and then earned a PhD in American history at Yale. Prior to being elected to the Senate, Sasse spent the previous five years as President of Midland University. Sasse has also previously worked with the Boston Consulting Group and McKinsey and Company, as well as private equity firms and not-for-profit organizations. Sasse came to some national prominence during the 2016 election cycle as being one of the most outspoken Republican Senators in the Never Trump movement. Senator Sasse first joined the Judiciary Committee in the 115th Congress and does not appear to have any particular expertise with intellectual property matters generally, or patent or copyright matters specifically.

Senator Mike CrapoSenator Mike Crapo (R-ID)

Born in 1951, Senator Mike Crapo is a 4th generation Idahoan. He graduated from Idaho Falls High School in 1969, from Brigham Young University in 1973, and Harvard Law School in 1977. Crapo served eight years in the Idaho State Senate from 1984 to 1992 and was elected to the U.S. House of Representatives to represent Idaho’s 2d District in 1993. He served in the House for six years before he was elected to the U.S. Senate in 1998. He was reelected in 2004, 2010, and 2016. Crapo has served on the Banking Committee, the Finance Committee, the Environment Committee, the Budget Committee, the Indian Affairs Committee, and the Agriculture Committee. He is a member of a number of caucus groups relating to the environment and military. For purposes of technology and innovation, he has served as a member of the Senate Biotechnology Caucus and the Medical Technology Caucus. Crapo does not appear to have any particular expertise with intellectual property matters generally, or patent or copyright matters specifically.

Marsha Blackburn (R-TN)

Marsha Blackburn is serving her first term in the U.S. Senate, representing the state of Tennessee.  Before her election to the Senate, Blackburn represented Tennessee’s 7th Congressional District.  She spent a number of years in the private sector as a small business woman and author and was elected to the Tennessee Senate in 1998, where she served until being elected to the U.S. House of Representatives in 2002.

Blackburn went to college on a 4-H scholarship and worked her way through school selling books for the Southwestern Company as one of their first female sales associates, and later as one of their first female sales managers.  She does not appear to have any specific background in intellectual property but does have an issue page dedicated to technology.

 

The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

Eileen McDermott

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 9 Comments comments. Join the discussion.

  1. American Cowboy February 26, 2019 10:48 am

    I was intrigued by the headline about fixing section 101, but when I looked at the hotlinks to the announcement of resurrecting the subcommittee and to the report called “Examining the 2019 Annual Intellectual Property Report to Congress” I did not find anything about fixing section 101.

    What loop is it that I am out of? How does one get into the loop?

    P.S. My bias is to go back the machine or transformation test, including a finding that when he machines known as general purpose computers are reconfigured by software they become a new patent-eligible machine.

  2. Mike February 26, 2019 11:26 am

    I read through the “Examining the 2019 Annual Intellectual Property Report to Congress” document, and, although item four of the Trump administration’s four-part approach states “engagement and partnership with the private sector and other stakeholders”, I don’t see anything in the report regarding patent reform for inventors and/or inventor rights.

    At least these two reforms are needed in support of inventor rights:

    1. Small inventors cannot properly defend their rights in their home district because of the additional costs caused by TC Heartland. To bring balance to damage to inventors caused by TC Heartland, the VENUE Act (S.2733) of 114th Congress should be brought forward by the Senate Judiciary Committee’s Subcommittee on Intellectual Property.

    This sought to amend 1400(b), and, because the text expands venue only to those districts associated with inventor research or product development, it HELPED INVENTORS, AND IT ALSO SOLVED THE PROBLEM OF FORUM SHOPPING.

    Accordingly, 1400(b) should be amended to allow patent actions to be brought in judicial districts where:

    – an inventor named on the patent conducted research or development that led to the application for the patent in suit;
    Or
    – party has a regular and established physical facility and has managed significant research and development for the invention claimed in the patent, has manufactured a tangible product alleged to embody that invention, or has implemented a manufacturing process for a tangible good in which the process is alleged to embody the invention.

    2. No pre-AIA inventor signed up for the AIA patent bargain that drastically and unfairly (and unconstitutionally) changed procedures and expectations or the agreement between inventors and the government. Thus, IPRs should not be applied retroactively. IPRs applied retroactively are unconstitutional under the 5th amendment Takings and Due Process Clauses, the Appointments Clause, and Ex Post Facto Clause.

    No pre-AIA applicant agreed to this new patent bargain on the filing/priority date of her patent application, and the AIA unfairly and unconstitutionally changed the rules on all pre-AIA patent holders.

    ====

    More should and could be done, but these two items are fair compromises. It is my hope that this subcommittee will seek out the opinion of Inventors in their quest for patent reform. The patent system was created for Inventors. The Constitution does not mention “Big Business” in Article I, Section 8, Clause 8. It specifically mentions Inventors, and it is the Inventors who innovate.

    Look no further than here: “Congress shall how the power to promote the Progress of Science and useful Arts, by securing for limited Times to INVENTORS the exclusive Right to their respective Discoveries.”

    Support Inventor Rights!

  3. Pro Say February 26, 2019 12:38 pm

    The wall our Country really and actually needs is an IP wall … to keep out all these meritless, due-process-denying, unconstitutional 101 rejections and extinguishments.

    That’s the wall that really matters.

    The one needed to restore American innovation and job-creation leadership.

  4. Anon February 26, 2019 12:57 pm

    AC,

    To your point of “P.S. My bias is to go back the machine or transformation test, including a finding that when he machines known as general purpose computers are reconfigured by software they become a new patent-eligible machine.

    Please define: “general purpose computer” vis a vis what that item includes as to any (and all) of hardware, firmware, and software…

  5. Ternary February 26, 2019 1:32 pm

    Perhaps Senator Tillis has a change of heart after a proposal to “… extend the sunset date on Covered Business Method (CBM) review.” But seeing is believing.

    From Tillis’s track record it seems that he is more concerned about the IP interests of large incumbent companies (especially pharma) and how their IP is stolen by Chinese companies. There is no indication that Senator Tillis has any interest in protecting/promoting IP of small independent inventors or in 101 issues.

    Senator Coons is a different story as he seems to be well versed in aspects of IP as was reported previously by Steve.

    Overall, the revival of the Subcommittee with Senator Coons as ranking member is probably not bad news for independent inventors.

  6. Night Writer February 27, 2019 8:44 am

    Just a little reading of the popular press and you will see that all stories (or almost all) are about patent trolls or how patent rights cause problems.

    The popular press is still incredibly negative about patents and as long as that is true there will be no legislation that strengthens patents.

  7. Jason Lee February 27, 2019 9:24 am

    The small guy needs representation Sen. Coons can not be the only guy. Special interest groups like Apple, Google and Amazon will make sure to carve out the loophole for them selves so they can continue the theft of small patent holders. Patents have no value. Why will anyone invest in a start up company that only has patents to their name? Owning just a patent in today’s world means nothing if the courts will not back them up. As we have been seeing in the last 10yrs. Asia and Europe are looking much better places to start up a company. America sold their souls to the elites, thats very sad.

  8. TimeWillTell February 27, 2019 11:40 am

    Gene – would be interested to get your take on the following Alice ruling in ND Cal:

    https://www.patentdocs.org/2019/02/university-of-florida-research-foundation-inc-v-general-electric-co-fed-cir-2019.html

  9. Ternary February 27, 2019 2:02 pm

    Recent Senate hearings on drug pricing, and particularly comments by Sen. Cornyn, who is also on the Judiciary Committee, on the over 100 patents that protect Humira, do not bode well for positive changes on patent eligibility.

    With little substantive defense from AbbVie’s CEO why Humira’s prices have doubled from $19,000 to $38,000 (It is the middlemen who make us do this) and the barriers that the over 100 patents create for alternatives, led Cornyn to observe that Congress may do something about this on the IP side.

    There are enough Senators who will promote and protect pharma, so that threat should not be taken too seriously. But, in the cause of grandstanding and pretending to protect “the core” of our patent system, I see no near term loosening of any 101 standard. Especially as it will be argued that the patent system is used to gouge the public in drug pricing.

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