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Posts Tagged ‘ Congress ’

Patent Reform: House Holds Hearing on “Innovation Act”

Posted: Wednesday, Oct 30, 2013 @ 12:25 pm | Written by Grossman, Israel & Pinkos | 3 comments
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Posted in: Congress, Guest Contributors, IP News, Articles, Patent Reform, Patents

Yesterday, the House Judiciary Committee held a hearing on the “Innovation Act,” HR 3309, a bill sponsored by the Chairman of the House Judiciary Committee and co-sponsored by 10 other Members from both sides of the aisle, including the Chairman of the IP Subcommittee.

The hearing focused on the effect the Innovation Act would have on the problem of abusive litigation practices and on the patent system as a whole.  Three central themes emerged from the hearing:  1) there is an urgent need to fully fund the PTO; 2) significant skepticism remains about expansion of the Covered Business Method (“CBM”) program; and 3) some of the more technical aspects of the Innovation Act would help rid the patent system of expensive and wasteful lawsuits.  Divergence of opinion remained among the Members, however, about whether Congress should address fee shifting at this time or wait for the Supreme Court to hear the two fee shifting cases before it, although the witnesses agreed that legislation on fee shifting would be helpful, and Congress should proceed with legislation on this front.

Note when reading the report below that the “Innovation Act,” HR 3309, is different than the “Innovation Protection Act,” HR 3349.  The Innovation Act is the patent litigation reform measure introduced by House Judiciary Committee Goodlatte and others.  The Innovation Protection Act is the PTO funding bill introduced by House Judiciary Committee Ranking Member Conyers and others.

Judge Michel: Patent Reform Bills Would Weaken Patent System

Posted: Wednesday, Oct 16, 2013 @ 2:27 pm | Written by Olivia Luk | 12 comments
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Posted in: Guest Contributors, IP News, Articles, Patent Litigation, Patent Reform, Patents

Left to Right: DePaul Law Professor Josh Sarnoff, Chief Judge James Holderman (N.D. Ill.), Ray Niro, Chief judge Michel (CAFC, ret.), DePaul Law Professor Roberta Kwall.

Former Federal Circuit Chief Judge Paul Michel gave an invigorating speech at the DePaul University College of Law Center for Intellectual Property Law & Information Technology (CIPLIT®) on October 15, 2013 at the 15th Annual Niro Distinguished Intellectual Property Lecture on the topic “How to Retain Patent Enforcement While Reforming It – Judges and Counsel Should Manage Infringement Suits, not Congress.”

To an evenly divided room of practitioners and law students, Judge Michel urged practitioners to take action against Congress’ incorrect understanding of the patent system.  Judge Michel explained legislators are proposing bills because they are being heavily lobbied by a small (but powerful and well-funded) coalition of companies.  He highlighted the common problem with the nine active bills currently before Congress.  If passed, the bills separately and together would weaken the patent system; not strengthen it.  None of these current bills would address the problems with the current patent system: litigation is slow, complicated and unpredictable.  The bills, however, would make litigation slower, more complicated and less predictable. In short, congress’ solution would add to the problem.

A Summary of the Goodlatte Patent Bill Discussion Draft

Posted: Tuesday, Oct 1, 2013 @ 3:58 pm | Written by Manus Cooney | 9 comments
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Posted in: Congress, Guest Contributors, IP News, Articles, Manus Cooney, Patent Reform, Patents

EDITOR’S NOTE: What follows is a summary of the Goodlatte patent bill created by American Continental Group, which is a government affairs and strategic consulting firm in Washington, DC. Manus Cooney, a former Chief Counsel of the Senate Judiciary Committee is one of the partners at ACG, and is also frequent guest contributor on Cooney and his partners and associates worked to prepare this summary, which was described as a team effort. It is republished here with permission. 


Manus Cooney, ACG

Sec. 3. Patent Infringement Actions

Pleading Requirements (p.2)

Amends Title 35 to establish heightened pleading requirements for patent infringement actions.   A party alleging infringement must include in the pleading, unless the information is not reasonably accessible, the following:

  • Each patent allegedly infringed and each claim of each patent that is allegedly infringed
  • For each claim, which product, feature, method or process are allegedly infringed, including the name or model number; where each element of the claim is fount within the accused product/method; and how the terms of the asserted claim correspond to the functionality of the accused product/method.
  • Whether each element is infringed literally or under the doctrine of equivalents
  •  A description of the direct infringement, the acts of the alleged indirect infringement that contribute to or are inducing direct infringement
  • A description of the right of the party alleging infringement to assert each patent identified and patent claim identified
  • A description of the principal business of the party alleging infringement
  • A list of each complaint filed, of which the party alleging infringement has knowledge, that asserts or asserted any of the patents identified
  • Whether each patent is subject to any licensing term or pricing commitments through any agency or standard-setting body

GAO Report Finds No NPE Patent Litigation Crisis

Posted: Sunday, Aug 25, 2013 @ 12:53 pm | Written by Manus Cooney | 28 comments
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Posted in: America Invents Act, Congress, Guest Contributors, IP News, Articles, Patent Litigation, Patent Troll Basics, Patent Trolls, Patents

Just when Congress is gearing up to consider a package of patent reform initiatives aimed at dealing with abusive patent litigation, the U.S. General Accountability Office has released a much anticipated study of the “consequences of litigation” by non-practicing entities as mandated by Section 34 of The America Invents Act (AIA).   Given that Section 34’s language and directives could best be described as unenthusiastic towards licensing and the enforcement of patents, an objective reader of the GAO study cannot help but conclude that the GAO did not conduct or produce the sort of scornful report on the state of our patent system that large IT companies and patent-skeptics had hoped for.  While the report is not a vindication for NPEs (far from it), it did not give patent critics what they hoped to get (i.e. an independent agency’s finding that patent litigation is exploding and that this increase in litigation is having a negative impact on innovation).  Quite the contrary.

The GAO interviewed officials from the PTO, FTC, ITC, and 44 stakeholders including judges, academics, venture capitalists, technology companies, and inventors, surveying existing economic and IP academic research; examined  data from the AIPLA and RPX; and purchased litigation-related data from third party sources like Lex Machina; and conducted a year-long PTO performance audit.  In the end, the GAO produced a measured report which summarizes the views of the various stakeholders and suggests that — to the extent there is a problem in the patent system, it is not a patent litigation problem but rather a legacy patent quality problem.

Will Congress Succumb to the Sirens’ Song and Take-Over the Judiciary’s Case Management Role in Patent Litigation?

Posted: Tuesday, Aug 13, 2013 @ 10:47 am | Written by Ron Katznelson, Ph.D. | 7 comments
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Posted in: Congress, Guest Contributors, IP News, Articles, Patent Litigation, Patent Reform, Patents, Ron Katznelson

Taken by Gene Quinn, December 12, 2012.

According to mythological accounts, ancient Mediterranean voyagers confronted a subtle danger embodied in alluring form:  the Sirens. The Sirens compelled all who heard their sound to draw near their reef-surrounded isle. “Their song though irresistibly sweet was no less sad than sweet and lapped both body and soul in a fatal lethargy the forerunner of death and corruption.” [1] Those succumbing to the Sirens’ song perished as their boats were wrecked on the submerged reefs surrounding the island. Others escaped this fate, however, by blocking off the sound itself.

The Sirens are now singing a seductive song about how to stop patent “trolls” and their “abusive litigation.”  It appears that several large corporations who cultivated the patent “troll” narrative trill forth their song, promising efficiency and fairness with concomitant benefits for all.  Those giving heed to this modern Siren song are lulled into abandoning or subordinating to concerns of “litigation abuse” other fundamental long-held values and principles of equity, separation of powers, judicial independence and prudent judgment.

The America Invents Act (AIA) is one of the most sweeping patent legislation in over a century, the effects of which are yet to be fully understood.  Even before the full implementation of the AIA, legislators in both chambers of Congress have heard the Siren muses and called for yet additional changes in our patent law, ostensibly to curb purported “abusive patent litigation.”  The majority of the proposed provisions in these bills appear to focus on the patent litigation process, ironically by stripping the Federal Judiciary of their procedural and discretionary case-management tools.

17 Members of Congress Push to Exclude USPTO from Sequester

Posted: Friday, Jul 5, 2013 @ 8:00 am | Written by Gene Quinn | Comments Off
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Posted in: Congress, Gene Quinn, IP News, Articles, Patents, USPTO

Congressman Frank Wolf

Congressman Chaka Fattah

On June 24, 2013, 17 Members of Congress wrote a letter to Congressman Frank Wolf (R-VA) and Congressman Chaka Fattah (D-PA), who are respectively the Chairman and the Ranking Member of the Subcommittee on Commerce, Justice, Science of the House Appropriations Committee.

The top three signatures belong to Congressman Mike Honda (D-San Jose), Congresswoman Zoe Lofgren (D-San Jose) and Congresswoman Anna G. Eshoo (D-Palo Alto). These Representatives collectively represent the Congressional Districts that make-up and abut Silicon Valley in Northern California. On June 28, 2013, they also introduced the Patents And Trademarks Encourage New Technology (PATENT) Jobs Act to exempt the United States Patent and Trademark Office (USPTO) from the what they sponsors called debilitating cuts imposed by budget sequestration. See PATENT Jobs Act Seeks to Exempt USPTO from Sequestration.

The letter to Congressmen Wolf and Fattah was short and to the point, saying: “We write to request your assistance in addressing the Office of Management and Budget’s (OMB) recent decision to sequester user fees which fund the United States Patent and Trademark Office (USPTO). As a result, almost $150 million in inventors’ fees in Fiscal Year 2013 have been locked in USPTO’s general fund. We request that the Approrpiations Committee allow USPTO to access the sequestered user fee funds.”

PATENT Jobs Act Seeks to Exempt USPTO from Sequestration

Posted: Friday, Jun 28, 2013 @ 3:14 pm | Written by Gene Quinn | 3 comments
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Posted in: Congress, Gene Quinn, IP News, Articles, Patents, USPTO

Congressman Mike Honda, one of the sponsors of the PATENT Jobs Act.

Earlier today Congressman Mike Honda (D-San Jose), Congresswoman Zoe Lofgren (D-San Jose) and Congresswoman Anna G. Eshoo (D-Palo Alto) introduced the Patents And Trademarks Encourage New Technology (PATENT) Jobs Act to exempt the United States Patent and Trademark Office (USPTO) from the what they sponsors called debilitating cuts imposed by budget sequestration. Indeed, those who have followed this issue know that during the debate and ultimate passage of the America Invents Act (AIA) much was made of the ability of the USPTO to keep its fees and use them to support ongoing business operations. Written promises were made, no binding promises were enacted as part of the legislation, and few could have anticipated that so soon after the USPTO would once again be facing a budget shortfall. See Lack of Commitment to PTO Funding.

Even though the USPTO is funded solely by patent user fees, the sequester requires cuts of nearly $150 million in the agency’s funding. Without a legislative remedy, the shortfall effectively stops the agency from opening new, highly anticipated regional patent offices across the country, including one located in Silicon Valley. See USPTO Announces Satellite Office Locations. Not surprisingly, each of the sponsors of the bill represent districts in Northern California in the greater San Jose area, which explains their keen interest in the opening of the Silicon Valley satellite Patent Office location. Honda represents the 17th District, Lofgren represents the 19th District and Eshoo represents the 18th District.

The PATENT Jobs Act would enable USPTO to access the fee revenue sequestered in Fiscal Year 2013, which would otherwise sit unused and untouchable, and would add the USPTO to the list of agencies exempt from sequestration orders. This is not a new budgetary concept. Congress has recognized the uniqueness of user-fee-funded agencies in the past, exempting them from sequestration in the Statutory Pay-As-You-Go Act of 2010. The legislation follows a bipartisan letter sent earlier this week by members of the California delegation to the Commerce, Justice, and Science Appropriations Subcommittee asking for a remedy.

Supremes Say Reverse Payments May Be Antitrust Violation

Posted: Tuesday, Jun 18, 2013 @ 6:00 am | Written by Gene Quinn | 3 comments
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Posted in: Antitrust, Food & Drug Administration, Gene Quinn, IP News, Articles, Patents, Pharmaceutical, US Supreme Court

Justice Stephen Breyer wrote for the majority in FTC v. Actavis.

On Monday, June 17, 2013, the United States Supreme Court issued its much-anticipated decision on so-called “reverse payments” in FTC v. Actavis, Inc.  This decision will impact how brand name drug companies and generics enter into patent settlements to resolve pending patent litigation.  In a nutshell, speaking for the majority, Justice Breyer wrote that there is no valid reason for the FTC to be denied the opportunity to pursue reverse payments as an antitrust violation.  Breyer, who was joined by Justices Kennedy, Ginsberg, Kagan, and Sotomayor, determined that reviewing courts should apply the rule of reason when determining whether reverse payments violate antitrust law.

While the ruling will likely come as no shock to casual observers, or even to those who have long believed that these agreements were anticompetitive, it is a bit of a shock in that the decision seems to present an unrealistic utopian view of how challenges to reverse payments will be litigated.  For reasons hardly explained, Breyer thinks that it will be largely unnecessary for reviewing courts to engage in complicated review of the patent or to engage patent issues, but at the heart of these cases is the underlying patent and associated patent laws that give brand name manufacturers significant and uncompromised rights to exclude.

Chief Justice Roberts explained in his dissent, who was joined by Justices Scalia and Thomas, that it was his view the decision of the majority “weakens the protections afforded to innovators by patents, frustrates the public policy in favor of settling, and likely undermines the very policy it seeks to promote by forcing generics who step into the litigation ring to do so without the prospect of cash settlements.”