Recently I interviewed Ray Niro. Our wide ranging discussion touched on all things patent, we first discussed the announcement that Niro, Haller & Niro is now doing patent infringement defense on a flat fee basis. We wrap up our discussion of this new defense business model for the patent litigation industry below. We then transition into a discussion about fee shifting in patent litigation, first discussing the recently failed patent reform and then moving into a discussion of the Supreme Court fee shifting cases from the October 2013 term.
QUINN: How many lawyers do you have at your firm currently?
NIRO: 28. Between 28 and 31 most of the time. We are in the process of adding a few, so we’re I think 28 now; we’ll probably be 31 in the fall.
QUINN: Okay. And the reason that I ask that is because I suspect that as this word gets out that you’re doing this that you’re probably going to see a lot of interest. And how do you envision things developing? Are you going to be able to grow? Are you going to try and choose cases, which cases you can get involved with? What’s the mechanical process?
Congress is moving forward with at least some patent reform efforts this year, taking up the Targeting Rogue and Opaque Letters Act of 2014, which is scheduled to be marked up in the House Commerce, Manufacturing, and Trade Subcommittee on July 10, 2014. This Subcommittee is a subcommittee of the House Energy and Commerce Committee. This draft of the bill is as it existed earlier this week.
This draft legislation — creatively dubbed the TROL Act — addresses the sending of abusive and bad faith patent demand letters by clarifying that such activity may violate the Federal Trade Commission Act and authorizing that agency and state attorneys general to bring actions to stop the abusive behavior, among other things.
The writing has been on the walls for some time, as the Senate Judiciary Committee has repeatedly failed to produce a revised version of S. 1720, the Senate version of patent reform. Over the past several months an announcement would come that the Senate Judiciary Committee would be releasing a Managers’ Amendment to the pending legislation, only to have that postponed time after time. Today, Senator Patrick Leahy (D-VT) announced what many have been expecting for weeks, namely that patent reform would be tabled due to lack of consensus. But Leahy’s announcement went further, noting that not only would the Committee not release the long awaited updated version of the bill, but that patent reform would be removed from the Committee calendar altogether.
While Senator Leahy said that he hopes to be able to return to patent reform this year, the legislative calendar does not look good. Now removed from the Committee calendar patent reform seems to dead for this Congress.
No vote will be taken on the Senate version of patent reform until the next draft is released and voted on by the Judiciary Committee, which doesn’t seem likely to happen anytime soon. Then if the Senate does pass patent reform it is guaranteed to be different than the version passed by the House of Representatives. Ordinarily one might suspect that would lead to a Conference between the House and Senate, but Judiciary bills are rarely, if ever, sent to Conference. That means even if the Senate passes patent reform the bill would bounce back to the House, and we could see an ensuing game of ping-pong, with greatly intensified lobbying by both sides. All the while legislative days are dwindling, and useful legislative days in advance of the November election are even more limited. Indeed, with this announcement today it seems that patent reform is now dead for 2014. The only hope proponents have is that patent reform will sneak back in a lame duck session of Congress, but I believe that hope to be somewhat far-fetched.
Critics of the patent system, and specifically the critics of software patents, would have the United States forfeit the future in favor of something that has never worked. Curtailing patent rights has never worked to produce more innovation anywhere it has been tried. So why would we try such an experiment in the United States when it hasn’t ever worked anywhere ever? Unfortunately, it seems that many of our leaders in Washington, DC, are listening to those who have fanned the flames and worked exceptionally hard to create an unhealthy anti-patent climate.
Newsflash — innovators are not evil. The fact that this even needs to be said shows just how far we have come and how pervasive the anti-patent climate has become. Rather than celebrate innovation day after day like the drone of a metronome we hear how patents are evil and how they stifle innovation. But if you actually look through the rhetoric you notice that those claims are made with zero supporting evidence, but that is because all of the available objective evidence directly contradicts the growing orthodoxy.
Once upon a time the United States celebrated innovators, and gave them a meaningful opportunity to reap the deserved reward from their hard work and ingenuity. Today, we vilify innovators as evil all because there are a handful of bad actors that engage in abusive patent litigation tactics. Of course, these tactics have nothing to do with patents substantively and everything to do with the fact that these bad actors are allowed to manipulate the judicial process and exploit inefficiencies in the litigation system that are wholly unrelated to the substance of a patent.
In Brooks Furniture Mfg., Inc. v. Du tailier Int’l, Inc., 393 F. 3d 1378 (2005), the United States Court of Appeals for the Federal Circuit held that “[a] case may be deemed exceptional” under § 285 only in two situations: (1) “when there has been some material inappropriate conduct,” or (2) when the litigation is both “brought in subjective bad faith” and “objectively baseless.” The question put before the Supreme Court was whether the Brooks Furniture framework is consistent with the statutory text.
In unanimous decisions delivered by Justice Sotomayor, the Supreme Court ruled that the Brooks Furniture framework was too restrictive and inconsistent with the text of § 285. With Octane Fitness the Supreme Court makes it easier for district courts to sanction plaintiffs for bringing meritless patent infringement suits, while Highmark makes it more difficult for the Federal Circuit to reverse district court decisions under the statute. Both cases were closely watched as both the private sector and Congress have been making efforts to quash the dramatic uptick in patent cases filed by non-practicing entities.
The purpose of the U.S. patent system has been to promote innovation. The various “Patent Reform” bills will in fact retard innovation and cost America jobs. They are contrary to the Founding Fathers’ intent in Article 1, Section 8, Clause 8 of the Constitution, contrary to the policies of over 220 years of patent law, contrary to the advice of the Office of Advocacy of the Small Business Administration,[i] and contrary to prior statements of President Obama.[ii] We urge every small business inventor to contact their Senators and urge them to strongly oppose S.1013 (Cornyn), S. 866 (Schumer), and S.1612 (Hatch). Although the current version of S.1720 (Leahy) is not as horrific as the other bills, it is problematic and should also be opposed as it does not fix the Troll problem, but does harm independent and small business inventors. If your Senator is not on the Judiciary committee, please ask him or her to contact their colleagues on Judiciary to let them know they are uncomfortable with the above proposed bills. We also encourage you to contact your Congressmen and ask them to oppose HR 3309 should it ever come back to the House. Finally, we suggest you contact the White House and let them know that the Patent Troll bills don’t fix the patent troll problem, but do harm the innovation ecosystem in America, and will be bad for your business.
Part I of this five part series focused on the national economic impact of the pending patent reform bills. These included the disincentive to invent, job losses, shifting jobs overseas, and loss of American wealth. Part II looked at the impacts of “Loser Pays,” “Pay to Play,” and “Fee Shifting-Joinder” provisions. Part III talked about Covered Business Methods (CBM) and Elimination of Post Grant Review Estoppel. Part IV discusses the mechanisms of how the other provisions of the bills will make us poorer and kill jobs for ourselves and our children. Part V will summarize our discussion.
In this Part IV, we will discuss:
Disclosure of All Plaintiff Interested Parties;
Enhanced Pleadings and Limiting Discovery, and
While some of these provisions may seem to make sense on their surface, and tailored to provide greater transparency, the reality is that the provisions are extraordinarily burdensome. For example, as written one proposal would require a corporation bringing a patent infringement lawsuit to disclose every stockholder, even if they only own a single share. Furthermore, by micromanaging patent litigation, discretion will be taken away from district court judges while at the same time onerous obligations are placed on small businesses before they can even begin to assert patent infringement. This is additionally problematic, as so many entities already knowingly choose to infringe rather than negotiate licenses or engineer around patent rights. Finally, customer stays will prohibit some patent holders from ever receiving a remedy.
Part I of this five part series focused on the national economic impact of the pending patent reform bills. These included the disincentive to invent, job losses, shifting jobs overseas, and loss of American wealth. Part II looked at the impacts of “Loser Pays,” “Pay to Play,” and “Fee Shifting-Joinder” provisions. Parts III and IV discuss mechanisms of how the other provisions of the bills will make us poorer and kill jobs for ourselves and our children. Part V will summarize our discussion.
In this Part III, we will discuss
Covered Business Methods (CBM) and
Elimination of Post Grant Review Estoppel
If Covered Business Methods (CBM) expansion and the proposed elimination of post grant review estoppel provisions are enacted, it will provide greater incentive to challenge granted patents, making serial challenges the new norm. These provisions will substantially and negatively impact small business innovators who will be forced to continually fight to keep the patents they have obtained after having already spent many years during patent prosecution to obtain the rights. This means patent rights will never be more than an expectation and not a true property right. Therefore, if these provisions are enacted it will mean no patent is every truly safe, no title is every quieted, and this will substantially, and negatively, impact investment opportunity and ultimately the commercialization of innovations. (Think about what it would do to the real estate market if you could never be sure you had good title to your home.)
Part I of this five part series focused on the national economic impact of the pending patent reform bills. These included the disincentive to invent, job losses, shifting jobs overseas, and loss of American wealth. Parts II, III and IV focus on the mechanisms of how the various provisions of the bills will make us poorer and kill jobs for ourselves and our children. In this Part II, we will discuss:
Pay to Play
Fee Shifting “Joinder”
The US House passed the Innovation Act (HR3309) in December 2013. The Senate is now well on its way to incorporating this legislation which will make Americans poorer. The bills have many problems that will inhibit small inventors, but the most insidious are “Loser Pays” and “Pay to Play”. It changes the law, singling out inventors as a class so onerous that only they must pay the other side’s legal fees if they don’t win every claim. Pay to Play makes inventors guarantee payment up-front. Some proposed Senate bills (e.g.: S.1013 & S.1612) make sure that almost all Americans and most small companies will never be able to afford to enforce their patents on their inventions.