Twist Emerges in Senate IP Subcommittee Leadership for 117th Congress

By Gene Quinn & Eileen McDermott
February 16, 2021

“Now, the architect of the PTAB is in control of patent policy in the Senate. Perhaps, moving forward, a lesson about the virtue of compromise will be learned, although that unfortunately seems unlikely.”

On Sunday, February 14, U.S. Senate Democratic Whip Dick Durbin (D-IL), Chair of the Senate Judiciary Committee, and Senator Chuck Grassley (R-IA), Ranking Member of the Senate Judiciary Committee, announced the Subcommittees and Subcommittee Chairs of the Senate Judiciary Committee for the 117th Congress. Many in the IP universe had hoped Senator Chris Coons (D-DE), the Ranking Member of the Senate IP Subcommittee for the 116th Congress, would be appointed the IP Subcommittee Chair, considering his strong support for various IP reforms along with the previous IP Subcommittee Chair, Thom Tillis (R-NC). Tillis will serve as Ranking Member of the Subcommittee this Congress, but Coons was not selected to serve as Chair.

As the result of a Senate caucus rule change earlier this month  meant to distribute subcommittee chairmanships more evenly, Senator Patrick Leahy (D-VT) will now be serving as Chair of the Subcommittee on Intellectual Property of the Senate Judiciary Committee for the 117th Congress. The rule has come to be known as “the Murphy Rule” after Senator Christopher S. Murphy (D-CT), who proposed it. Leahy had pushed back on implementing the rule this term because implementing the rule would cost him Chairmanship of the Senate Appropriations Subcommittee on State, Foreign Operations, and Related Programs, which went to Senator Chris Coons (D-DE).

This curve certainly changes the calculus regarding any path to legislative reform during the 117th Congress. While Senator Coons does remain on the Judiciary Committee, and he is likely to again submit some version of the STRONGER Patents Act that has been submitted during each of the last three Congressional terms, he will not be in a position to even ensure that it receives consideration at the Subcommittee level. Given that the STRONGER Acts each sought to reform the Patent Trial and Appeal Board (PTAB), a centerpiece of the Leahy-Smith America Invents Act (AIA), it would seem extremely unlikely that Senator Leahy would move the bill forward in Subcommittee. And the portions of STRONGER that sought to overrule eBay and make it easier to obtain an injunction are dead on arrival for the 117th Congress.

This twist of fate that finds Senator Leahy back as the gatekeeper of patent policy in the Senate should be a wake-up call to those—particularly the independent inventors—who resisted all attempts at achieving a compromise over the last several years. There was, at one point, at least a glimmer of a possibility that some of the STRONGER reforms could have been carved out and moved forward bringing at least some legislative reform to the PTAB. Alas, the independent inventor community wanted the PTAB abolished and would agree to nothing less, which was foolish and was never going to happen. Now, the architect of the PTAB is in control of patent policy in the Senate. Perhaps moving forward a lesson about the virtue of compromise will be learned, although that unfortunately seems unlikely.

With respect to patent eligibility, which already was facing an uphill fight to even get back on the radar in the 117th Congress, the naming of Senator Leahy as Chair of the IP Subcommittee seems to all but end any hope of reforming 35 U.S.C. 101 over the next two years, leaving the U.S. patent system to uncomfortably dangle in a status quo that finds us falling behind both Europe and China in important areas such as artificial intelligence, machine learning, biotechnology and more.

With respect to efforts to reform the Digital Millennium Copyright Act (DMCA), which started during the 116th Congress, Senator Leahy was Chairman of the Judiciary Committee when the DMCA was passed and signed into law by President Bill Clinton. To the extent that Leahy is interested in revisiting copyright reform, which is sorely needed, Leahy would have both the institutional knowledge and gravitas to engage in meaningful reform efforts.

Having said all of this, it is hard to imagine that the Senate IP Subcommittee will be as active during the 117th Congress as it was during the 116th Congress, when Senators Tillis and Coons worked so closely together to move forward multiple issues. Indeed, although Senator Leahy was a member of the Subcommittee on Intellectual Property during the 116th Congress, matters of IP were championed by Senators Coons, Tillis and Mazie Hirono (D-HI) over and over again. Further, given that Leahy has stated that he plans to do the work of the Appropriations Subcommittee on State, Foreign Operations, and Related Programs at the full Committee level, one could wonder how interested he remains in IP matters and whether Chairmanship of the IP Subcommittee was a consolation prize.

In other assignments of note, Durbin also reestablished the Subcommittee on Privacy, Technology, and the Law, which will be chaired by Coons, with Senator Ben Sasse (R-NE) as Ranking Member.

Senator Amy Klobuchar (D-MN) will chair the Subcommittee on Competition Policy, Antitrust, and Consumer Rights, with Senator Mike Lee (R-UT) serving as Ranking Member.

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Here’s a closer look at Leahy’s and Coons’ backgrounds and records on IP issues:

 

Senator Patrick Leahy (D-VT)

Senator Patrick Leahy – Chairman, Senate Subcommittee on Intellectual Property

Patrick Leahy is the current president pro tempore of the United States Senate and the senior-most member of the Senate Judiciary Committee. He has been a member of the Senate since 1974 and remains the only Democrat elected as Senator from Vermont and was the youngest U.S. Senator ever to be elected from Vermont, at the age of 34.

Leahy was of course co-author of the Leahy-Smith America Invents Act (AIA) and has been active on IP throughout his career. Outside of the AIA, he has been involved in legislation relating to privacy rights, copyright protections and freedom of speech on the Internet.  He was a co-founder and remains a co-chair of the Congressional Internet Caucus.

In September 2013, he co-authored an article with Senator Mike Lee in Politico, which focused on the problem of abusive litigation tactics. Lee and Leahy subsequently co-authored the Senate patent reform bill that was introduced in 2013.

With respect to copyright reforms, in 2015 Leahy and Chuck Grassley called for a study of the Copyright Office and the role of copyright in a digital economy.

Senator Chris Coons (D-DE)

Senator Chris Coons (D-DE)

Senator Chris Coons – Chairman, Subcommittee on Privacy, Technology, and the Law

Coons represents Delaware in the United States Senate. He was elected in 2010 and reelected to a full six-year term in 2014, and again in 2020.

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.

Coons served as Ranking Member of the Senate IP Subcommittee for the 116th Congress and worked side-by-side with Tillis on attempts to introduce patent reform legislation and, last year, on reforms to the Digital Millennium Copyright Act. As Chair of the Senate Judiciary Committee’s Subcommittee on Privacy, Technology, and the Law, he will lead a panel that has jurisdiction over legal issues pertaining to technology and social media platforms, as well as other legal issues relating to Americans’ privacy and emerging technologies.

“This is a critical moment for the United States to lead not only the development of technologies of the future, but the legal frameworks that will guide their use,” said Coons in a statement. “We have much work to do to protect Americans’ privacy online, combat misinformation, and ensure the free flow of information, and I look forward to working with my colleagues on these important priorities.”

 

The Author

Gene Quinn

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.

Gene Quinn

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.

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 as of the time of publication 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. Join the discussion.

  1. Josh Malone February 16, 2021 4:14 pm

    Independent inventors have never been invited to negotiate on patent policy.

  2. Anon February 16, 2021 4:18 pm

    No matter how bad Leahy may portend, I simply cannot agree with the breadth of the statement of:

    This twist of fate that finds Senator Leahy back as the gatekeeper of patent policy in the Senate should be a wake-up call to those—particularly the independent inventors—who resisted all attempts at achieving a compromise over the last several years

    Bad legislation “as a compromise” remains bad legislation.

    It also would lesson the need to achieve actually meaningful change.

    Will Leahy see the error of his ways in view of the damage of the AIA?

    Doubtful.

    Will his tenure be forever?

    Certainly not.

  3. PAUL MORINVILLE February 16, 2021 5:15 pm

    If compromise leaves you in a place where the improvement has no real effect, is it a compromise?

    Transferring the SCOTUS legislation of the abstract idea in 101 to 100 and 112, does nothing to improve the problem. In fact, it makes it worse because a decade or more of case law will need to be developed to figure it out

    Codifying the PTAB rules that had been largely put in place by Iancuwith only minimal improvement for independent inventors does nothing to fix the problem. Passing it prolongs the problem

    Fixing eBay, while part of the latest version of the STRONGER Patent Act, was being killed by Tillis.

    Independent inventors are not blame here.

  4. Curious February 16, 2021 5:42 pm

    Bad legislation “as a compromise” remains bad legislation.
    Concise and to the point — I like it.

  5. Pro Say February 16, 2021 7:18 pm

    The loss of an American innovation leader (Coons) leaves one felling . . .

    Trepidation. Fear. Worry. Concern.

  6. Gene Quinn February 16, 2021 8:36 pm

    Josh @ 1…

    That is not true. I approached you myself and told you that there was an opportunity to negotiate if you were willing to negotiate and back away from the position that the PTAB had to be abolished.

    -Gene

  7. mike February 16, 2021 9:41 pm

    “the independent inventor community wanted the PTAB abolished and would agree to nothing less”

    Which inventor community are you talking about?

    1) We were never invited to the table to discuss any such compromise, so that statement is false, and

    2) Although the inventor community would prefer the abolition of the PTAB, they did offer support for compromising legislation (e.g. H.R. 5478), so that statement is false again.

    Try again. Very disappointed in the authors of this article and the false narrative that is being painted on the independent inventors. Bad show ipwatchdog.

  8. mike February 17, 2021 3:03 am

    “This twist of fate that finds Senator Leahy back as the gatekeeper of patent policy in the Senate should be a wake-up call to those—particularly the independent inventors—who resisted all attempts at achieving a compromise over the last several years. There was, at one point, at least a glimmer of a possibility that some of the STRONGER reforms could have been carved out and moved forward bringing at least some legislative reform to the PTAB. Alas, the independent inventor community wanted the PTAB abolished and would agree to nothing less, which was foolish and was never going to happen. Now, the architect of the PTAB is in control of patent policy in the Senate. Perhaps moving forward a lesson about the virtue of compromise will be learned, although that unfortunately seems unlikely.”

    I call BS here. Why are you blaming the independent inventors? Is there evidence for the claim that “the independent inventor community wanted the PTAB abolished and would agree to nothing less”? Which independent inventor community are you talking about?

    The independent inventor community I know would prefer the abolition of the PTAB, sure, but they did offer support for compromising legislation (e.g. HR 5478), so your statement is clearly false.

    And regarding compromise, to my knowledge the independent inventors were never invited to the table. Gene, maybe you did approach Josh, but 1) the independent inventors are not defined by a one Josh Malone, and 2) the independent inventors ability to compromise as stated above is clear.

    I’m disappointed with the false narrative that is being painted on the independent inventors in this article. It human nature to point the finger at somebody, I suppose.

  9. Josh Malone February 17, 2021 4:05 am

    Gene, you don’t write laws or represent anyone who does. There is no one to negotiate with.

    I moved to DC to act as chief negotiator for inventors. Still no one with any power whatsoever has sought our input or support.

    Also, we have backed legislation in the last two Congresses that did not require abolishing the PTAB. We have tried to compromise, but no one else has been interested.

    I understand you are frustrated that big tech is still in control. Please don’t turn to blaming the victim.

  10. Model 101 February 17, 2021 11:15 am

    Senator Leahy … is too old, sick, and set in his ways to lead the IP Subcommittee. Senator Coons should be the one ,,, a younger person that has more current patent experience.

    The patent system problem was caused by Senator Leahy,

  11. Herb Wamsley February 17, 2021 11:41 am

    Gene, Senator Leahy has a strong record of support for patent rights, going back for decades. We’ll see him get back into the patent issues quickly. It’s been 10 years since passage of the AIA. He’ll listen to everyone and make up his mind what is needed for the patent system now. HIs instinct will be to go with patent owners.

  12. PAUL V MORINVILLE February 17, 2021 1:15 pm

    Gene did give independent inventors a voice in the debate even publishing our articles.

    I believe we did have a voice and we used it. Thank you Gene.

    But none saw the compromises that were served to us by Congress with no input from us to Congress as a solution.

    The compromises were not compromises. They were dictates and the did little to improve the failed state of the patent system for little guys.

  13. Gene Quinn February 17, 2021 1:30 pm

    Josh @9…

    As you know, I do much work behind the scenes that I never write about. I approached you as an intermediary because of our relationship. I told you numerous times that there was an opportunity to get something done but what could be done did not include abolishing the PTAB. Your position was that anything that did not abolish the PTAB was unacceptable. I relayed that message back, and things died. I can assure you, however, there were people ready to move if the inventor community would agree to what could be politically accomplished.

    I’ve also been told (so this is now hearsay) that the inventor community (I don’t know who specifically) was told that anything on STRONGER that could be accomplished needed to be a political solution (i.e., something that could actually achieve enough votes to pass Subcommittee and have a realistic chance to gain enough votes to pass overall).

    There was a time that much could have been accomplished. That time has passed.

  14. Josh Malone February 17, 2021 3:15 pm

    Gene, that is not accurate. We have focused almost entirely on reforms much narrower than abolition of the PTAB. We have consistently offered to work with lawmakers on incremental reforms. We have not missed any window, as there has only ever been a solid wall blocking us from meaningful participation.

  15. Model 101 February 17, 2021 3:46 pm

    Herb@11

    Herb – you are singing to the choir!

    Do you know or did you know Senator Leahy?

    Can you send him a message or meet with him?

    Will he listen to you?

    You check out as a strong advocate for patent rights.

  16. David Morfesi February 17, 2021 10:39 pm

    Herb@11

    My thoughts exactly. Gene can’t write a book in a blog post, but Sen. Leahy’s involvement in IP would fill a volume. He has in the past been approachable and reasonable. As an “old dog” myself, I understand it is hard for one to learn new tricks. If broad-based, evidence-backed arguments are put to him, I’d like to think the time would be well spent. Perhaps this is more of a pivot than a shock to the system? G’day from Adelaide, Herb & Gene-o! Stay safe and well.

  17. David Hoyle February 18, 2021 5:36 pm

    Herb wamsley & David Morfesi,
    Not sure what you two are smoking but please stop.

    The AIA has been a travesty and a direct assault to inventors for the sake of Big Tech. Leahy is as guilty as sin for this and should be prosecuted for pushing this vile act. Surely everyone can see how Google and other big tech giants financed the passage of the AIA! It would not surprise me in the slightest that, given Leahy’s poor health, he doesn’t run again in 2022. If so, is he grabbing the reins of this subcommittee for one final fat check from big tech? Inventor community please wake up! Leahy is no friend of anyone except Leahy.

  18. PAUL V MORINVILLE February 19, 2021 1:03 pm

    Leahy is approachable and reasonable? I beg to differ. He (and his staff) refused to meet with me for almost a year and only did so to ask me to get behind the Innovation Act. They told me on every point I made that I was wrong…. just wrong. No discussion. No counter argument. I was just plain wrong.

    He is neither approachable nor reasonable.

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