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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Archive for the ‘Patent Law Reform’ Category

Post Grant Proofing Your Patent Portfolio

Posted On: Jan. 14, 2014   By: Scott A. McKeown

AIA patent prosecution

PTAB Review Proceedings Force Change to Age Old Patent Prosecution Paradigm

As Bob Dylan once warned, you better start swimmin’ or you’ll sink like a stone….the times they are a changin.‘ While Bob clearly had some broader ranging social issues on his mind when he penned those lyrics, they are quite befitting of the outdated philosophies driving most U.S patent prosecution practices in the aftermath of the America Invents Act (AIA).

I’m not talking about the change over in March 2013 from the first-to-invent system to the first-inventor-to-file system of the AIA, but instead, the de facto switch in September 2012 from the “infringement first” philosophy of patent prosecution to the new, balanced patentability/infringement model. That is, before the introduction of the AIA post grant challenge mechanisms, Inter Partes Review (IPR), Post Grant Review (PGR), and the transitional program for Covered Business Method Patents (CBM), securing a maximum claim breadth was the primary driver of patent prosecution practices — the broader the better.

The infringement first philosophy is now dead— as will be your patent portfolio unless you change your tune.

Read the rest of this entry »

Virginia to Thwart Abusive Patent Troll Demand Letter Practices

Posted On: Jan. 9, 2014   By: Scott A. McKeown
troll demand letterVirginia Joins Vermont, Nebraska and Others

Yesterday, the Virginia House of Delegates introduced House Bill No. 375, entitled Bad Faith Assertions of Patent Infringement. The bill tracks, in part, similar consumer protection bills introduced in Nebraska and Vermont. Nebraska has taken the matter a step forward and is now proposing that bad faith letters constitute deceptive trade practices, subject to criminal penalties.

These statutes can complicate matters for the handful of trolls that rely on letter writing campaigns for quick, $10,000 settlements (often mailing hotels and restaurants, claiming to own laser printing and/or basic WiFi concepts). These types of trolls are a relatively recent phenomena.

Meanwhile, the Senate is expected to turn to patent reform this month. As a reminder, with the Innovation Act (HR 3309) passed by the House a few weeks back, the Senate is expected to move forward on the companion bill in a matter of weeks.

Senate Picks Up Patent Reform Debate on December 17th

Posted On: Dec. 10, 2013   By: Scott A. McKeown
patent reformSenate Judiciary to Webcast Hearing on Leahy Bill

Next Tuesday the Senate Judiciary Committee will hold a hearing entitled Protecting Small Businesses and Promoting Innovation by Limiting Patent Troll Abuse. The 10 AM hearing will be webcast. A witness list is not yet available. The hearing will focus issues for possible mark up so that the Senate Bill can be fast tracked in early 2014. The Senate effort is expected to track the Goodlatte bill to avoid, or significantly minimize issues for conference.

House Quickly Passes Goodlatte Bill

Posted On: Dec. 6, 2013   By: Scott A. McKeown
Patent Reformpatent reform Debate Moves to Senate in January 2014

Yesterday afternoon, the Innovation Act (H.R. 3309) passed through the House with ease by a vote of 325-91. The bill was quickly debated (3 hours) and only slightly amended. The one noteworthy change was the removal of the provision designed to repeal 35 U.S.C. § 145. As a reminder, 145 actions allow unsuccessful applicants for patents to challenge the denial of patent protection by the USPTO in District Court rather than the Court of Appeals for the Federal Circuit (CAFC). (The main benefit of the district court route over the CAFC is the ability to introduce new evidence).

145 actions are exceedingly rare. When instituted such suits can be a significant drain on the Solicitor’s Office of the USPTO, hence the original proposal to repeal 145. It seems legislators failed to realize some patentees like having an option 99.9% will never use.

With the House bill passed, debate will head to the Senate. It is expected that the Leahy bill will be revised to track H.R. 3309 so that conference can be avoided, and “reforms” can  delivered for presidential signature in the early weeks of 2014.

House to Debate/Amend Goodlatte Bill Week of December 2nd

Posted On: Dec. 2, 2013   By: Scott A. McKeown
patent-reformInnovation Act Heads to Floor Debate for Last Push in 2013

Now that the Goodlatte Bill, also knows as the Innovation Act (H.R. 3309), has been reported out of the Judiciary Committee there will be a second round of amendment opportunities. The new amendments will be collected from house lawmakers on Monday December 2nd, and the Rules Committee is expected to calendar floor debate shortly thereafter (likely Wednesday or Thursday). It is expected that some of the same amendments that failed during committee markup will be reintroduced, along with a raft of others. Post grant patent issues are expected to be hotly debated, especially those pertaining to the potential expansion of  Covered Business Method (CBM) patent challenges.

The Innovation Act remains on the fast track heading into the close of 2013. Meanwhile, the Leahy Bill will sit idle for the time being. While significant progress can be made in the next few weeks, it seems unlikely that any legislation will be passed into law until early 2014.

Leahy Bill Released, Drops Goodlatte Provision on Scope of CBM Art

Posted On: Nov. 20, 2013   By: Scott A. McKeown
CBM 102(e)Critical Technical Fix to CBM Statute Left out of Leahy Bill

Wasting no time…the Senate has quickly introduced a companion bill to H.R. 3309. The senate bill (here), sponsored by Senator Leahy of Leahy-Smith America Invents Act (AIA) fame, largely tracks the post grant related provisions of the existing house legislation — with one major difference. The Leahy bill does not include the technical fix to the Covered Business Method (CBM) provisions of the AIA, Section 18(a)(1)(C)(i). This fix is included in the Goodlatte bill to permit CBM challenges on prior art qualifying under 35 U.S.C. § 102(e). 102(e) is a critical class of prior art for business method patent challengers.

As explained previously, the exclusion of 102(e) was a drafting mistake of the AIA. This drafting error significantly degrades the appeal of CBM for business method patent challengers. While mark-up and evolution of H.R. 3309 /Senator Leahy’s Bill will certainly continue, it is disturbing that this critical fix was seemingly deliberately left out of the Senate bill.

Goodlatte Bill Stripped of Controversial Anti-Software Patent Provisions

Posted On: Nov. 19, 2013   By: Scott A. McKeown
108601462Pro Software Lobby Drives Legislative Rewrite

Last week, the proposed patent reform legislation (HR 3309) was seemingly stalled for the remainder of 2013. This road block was primarily erected by the Business Software Alliance, and other pro software patent lobbyist that were taking issue with certain proposed changes to Section 18 of the America Invents Act (AIA). As a reminder, Section 18 of the AIA defines the Transitional Program for Covered Business Method (CBM) patents. The CBM proceeding is a post grant patent challenge program managed by the USPTO’s Patent Trial & Appeal Board (PTAB). The CBM program has proven especially successful in cost effectively combating and shutting down business method patent litigation.

The proposed changes to the CBM proceeding drawing the most heat were: 1) the recalibration of the definition of a business method patent to de-emphasize financial services aspect, while expanding the definition to embrace more generic software functionality; and 2) repeal of the “transitional” nature of the program (8 years) to make it permanent. Not surprisingly, large software patent filers were not at all enthusiastic.

Faced with the prospect of further hearings and delay, and with the White House clamoring for something, anything that can be spun as progress in the wake of the Obamacare fallout,  HR 3309 has been repackaged by dropping these controversial CBM provisions (existing mark-up here).

With additional mark-up expected in the coming days (although likely very minor), look for a companion bill to be introduced on the Senate side by Senator Leahy. As was the case for the AIA, conference can be avoided if the Senate follows the Goodlatte lead, which appears to be the plan.

Patent Reform for Christmas is looking like a distinct possibility.

Resistance Slows Patent Reform for 2013

Posted On: Nov. 12, 2013   By: Scott A. McKeown
patent reformCaution Urged by Members of House Judiciary Committee

With two previous working drafts circulated in the House of Representatives, the proposals of the Goodlatte Bill were thought to be thoroughly “baked in” from a legislative perspective. However recent commentary from the judiciary on the proposed district court pleading/procedural changes, taken together with the very limited history of the America Invents Act changes, has led some to urge caution on further reforms. Although the House Judiciary Committee has already conducted a hearing on the Bill to determine the need for mark-up, a number of committee members are now urging a second hearing to address growing concerns.

The Hill reports that a bipartisan group of committee members, including ranking member John Conyers (D-Mich.) and Reps. Doug Collins (R-Ga.) and Hank Johnson (D-Ga.) sent a letter to Chairman Goodlatte seeking a second hearing on the Bill. The letter is reported to explain that:

“The impact of the proposed legislation will be profound. . . . .many Americans who will be affected by it — from individual inventors to federal judges to investors in the nation’s largest corporations to small businesses — continue to express strong opinions about its merits” . . . . .the committee should “schedule another hearing in order to consider additional viewpoints before voting on legislation that will affect this vital part of the American economy”

With a sizable contingent of the House Judiciary committee throwing up a procedural road block this late in the game, there would seem to be little time left in 2013 to advance the effort further. Indeed, as it appears that the Senate is poised to follow the Goodlatte mark-up with a companion bill (to avoid conference), it would seem that delaying the mark-up will stall further progress for the remainder of 2013.

Congress Debates USPTO Use of District Court Claim Construction Practices

Posted On: Oct. 29, 2013   By: Scott A. McKeown


Hearing to Consider Issues for Mark-up

Although the Innovation Act (H.R.. 3309) was only introduced last week, as expected, Congress is wasting no time pushing the “patent reform” issue forward. Today at 10AM the House Judiciary Committee will hold a hearing on the content of the Bill entitled: Improving the Patent System to Promote American Innovation and Competitiveness. The hearing will alert the committee of specific concerns prior to mark-up. One notable topic is the Bill’s proposed shift from the broadest reasonable interpretation (BRI) at the USPTO’s Patent Trial & Appeal Board (PTAB) to a district court style claim construction. The initial draft of the Goodlatte Bill referenced the entirety of 35 U.S.C. § 282, and along with it, a presumption that patent claims are valid (§ 282 (a)). This would have been an absolute boon to patent trolls. Fortunately, and as I predicted, the claim construction proposal no longer requires the application of the presumption of validity.

In the second draft, and now H.R. 3309, the general reference to § 282 has been changed to a contextual reference to § 282(b). In essence, the proposal would change little at the USPTO (plain and ordinary meaning is a component of BRI) other than perhaps an increased emphasis on prosecution history consistent with Philipps v. AWH. That said, the proposal still lacks consistency and leaves a possible opening for patent troll mischief.

Read the rest of this entry »

End of Budget Deadlock to Spark Patent Reform Efforts?

Posted On: Oct. 21, 2013   By: Scott A. McKeown
patent reformPatent Reform for the Holidays?

Now that Congress has kicked the budgetary can down the road for another 3 months they may actually squeeze in some lawmaking before the end of 2013. Given the public image problems created by the shutdown of the last few weeks, lawmakers will be eager to find an issue to address via legislation; especially an issue with bipartisan support that will not be too hotly debated— You see where this is going.

Given the the entrenched positions on both sides of the immigration debate (a stated priority of the White House), patent reform remains the lowest hanging fruit. For this reason it seems likely that the next act of political theater will be to sell patent reform as key to America’s competitive future. As a reminder, here are the issues to shape the debate in the week’s ahead: Read the rest of this entry »