Patent Law Reform

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Senate Sends Patent Reform Bill to the White House

It only took 6 years, roughly the same time it takes many patent filers to navigate the USPTO. Nevertheless, a new chapter in U.S Patent law begins in a matter of days

Yesterday the Senate overwhelming endorsed the House version of the patent reform legislation known as the “Leahy-Smith America Invents Act” by a vote of 89-9. As discussed previously, while there were last minute amendment efforts, the Senate voted down all efforts to modify the legislation. Shortly thereafter President Obama addressed the nation identifying the passage of the legislation as “action we need.”

So, now what?  …
Continue Reading Patent Reform Finally a Reality

Six Year Patent Reform Effort Heads to Final Vote

Today is the opening day of the 2011 American Football season. A few months back it seemed that the 2011 season may be lost altogether or significantly delayed due to legal wrangling and disputes over revenue allocation. Then suddenly, the parties came to an agreement, and in a matter of days an agreement was forged and signed. The games were set and ready to begin…tonight is the culmination of those hard fought efforts as a new season begins.

It is only fitting that today is also the day that the U.S. Senate, after years of legal wrangling and disputes over USPTO fee diversion, will also set aside their differences and kick off a new era in U.S. Patent Law.

Senate Majority Leader Harry Reid (D-Nev.) announced yesterday that the Senate will hold a vote on final passage of H.R. 1249 (Leahy-Smith America Invents Act) at 4PM today. While there has been a discussion of amending the bill, …
Continue Reading At Long Last, Kickoff Thursday

Leahy-Smith America Invents Act Heads to Finish Line

As expected, the Senate voted to invoke cloture in overwhelming fashion yesterday evening, 93-5. With this procedural hurdle now behind the Senate, the House bill will be forced to a limited debate on the merits (including unlikely amendment) and a final vote. Debate is expected to begin…

Congress to Pass Point of No Return Today?

Past the point of no return
No backward glances
Our games of make-believe are at an end.
(Past the Point of No Return, Phantom of the Opera)

Today, Congress returns from summer recess to begin the Fall term. The first order of legislative business for the Senate will be to vote on a cloture motion to preclude further debate (beyond a limited and fixed schedule) of the Leahy-Smith America Invents Act. The vote is scheduled for later this evening and can be viewed on C-span.

As explained in early August, while there are differences with H.R. 1249 and S.23, most notably concerns over fee diversion, the Senate intends to simply adopt the House bill. The adoption of the House bill will prevent further back-and-forth between the Senate and House on legislation that is far too esoteric for the average voter. On the heels of last week’s dismal job report, and with elections upcoming, Congress is eager to pass something—anything –that they can sell to the masses as a job’s stimulus. With the Leahy-Smith America Invents Act being the only bill…
Continue Reading Patent Reform: Final Countdown

Race to Secure Venue Could Shut Out USPTO

When there is an imminent threat of litigation, rather than await the inevitable lawsuit, a potential defendant may pursue a declaratory judgement to establish a lack of liability. In patent disputes, declaratory judgment of invalidity and/or non-infringement were traditionally sought to remove the specter of litigation from a prospective defendant’s business. Increasingly, however, declaratory judgement actions are filed to secure a more desirable venue in advance of a litigious competitor, or dreaded “patent troll.” For example, rather than await being added to the Lodsys dispute in the notoriously Patentee friendly Eastern District of Texas, Wolfram Research, The New York Times, and Foresee Results Inc all sought declaratory judgement of invalidity of the Lodsys patents in different federal district courts, namely, Wisconsin, Illinois and California.

For those prospective defendants seeking to utilize a DJ action to secure venue after the enactment of the America Invents Act, doing so will foreclose a later filed inter partes challenge (i.e., Inter Partes Review or Post Grant Review) at the USPTO.  …
Continue Reading Declaratory Judgement Less Attractive After Patent Reform?

Patent Reform & Inter Partes Review

Last week, I discussed some important changes to inter partes patent reexamination that will become effective immediately upon enactment of the patent reform legislation. Namely, that the standard for initiating inter partes reexamination will become stricter. The new standard is defined as: a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. This new standard replaces the current standard that requires a Substantial New Question of Patentability (SNQ), perhaps within a matter of days.

Inter Partes Review will ultimately replace inter partes patent reexamination on the one year anniversary of the enactment of the patent reform legislation. Thus, the interim standard for the last year of inter partes patent reexamination will help the USPTO prepare to transition to the new Inter Partes Review proceeding, which will use the same standard.

Looking forward to Inter Partes Review, current litigation defendants will find themselves shut out from the USPTO with respect to a parallel inter partes proceeding unless they pursue matters before the one year anniversary.

…
Continue Reading Unwary Litigants to Lose USPTO Review Option Under Patent Reform

Enactment of America Invents Act to Change Inter Partes Patent Reexamination Practice Immediately

The USPTO is currently hard at work preparing to implement and adapt agency practices to comport with the various provisions of the Leahy-Smith America Invents Act. As many features of the legislation will require a significant USPTO rule making effort, most of the provisions of the Act will not become effective until the 1 year anniversary of enactment. In this regard, the USPTO has reportedly penciled in September 20th as the target date for the expected enactment of the Leahy-Smith America Invents Act.

While most provisions of the Act will not take effect until a year after enactment, there are some very important changes to patent reexamination practice that will become effective immediately…..likely, in a few weeks time.…

Continue Reading Inter Partes Patent Reexamination Standard to Tighten in 30 Days

Patent Reform Provisions to Impact Technology Companies?

The race to the USPTO door may start very shortly for those defendants charged with infringement of a “business method patent.” 

Patent reform legislation is ostensibly poised for a September 2011 enactment.  The current version of the legislation (H.R. 1249) includes a provision entitled “Transitional Program for Covered Business Method Patents.” The provision essentially provides post grant review (as defined in the legislation) for patents that were issued prior to enactment. This provision is of a limited time, 8 years, and can only be used if actually sued or charged with infringement of a covered business method patent.

The clear intent of the author of this provision (Sen. Charles Schumer, D-N.Y) was to provide relief to the New York Banking Industry from the likes of Data Treasury. Some have gone as far as to label this provision a “bank bailout.” (note the provision in the bill excluding ATM machines as a venue tool Sec. 18(c))

The legislation defines a business method patent in fairly pliable terms, defining…

Continue Reading Proper Business Method Patent Challenges Under the America Invents Act?

Callaway Pro V1 Golf Dispute Taken to Virginia District Court

This past January, I recounted the longstanding dispute between Callaway Golf and Acushnet. Acushnet is the parent company of Titleist, maker of the ProV1 family of golf balls. Callaway has asserted that the ProV1 balls infringe several of their patents (6,210,293, 6,503,156, 6,506,130, 6,595,873) in the Delaware District Court.

In 2006, Acushnet sought inter partes patent reexamination of the Callaway patents. In March of this year the BPAI decided the appeals of these reexaminations, finding the asserted claims of the Callaway patents invalid. Likewise, the same claims were found invalid in March of 2010 by the Court (neither dispute has made it to the CAFC).

Interestingly, patent reexamination was sought by Acushnet despite a 1996 contractual agreement between the companies that mandated all proceedings be conducted in the Delaware court. In fact, the Court has found Acushnet to have breached the terms of the settlement agreement by virtue of the patent reexamination filings (decision here).

At the outset of the reexamination proceedings Callaway attempted to have the reexamination proceedings vacated…

Continue Reading Can a Forum Selection Clause Prevent Patent Reexamination?