The Strong Patent Act of 2015 from Senator Coons

by Dennis Crouch

Senator Coons is expected to introduce his competing patent reform bill into the Senate this week under the title Strong Patents Act.  As the name suggests, these provisions here tend to strongly favor patent holders.  With his usual understated tone, Herb Wamsley writes that Coons’ bill “will differ substantially from Rep. GOODLATTE’s bill H.R. 9.”  In the current political state, this provision has no hope of being enacted. However, I suspect that supporters of provision see it as having strong gridlock-creating potential.

The following is a fairly high-level review of the particular proposals as well as a link to the text of the bill.

[STRONG Patents Act of 2015]

Provisions related to PGR/IPR/Reexams: 

Claim Construction during Post-Issuance Review Proceedings shall be according to the “ordinary and customary meaning” and in the same way that a court would construe the claim in an action to invalidate a patent.  This provision would have the beneficial impact of better-linking the parallel court and PTO proceedings.  The provision would also make it more difficult for the PTAB to invalidate patents because the claims would no longer be given their broadest reasonable interpretation.

Amendments to the Claims during Post-Issuance Review Proceedings will be allowed if “reasonable.”

Presumption of Validity will Apply to patents being challenged in post-issuance review proceedings such that unpatentability of a previously issued claim would require clear and convincing evidence.

Standing to File Post-Issuance Review Proceedings will be limited to only entities charged with infringement.

In Response to a Post-Issuance Review Petition, the patentee will be allowed to submit supporting evidence.

Separating the Two Steps of Post-Issuance Review Proceedings: Under the proposed law, a PTAB judge who participates in the decision to grant a PGR/IPR petition will not then be allowed to decide the merits of the case.

Blocking Anonymous Petitions: The proposed law would allow the patentee to discover the real party in interest associated with the filing of either a reexamination or an PGR/IPR petition.

A One Year Deadline will be instituted for filing requests for ex part reexamination triggered by service of a complaint alleging infringement.

Civil Procedure:

Form 18 is to be eliminated.

USPTO Funding:

Fees collected by the USPTO will be made available to the Director until expended including past each fiscal year.

Infringement:

The Punitive Damages Provision would be amended to allow the court “in its discretion” to treble damages “upon determining, by a preponderance of the evidence, that the infringement was willful or in bad faith.”

Inducement of Infringement becomes a cause of action as outlined by the Federal Circuit in Akamai. This would effectively overrule the Supreme Court’s decision in the case.

Universities:

The provision would fix a seeming gap in the current micro-entity status requirements that don’t actually allow universities to claim micro-entity status (for a 75% fee reduction) but instead only those with a duty to assign rights to the university.

Rogue and Opaque Demand Letters:

The new law would specify that certain bad-faith demand letters are unlawful under the FTC Act and the FTC would have power to enforce the law with a maximum penalty of $5 million.

= = = = =

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

104 thoughts on “The Strong Patent Act of 2015 from Senator Coons

    1. Mr. McKeown opening statement about Trolls tells all of us that he should not be taken seriously. He is shilling his firm.

      However, I agree with the “new” claims proposal. That feature needs to be removed from IPRs and automatically placed into a reissue proceeding where the new claims can be examined by an examiner — but delayed until a FWD, or appeal at the option of the patent owner, to provide an orderly process.

      Regarding claim construction and burdens of proof, an IPR must the same between the courts and the PTO, with an eye to efficiency. Collateral estoppel can then apply of its own accord as the issues will be identical.

      Bias must be eliminated. The people who decide institution must not be the same who decide the final decision.

      The findings of fact and conclusions of law by the PTAB should be reviewable de novo in a court proceeding and to a jury if the patent owner so requests. This requires full constitutional standing of the petitioner in the first instance. The trial de novo, etc., will eliminate the constitutional problems with IPRs.

      I also agree that if a reissue is pending, no IPR. The statute grants a full post grant review of the reissue patent when it later issues. Prior to that, the infringer can submit prior art, with comments, to the examiner.

      1. Ned, prohibiting any IPR if a reissue is pending is a transparent ploy to let any patent owner, including trolls, eliminate any and all AIA IPR defenses simply by filing a reissue before suing or threatening suit! The reissue would not need to have any relationship to the the claims being sued on! Furthermore, as you know, the PTO has typically allowed reissues to drag on for years. Although they have now been assigned to the CRU [which handles reexaminations] reissues still take far longer than an IPR, since they have to go through both the CRU in the examining corps and then the Board, and they have no statutory time deadline like an IPR. Unlike an IPR, a reissue has no limitations on unlimited filings of amendments, time extensions, and other prosecuting delaying papers, and is totally ex parte.

    2. The immediate implication that the STRONG bill itself is not patent reform is preposterous.

      While Mr. McKeown’s credentials are impressive, his post lacks any semblance of balance or thoughtfulness and comes across as mere rant.

      Instead of proceeding through a reasoned exposition of the possible weaknesses, every “point” by Mr. Lacky is denigrated with a spurious tinfoil hat like “The Tr011s are attacking.”

      Not a single care there for due process or other drawbacks / as if clenching tight his eyes makes those problems go away. Sadly, this is more of the “ends justify the means” C R P that itself needs to be expunged.

      Someone has quaffed way too much of the “Tr011” brew….

      1. Interestingly, from the Oblon website:

        Oblon has obtained more U.S. utility patents than any other firm in the world for over 25 consecutive years.

        Much like the closer look at the Professors preaching the virtues of the Goodlatte bill, while 40% of their own institutions speak the opposite, perhaps the left hand of Mr. McKeown does not know what his right hand is doing.

        25 years in a row of pumping out the most patents and all…

  1. A lot of good stuff in there that I’d agree with, but there’s plenty in there that’s going to sink this ship.

        1. 6, I listened to his speech last night. His speech was persuasive.

          Even though I generally agree with libertarian isolationists, I can agree that the likelihood of nuclear war increases dramatically if Iran gets nukes, and if this deal on the table goes through, they will get nukes.

          We need to view the negotiations with Iran as their attempt to lift sanctions. No should be the answer unless you dismantle those centrifuges.

          1. “I can agree that the likelihood of nuclear war increases dramatically if Iran gets nukes,”

            Well I think everyone can agree with that. And most of what was said in the speech. That said, there are some legit critisims of the speech itself. Fear mongering etc. And of course the “war” that has a snowflakes chance in heck of happening will be little more than israel getting nuked, then the US and several other countries nukin’ iran back from the stone age they’re currently into a pre-stone age. And then taking them over and locking all their sht down for the next hundred years.

            But of course that all ignores that Iran itself has said like a million times they don’t even want a nuke. If they wanted one and they don’t have one by now they are, as an entire nation, huge failures. I could have personally built one in my gd back yard in 20 years with a government sanctioning it, especially if they’re supporting it. It isn’t rocket science to build a rudimentary nuke. Bomb science yes, but not even rocket science. There are plenty of people at my level of competency and much much higher out there for hire, and you can acquire rudimentary material on the black market last I heard. In either event, if NK can do it, Iran surely can if they want.

            “and if this deal on the table goes through, they will get nukes.”

            See above. There’s nothing preventing them at present, nor has their been for as long as I’ve been alive. If they haven’t done it already it isn’t for lack of capability. You old people seem to constantly think the year is 20 years ago and that we’re still “on the brink” of them having the ability of getting the bomb like, next year. That time occurred decades ago. No bomb yet, wonder why?

            “No should be the answer unless you dismantle those centrifuges.”

            I likely agree with you there, but are we to force them to abandon nuclear power?

              1. 6, or NATO or the UN.

                Recall that after the fall of the USSR, the US helped dismantled the nuke weapons programs of the former soviets, including the Ukraine.

                1. “6, the fuel for nuclear power needs to be placed under US control.”

                  First, you do know you can make “fuel” for nuclear power in your backyard right? (If you can’t ask your neighborhood physics professor to for you).

                  Other than that though, in your view what makes the US so special amongst supposedly equal sovereign states in this arena? The fact that we’ve actually nuked people before?

                  “6, or NATO or the UN.”

                  And what, in your view, makes those bodies especially suited to overrule the sovereign powers of legit elected govs of the world? Or for that matter, what makes them especially good regulators of such material? Will they be fair in distributing such? Beyond that, is such control even feasible irl?

                  “Recall that after the fall of the USSR, the US helped dismantled the nuke weapons programs of the former soviets, including the Ukraine.”

                  Great, the US helped dismantle many of their longtime rival’s nukes (though not nearly all apparently according to reports). So what?

                2. o m g one of my posts is so stuck in moderation it isn’t even funny.

                  Als o, o ne of the 10 gi rls I’m seeing atm just let me go (too far, too much eff ort long term she says and which I k inda agr ee with) so I’m kin da dow n a tm. I actually liked her. I m ean sure, I have 9 more.

                3. But ima gine, I have to go throu gh this at least 8 more times just to get down to one even if I do all the bre ak ing up. One of th em I want to let go but she’s fra kin go rgeo us so how’s a d ude like me su pposed to do that?

  2. Wait, so they want courtroom-style claim construction and presumption of validity, and they want the ability to enter “reasonable” amendments during post-grant proceedings? Isn’t the idea that the non-BRI claim construction and presumption of validity apply in litigation because you can’t amend the claims, and that BRI and preponderance of the evidence apply during examination because you can amend? How about picking one instead of being greedy.

    1. So if you think you’re going to fail on your claim of infringement against your competitor, and you didn’t have the foresight to keep churning an app through RCEs or continuations, here’s what you do:

      Sue someone else and hope they put in you in IPR and then amend the claims so as to make sure you can go after you competitor.

      Makes perfect sense we should give yet another way for patent owners to add new claims that they never before thought to claim to the detriment of public notice. /s

      1. Don’t forget that [unless this Bill is bizarrely drafted] the amended claims in an IPR would still have to be NARROWER versions of the petition-attacked claims [unlike a broadening reissue]. Just as in reexaminations, “narrower” means really narrower, not narrow in one respect and broader in some other respect. Substantively amended claims will also be subject to “intervening rights” defenses as to 3d parties as well as the protester.

        The real danger of either delayed-entry or excessive IPR claim amendments is in slowing down IPRs, since IPRs only have real value if they can be concluded before the trial dates [or discovery-costs-forcing-settlement-dates] of their parallel D.C. litigation.

        BTW, note that some more claim amendments are already being allowed in some IPRs lately.

        1. Good points Paul.

          It still frustrates me that patent owners are given every opportunity to amend claims/add new claims until something sticks. It is a waste of everyone’s time and money. If what you thought originally wasn’t an invention, then perhaps you shouldn’t get a patent.

          let’s spend more time/effort on things that are actually inventions.

          1. Jane, did you know that in Europe, narrower claims do not suffer lost damages as a matter of law. That is something that we should adopt here.

            The whole point of reexaminations is to force claim amendments to get rid of past damages. IPRs are not so much about new claims as unfair and unjust procedures designed to invalidate patents — and only 10% of claims in IPRs are found to be patentable. Contrast that to the rate claims survive in court and one knows even without experiencing the IPR that the system is rigged.

            1. Can you point me to any claim that has been invalidated in IPR that you think should not have been invalidated given the prior art?

              Genuinely curious. There is a lot of talk in the abstract (pun not intended. please no one start a debate about abstract patents here) about how “unfair” IPRs are, with citation to how many claims “survive”. I’d really like to know of patents that have been invalidated that you believe shouldn’t have been, given the prior art presented, and why the reasoning of the patent office was incorrect (and why the Federal Circuit can’t correct that if true)

                1. Yes, I have read it.

                  But I’d like to know of other cases (that you’re not involved in) where you think the PTAB got it wrong and why. Obviously everyone advocates for their clients to the best of their abilities. I’m wondering about cases where, objectively, you think the PTAB got it wrong

                2. Jane, I have not conducted a survey. But a 10% rate on its face is ridiculously low. This seems to reflect bias, not judgment.

                3. Why Ned? (honestly, I’m genuinely curious).

                  I don’t think we can presume anything from the low rate comes from bias where it is the same “people” that are invalidating that issued the patents in the first instance.

                  Couldn’t it just be that when actually reviewed and presented with the closest prior art printed publications, the patent should never have issued in the first place?

                  You also have to remember that prosecution is ex parte. There is no one truly invested in pushing back on the arguments made by the patent applicant during prosecution (the PTO point system essentially makes sure of that). In an IPR, you have someone pointing out flaws in the patentee’s arguments, showing how the patent is invalid.

                  It is not problematic that the survival rate out of IPR is so high. What is problematic is that the patents were allowed to issue in the first place.

                4. “But a 10% rate on its face is ridiculously low.”

                  Could be. But nearly all patents I read are software patents and to me it seems amazingly high and obvious evidence of corruption in favor of upholding bad patents. Nowhere near 10% of software patents could pass §103 in front of an honest board.

                5. Couldn’t it just be that when actually reviewed and presented with the closest prior art printed publications, the patent should never have issued in the first place?

                  It certainly could be the case. And the available evidence suggests that is exactly what has happened.

                  It is not problematic that the survival rate out of IPR is so high. What is problematic is that the patents were allowed to issue in the first place.

                  Yes.

                  Take the “use rules conditioned on payment on payment to determine access” patent that was just asserted successfully against Apple. It should never have been granted. And it should have granted review under the CBM review program. The PTO is a captured agency that only functions when its hand is held and the spotlight is shining on it, and then only barely.

                6. Jane, I am never going to trust that the patent office can give anyone a fair trial, especially when the prosecutor is the judge. The very same folks who review the evidence to authorize trial are the same people who sit in judgment of their own authorization.

                  Moreover, the PTAB is biased to expand its business by ruling against patent owners.

                  The whole system is a joke, an obscene joke. It needs to end.

                  We have a court system for a reason, Jane. Our cabal of VIPs who are running things in IP Law, together with the patent office, are running amok trying to remove patent validity from the court system. They are doing so not because they are not getting a fair trial in court. They are doing so because the patent owner is getting a fair trial in court.

                7. The very same folks who review the evidence to authorize trial are the same people who sit in judgment of their own authorization.

                  They are also the same people who allowed the patents in the first place.

                  Moreover, the PTAB is biased to expand its business by ruling against patent owners.

                  Just like it’s biased to expand its business by granting patents on things that they should never be granted on.

                  Our cabal of VIPs who are running things in IP Law, together with the patent office, are running amok trying to remove patent validity from the court system. They are doing so not because they are not getting a fair trial in court. They are doing so because the patent owner is getting a fair trial in court.
                  Given that certain districts almost surely have enacted rules that do the exact opposite (making sure accused infringers don’t get a fair trial), I do not agree.

                  The “cabal of VIPs” are those who have profited from loose standards at the PTO and in the Courts to get undeserved money by claiming “rights” that never should have existed in the first place.

                8. Jane, I do no agree that the PTAB is the same as the examining division. They do not have any vested interest in protecting the results in an earlier examination. Their biases are institutional as well, and the more they invalidate patents, the more business they get.

                  More than one person I have talked to use seems to agree that the PTAB basically is second-guessing the examiner, because the prior art is not fundamentally new, but merely cumulative.

                9. ” But a 10% rate on its face is ridiculously low.”

                  Yeah idk ned, 10% is about what I’d expect when someone with a lot to lose decided to plunk down 5k for a search instead of us relying on the PTO 10 hr search (max). Sorry bro, but that’s just how the world works.

                10. “More than one person I have talked to use seems to agree that the PTAB basically is second-guessing the examiner, because the prior art is not fundamentally new, but merely cumulative.”

                  That may very well be happening, and frankly I don’t think that should likely be allowed. I’d support an institutional or statutory policy/command that the PTAB is to defer to the original examiner where it is the same sort of references or the exact same references. That is a judgement call that shouldn’t be re-made ad infinitum until invalidity is reached. If needs be a court/jury can look into that.

                11. 6, if the PTAB invalidate a very high percentage of patents, they will be rewarded with more business.

                  The problem was discussed here in connection with the new patent validity courts in Euroland. The courts that invalidate more will grow — and for that reason.

                  It was the same problem that caused forum shopping among the circuits before the creation of the federal circuit.

                12. Once again, the preposterous is being touted out as somehow acceptable.

                  To wit:

                  Yeah idk ned, 10% is about what I’d expect when someone with a lot to lose decided to plunk down 5k for a search instead of us relying on the PTO 10 hr search (max). Sorry bro, but that’s just how the world works.

                  Much like Malcolm, 6 appears to think that the current system – for which innovators pump in Billions (that’s right – a B) of dollars and accepts that only a 10% rate of true patent worthiness is acceptable.

                  Hello?

                  Given that actual litigation of active available granted patent claims runs far below 2% of patent claims out there, if we accept at face value 6’s statement of “just how the world works” we are wasting literally BILLIONS of dollars supporting examiners (coincidentally like 6 and Random).

                  It would simply be FAR FAR FAR better not to examine at all, remove the presumption of validity, turn the Office into a MUCH streamlined catalogue library system for a minimal fraction of the cost, and let “examination” occur only in those far less than 2% of cases, at footed by those who will (evidently) do the job properly.

                  If as 6 proposes the “real world” is that the Office is simply that bad, we need to eliminate it immediately.

                13. Quick an simple math – good for ballpark only – take the Office budget, the “cost” per 6 for “true valid search” and factor the 10% and the equivalent court case load to match the Office would be six and a half Million cases.

                  Of course this is notably crude and does not account for the full costs of litigation and merely exchanges the “examination” parts of the costs, but 6 inadvertently makes a very strong case for eliminating his role.

              1. MM, again we need to segregate functional claims, software patents their ilk from patents on chemicals, drugs, circuits, machines and the like. Functional claims of all sort are a major problem today in patent law, and they need to be curtailed.

                However, I have a hard time believing that the majority of the patents PGRed are of the bad patent variety.

                As to the so-called new prior art, often it simply is cumulative. What the PTAB is doing is simply reversing the examiner’s allowance. Well, goody goody. Such second guessing is inconsistent with the notion that patents are property and should not be second guessed by the same agency that issued them.

                1. why not second guess when the best arguments were never made because no one was incentivized to make them?

                2. As a side note, pretty sure this “second-guessing” by the same agency is not unique to patent law.

                  I do not claim to be extremely knowledgeable in other fields, but it seems like other agencies do this all the time. The IRS often will go in an audit tax returns they “accepted,” taking away your “property rights” in your money. This does not mean you have been denied due process. You can go to court and challenge it.

                3. Jane, actually the IRS would be more like a registration system. The IRS is trusting you to have filled out the form properly and the audit is really an examination.

                4. Why not second guess?

                  Jane, this goes to the root of the constitutional problem. The issuing authority cannot second guess itself because patents are property and can only be invalidated by a court. The Supreme Court has already ruled that the only recourse the PTO has is by suit in court if they think a patent was issued by mistake.

                5. Jane, tax collection is an area well within the public rights doctrine. All that is required is due process.

                6. “Why not second guess?

                  Jane, this goes to the root of the constitutional problem.”

                  Ned you don’t need to reach to the frakin constitution for such a simple thing.

            2. “only 10% of claims in IPRs are found to be patentable. Contrast that to the rate claims survive in court”

              So the experts find only 10% of patent claims valid and the ignorant faced with highly paid shill ‘experts’ and deceptive lawyering find them mostly valid. Therefore what can we conclude about which process is more biased?

                1. The PTAB for all their faults are more expert than lay jurors; that’s why they see though scam patents more often.

                  Paid shill expert witnesses mostly are experts at something but their opinions are widely known to be for sale. Their demeanor, however, is all jurors have to go on. That’s not a system that seeks justice.

                2. Yeah, sure, Owen.

                  The jurors are instructed on law, claim construction, and see and hear live testimony. They know who’s telling the truth — they are not making independent judgments on their own as it seems the PTAB is prone to do. Jurors follow the evidence, the instructions and the law.

                  Due process, Owen.

                  And an independent judiciary to boot — not some biased political hack or hack with agendas. You have way too much faith in executive agencies who are not there to judge, but to prosecute. The PTAB is a biased as any agency I have ever seen.

                  One cannot and should not trust the executive to get a fair trial. That is a given. The trust people put in these folks is unbelievable. They are biased, pure and simple.

                3. “You have way too much faith in executive agencies who are not there to judge, but to prosecute. The PTAB is a biased as any agency I have ever seen.”

                  What about due process for the innocent accused infringers of invalid patents? The patent was issued by a biased executive agency without any input from its victims. The accused are forced to expend millions in guaranteed losses, even if they win.

                  Why should they be denied a chance to make their case before an agency just as the patentee did?

                  “they are not making independent judgments on their own as it seems the PTAB is prone to do. Jurors follow the evidence, the instructions and the law.”

                  Perhaps you’d like to explain Apple v Samsung, Apple v Smartflash, i4i, eolas, NTP v RIM, the various EDTX Newegg cases, and the ocean of invalid patents that easily get juror approval all the time. Jurors mostly get it wrong. The PTAB mostly gets it right. That is a powerful advantage for PTAB.

                4. The jurors are instructed on law, claim construction, and see and hear live testimony.

                  My understanding was that part of the reason the Federal Circuit was created was because patents were “too technical” for “lay” judges to understand (a comment often repeated on this board), yet we’re to expect lay jurors to understand the law, claim construction, and prior art on technical matters?

                  Let’s be honest: many of us on this board have years (sometimes decades) of experience with patent law, particular technical areas, and/or “claim construction” yet we often disagree (as to both facts and law). How is it then, that jurors with no experience in any of this are somehow better able to figure out infringement and invalidity of a patent?

                  And to echo Owen’s point: the PTO is captured, but not as you think Ned. When the PTO refers to patent applicants as “customers,” it is hardly the case that the patent office is biased against patent owners….

                5. The Fed. Cir. was created so that lay judges wouldn’t be faced with the technology and yet Obama has appointed Google judges with no technical background.

                6. I agree Jane that the leadership of the PTO has for twenty years now bent over backwards to listen to its “customers.” This may be a large part of the problem whereby the patent office has been inveigled into issuing patents with functional claims and to computer implement junk. No doubt that the patent office ought to listen to patent applicants on procedure. But the patent office should not be listening to its “customers” on legal issues.

                  But the PTAB is different. It has a vested self-interest in expanding post-grant proceedings. This provides a source of bias that cannot be eliminated.

                  The PTAB also decides when to order trial, and the same judges sit to decide the case. Obviously, they do not want to decide the case adversely to the petitioner having authorized trial. This provides a 2nd source of bias cannot be eliminated.

                  Then of course we have the burden to prove issues and the claim construction issues. Guys like Paul Morgan argue that these are not worthy of any consideration because they make no difference at all. Why not provide the court construction etc. it makes no difference at all.

                  And, if they make no difference at all, why not use the court construction and burden of proof so that we can use pure collateral estoppel effects between courts and patent office where appropriate because the issues are identical.

                  And why cannot we require all petitioners to ID the real party in interest? Why not — because the law requires estoppel be applied.

                1. Death squads bought by Google

                  Randy Rader is a joke excuse for a judge. And you’re worse for repeating his inane b.s.

              1. Invalid?

                Owen, unless a patent is anticipated, it not necessarily invalid. With obviousness, its one man’s opinion vs. another unless we are in the realm of TSM.

                But if the patent is anticipated. I am sure a summary judgment motion is available.

                So do rant on about the poor infringer and invalid patents.

                The real vice in patents are functional and indefinite claims, and patents on software and business methods. But the Federal Circuit allowed these kind of abusive patents to exist because it was at war with the Supreme Court for so long, and because it did the bidding of the AIPLA, the IPO and IBM for so long.

                1. But if the patent is anticipated. I am sure a summary judgment motion is available.

                  Are you sure summary judgment is available? I can tell you it’s often not. Whose rights are then being trampled?

                2. If a patent is clearly anticipated after claim construction, there should be no issues of fact outstanding for resolution by the trier of fact.

                  Am I missing something here?

          2. “It still frustrates me that patent owners are given every opportunity to amend claims/add new claims until something sticks”

            That’s the basic plan, Jane.

            Write up a summary of existing technology. Add in a few speculative ideas about how to use it that you can’t yet put into practice. Get a patent on some obscure combination of stuff that doesn’t yet match any particular piece of easily searchable prior art in every detail.

            Then when someone actually invents something and makes it work as a business, amend your claims to cover exactly they’re doing and how they’re doing it. Be very specific so that old enough references don’t cover the exact case, no matter how obvious.

            Bingo. You have a patent on their business to stab them with until they accede to paying for your scam.

            It’s the ultimate guaranteed profit plan for the patent bar.

            1. I think you omitted “use language that is not commonly used” so that you can (1) make it difficult for the PTO to search for prior art and (2) later claim infringement though a construction of your vague terms.

            2. Owen, what you complain about are functional claims, and, as well, virtually all software claims. The are little more that ideas without specific embodiments that are infringed by the future developments of others.

              You will note that I personally have crusaded against functional claims, and for that matter business and software patents. But the patent system should not be crippled as a whole simply to protect ourselves from such patents.

              And, do you know who the biggest advocate of software and business method patents is? Yeah, that company — IBM. The company who is suing Mr. Snyder over a software patent.

              1. We could also say that the patent system should also not be crippled, as a whole, to protect other types of patents.

                I am personally of the belief that a one-size-fits-all patent system is not appropriate. Different industries need different incentives, and have different ways of innovating. For example, arguably the incentives needed for pharma are vastly different than say, a taxi application on your mobile phone. Pharma may have prohibitory upfront costs that competitors would not need to incur if you’re successful, whereas your taxi application won’t have competition if they don’t similarly invest in developing a market (not to mention that software is often successful for reasons besides patents, such as a better UI or the first-mover advantage).

                I realize that we have for some reason bound ourselves to having a unitary patent system, but I question the wisdom of that system and whether it does more harm than good.

              2. Indeed, Ned, the patent system would be in much better shape and reforms that weaken patentee positions would be unnecessary but for one mistake.

                When the PTO started issuing software patents, a backlash by actual innovative businesses was inevitable. The nation’s most innovative industry isn’t going to be strangled by a completely inappropriate and counterproductive regulatory scheme like applying patents to software without a fight.

                But the PTO and CAFC and EDTX and the patent bar aren’t going to let go of such easy and rich lucre. The result will be eventually be hollowing of every aspect of the patent system (except maybe some easily distinguishable chemical patents).

                Of course a simple and clear line from Congress or the Supremes categorically excluding software and business methods as J Stevens fought for would put the danger of weakening all patents to sleep. That now seems out of reach, unfortunately. But stronger IPRs, fee shifting, Alice, earlier DJs, and other incremental reforms are within reach so that’s what we’ll get now.

                And software is growing as a share of all innovation. So we’ll get more and more piecemeal reforms excluding and weakening more bits of the system just enough so that software innovation is still possible in the face of trolling. The Goodlatte bill and Alice are just the beginning.

                1. Yeah, Owen, I hear you. Software patents (functional claims, etc.) are killing the patent system because its victims are fighting back with every weapon available.

                  I almost weep. What have you done to us Judge Rich?

              3. Ned >The are little more that ideas without specific embodiments >that are infringed by the future developments of others.

                Those little more than ideas that drive cars, detect tumors, provide interfaces so you can get your work done faster, etc. Those ideas?

                Scope of enablement. If the claims go beyond scope of enablement then they are invalid. If innovation is done within the scope of enablement, then the claims can be invalidated.

                Please tell us how any invention can be claimed without functional claiming. It can not. Save for a small part of the smelly arts where they think only in terms of well-known atoms that supposedly exist and endless put together different groups from the same chart that is over 100 years old.

                1. Night, truly you are not helping the patent system by continuing to advocate for information processing patents in the abstract. Listen to Owen. He speaks the truth. The reason we are in the mess we are in now is because of software patents.

                  Now, improvements to machines or processes involving software have long been patentable — since at least Diehr. But the breakdown of the system happened in the ’90s when Rich was in his flower. The Federal Circuit literally went amok with decisions like In re Donaldson and State Street Bank. Perhaps the latter was foretold by the good folks at the PTO who deleted Hotel Security from the MPEP, a primary reason Rich held that case not to be controlling authority.

                  Because software patents are easily written without actual code, they simple describe ideas. Little more. These are not the stuff of invention even if they are novel and non obvious. The patent law requires more. The patent law requires real innovation in technology, in hardware, in manufactures, in compositions, and their making and using to produce new results.

                  Simply saying do this or do that without more is horrendous. Are you kidding me? But that is what most software patents are like. Just research plans without real stuff. Just listen to Random for awhile. Such patents amount to patents on all future innovations that do the same thing.

                  This has got to stop.

                2. You mean the mess where our information processing workers get to freely change jobs? Where information processing workers get to freely publish articles about their inventions in technical journals? You mean the horrible situation where we lead the world in information processing inventions?

                  You mean all that horror?

                3. NEd >Because software patents are easily written without actual >code, they simple describe ideas. Little more.

                  This one got a full belly laugh. Image too that they write those mechanical patent applications without actual steel! It is an outrage. Imagine writing a patent application that assume it is being interpreted by a person skilled in the art!

                  An outrage! Call Scotland Yard!

                4. What’s even worse is those smelly patents that just have little pictures of round things they claim are atoms (whatever those are) and then just this writing that says how to mix stuff. No real test tubes are included with the patent. An outrage.

          3. Unfortunately, these days all too often the first time a really thorough prior art search is done [which will define what the claims should have been distinguishing over] is after a surprise infringement suit is filed.

    2. APoTU, I am really beginning to get pissed off here about the assumption that one can judge the validity of a claim on anything else but the law, using court constructions, burdens and discovery.

      A patent owner has a constitutional right to due process.

      Construing his patents claims broadly to read on prior art in order that the patent owner be forced to clarify his claims is not without costs to the patent owner who thereby loses past damages. If the law provided otherwise then there may be no problem.

      Providing a lower burden of proof effectively shifts the burden of proof to the patent owner to prove validity because the initial determination by the PTAB to institute establishes that there is a prima facie case which the patent owner must rebut. This is not at all correct and denies the patent owner to process.

      These are not claims in applications. These are claims in patents, and patents are property. They are protected by the Constitution an laws against deprivation by anything other than due process. Rigging the system against the patent owner as is done in re-examinations and IPRs is completely unfair.

      Patent validity must be judged by the same standards and rules regardless of where litigation takes place, whether in the patent office or in the courts.

      1. PoTU, I am really beginning to get PO’ed here about the assumption that one can judge the validity of a claim on anything else but the law, using court constructions, burdens and discovery.

        A patent owner has a constitutional right to due process.

        Construing his patents claims broadly to read on prior art in order that the patent owner be forced to clarify his claims is not without costs to the patent owner who thereby loses past damages. If the law provided otherwise then there may be no problem.

        Providing a lower burden of proof effectively shifts the burden of proof to the patent owner to prove validity because the initial determination by the PTAB to institute establishes that there is a prima facie case which the patent owner must rebut. This is not at all correct and denies the patent owner to process.

        These are not claims in applications. These are claims in patents, and patents are property. They are protected by the Constitution an laws against deprivation by anything other than due process. Rigging the system against the patent owner as is done in re-examinations and IPRs is completely unfair.

        Patent validity must be judged by the same standards and rules regardless of where litigation takes place, whether in the patent office or in the courts.

      2. Well, the courts will hopefully hash all of that out in the not too distant future (and it’s going to make for some very interesting reading), but my comment above wasn’t really addressing the merits of one burden of proof or claim construction technique in IPRs over others. There’s certainly a valid public policy argument that litigation-esque processes of claim construction and burden of proof should apply in IPRs, but I’m saying that in exchange for those protections, the claims must be set in stone during the IPR.

        The legislation in question wants those protections and to be able to amend. That would just encourage patentees to push for overbroad claims during prosecution and would make IPRs much less worthwhile, since a potential infringer would often be better off invalidating claims in court rather than allowing the patentee to refine the claims during IPR.

        1. APoTU, I do not fundamentally disagree — the PO should have a right to apply for a reissue if his patent is IPR’ed, where the influence of the public is limited to supplying art and relevancy.

          But the argument posed here by the apostles of big business that the burden of proof and claims construction make no difference is just as much an argument to use the court constructions and burdens in both regimes as it is an argument against. The fact that they argue against nevertheless tells you a lot about these folks.

    3. The presumption of validity happens because the statute says so. The reason for that ought to be grounded in the technical expertise of the USPTO to determine whether the technical invention existed. It is buttressed by the fact that courts have adopted USPTO grammar of claim language in some instances (comprising/consisting, Markush claims to name a couple) that lends further strength to the deference-based logic for the presumption. Due process does not require either a presumption or a high burden of proof. Take a look at some of the “deemed knowledge” crimes in the securities laws if you doubt me on the presumption part.

      1. Your point here Erik reinforces the question as to why the innovators are pouring Billions of dollars to support the Office and current system.

        Billions.

        But you stumble then and miss the point about the grant being a creation of a property right that the Executive branch is not free to eliminate on its own. You don’t include the proper full consideration of the issue.

  3. Does this Senate bill have any Republican co-sponsors? Does it have enough likely bi-partisan support to be worth reading?
    FRCP Form 18 is already going to die this year anyway. Only ex parte reexaminations can be anonymous – all the other post-grant proceedings already require ID of the “real party in interest,” so the only real question should be if this would provide more discovery on that issue and if it would include companies that sold patents to trolls while retaining a substantial financial interest in troll recoveries?
    It has been amply demonstrated that it will NOT make a significant difference in IPR outcomes to change claim construction from BRI to the Federal Circuit’s highly inconsistent claim construction for D.C.s [What this could do is increase IPR costs somewhat by some patent owners trying to move their “nose of wax” games into IPRs, falsely hoping that a narrow interpretation argued for attempted IPR prior art avoidance will not affect the much broader interpretation they are asserting in their parallel D.C. litigation.]
    Who would NOT agree that having the FTC deal with phony assertion letters is better that having dozens of state AGs doing it independently?
    “Clear and convincing evidence” rather than a preponderance could make a difference in some cases. But, sorry, an IPR will still have APJ patent attorneys who can actually read and understand claims and read newly cited much better prior art, and an IPR will never become an East Texas lay jury “snow job.”

        1. Of course I like Rohrabacher. I had the opportunity to shake his hand once. I wish him well.

          I should also point out that Feinstein and Boxer also opposed the AIA because of the harm it would do to startups. I wish there were more of these in both parties who would actually listen.

          I really resent it when the big boys argue that so-and-so reform they are advancing helps the startup, the university or the small inventor when they know that they are lying through their teeth and are actively preventing these very same folks from testifying, or by calling them names when they dare to speak up. This is BS.

          I frankly don’t understand Lemely anymore. He used to be a good guy, not a shill for big business.

          1. Of course I like Rohrabacher.

            During a House hearing on trans-atlantic relations, Rohrabacher stated that the unfair treatment of one innocent suspect is an acceptable “unfortunate consequence” of holding others who would otherwise be free to commit terror acts. After he received boos and groans from the gallery, Rohrabacher responded, “Well, I hope it’s your families, I hope it’s your families that suffer the consequences”, and “I hope it’s your family members that die”.

            What an awesome person! LOL. But when it comes to science and technology, he’s a real deep thinker:

            Rohrabacher doubts that global warming is caused by humans. During a congressional hearing on climate change on February 8, 2007, Rohrabacher mused that previous warming cycles may have been caused by carbon dioxide released into the atmosphere by “dinosaur flatulence.”[65] He stated, “In fact, it is assumed at best to be unproven and at worst a liberal claptrap, trendy, but soon to go out of style in our new Congress.”

            Or not. Maybe his real skill is in making good predictions about foreign policy:

            Rohrabacher voiced support for the Taliban when they seized power in the 1990s, visiting Afghanistan when it came under their control, saying that the Taliban would provide “stability”, and eliminate threats to the United States. He also claimed the Taliban “intend to establish a disciplined, moral society”. He said he believed complete Taliban control over Afghanistan would be a “positive development”, that they were “devout traditionalists, not terrorists or revolutionaries”,

            Because religious fundamentalists never take their own b.s. seriously.

            Orange County is a shirthole.

            1. MM, I agree that one should not make policy based upon religious beliefs. The more the Republican Party centers on religion as a reason to be a Republican …

              As to global warming, I am sure you do not support manipulating raw data to prove a scientific theory. Would you support an investigation into these allegations?

          2. “I really resent it when the big boys argue that so-and-so reform they are advancing helps the startup, the university or the small inventor when they know that they are lying through their teeth”

            Yet startups and individual inventors are overwhelmingly in favor of reform while IBM, big pharma, Microsoft, and the like are the principal opponents.

            It is big business and rich insiders that delight in stomping out innovation with the sort of bad and scammy patents and abusive lawsuits that reform will reduce. Your story has it backwards.

            1. Owen, it is a given that big companies do not innovate in the same way as startups and universities. The big company is conservative, and iterative. The startup seeks something totally new, that replaces.

              Intel and TI replaced discrete circuits.

              Apple and others invented the PC — IBM was resistant for a long time to protect their mainframe and typewriter businesses.

              Alan Shugart invented the small form factor hard disk drive and formed Seagate.

              Sandisk came out of nowhere with a new flash technology.

              CDMA? Cell phones.

              Who invented the airplane? A big company?

              The telegraph? The steam engine? The telephone? Radio?

              Again, again and again, the innovator who has an idea.

              Today, as in the earlier age (Morse, Edison, Bell), startups are protected by patents, and big buck investors invest if the technology is protected.

              In any reform, we cannot and should not kill the goose that for so long has laid the golden eggs. The big company should not be overly protected. The reforms need to be focused entirely on abuse, and bad patents.

  4. Just in case folks aren’t aware of this: Coons is the Democratic Senator from Delaware.

    Along with East Texas, Delaware is one of the most “popular” forums for patent litigation in the world.

    link to law360.com

    The District of Delaware was the second-most active jurisdiction in 2012 and 2013 with 1,001 and 1,336 patent case filings respectively. The most active jurisdiction those two years was the Eastern District of Texas. …

    [F]actors that help explain the District of Delaware’s popularity include, for example, the number of companies incorporated in Delaware. …[T]ere is an active local counsel bar [in Delaware] that is familiar with the judges, their practices and procedures, and new legal developments that impact Delaware practice.

    There certainly is an “active local counsel bar”. Just like in East Texas. It’s a nice little industry and everybody washes each other’s backs.

    Of course, these relationships are not nearly as transparent as the potent relationship between university professors and the Communist Party of America so it’s probably not even worth bringing up. Nevertheless …

    1. So, your argument is that the the Senator from Delaware is bringing up a bill arguably against his constituent’s interests (the “active local counsel bar”), and this is bad because…? Or are you saying that somehow this bill will drive more litigation to Delaware? Or are you saying something else? I guess I don’t understand the connection between the two. You seem to be implying there is something nefarious because the Senator from Delaware is a signatory to this Act, but I haven’t yet figured out what’s nefarious.

      1. PB: You seem to be implying there is something nefarious

        “Nefarious”? That’s funny.

        As for “implying”, let me help you out: Coons is bringing this bill up on behalf of his junk patent litigation lovin’ buds in Delaware. He will be reimbursed for that effort with campaign donations and other “favors”.

        Or are you saying that somehow this bill will drive more litigation to Delaware?

        More? That’s barely possible. The obvious goal is to keep the litigation train rollin’ by “strengthening” junky patents and making them more difficult to tank.

        1. He has two lobbies pushing for this. First, obviously Delaware businesses and law firms, especially in Wilmington, benefit financially from the disproportionately high number of patent cases into that district. Anyone who has practiced there can tell you that… Duh! And second, the pharmaceutical industry has a significant presence in Delaware including Merck, AstraZeneca, and many others. And we know the pharmaceutical industry’s view on patent reform..

          I agree with Dennis, this bill is obviously designed as a poison pill to try to erode the Goodlatte bill. In fact, it’s kind of a “Bizarro Version” of the Goodlatte bill, by addressing the same points and either watering down Goodlatte entirely, or taking the opposite approach altogether.

      2. but I haven’t yet figured out what’s nefarious.

        It’s right there, PatentBob.

        Nine years and running.

      3. Being local counsel for a case that is stayed for an IPR is not at all profitable. Sitting through a two-week trial is. Diverting the actually litigation of the case out of the PTAB and into Delaware is probably in the interest of the Delaware bar.

        1. Your post appears to suffer an ethical lapse, seeing as the profit motive you ascribe to here is placed above the duty of service to the client.

          More care is needed in your posts, lest you imadvertantly (and merely) join the ranks of those only too eager to denigrate our profession by painting a false picture of “grifters above all.”

  5. Wow, things have gone full circle when Democrats are the ones proposing strong patents. Google bucks have warped our system to such an extent it is unrecognizable.

    1. Yeah, what happened to the good old days where only Pharmaceutical companies got to buy the laws they wanted?

  6. Fyi:

    link to law360.com

    The Federal Circuit [last] Thursday denied both Promega’s request for panel rehearing and Life Tech’s request for panel rehearing or en banc review, according to the brief orders.

    Get ready for another Supreme Court smackdown.

  7. Instead of a de facto “not a chance” or even a negative “hah, this is just for gridlock,” how about we look to melding a “best of” the different bills?

    I’d guess that even curmudgeon would find some solid gold in this bill.

    😉

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