The second major new Senate patent bill focuses on reconstructing AIA trials — particularly by reducing availability and power of inter partes review and post grant proceedings. The bipartisan Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act was introduced by Senators Chris Coons (D-Del.),Thom Tillis (R-N.C.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii).
- Limiting Standing: Parties could only file IPR petitions if they would have standing to bring a declaratory judgment action in Federal Court.
- Clear and Convincing Evidence: Invalidating a patent before the PTAB would require proving unpatentability of a previously issued claim by clear and convincing evidence. This is a substantially higher standard than the current requirement of preponderance of the evidence.
- Separating Institution from Trial: Judges who participate in the institution will would be forbidden from then serving on the trial team. The idea here is to avoid holdover bias against the patent that may have been established during the institution stage.
- Drop Invalidity Defenses: If an IPR is established, the petitioner must drop any invalidity defenses from pending litigation that could have been raised in an IPR.
- No Interference: Although the Director still has power of Director Review, the law would forbid the Director from interfering or influencing PTAB IPR decision-making.
The press release also notes the following provisions:
- Require standing for PTAB challengers and limit repeated petitions challenging the same patent;
- Harmonize PTAB claim construction and burden of proof with federal district court;
- End duplicative patent challenges by requiring a party to choose between making its validity challenges before the PTAB or in district court; and
- Increase transparency by prohibiting the USPTO director from influencing PTAB panel decisions.
IPRs would remain valuable if this bill became law, but their scope would be substantially limited.
In the USPTO statistics for IPRs from 10/1/22 to 3/31/23: 29% of challenged [petitioned] claims and 49% of instituted IPR claims were found unpatentable, but 33% of petitions were denied IPR institution and 31% were settled by the parties before or after institution. [I was surprised by the reported number of settlements these days.] [Is the total number of IPR petitions still running well under the number of new patent suits in the same time frame?]
Even the IPWatchdog blog has just published a statistical study showing that serial and parallel IPR petition practice at the PTAB has been decreasing since 2016, and is down from small to miniscule percentages. Factually contrary to false allegations of unlimited numbers of IPR attacks on the same patent made by some others in respect to that aspect of this Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act.
Put
the
Pom-poms
Down.
The link:
link to ipwatchdog.com
I will emphasize that the comment from F22strike rather eviscerates Paul’s ‘enthusiasm.’
That comment does not statistically dispute the actual statistics reported, and appears to be trying to confuse them with one example of an unusual situation in which the same patent is asserted against a large number of different potential defendants. In such cases, just as in normal patent litigation, each defendant is legally entitled to independently defend itself with its own defense case.
LOL – That comment clarifies the obfuscation that you instead wish to promote.
As such, I call out your B$.
A House PREVAIL act has now been introduced with bipartisan co-sponsors. Forward movement is good to see.
With this bill and the same evidentiary standards it brings, Congress reveals indifference whether the invalidity proceedings is at the PTAB or in court. If that is the case, then Congress should remove the problem NightRider mentioned: “The proposal is basically saying let’s bifurcate patent infringement trials to invalidity and infringement stages.” Two “stages” is NOT a good situation, as it forces inventors to fight in multiple venues and hire multiple legal teams with increase costs and yet another tribunal to deal with an appeal. All of this is unnecessary. If a court wants to hear the case, let them hear it without the bifurcation. Otherwise, it’s not faster or cheaper. If Congress remains consistent with their indifference on evidentiary standards, then they shouldn’t have any problem with trials staying in court if a judge wants to hear it.
Don’t get too excited. There will likely be little to no activity until after the next election cycle, and even then Big Tech (and likely PhRMA) have enough sway to prevent this from getting out of committee.
Most likely correct – but plenty of time for various $take holders to have their voi€e$ heard across both sides of the aisle.
Why would PhRMA try to kill this? PhRMA does not like IPRs. PhRMA has previously urged many of these same reforms back when the SCOTUS was hearing Cuozzo Speed Tech.
Apple v. Caltech cert denied on IPR estoppel
Would the clear and convincing evidence standard be accompanied by removing the provision allowing claim amendments during an IPR?
How do you see the two connected?
Keep in mind that there is NO true examination currently on any claim amendments made in the post-grant mechanism.
When you think about it, what people are realizing is that “quick justice” just doesn’t work. The proposal is basically saying let’s bifurcate patent infringement trials to invalidity and infringement stages. I think this is a good idea.
Let the district courts deal with infringement and push the invalidity portion of the trial to the PTO.
And, what everyone that has ever done litigation knows: if you create an argument for the D to get off, then the D is going to raise that argument pretty much no matter what.
“if you create an argument for the D to get off, then the D is going to raise that argument pretty much no matter what.”
Is that not a “Reasonable”*** thing to do?
*** in the same sense that the underlying actions of the Efficient Infringers are “Reasonable” to suit their own ends.
IPRs would remain valuable if this bill became law, but their scope would be substantially limited.
How “limited,” I wonder? Let us look at each of those changes:
1) “Parties could only file IPR petitions if they would have standing to bring a declaratory judgment action in Federal Court.” It is already the case that the overwhelming majority (>80%) of IPRs involve a patent in litigation. I doubt that there are all that many IPRs that will be brought under the current law but that will not under PREVAIL.
2) “Invalidating a patent before the PTAB would require proving unpatentability of a previously issued claim by clear and convincing evidence. This is a substantially higher standard than the current requirement of preponderance of the evidence.” “Substantially higher”? Yes and no. The textbook definition of “clear and convincing” and the textbook definition of “preponderance of the evidence” are very different. For all that, however, there are remarkably few cases where this distinction affects the outcome. For the most part, the sort of evidence that most IPR petitioners bring to the proceedings will satisfy either standard. I doubt that you will see a difference in either the rate of institution or the rate of invalidation after such a standard is instituted relative to the present standard.
3) “Judges who participate in the institution will would be forbidden from then serving on the trial team.” Of all the proposed rules, this is the most likely to make a discernible difference, but that is just because all the others will not likely make any discernible difference. This will likely make the proceedings slightly less efficient, but I doubt that it will actually affect the outcomes all that much.
4) “If an IPR is established, the petitioner must drop any invalidity defenses from pending litigation that could have been raised in an IPR.” Just as I noted above that the overwhelming majority of IPRs involve a patent already in court, so too it is presently the case that the majority of IPR institutions result in that case being stayed until the IPR is resolved. There just really are not that many actual cases in the real world where the same controversies get litigated in both PTAB and court. This rule is great, but it mandates a situation that is basically the already-existing reality.
5) “If an IPR is established, the petitioner must drop any invalidity defenses from pending litigation that could have been raised in an IPR.” Just as in #1 & #4 above, this is a fine rule, but it is a mandate to do that which is already done in 999 cases out of 1000. The real world change as a result of the rule will be de minimis.
Sorry, I evidently pasted the same quote (#4) into both #4 & #5. Obviously, I meant to paste “Although the Director still has power of Director Review, the law would forbid the Director from interfering or influencing PTAB IPR decision-making” into #5. Sorry for any resulting confusion.
You’re fired. 😉
You can cut my pay by 80%. That seems a fair punishment that fits the crime.
1) Silly question, but does a defendant in a current lawsuit technically have “standing” to bring a DJ? Or does the filing of the original lawsuit (by the plaintiff) cut off that right? That is, does this bring us back to the traditional “plaintiff chooses the form” rule?
What you are describing is the fact pattern in Kerotest Mfg. Co. v. C-O-Two Fire Equipment Co., 342 U.S. 180, 183 (1952). The Court did not say that the first-filed case defeats standing for the second filed. Instead, the rule is that the second case should ordinarily be consolidated with the first, unless equity requires otherwise. The analysis is flexible, with a lot of discretion accorded to the discretion of the trial judge for the second-filed case.
“K” is nothing but Sprint Left propaganda, as it presumes its own desired ends and relies on WHO-China manipulated data.
Keep signaling, Greg.
Sounds like you support the legislation and since you predict it won’t change much, then let’s get it passed.
I disagree with you. I think it will change a lot. So much of litigation is a bargaining game before and during litigation.
Thanks for your reply, NW. If you find time, I would be obliged if you could unpack your argument a bit and detail how you think the PREVAIL reforms would affect the bargaining.
Further to comments about some of these proposed IPR changes not being all that significant: First, requiring “clear and convincing evidence” is less significant for IPRs than in some other patent litigation since evidence in IPRs must be based on [normally easily authenticated] prior art patents and publications. Not mere alleged eye witness testimony [the original reason for that evidence rule].
Dozen’s other comment [that requiring those seeking an IPR to disclaim raising the same patent or publication invalidity defenses in the pending patent suit that provoked the IPR request is already being done most of the time now anyway] has also been pointed out by the Patents Post-Grant blog author.
That the vast majority of IPR requests are made by those being sued on the patents is also not disputable. It could, however, impact some IPRs brought by trade associations on behalf of members threatened with patent suits, and a few others.
With no chance of serious consideration of this bill in both houses before elections, and not a lot even after with strong opposition already from hundreds of companies including giant software and internet companies, and not now even being at the “markup” stage, I am not going to spend much time worrying about it.
Weak.
“That the vast majority of IPR requests are made by those being sued on the patents is also not disputable. It could, however, impact some IPRs brought by trade associations on behalf of members threatened with patent suits, and a few others.”
This is the entire business model of the likes of Unified Patents.
You can be DAMM sure that they are more than just a little worried about it.
These all look like great ideas. Here’s hoping that this moves forward.
As Paul has linked to, certain stakeholders (Paul’s example being a certain class of stakeholders in litigators) will NOT agree.
Agree. With Dozens’ thought-provoking points in mind, these changes could / should move IPRs & PGRs to where Congress had intended.
It’s worth a try.
But . . . can Congress can get past Big Tech’s heads-cut-off “the sky is falling! the sky is falling!” (it’s not), their high-paid lobbyists knocking down their doors, and their torrent of “us-first-America-second” $$$?
We’ll know soon enough.
“these changes could / should move IPRs & PGRs to where Congress had intended.”
My, the naïveté is ‘charming.’
Alas, with that mindset, one would never be able to root out the “bought” nature that still pervades our Legislative Branch.
. . . and yet, one must not let the desire for the perfect (which I also want) preclude obtaining great improvement.
Hmm, I don’t see what is there falling to that.
Rather (and based on the Reality of what Court(s) have done), I rather see the infirmities more as a Trojan Horse.
Potential civil war starting in Russia via Wagner group “coup attempt”/attempt to oust/kill some of the upper level military that order an airstrike on them (accidentally??? who knows).
Most I’ve seen is sketchy and giving a lot of guesses.
Seems more like a typical Putin purge than an actual coup.
A bit tone deaf by Putin, but he may be suffering from Yes-man syndrome, or Xi-like “better to say nothing” ism.
Well 6, it appears to be over, and my earlier comment somewhat misses the mark, as Putin appears to have weakened himself with the moves of a Belarus ‘excite/amnesty.’
I suppose that fracturing his foreign sourced army with treating of all Wagner forces as outright traitors would have also weakened him greatly, so perhaps a choice of lesser ills…
…. Oops – did not catch that autocorrect.
“Excite” ==> “exile”
6,
More Zeihan primer (noting that this is only his fourth of a quick series):
link to youtu.be
6,
Spin is unfolding.
link to youtu.be
Yeah i was busy catching up with things and working and all, but I caught some of the news. I quite wanted to see wagner in moscow.
Comments are closed.