by Dennis Crouch
On Nov 8, the US Senate Judiciary IP Subcommittee held a key hearing on the PREVAIL ACT – The “Promoting and Respecting Economically Vital American Innovation Leadership Act.” PREVAIL is a bipartisan proposal from Senators Coons (D-DE) and Tillis (R-NC) who are looking to strengthen the power of patents. The proposal here is directed toward AIA trials — generally attempting to make it more difficult to invalidate patent claims via IPR. Key provisions include:
- Imposing standing requirements to restrict who can file AIA patent challenges.
- Requiring “clear and convincing” evidentiary standard for invalidating claims.
- Broadening estoppel. Challengers must either challenge 102/103 invalidity via PTAB or court, not both (only on prior patents or printed publication grounds).
- Limiting repeat challenges of the same patent.
- Adding additional transparency and safeguards.
Senator Coons opened the hearing, laying out his views on the need for patent reform. He argued that the current system allows large corporations to “weaponize” the PTAB to invalidate patents held by small inventors and startups.
The witnesses were Lamar Smith, former House Judiciary Chair and namesake of the Leahy-Smith America Invents Act (now at Akin Gump); Joe Matal, former interim PTO Director (and until recently at Haynes & Boone), Joe Kiani, Founder and CEO of the medical device company Masimo, and Michelle Armond, partner at Armond Wilson.
Smith and Kiani testified strongly in favor of the PREVAIL Act while Matal and Armond provided support for IPRs largely in their current iteration, although allowing for limited changes.
Any legislation needs a good personal compelling story. Joe Kiani provided that here. Kiani testified that his pulse oximetry technology was copied and patents challenged once he proved that the technology worked. Masimo spent over $13 million defending patents at the PTAB that withstood pre-AIA scrutiny. Kiani argued the AIA’s intent was an efficient second look at patents, not reflexive, duplicative challenges by “opportunistic” big companies to invalidate smaller entities’ rights. Predictable property rights drive investment and innovation, and Kiani endorsed PREVAIL’s reforms for providing more certainty and reducing PTAB abuse. He concluded with a statement that action is needed, otherwise “the United States will continue to cede technological supremacy to China.”
Mr. Smith testified that the PTAB has strayed from its original purpose as an alternative to litigation. He said it has become a tool for infringers to undermine valid patents. He endorsed the PREVAIL Act’s reforms as preserving strong patent rights while still allowing for challenges to bad patents.
Smith similarly testified that IPR proceedings have strayed from their original purposes and have now become an additional tool for “litigation gamesmanship.” Smith endorsed the proposed legislation as supporting smaller companies and individuals against “well-resourced corporations.” “[I]f we lose sight of creating a system that truly rewards investment in innovation, we are really hurting ourselves.”
Matal testified that PTAB proceedings have proven to be timely, cost-effective, and produce accurate patentability results. He cited a study finding the PTAB is affirmed on appeal much more often than district courts due to judges’ technical expertise. Matal argued PREVAIL’s restrictions on PTAB reviews are contrary to the public interest. He opposed limits on serial challenges, saying they could entrench bad examiner decisions. He argued PREVAIL’s standing requirement would prevent beneficial challenges. Matal concluded the PTAB provides reliable review American manufacturers need, saying recent cases like VLSI v. Intel show billions in damages can be awarded on invalid patents absent PTAB access.
Finally, Armond testified that PTAB proceedings have transformed patent litigation over the past decade. She suggested that PREVAIL’s early forum choice requirement and aligned evidentiary standard could advance the goals of efficiency and certainty. However, Armond opposed limits on PTAB access, saying strong patents come from quality examination rather than less scrutiny. She suggested a better area for reforms is to ensure examiner resources and technical training.
The divided views expressed at the hearing reflect the reality that passage of the PREVAIL Act in its current form is unlikely this Congress. While Chairman Coons and Ranking Member Tillis aim for bipartisan patent litigation reform, these issues have entrenched stakeholders on both sides — making any major movement in Congress unlikely.
OT, but this is the last blog with a comments section:
Will the recent FTC challenge to a hundred or more allegedly improper Orange Book listings of patents [as allegedly not covering the subject drugs or medical devices?] plus numerous letters to companies threatening possible violations of Section 5 of the FTC Act as an unlawful method of competition if that is being done, potentially lead to some private antitrust treble damages suits as well?
Great question.
Meh – this seems like more of a executive branch “who’s responsible” backyard squabble than any actual pressing patent issue.
And naturally, Malcolm is wr0ng.
Go figure.
The real danger from what I’ve seen of the proposed language to some of the statutes is there is language introduced that greatly narrows the patent grant.
The last time I looked at the proposal, it effectively granted a patent only for embodiments expressly disclosed in the specification, which is outrageous and would make design arounds trivial.
I see Jason is pushing the CRT theory of life. If things don’t match up according to race, gender, sexually orientation, created by the researchers, then it is due to system racism, sexism, or bigotry.
I think we have all had it with this nonsense.
Do real statistics and look for other factors.
… or dig a little deeper into the CRT religion and see that beyond the “sounds nice” Bailey, the Motte of divisiveness is based on identity politics – to the exclusion of any actual merit.
This whole cover- up for NH licensing was because of FRASCA. The law firm the MA BAR gave me refused to help unless I groveled.
The TRUST…
It is ridiculous the way they stop looking beyond all are graduates of a top ranked MBA program as if all other factors are the same when you are the graduate of a top ranked MBA program.
I went to a top ranked MBA program. I scored 400 points higher on the GMAT than the black woman who I was randomly paired with to work on project with.
How do you know what her GMAT score was?
Oh, I don’t know – maybe they talked about it with each other.
People do talk to each other.
Because we talked about it. I had the highest score in the class and received a full scholarship.
I can verify her GMAT score. NW’s MBA colleague was my Canadian girlfriend at the time.
The first thing my two MBA group project colleagues and I discussed were our GMAT scores.
Lulz
Smelly Breeze borrowing a page from stinky diaper with his “well, I would not do that, so no one else could do that.”
Cute.
oops sorry Night Writer, I messed up your moniker for Malcolm.
That should read p00py, not stinky.
Mea culpa.
I agree. It should be obvious that you can’t assume the premise that Group A and Group B will have identical talents, motivations, and outcomes absent discrimination or some other artificial social barrier.
Exactly the opposite / but what would one expect from an examiner?
By the by, this epitomizes Malcolm, his “one-bucket” tendencies, and the whole Sprint Left defined:
Here:
link to instagram.com
Kyle, what you said isn’t even logical.
You want to blame the “talents” of people based on “discrimination”? That is CRT theory in a nutshell and the actual data does not back it up. It is the culture and circumstances. Why do Nigerians do so well when they come here? Also, black people from the Carribean do well in school here.
And one of my classmates in the MBA program was a woman who said she planned on working for a couple of years and then having several children and taking 10 years off and then going back to work.
And so forth.
“And one of my classmates in the MBA program was a woman who said she planned on working for a couple of years and then having several children and taking 10 years off and then going back to work.”
So?
meh, I viewed his comment merely to show that the use of “identity politics” is nonsense.
It is nonsense for reasons well beyond his personal anecdotes.
“So?”
So, one would expect someone that took 10 years off to not have as a good a shot at making to the CEO spot. So, lumping all of us together into one basket without looking at other factors (besides the intersectionality factors of the Marxists) is absurd.
Did she say she expected to be made CEO the day she got back?
The real danger from what I’ve seen of the proposed language to some of the statutes is there is language introduced that greatly narrows the patent grant.
Surely you are not thinking about the PREVAIL act. The PREVAIL act is about reforming IPRs, not patents.
Matal, Armond, Maxdrei et al fail to address the issue that PTAB defeats the fundamental purpose if a patent system. As long as a patent can be easily revoked (“We are persuaded by petitioner that it would have been obvious…) then inventors cannot risk disclosing our discoveries. Perhaps they believe that patents serve some other purpose,
Are they all in the Soup yet?
Matal testified that PTAB proceedings have proven to be timely, cost-effective, and produce accurate patentability results.
The alleged fact that they can produce accurate patentability results does not mean that these proceedings still aren’t abused. Also, these results are typically based upon factual issues. And these findings of facts are reviewed using a very deferential standard at the Federal Circuit . Consequently, even if the APJs were incompetent they would be affirmed at a very high level — solely because of deference given to their findings of fact.
He cited a study finding the PTAB is affirmed on appeal much more often than district courts due to judges’ technical expertise.
The “judges’ technical expertise” is a load of hogwash. I would wager that the vast majority of PTAB proceedings involve APJs who have zero specialized knowledge in the particular field in which the patents were involved. At best, they are going to have a very generalized knowledge of the field in which the patents were involved.
Also, the affirmed “more often” allegation ignores that every PTAB decision is subject to review by the Federal Circuit whereas many District Court judges only go to the Federal Circuit a handful of times over any multi-year period. Consequently, the APJs at the PTAB have greater experience writing opinions designed to stand up at the Federal Circuit. Additionally, this knowledge of how to write an opinion that will stand up at the Federal Circuit is more easily spread among the APJs (who regularly interact with one another) than it would be spread amongst District Court judges. As such, I would expect APJs to be affirmed more often — they have better institutional knowledge of how to do so.
He opposed limits on serial challenges, saying they could entrench bad examiner decisions.
No. Bad decisions are still able to be challenged.
If an infringer is sued in court and they prevail, does the patent owner have the ability to file another suit the following day making different allegations (so as to cure problems from the prior lawsuit)? Of course not. However, serial challenges of patents allow exactly the same thing to happen but in reverse. If a challenger doesn’t prevail on a first challenge, they can challenge again and again and again until they get the right combination of arguments/judges. They can also use proxies to perform these serial challenges if they are precluded from doing it themselves. There is no FINALITY at the PTAB, which is what one gets at a Court.
He argued PREVAIL’s standing requirement would prevent beneficial challenges.
Using the same simplistic logic, forcing challengers to pay fees to challenge patents would prevent beneficial challenges. In fact, if the government was on the hook for attorneys fees for beneficial challenges, more would be brought. I can think of dozens of ways that would permit more “beneficial challenges.” Should we make it even easier to challenge patents?
The issue sought to be addressed is finding the appropriate BALANCE between allowing challenges and protecting patent owners from abuse. Only looking at one side of the scale isn’t helpful when trying to find that balance.
The US judicial system relies upon a “case or controversy” to confer Article III standing. If AIA proceedings are to be an alternative to going to District Court, then that “case or controversy” requirement should be incorporated into those proceedings. Mere ownership of a patent should not subject someone to endless serial proceedings at the PTAB if that patent is not being asserted against anyone. This should be a common sense requirement.
The divided views expressed at the hearing reflect the reality that passage of the PREVAIL Act in its current form is unlikely this Congress.
The divided views reflect the choices of those who generated the witness list — that is all. Any actual relationship between the 50-50 divide of the witnesses and the sentiment of Congress regarding passage would be merely coincidental.
“The ‘judges’ technical expertise’ is a load of hogwash.”
That’s why all the APJ’s wear hindsight goggles.
Did you know that Snowflake s own designated expert concluded that Snowflake was an incredibly sloppy reader, writer, and thinker?
Hey Abe.
Missed you. We’re you at the Theater…?
Aside from that, how did you like the play Mrs. Lincoln?
The only thing unusual about my pal with the Shifting historical pseudonyms is that he has chosen to post his debunked (but brings me coin) tired scripts on a relatively “new” thread, instead of his more typical ‘wait-until-a-month-old’ schtick.
Big +1.
As far as Matel’s lie-filled “testimony,” that’s what happens when your primary source of nourishment comes from the overflowing money-udders of Big Tech.
The “judges’ technical expertise” is a load of hogwash. I would wager that the vast majority of PTAB proceedings involve APJs who have zero specialized knowledge in the particular field in which the patents were involved.
“Expertise” is a relative quality. I am sure that your average APJ is less “expert” than the expert witnesses giving declarations in an IPR. I am also sure that your average APJ is miles more “expert” than your average district judge, and leagues more “expert” than your average juror.
r”e”lative – A hidden signal to Noah that actually sounds against Malcolm’s Spring Left and One-Bucket tendencies (reinforcing the Musk items that I have presented), as well as validating my own positions on the fact that the political ideology is better represented BY A SPECTRUM.
Sad though, that Greg most likely does not appreciate that.
… and since I will not pay for Noah’s tripe, I am limited to seeing only two of the four items that he personally would not join the rest of the Sprint Left folk.
The second of course is “decolonization” – brought about by the October 7th slaughter, and the Left fracturing along the lines of “who to blame,” and “who is the MORE v1ct1m” — along with recertifying the US positions on the 1st and 2nd Amendments (from a Centrist viewpoint).
For a patent blog that dips into Politico/religious/philosophical topics so often, the paucity of the unfolding WWIII intersectionality “who is most v1ct1m” Middle East quagmire is VERY telling.
For APJ the statute requires competent legal knowledge and scientific ability. Not an imaginary hypothetical person of ordinary skill in the art. Only one who can evaluate the evidence submitted and apply the relevant legal principles.
“ Not an imaginary hypothetical person of ordinary skill in the art.”
More than certain that no one has advanced that (see: strawman fallacy).
“Only one who can evaluate the evidence submitted and apply the relevant legal principles.”
That appears to assume the conclusion being challenged. The point explicitly provided is that the legal deference to factual findings is large, and is most likely TOO large. The very act of “evaluation” capability is what is being challenged. One does not answer that challenge by A$$uming that such must be a given. (see: assume the conclusion fallacy).
That being, said, kudos to the Mrs. Lincoln quip above.
If any law results from this, it will have been amended to do the opposite of what it says it does.
Just like the AIA does the opposite of what it was supposed to do.
Just ask Mr. Smith.
“However, Armond opposed limits on PTAB access, saying strong patents come from quality examination rather than less scrutiny. She suggested a better area for reforms is to ensure examiner resources and technical training.”
Except, the statute does not require “strong” patents, nor “robust and reliable” patents for that matter. Nor is a post-grant proceeding an “examination.”
Nor should patents be at risk of being challenged in an IPR throughout their life. They aren’t in Europe.
Perhaps extend the time limit for filing PGRs to a year, and eliminate IPRs altogether. We still have reexamination.
We are providing too many ways for persons to challenge patents.
Gesture politics or window-dressing? Matal claimed that PTAB decisions are routinely upheld on appeal more often than decisions at DC level because the PTAB judges have enough technical background to understand the points on which patentability turns. Not only that, he urged that IPR proceedings are timely and cost-effective. What’s not to like, about any of that?
If reform is needed then, is it not needed more urgently at the DC than by tweaks at the USPTO? If game-playing in patent assertion litigation is to be curbed, then who but the seized DC is in a position to perform that onerous and challenging task? Absent firm action at the DC to render game-playing counter-productive, the game-players will continue undeterred, won’t they, regardless of the fate of PREVAIL?
and yet another “Potential rePeat”…
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November 10, 2023 at 1:47 pm
You do know that Matal is more than biased, eh MaxDrei?
“Mr. Smith testified that the PTAB has strayed from its original purpose as an alternative to litigation.”
Well, at least he’s willing to publicly admit he screwed up.
“IPRs are too popular and effective!”
Crybabies gonna cry. Smart people ignore them. Corrupt people buy them lollipops.
^^^ speaking about corrupt people…
(but Malcolm is not anti-patent, really – he gaslights that emphatically)
Funny, you use the word “effective.”
I do not think that you understand what that word means.
After all, the Office “examination quality” stats are still very high, n’est-ce pas vrai?
“ Mr. Smith testified that the PTAB has strayed from its original purpose as an alternative to litigation. He said it has become a tool for infringers to undermine valid patents.”
Did Mr. Smith provide evidence of hundreds of important patents that were plainly improperly invalidated in IPR proceedings?
Because otherwise it’s not clear what he’s whining about. Maybe he is confused about the “original purpose” of IPR proceedings and why/how we got there in the first place.
That quote is good. Is he whinging that infringers ought not to be allowed to “undermine” the patents that are asserted against them? Does he expect them all to submit, and accept their punishment, the moment the patent is asserted against them?
When was it ever in the history of patent law that it was not a defence to assertions of infringement to bring argument and evidence that the asserted claim lacks the necessary validity to be enforceable? Are the legislative and judicial branches incapable of setting conditions for a fair fight between patent owner and accused infringer? If so, where lies the problem?
No whinging and no whining — no one is getting rid of the Article III path to obtain the noble ends.
Both of you please stop with the disinformation.
One of the witnesses gave examples of a dozen or so. My friends and I have had several hundred improperly invalidated. Zond, VirnetX, Smartflash, Valencell, Jodi Schwendimann, E-Watch, Cellect — there’s more than a hundred off the top of my head. Congressman Smith is aware of these examples of abuse. You know of them as well.
A dozen? Out of how many IPRs filed? Out of how many patents issued and in force over the same time period?
A dozen. Wow. A whole dozen.
LOL
You asked for hundreds, and one person indicates dozens….
But you feel smug enough to attempt your putdowns….
The laughter you hear is not laughter with you.
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