Does the Constitution Provide for a Right to an Injunction in Patent Cases?

Patent, Patent Legislation

Summer is almost here — How would you fare on this final exam question:

The Progress Clause (Article I, Section 8, Clause 8) of the U.S. Constitution provides that:

“Congress shall have the power… To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

Using this clause as a basis for analysis:  

  1. Would it be Constitutional for Congress to eliminate the right to an injunction for patent infringement?
  2. Would it be Constitutional for Congress to modify the right to an injunction so that one is only available if the patentee is “making use” of the invention?

Patent Practitioner Organization Supports Certain Patent Reform Measures, Rejects Others

Patent, Patent Legislation

The National Association of Patent Practitioners (NAPP) has provided its comments on the proposed patent reform legislation.  NAPP is primarily made-up of patent agents, and the organization’s viewpoint is seen as an important representation of the views of individual inventors.

In its introduction, NAPP takes-on the flippant usage of the term patent troll.

Some of the rhetoric by proponents of the Patent Act of 2005 has been highly troubling and obscures the debate. . . . A “patent troll” is apparently a derogatory term used by people or entities to refer to an inventor who has the audacity to assert a patent against them.  Such usage is an attempt to apply colored language, in a mindless way, to attack the entire < ?xml:namespace prefix ="" st1 />U.S. patent system. . . . To the extent that the term is used to derogate inventors who do not develop corporate structures or manufacture products, NAPP believes that inventors who merely invent but do not manufacture products – which, after all, includes most university and government researchers – do not deserve epithets or less patent protection.  Finally, to the extent that the term is used to refer to people who try to enforce invalid patents, NAPP believes that there are sufficient existing disincentives against such practices.

With regards to the individual provisions, NAPP supports post-grant opposition proceedings and the proposed changes to the duty of candor procedures.  However the organization also has stated quarrels with the following provisions:

First-to-File: This is a controversial issue. “Congress should not be fooled into thinking that this proposal has become less controversial or more accepted over time.”  Practically, this change makes things difficult for a patent practitioner who operates with a backlog of cases.  NAPP expects that the provision would decrease patent disclosure quality because practitioners will rush to file the documents. This increases the opportunity for attorney-malpractice.

Limits on Broadening Claim Scope: This “is an ill-conceived, poorly worded, and unworkable proposal. . . . NAPP strongly opposes this provision.” 

Universal 18–Month Publication: NAPP is against universal publication. One problem is that it would prevent “applicants from adopting the strategy of trying to get a patent and relying on trade secret protection as a fall-back if satisfactory patent protection cannot be secured.”

Inter Partes Reexamination Estoppel: NAPP is against removal of the provision that prevents a patent challenger from first bringing (and losing) an inter partes reexamination request challenging validity, then challenging validity of the same patent again in a court proceeding. [UPDATED TO FIX CORRECTION]

Limiting Damages to Components: This would just result in claim drafting mischief.

. . .

Link:

 

PATENT REFORM: Quick highlights from the Senate hearings.

Patent, Patent Legislation

The Senate Intellectual Property subcommittee held hearings on Monday, April 25, 2005 to discuss patent reform.  Some highlights:

  • Jon Dudas, Director of the Patent Office believes in the goal of “educating the world on the importance of patents.”  I believe that a major part of this should be to restore the mystique of the American inventor/entrepreneur.
  • On behalf of the AIPLA, Michael Kirk shot down BSA proposals to limit the availability of injunctive relief and the size of damage awards.  Kirk also mentioned that Congress should consider repealing 35 U.S.C. 271(f).
  • David Simon from Intel promoted changes to the notion of when an injunction should be granted.  In his viewpoint, there should be “a return equitable principles to determine whether an injunction should be granted.”

PATENT REFORM: House and Senate to Hold Hearings this Week

Patent, Patent Legislation

House Subcommittee on the Courts, the Internet and Intellectual Property, chaired by Congressman Lamar Smith (R Tex) has released a patent legislation discussion draft that includes a number of proposed patent reform measures.  The House Subcommittee is scheduled to hold an oversight hearing on the discussion draft on Wednesday, April 20, 2005 at 4:30 PM. [Link].  The witness list includes J. Jeffrey Hawley of Eastman Kodak testifying on behalf of the Intellectual Property Owners Association (IPO); Richard J. Lutton of Apple, testifying on behalf of the Business Software Alliance; Jeffrey Kusham, testifying on behalf of Genentech; and William LaFuze of the ABA.  In a parallel action, the Senate’s newly formed Subcommittee on Intellectual Property is scheduled to hold a hearing on the patent system April 21. [Link]. [NOTE — Strong indications are that the Senate will postpone the hearing to April 25].

Links:

PATENT REFORM: Injunctions Only When Money Is Not Enough

Patent, Patent Legislation

This post is part of our continuing series discussing a US House of Representatives working draft of patent legislation, by Marcus Thymian, Jennifer Swartz, and Dennis Crouch.

The current patent statute (35 USC §283) allows courts to grant injunctions to prevent violation of patent rights, but provides little guidance, specifying only that injunctions be "in accordance with the principles of equity."  The terms of the injunctions need only be "as the court deems reasonable."

The proposed statute would keep the current language intact, but would add another section spelling out the grounds for granting such injunctions.  Under the new language, "a court shall not grant an injunction unless it finds that the patentee is likely to suffer irreparable harm that cannot be remedied by the payment of money damages."  In making this finding, the court is not to presume the existence of irreparable harm, but is instead required to "consider and weigh evidence" relating to equitable factors.  One of these factors is "the extent to which the patentee makes use of the invention."

One result of the proposed new language is that, in a preliminary injunction determination, a reasonable likelihood of success on the merits would no longer lead to a presumption of irreparable harm.  The concept of "irreparable harm" has been extensively adjudicated; that body of case law would seem to remain largely relevant in making the determination called for by the proposed statute.

PATENT REFORM: Overturn Eolas v. Microsoft

Patent, Patent Legislation

This post is part of our continuing series discussing a US House of Representatives working draft of patent legislation, by Marcus Thymian, Jennifer Swartz, and Dennis Crouch.

In the recent case of Eolas v. Microsoft, the Court of Appeals for the Federal Circuit expanded the scope of Section 271(f) – a section that creates a cause of action for infringement due to foreign sales when a component of a patented invention is supplied from the U.S., knowing that the component will be combined in an infringing manner outside the U.S.  The court ruled that the statute (i) had no tangibility requirement and (ii) was not limited to apparatus claims.

The proposed legislation would make it clear that a component "is a tangible item that is itself combined physically with other components to create the combination that is alleged to infringe."

This change would essentially overrule Eolas v. Microsoft.

PATENT REFORM: Proposed Changes Allow Assignee to File Patent Application

Patent, Patent Legislation

This post is part of our continuing series discussing a US House of Representatives working draft of patent legislation, by Marcus Thymian, Jennifer Swartz, and Dennis Crouch.

Under the current statute, an employer has quite a bit of trouble filing a patent application when the inventor refuses to sign a declaration or is otherwise unavailable.

In order to file the application without the inventor’s help, the statute (35 U.S.C § 118) requires a proof that such action is “necessary to preserve the rights of the parties or to prevent irreparable damage.”

The proposed changes make it easier for the company to file the application without the inventor’s assistance.  Specifically, the proposal allows an assignee (or a person owed an obligation to assign) to apply for a patent after showing that the action is “appropriate.”

PATENT REFORM: House IP Subcommittee Prepares Sweeping Patent Law Changes

Patent, Patent Legislation

The attached legislative proposal was prepared by the House Subcommittee on Intellectual Property chaired by Congressman Lamar Smith (R Tex).  Although the proposal is merely a discussion draft at this point, it is expected that a parallel Bill will be introduced within the next few days.  The Senate’s newly formed Subcommittee on Intellectual Property is scheduled to hold a hearing on the patent system April [25th].  It is quite possible that this proposal will serve as an agenda for the Senate hearings.

The proposed legislation includes changes to:

Over the past year, the AIPLA, IPO, Microsoft, and others have all been beating the patent reform drum — each with a separate agenda.  This proposal appears to be an amalgamation of all the proposals — with enough controversial points to get most everyone up in arms. 

Over the next few weeks, Marcus Thymian, Jennifer Swartz, and I will discuss the various sections of the proposal in a series of posts.

Congress Discusses Which Court Should Hear Patent Cases

Patent, Patent Legislation

The AIPLA is supporting a measure to legislatively overrule the 2002 Supreme Court case of Holmes Group v. Vornado.  The House Subcommittee on Courts, the Internet, and Intellectual Property is holding a hearing today to discuss the matter. 

Specifically, the AIPLA argues that the holding will allow regional circuits and even state courts to begin to hear patent counterclaims.  This scenario was suggested by the Indiana Supreme Court ruling in Green v. Hendrickson Publishers, Inc., 770 NE2d 784, 63 USPQ2d 1852 (< ?xml:namespace prefix ="" st1 />Ind. 2002).  In moderation, the AIPLA believes that if patent claims are raised in a compulsory counterclaim then the Federal Circuit should have jurisdiction.  On the other hand, if the patent claims are raised in a permissive counterclaim then the regional circuit or state court should have jurisdiction. 

The Subcommittee hearing is scheduled for 3:30 p.m. Eastern and will be broadcast over the Internet here.  Those testifying include Edward Reines on behalf of the Federal Circuit Bar Association; Professor Arthur Hellman from the University of Pittsburgh School of Law and expert on the structure of the Courts; Sanjay Prasad, Chief Patent Counsel for Oracle Corporation, and Meredith Martin Addy from Brinks Hofer.

Although the cameras would normally be focused tightly on the patent hearing, as Matthew Buchanan points out, MLB is also testifying today on the Hill.

LINK:

< ?xml:namespace prefix ="" o />