Patent Law Practice Center

Another patent reform advocate to retire from House of Representatives

Congressman Darrell Issa (R-CA), has announced that he will not seek re-election in 2018 and will retire from Congress. Issa, who currently chairs the House’s Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet, has been an outspoken advocate for the need for more patent reform.

Issa’s decision not to seek re-election means that the three most ardent Republican supporters of patent reform in the House will not return for the 116th Congress in January 2019. House Judiciary Chairman Bob Goodlatte (R-VA) announced his retirement in November 2017. Former House Judiciary Chairman and co-sponsor of the America Invents Act (AIA) Congressman Lamar Smith similarly announced his retirement in November 2017.

If Republicans hold on to a majority in the House, it seems likely that Congressman Doug Collins (R-GA) will take over as Chair of the House IP Subcommittee. Collins, an ally to inventors and creators, is currently Vice-Chair of the House IP Subcommittee.

While many patent owners and independent inventors will celebrate Issa’s decision to retire, his legacy on patent issues is a complicated one.

“As a patent owner himself, Chairman Issa understood the importance of a strong IP system,” said Todd Dickinson, former Director of the United States Patent and Trademark Office and current partner at Polsinelli.  “While some differed with him on his approach to specific reforms, his heart was always with the system, so losing someone who knew the patent system personally will be a loss.”

Whether Issa was a hero or villain on matters of patent reform will largely be in the eye of the beholder. Many large corporations — such as Google, Cisco and J.C. Penney — have continued to seek additional patent reform ever since the AIA was signed by President Obama in September 2011, and have found Issa to be a strong ally.

What is not open for debate, however, is Issa’s influence in a positive way on how the federal courts structurally handle and assign patent lawsuits. “He should specifically be remembered for initiating the legislation that ultimately lead to the judicial Patent Pilot Program, which has been a successful attempt to create focus and training among District Courts and their judges having a particular interest in patent cases,” Dickinson said.

Should the Democrats take the House of Representatives in the next election cycle probably either Congressman Jerrold Nadler (D-NY), who is the Ranking Member on the House Judiciary Committee, or perhaps Congresswoman Zoe Lofgren (D-CA), would become the new Chair of the House Judiciary Committee. Both Nadler and Lofgren have been supporters of patent reform efforts in the past. Congressman Hank Johnson (D-GA) is currently the Ranking Member on the Subcommittee on Courts, Intellectual Property and the Internet, and could perhaps ascend to Chair the House IP Subcommittee. Johnson has taken positions in the past favorable to patent owners, such as his Amendment that would have substantially changed the fee-shifting provisions of the Innovation Act.

Infringers may soon pay a heavy price in China

Chinese President Xi Jinping recently made some unusually strong comments regarding intellectual property. “Wrongdoing should be punished more severely so that IP infringers will pay a heavy price,” Xi said.

According to IAM, the comments from President Xi are the most extensive he’s made in public on the subject of intellectual property protection. He called on national authorities to advance IP regulations, improve the quality and efficiency of examinations and to accelerate the building of IP institutions. The remarks are a major acknowledgement of the importance of strong IP protections to a nation’s economy, directly from the head of state of one of the world’s major economies.

Political leaders in Washington, DC should take notice of Xi’s comments. In China, where there is single-party rule, change can happen dramatically, as we have already seen on the patent and innovation landscape. With the support of President Xi, China could very quickly move to become the preferred jurisdiction for innovators, given the market size afforded by a country with 1.4 billion people. If acted upon in a serious way, this new Chinese approach to dealing with infringers could send a shockwave through the entire intellectual property community, if not the entire world economy.

“President Xi’s statement on the importance of IP enforcement indicates China’s growing status as a leader in innovation,” said Erick Robinson, a U.S. patent attorney based in Beijing. He is Director of Patent Litigation at Beijing East IP. “China knows that only by protecting patent rights will individuals and companies have incentive to create new technical solutions.”

At a time when President Xi is actively moving China’s IP policy to a place where infringers are met with harsher penalties, some Congressional leaders support legislation that continue attempts to further gut the U.S. patent system, allowing infringers a free holiday and the ability to infringe without consequence or penalty.  In recent days, the House IP subcommittee has piled on, looking for ways to further reduce venue for plaintiffs in infringement suits and turning into a forum for attacking judges on patent cases and the critics of patent reform.

While factions within the U.S. seriously discuss further dismantling the U.S. patent system in favor of infringers, China takes the lead in increasing the enforceability of patents.

House Judiciary Nixes CBM Extension

On Thursday, June 11, 2015, the House Judiciary Committee held a hearing for the purpose of marking up “the Innovation Act.”

One of the issues that took up a significant amount of time during the first half of the hearing was an amendment submitted by Congressman Darrell Issa regarding a proposed extension of covered business method (“CBM”) review. Those familiar with the America Invents Act (AIA) will undoubtedly recall that CBM reviews were ushered in as one of the three new post grant proceedings that could be used to challenge issues U.S. patents. The program was conceived to be temporary, and is scheduled to sunset on September 16, 2020. Issa’s amendment would have postponed the termination date of the program until December 31, 2026.

Unlike inter partes review (“IPR”), a petition for a CBM may NOT be filed unless the real party-in-interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent. “Charged with infringement” means “a real and substantial controversy regarding infringement of a covered business method patent such that the petitioner would have standing to bring a declaratory judgment action in Federal court.” 37 CFR 42.302(a). Additionally, unlike with IPR, a CBM proceeding can raise issues surrounding both patent eligibility under 35 U.S.C. 101 and sufficiency of disclosure under 35 U.S.C. 112.

Issa stated during the hearing that, at the time Congress passed the AIA, the idea was to create CBM review for a trial period and the program would be extended if successful. Issa is mistaken. The complete name of the process even has the word “transitional” in the title. The entire purpose of CBM review was to allow for challenges to certain financial business method patents in a post grant proceeding that could raise patent eligibility and sufficiency of disclosure. Those issues are off the table in IPR. They can be raised in Post Grant Review (PGR), but PGR is only available to challenge patents that were examined under the first-to-file provisions of the AIA. Thus, Congress wanted to allow for a form of PGR for financial business method patents granted under pre-AIA first-to-invent rules.  Thus, there is a time limit to the useful period of this special variety of post grant review.

“We should be ending [CBM] rather than extending it,” Congressman John Conyers (D-MI) stated in response.

Congressman Collins (R-GA) also explained that he cannot support extending CBM, saying that “a property right should be a property right.” Collins also expressed confusion regarding why this matter is pressing at the moment, saying: “I am confused as to why we are considering the extension of a program that is scheduled to sunset in 2020. Why are we debating this here today… do we really know how CBM will affect our economy… we should be having this debate in 2020.” Ultimately, Collins urged his colleagues to oppose this “premature amendment.”

Congresswoman Suzan DelBene (D-WA) echoed the comments of Collins, but also took issue with earlier comments of those in support of the amendment who said that there was no evidence that CBM has been inappropriately expanded beyond financial services patents. DelBene pointed out that there have, indeed, been instances where the Patent Trial and Appeal Board (PTAB) has been accused of expansively interpreting its own jurisdiction beyond what Congress envisioned when the AIA was passed.

The amendment to extend CBM was defeated by a vote of 18-13. At least for now, it is not in the House bill. If and when the bill gets considered on the floor of the House, extension of CBM could resurface in one way or another.

Key Republicans on Patent Reform in 114th Congress

Over the last several days on IPWatchdog.com, we have published articles introducing the Republicans serving on the House IP Subcommittee and the Republicans serving on the Senate Judiciary Committee. In the coming days, we will publish similar profiles of the Democrats.

Today, we focus on four key players on the Republican side of the aisle that will influence any patent reform efforts – Congressman Bob Goodlatte (R-VA), Congressman Darrell Issa (R-CA), Senator Chuck Grassley (R-IA) and Senator Orrin Hatch (R-UT). Each of the aforementioned Members of Congress are on record supporting patent reform of some kind during the 114th Congress.

Bob Goodlatte (R-VA), Chairman of the House Judiciary Committee.

The primary subcommittee dealing with intellectual property matters in the House of Representatives is the Subcommittee on Courts, Intellectual Property, and the Internet, which is a subcommittee of the House Judiciary Committee. This means that Congressman Bob Goodlatte will have an extremely important role with respect to shepherding any intellectual property legislation through Congress over the next two years. Goodlatte has signaled that he will focus his own energies on copyright reform, deciding to keep any copyright reforms the purview of the entire Judiciary Committee. Still, Goodlatte has shown keen interest in the patent system over the years, including the most recently failed patent reform legislation during the 113th Congress. You can rest assured he will be heavily engaged in the 114th Congress.

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