Patent Law Practice Center

Patent Reform: House Passes America Invents Act 304-117

The following post comes courtesy of Gene Quinn, of IPWatchdog and Practice Center Contributor.

At approximately 5:50pm [Thursday] the United States House of Representatives passed H.R. 1249, which is known as the America Invents Act, by a vote of 304-117.  This bill differs from the Senate version of patent reform, S. 23, so there will be no bill going to the desk of President Obama just yet.  There are important differences between the two bills, chief among them is funding for the United States Patent and Trademark Office.  The bill passed by the Senate put an end to the practice of fee diversion, which occurs when the Congress appropriates the USPTO less than they collect in fees.  The excess in the fees collected from users of the USPTO then go to the federal government as general revenues and are used for purposes other than the operation of the United States Patent and Trademark Office.

Indeed, now the fight will go back to the Senate where Senators will be asked to swallow the changes adopted by the House of Representatives, which seems unlikely.  Senator Patrick Leahy (D-VT) and Congressman Lamar Smith (R-TX), who are the respective champions of the bills in the two chambers will likely want to find compromise language that can pass both the House and the Senate.  I have been told that a formal Conference on the bill is unlikely, which would mean that the Senate would need to hammer out language acceptable to the Senate while also being acceptable to the House.

Click here to read the full IPWatchdog publication.

Patent Reform Update: Reactions To House Vote on Patent Reform

The House voted to move ahead with debate on patent reform, but a spokeswoman for Majority Leader Eric Cantor,R-Va., said a final vote is now expected on Friday. The latest delay is a result of a House Rules Committee decision that an end to fee diversion should not be included in patent reform.  This latest change has caused many industry groups who supported the bill to now change their position.  What does this mean for the future of patent reform?  Here is what the patent community is saying about these latest turn of events….

Lack of Commitment on PTO Funding is Killing Patent Reform (IP Watchdog)

House votes to proceed with patent, drilling bill after point of order (The Hill)

Special Interest Patent Bill Benefits Foreign Multinational Corporations Over U.S. Inventors (Patent Barisatas)

Spending Concerns Delay Patent-Reform Vote (National Journal)

BIO Expresses Disappointment With House Vote On Patent Reform ( Medical News Today)

Committee Approves Patent Reform Proposal (Committee on the Judiciary)

Long Overdue’ US Patent Reform Deal Reached; House Could Vote This Week (Intellectual Property Watch)

Patent Reform’ Will Hurt Innovation (Connexion)

Patent Reform Update II (Patentdocs)

Patent Bill Unites Past Enemies (Roll Call)

 

Patentees Rejoice — But Will Therasense Stand?

 

The following post comes courtesy of Brandon Baum, of Baum Legal and Practice Center Contributor.

The Federal Circuit’s split decision in Therasense is being hailed by some as the end to the “absolute plague” of inequitable conduct claims in patent cases. After all, the decision raises the bar for proving inequitable conduct. But before the champagne goes flat and the confetti is swept away, the Therasense case may prove to have been exactly the wrong horse for patentees to ride.

The problem with the majority decision in Therasense is that it is long on policy, short on the facts. In the ivory towers of the Federal Circuit (which does not have the usual diet of criminal cases, fraud cases, and other bad conduct), the fact that patent prosecutors are frequently accused of acting inequitably to obtain patents is unseemly. To the rest of the world, of course, the news that lawyers and/or inventors might try to “game the system” for financial advantage is purely “dog bites man.” (more…)

Therasense Decision “Tightens The Standards” For Proving Inequitable Conduct

Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, sent in this article she wrote with colleague Courtenay C. Brinckerhoff, discussing yesterday’s much anticipated Therasense, Inc. v. Becton, Dickinson & Co. decision.

On May 25, 2011, in a split decision, the U.S. Court of Appeals for the Federal Circuit decided Therasense, Inc. et al. v. Becton, Dickinson & Co. et al, Case No. 08-1511 et al., which it heard en banc to address the law of inequitable conduct, and to consider in particular whether the materiality-intent balancing framework should be modified and, if so, how.  The court’s decision “tightens the standards” for proving inequitable conduct, holding that evidence of intent should be considered independently from materiality, and that materiality generally must be proven by a “but-for” test, except in cases of “egregious misconduct, such as the filing of an unmistakably false affidavit.”

The court issued three decisions: (1) the opinion of the court, filed by Chief Judge Rader and joined by Judges Newman, Lourie, Linn, Moore, and Reyna in full, and O’Malley in Part V; (2) an opinion by Judge O’Malley, concurring-in-part and dissenting-in-part; and (3) a dissenting opinion by Judge Bryson, joined by Judges Gajarsa, Dyk, and Prost. (more…)

You filed suit on a patent with a pending SNQ? Really?

Written by Brandon Baum , of baum legal and Practice Center Contributor.

Orinda Intellectual Properties filed suit on April 25, 2011 against a long list (50!) of electronics companies alleging infringement of US 5,438,560 purporting to cover recording and reproducing optical information on Blu-ray discs. Fine, lots of patents in the Blu-ray arena.

But a quick look at public PAIR shows that the USPTO found a substantial new question of patentability on March 7, 2011 and ordered a re-exam of all 3 claims of the ’560 patent.

 

 

 

 

Call me old-fashioned, but shouldn’t you get that substantial question of patentability straightened out before suing fifty companies for patent infringement?  Maybe there is some strategy I am not aware of (willfulness?), but I can imagine a judge being pretty upset with the plaintiff if the patent goes down in flames at the USPTO.