News
IP Update: 2009 Patent Law Reform
IP Update
May 12, 2009 - Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) filed a committee report to accompany the Patent Reform Act of 2009 (S. 515), a sign that the legislation could be headed to the Senate floor for consideration.
April 30, 2009 - The House Judiciary Committee takes up Patent Reform today with a full committee hearing on H.R. 1260, the "Patent Reform Act of 2009". Witnesses to testify include: David Simon, Chief Patent Counsel, Intel, Inc.; Philip S. Johnson, Chief Intellectual Property Counsel, Johnson & Johnson; John R. Thomas, Professor, Georgetown University Law School; Jack W. Lasersohn, Partner, Vertical Group; Dean Kamen, Inventor, DEKA Research and Development, Inc.; Mark Chandler, Senior Vice President, Cisco; and Bernard Cassidy, Senior Vice President and general Counsel, Tessera, Inc. Here is a link to their prepared testimony: http://judiciary.house.gov/hearings/hear_090430.html.
April 2, 2009 - The Senate Judiciary Committee voted 15-4 to send S.515 to the floor, as amended. According to Sen. Dianne Feinstein, the AIPLA, the Coalition for 21st Century Patent Reform, Association of American Universities, Biotechnology Industry Organization (BIO), and Pharmaceutical Research and Manufacturers of America (PhRMA) all support the bill.
The amendments adopted to date remove objected to damages language and allow the courts to consider relevant "methodologies and factors." The venue provisions have been modified to require that district courts "shall transfer" any civil action to a venue that is "clearly more convenient." The bill still reduces the estoppel effect in reexaminations by striking the language “or could have raised,” but the ability to request reexamination based on "other evidence," such as public use and on sale bars, was removed by amendment.
Amendments passed to date include:
GRA09350 (adopted March 26, 2009)
GRA09400 (adopted March 31, 2009)
GRA09451 (adopted April 2, 2009)
March 31, 2009 - The Senate Judiciary Committee members held a markup session on S. 515, during which another Amendment was adopted. During the session, Committee chairman Sen. Patrick J. Leahy (D-Vt.) and Sens. Arlen Specter (R-Pa.) and Dianne Feinstein (D-Calif.) each announced their agreement to limit damages reform to providing a stronger gatekeeper role for the judge. New language for the damages provision will be considered during the Committee’s next markup session to be webcast beginning at 10:00 a.m. on April 2. http://judiciary.senate.gov/hearings/hearing.cfm?id=3768.
March 19, 2009 - Discussions on S. 515 were held over today by the Senate Judiciary Committee in light of continuing concerns over the proposed language on damages. On March 9th, several senators sent a letter to Senators Specter and Leahy asking for more meetings on the damages language. Sen. Leahy agreed, stating that the next time patent reform is on the agenda, it will be a “major mark-up”.
March 12, 2009 - The Senate Judiciary is pushing ahead with Patent Reform, scheduling an Executive Business Meeting for Thursday, March 19, 2009, at 10:00 a.m. The meeting will be webcast on the Senate Judiciary's website at:
http://judiciary.senate.gov/hearings/hearing.cfm?id=3723.
March 10, 2009 - The Senate Judiciary Committee held a hearing on S. 515 on Patent Reform. Witnesses called to testify include: Steven R. Appleton, Chairman and CEO, Micron Technology, Inc.; Philip S. Johnson, Chief Intellectual Property Counsel, Johnson & Johnson; David J. Kappos, Vice President and Assistant General Counsel Intellectual Property Law and Strategy, IBM; Mark A. Lemley, William H. Neukom Professor of Law, Stanford Law School; Taraneh Maghame, Vice President, Tessera, Inc.; and Herbert C. Wamsley, Executive Director, Intellectual Property Owners Association. For a summary of their testimony, and links to full testimony, see below.
|
Testifier |
Supports S.515? |
Summary of Positions |
Testimony |
|
Steven R. Appleton, Chairman and CEO,
Micron Technology, Inc |
Supports |
Supports harmonization provisions and patent quality provisions. Preferred stronger post-grant review provisions from previous bill. Favors permitting reexam on public use or sale; inclusion of provision barring diversion of PTO fees; damages reform and venue restrictions. |
Click here |
|
Philip S. Johnson,
Chief Intellectual Property Counsel,
Johnson & Johnson, Coalition for 21st Century Patent Reform |
Mixed |
Supports first-to-file in principle; expanded grounds for inter partes reexam; expanded opportunity for public submission of prior art; permitting interlocutory appeals; and permitting Director to set fees. Opposes provisions on willful infringement; and venue provisions. Favors leaving reasonable royalty damages determinations for courts. |
Click here |
|
David J. Kappos,
Vice President and Assistant General Counsel Intellectual Property Law and Strategy, IBM |
Supports |
Supports S.515’s approach to improving patent quality, including “first window” post grant review, enhanced inter partes reexam, and pre-issuance submission of information. Current legal standard on reasonable royalty damages determinations does not provide enough certainty. |
Click here |
|
Mark A. Lemley,
William H. Neukom Professor of Law,
Stanford Law School |
Mixed |
Supports first-to-file, with grant of prior user rights and prompt publication of all US patent applications; post-grant opposition, but with addition of second, 6-month window; apportionment but not entire market value rule for damages provision; and venue provisions. Opposes interlocutory appeal. Favors developing low-cost procedures to challenge validity; |
Click here |
|
Taraneh Maghame,
Vice President,
Tessera, Inc. |
Opposes |
Opposes strongly damages provisions; post-grant opposition. Favors improvement of current inter partes reexam system and measures to improve examiner retention rates. |
Click here |
|
Herbert C. Wamsley, Executive Director, Intellectual Property Owners Association |
Mixed |
Supports first-to-file; post grant review within 12 months; and expanded grounds for inter partes reexam in “first window”. Opposes second window post grant review; interlocutory appeal; permitting Director to set fees; and venue provisions. Favors continued study of willful infringement standard; finding consensus language on patent damages; and adding provision to address inequitable conduct. |
Click here |
March 3, 2009 - Senators Patrick J. Leahy (D-Vt.) and Orrin G. Hatch (R-Utah) introduced S.515, the Patent Reform Act of 2009, to the Senate while Representatives Lamar S. Smith (R-Texas) and John Conyers Jr. (D-Mich.) introduced H.1260, of the same name, to the House. The Senate and House bills are similar to bipartisan legislation introduced in 2008, with some changes.
To read the full-text of Senate Bill S.515, click here.
To read the full-text of House Bill H.1260, click here.