Jessica Karmasek Sep. 14, 2015, 9:03am


WASHINGTON (Legal Newsline) - Supporters of a Senate-introduced patent reform bill are hoping to convince federal lawmakers at a meeting this week that the legislation, as opposed to a more aggressive House bill, would prove more effective in combating so-called patent “trolls.”

A U.S. Senate staff briefing is set for Tuesday morning. The meeting, which will be closed to press at the staff’s request, will focus on S. 1137 or the PATENT -- Protecting American Talent and Entrepreneurship -- Act.

The Coalition for 21st Century Patent Reform, also known as 21C, helped organize the meeting.

“One of the purposes of this briefing is to say, hey, look, we’re pretty much there. We’re close. We’d like to move forward,” said Kevin Rhodes, chairman of 21C and vice president and chief intellectual property counsel for 3M Company.

“We’re hoping to dispel the belief that momentum has been lost [on patent reform].”

Rhodes, along with Henry Hadad, senior vice president and deputy general counsel for IP at Bristol-Myers Squibb Company; Beth Provenzano, vice president for federal government relations at the National Retail Federation; Jon Potter, president and co-founder of the Application Developers Alliance; and Marian Underweiser, IP strategy and policy counsel for IBM, are expected at Tuesday’s meeting.

Lawmakers and stakeholders have said the Senate bill, which cleared its judiciary committee in June, is more balanced than the House version, H.R. 9 or the Innovation Act.

House Judiciary Chairman Bob Goodlatte, R-Va. and H.R. 9’s lead author, told The Hill last week that he “remains confident” his bill will get a floor vote soon.

However, there has been a push from conservative groups in recent months to quash the House legislation.

Such groups -- including the American Conservative Union, Club for Growth and Eagle Forum -- argue that the Innovation Act will harm American inventors and small businesses while giving other countries, such as China, a boost in the global marketplace.

In July, lawmakers hit the brakes on the House bill, delaying a vote until after the August recess. Some members still had concerns with the legislation.

The House bill, which was reintroduced by Goodlatte in February, also was delayed during its markup process. Only after making various tweaks to the bill did it pass the House Judiciary Committee in June.

Rhodes said his group, 21C, still has “some real concerns” about Goodlatte’s legislation.

“The way some of the litigation provisions were amended during the markup process in the judiciary committee moved the bill in a direction that would mean less balance for patent owners,” he explained. “The bill also makes it more difficult and costly to enforce their rights against infringers.”

The coalition, which is made up of more than 40 members from 18 diverse industry sectors and includes many of the nation’s leading manufacturers and researchers, also takes issue with the House bill’s changes to inter partes review, or IPR, and post grant review, or PGR, at the U.S. Patent and Trademark Office.

“We feel the package of reforms to the IPR/PGR in the Senate bill is much more robust and impactful, and will restore the balance that is lacking in those proceedings, as compared to the House bill,” Rhodes explained.

IPR is a procedure for challenging the validity of a patent before the PTO. The procedure, which allows third parties to challenge bad patents, is conducted by the Patent Trial and Appeal Board, or PTAB.

The review was enacted in September 2012 as part of the America Invents Act. The procedure replaced a previous review procedure called inter partes reexamination.

In June, the Senate Judiciary Committee passed proposed committee manager’s amendments to the PATENT Act that would:

- Require IPR and PGR proceedings to apply the same claim construction standard used in district court and consider district court claim constructions;

- Estop parties from eschewing in later court or PTO proceedings arguments made on claim construction to the office;

- Presume that patents are valid in IPR and PGR proceedings, though retaining the current preponderance of the evidence burden to invalidate a patent in such proceedings;

- Clarify that the PTO director has discretion not to institute an IPR or PGR if doing so would not serve the interests of justice considering factors such as whether the same prior art or arguments were decided in a prior proceeding or the patent is the subject of a current PTO proceeding;

- Allow patent owners to submit evidence in response to a petition to institute an IPR or PGR, and permit petitioners to file a reply to respond to new issues;

- Direct the PTO to modify the IPR and PGR process so that institution and merits decisions are not made by the same panels;

- Direct the PTO to hold a rulemaking on instituting a Fed. R. Civ. P. 11-type obligation in IPR and PGR proceedings;

- Require PTAB decisions to be publicly available and searchable on the web; and

- Remove the ability to join additional claims to a timely-filed IPR after the time for filing has elapsed, except for claims that are newly-served against the petitioner in an amended complaint (which get one year from amendment).

There are still a couple of issues with the Senate bill, Rhodes said. But he said he hopes they can be resolved.

This week’s briefing should help, he said.

“I’m hoping that by explaining exactly what’s in the package and expressing support from different groups and industries, we can move forward with the bill and hopefully get floor time this fall,” Rhodes said.

“I really feel like it [the Senate bill] reflects a lot of stakeholder input.”

And while it might not be visible to those outside of Congress, progress is being made on patent reform, Rhodes insisted -- albeit behind the scenes.

“It seems to be moving kind of slowly, but that’s because members of the [Senate] judiciary committee have been, I think, very careful to listen to a lot of voices and have had a lot of discussion about the different provisions,” Rhodes said, adding that the August recess slowed momentum slightly.

Rhodes said he is optimistic the Senate bill will be taken up this month or next.

From Legal Newsline: Reach Jessica Karmasek by email at jessica@legalnewsline.com.

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