Apr 05 2009
Progress and Compromise for the Patent Reform Act of 2009
We had previously written about the proposed Patent Reform Act of 2009 that was introduced in Congress. On April 2, the Senate Judiciary Committee approved a version of the Patent Reform Act reflecting a number of compromises (click here for the Senate redline of the bill). Although the bill survived a vote in the committee by a comfortable margin, Senator Arlen Specter noted that further revisions to the bill could cause the coalition that supported its passage through the committee to unravel.
One change made to the bill during committee review altered the manner in which damages may be calculated. The damages provision was one of the more contentious provisions in the bill. The edited version of the bill grants judges greater leeway in determining the factors relevant to damages calculations, and it also allows judges to take on a greater gate-keeping role to determine whether a damages argument has a sufficient legal basis – a power that the court arguably already possesses according to Daubert and its progeny.
Among the other notable changes from the prior version:
- Public use and on-sale challenges would not be available in post-grant review. This change brings the post-grant review provision of the current bill in line with the version of the Patent Reform Act that passed the House in 2008.
- The venue determination followed by the Federal Circuit in TS Tech (which followed the Fifth Circuit determination in In re Volkswagen) is codified in the new version.
- The new version creates interlocutory jurisdiction to review claim construction orders when there is a sufficient evidentiary record and the immediate appeal could promote termination of the litigation or control the outcome of the case.
- The current version of the bill takes the teeth out of the best mode requirement under section 112 by maintaining the requirement but removing a violation of best mode as a basis to cancel, invalidate, or refuse to enforce a patent under section 282.
Among those critical of the bill were Senators Orrin Hatch and Jon Kyl. Senator Hatch’s complaints centered on the fact that the bill failed to include provisions, like those contained in prior iterations of patent reform legislation, designed to reform the law of inequitable conduct. Senator Kyl criticized the bill for setting a low standard for post-grant review, which he argued could lead to a flood of patent challenges.
By paring further, this bill represents the best opportunity yet to pass a patent reform bill. In this version, Congress would vest power and discretion with the courts to make determinations as to claim construction, venue and damages on a case-by-case basis. The new law would give courts a stronger framework in which to work, and enough leeway to develop the law.
We will continue to keep you posted as new information develops.
for Playlist
