Senators Coons, Cotton, Durbin, and Hirono have introduced the STRONGER Patents Act of 2017, proposing a large number of improvements to U.S. patent law. \u00a0While the Bill does a lot to improve patents from an inventor’s perspective, the Bill does leave undone at least a few critical issues:<\/p>\n
As shown in the summary below, what the bill primary does is bring balance to IPR\/PGR proceedings.<\/p>\n
Sections 102(a)\/103(a) – Elimination of BRI<\/strong><\/p>\n Sections 102(a)\/103(a) amend 35 USC 316(a)\/326(a) to construe claims in an IPR\/PGR according to their ordinary and customary meaning, and considering any prior construction by a court. \u00a0The current application of \u201cbroadest reasonable interpretation\u201d makes claims more vulnerable in an IPR\/PGR.<\/p>\n Sections 102(b)\/103(b) Clear and Convincing Evidence Standard<\/strong><\/p>\n Sections 102(b)\/103(b) amends 35 USC 316(e)\/326(e) to require proof of invalidity by clear and convincing evidence. \u00a0The current burden of proof of \u201cpreponderance of evidence\u201d makes claims more vulnerable in IPR\/PGR than in a court where the burden is by clear and convincing evidence.<\/p>\n Sections 102(c)\/103(c) Requires Standing to Initiate<\/strong><\/p>\n Sections 102(c)\/103(c) amends 35 USC 311(d)\/321(d) to require that a Petitioner have standing, i.e.<\/em>, have been charged with infringement. \u00a0Currently anyone can bring an IPR\/PGR, regardless of whether they have been charged with infringement; this section restricts who can initiate a proceeding.<\/p>\n Sections\u00a0102(d)\/103(d) One Challenge Per Claim<\/strong><\/p>\n Sections\u00a0102(d)\/103(d) amend\u00a0Amends 35 USC 314(a)\/324(a) to add a subsection (2) that bars review of a claim if there has been a previously instituted IPR\/PGR on that claim.\u00a0This allows only one IPR or PGR on each claim.\u00a0 It is not limited to the same petitioner, and is triggered by institution, not a final written decision.<\/p>\n Sections\u00a0102(e)\/103(e) Interlocutory Appeal of Institution Decisions<\/strong><\/p>\n Sections\u00a0102(e)\/103(3)\u00a0amend 35 USC 314(d)\/324(c) and add 314(e)\/314(f) allowing certain appeals of institution decisions. Sections\u00a0102(f)\/103(f) One Challenge Per Patent<\/strong><\/p>\n Section\u00a0102(f)\/103(f) amend\u00a035 USC 315\/325 to prevent a petitioner from filing a second IPR\/PGR unless the patent owner has charged petitioner with infringement of additional claims.\u00a0This limitation together with the new limitation in 314(a) of one IPR per claim, restricts multiple IPRs on a single patent.<\/p>\n Sections\u00a0102(f) Improved Estoppel\u00a0in IPR’s<\/strong><\/p>\n Section 102(f) amends 35 USC 315 to bar a petitioner after an institution decision from raising any 102 or 103 grounds in a court or ITC proceeding, unless based public use, on sale, or otherwise available to the public.\u00a0This substantially strengthens estoppel, but it still leaves a gap allowing the use of non-documentary prior art that corresponds to documentary prior art,.\u00a0 There is no parallel estoppel provision for PGRs.<\/p>\n Sections\u00a0102(g)\/103(g) Defines Real Party in Interest<\/strong><\/p>\n Sections\u00a0102(g)\/103(g) amend 35 USC 315(f).325(g) to define real party in interest as anyone who directly or indirectly makes a financial contributes to the petition. This expands definition of real party in interest to anyone who funds the proceedings.<\/p>\n Sections 102(g)\/103(g) Provides Discovery of Real Party in Interest<\/strong><\/p>\n Sections\u00a0102(g)\/103(g)\u00a0amends 35 USC 316(a)(5)\/326(a)(5) to add subpart (B) providing for discovery about the real parties in interest. Sections\u00a0102(h)\/103(h) Bars Institution after Final Court Decision<\/strong><\/p>\n Sections\u00a0102(h)\/103(h) amend\u00a035 USC 315\/325 by adding new subpart (c)(1) that bars institution of an IPR after final judgment by the ITC or a court as to the validity of the claim under 102 or 103. Sections\u00a0102(h)\/103(h) Stays Proceedings Pending Court Appeal<\/strong><\/p>\n Sections\u00a0102(h)\/103(h) amend 35 USC 315\/325 by adding new subpart (c)(2) which requires that the USPTO stay any IPR after the ITC or Court has entered a final judgment, while an appeal is possible or pending. \u00a0During concurrent IPR and litigation, if the ITC or Court gets to final judgment first, the IPR must be stayed pending appeal.<\/p>\n Sections 102(i)\/103(i) Create Expedited Reexamination<\/strong><\/p>\n Sections\u00a0102(i)\/103(i) add a new 35 USC 316A\/326A with a subpart (a)(3) that gives the patent owner the option to have a reasonable number of substitute claims examined in a new expedited IPR\/PGR reexamination.<\/p>\n Sections 102(i)\/103(i) Ease Burden of Amending Claims<\/strong><\/p>\n Sections\u00a0102(i)\/103(i) add new 35 USC 316A(c)(1)\/326A(c)(1) defining amendment practice before the PTAB, and provides that the patent owner need only show that the amendment addresses the unpatentability on an instituted ground, meets the written description requirement, and does not enlarge the scope of the claims.\u00a0New sections 316A(c)\/326A(c) would relieve patent owners of the some of the burdens imposed by the PTAB in Idle Free Sys. v. Berstrom, Inc.<\/em><\/p>\n Sections 102(i)\/103(i) Add Structure to Amendment Process<\/strong><\/p>\n Sections\u00a0102(i)\/103(i) add\u00a0new 35 USC 316A(c)(2)\/316A(c)(2)\/ \u00a0allowing petitioners to present new evidence to respond to amendments proposed by the patent owner, and allowing patent owner an opportunity to respond to new evidence submitted by petitioner.<\/p>\n Sections\u00a0102(i)\/103(i) add\u00a0new 35 USC 316A(c)(3)\/326A(c)(3) allowing the PTAB to obtain an expedited patentability report.\u00a0 Any party can respond to the report and the ordering of the report constitutes good cause for extending the proceeding beyond one year.<\/p>\n Sections\u00a0102(i)\/103(i) also add new 35 USC 316A(c)(3) allowing the PTAB to order expedited reexamination on a claim in lieu of making a Final Written Decision on that claim.<\/p>\n Finally Sections 102(i)\/103(i) also add new 35 USC 316A(d)\/326A(d) allowing the patent owner to move for expedited reexamination in lieu of continuing the proceeding.\u00a0 If granted, the patent owner must replace all of the instituted claims.\u00a0 The petitioner has no right of appeal.<\/p>\n Section 104 Separates Institution and Final Written Decisions\u00a0<\/strong><\/p>\n Section 104 amends 35 USC 6 to add subsection (c)(2) to provide that no board member who participates in an institution decision can also participate in hearing the review. \u00a0This eliminates the potential for confirmation bias, where a Board member who decided to institute also decides whether that institution decision was correct.<\/p>\n Section 105 Eliminates of Anonymous Reexaminations<\/strong><\/p>\n Section 105 amends 35 USC 302(a) to require disclosure of the real party in interest in filing a request for reexamination. \u00a0This eliminates anonymous reexaminations.<\/p>\n Section 105 Restricts Reexaminations bu Defendants<\/strong><\/p>\n Section 105\u00a0amends 35 USC 302 to add a subsection (d) barring reexamination more than a year after the requester is served with a complaint alleging infringement of the patent.<\/p>\n Section 106 Creates Presumption in Favor of Injunctions<\/strong><\/p>\n Section 106 amends 35 USC 283 to provide a presumption that the patent owner is entitled to an injunction. \u00a0Gives effect the Constitutional mandate of exclusive rights to authors and inventors.<\/p>\n Section 107 Eliminates Fee Diversion<\/strong><\/p>\n Section 107\u00a0Eliminates the diversion of USPTO user fees from the Office.<\/p>\n Section 108 Eliminates Knowledge of Patent from Inducement<\/strong><\/p>\n Section 108 Amends 35 USC 271 to define inducement in subsection (b) as causing the actions that constitute infringement regardless of knowledge of the patent.<\/p>\n Section 108 Expands Inducement<\/strong><\/p>\n Section 108\u00a0amends 35 USC 271(f) to add subsection (3)(A) to make inducement by the provision of an infringing design an act of infringement.<\/p>\n Section 108 also amends 35 USC 271(f) to add subsection (3)(B) to make inducement by the provision of an infringing specification an act of infringement.<\/p>\n Section 108 also amends 35 USC 271 to add section (j) eliminating the requirement for inducement or contributory infringement that the steps be performed by a single entity.<\/p>\n Section 109 Clarifies that Institutions of Higher Learning are Microentities<\/strong><\/p>\n Section 109 amends 35 USC 123(d) to clarify that institutions of higher learning and their related patent foundations and other entities are microentities. \u00a0Nothing is done about their sovereign immunity in challenges to the patent.<\/p>\n Section 110 Expedites Infringement Actions by Small Business<\/strong><\/p>\n Section 110 Creates a Patent Pilot program for expediting infringement cases involving small businesses. Section 110 Makes Search Information More Widely Available<\/strong><\/p>\n Section 110 amends Section 41(i) to required that the USPTO make freely available the patent and trademark information available at its Public Search Facilities.<\/p>\n Sections 201-203\u00a0Regulates Rogue and Opaque Letters<\/strong><\/p>\n Sections 201-203 empower the FTC to take action against the bad faith assertion of patent rights.<\/p>\n Section 204 Preempts State Anti-Troll Laws<\/strong><\/p>\n Section 204 preempts state laws on patent demand letters, but allows the states to enforce the federal prohibition of rogue and opaque letters<\/p>\n","protected":false},"excerpt":{"rendered":" Senators Coons, Cotton, Durbin, and Hirono have introduced the STRONGER Patents Act of 2017, proposing a large number of improvements to U.S. patent law. \u00a0While the Bill does a lot to improve patents from an inventor’s perspective, the Bill does … Continue reading
\nNew sections 314(e)\/324(f) would permit appeals of institution decisions in procedural grounds, but not as to the substantive patent law determination of unpatentability.<\/p>\n
\nExpands discovery relating to real party in interest.<\/p>\n
\nOnce the ITC or a court has ruled on the validity of a claim, no one can challenge the claim in an \u00a0IPR.\u00a0 However, (c)(1) only bars institution, not maintenance of the IPR\/PGR, and (c)(2) only requires termination if a validity determination is affirmed on appeal.\u00a0 A losing litigant might be able to get a second shot at the patent by waiving appeal, and continuing an already instituted IPR.<\/p>\n
\n110<\/p>\n