U.S. Senators Chris Coons (D-Del.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii) introduced new patent reform legislation that is intended to strengthen America’s patent system and target abusers. The STRONG Patents Act of 2015 includes a variety of provisions that will address various aspects of post-grant practice and patent litigation.
Proposed Amendments Relating to Inter Partes and Post-Grant Reviews
Nearly a third of the proposed legislation relates to inter partes and post-grant reviews. The proposed changes appear to stem from a statement in the tenth “finding” at the beginning of the bill, which states that “unintended consequences of the comprehensive 2011 reform of patent laws are continuing to become evident, including the strategic filing of post-grant review proceedings to depress stock prices and extort settlements.” The proposed amendments include:
A new claim construction framework that focuses on the “ordinary and customary meaning of the claim as understood by a person having ordinary skill in the art” and the “prosecution history pertaining to the patent”
A requirement that the Office must consider the claim construction from a district court where the patent owner was a party
A presumption of validity for a previously-issued claim that is challenged by a petitioner, and a requirement that the petitioner must show invalidity by clear and convincing evidence (note that the burden for claims with proposed amendments would be a preponderance of the evidence)
Provisions that allow the patent owner to amend the patent to cancel claims or proposed a reasonable number of substitute claims
Provisions concerning discovery into the real party in interest and the filing of a surreply should a petitioner’s reply brief present additional evidence
Proposed Amendments Relating to Litigation
Unlike the Innovation Act, which is focused almost entirely on patent litigation, the STRONG Patents Act includes only a handful of provisions relating to litigation. These include:
The elimination of Form 18 of the Federal Rules of Civil Procedure (which relates to the requirements of a complaint for patent infringement)
An amendment to 35 U.S.C. § 284, which provides that a court may only award treble damages “upon determining, by a preponderance of the evidence, that the infringement was willful or in bad faith”
An amendment to 35 U.S.C. § 271 that would allow a finding of inducement or contributory infringement of a process claim in situations where the steps of the patented process are not practiced by a single entity
Proposed Legislation Relating to Demand Letters
The STRONG Patents Act also takes on patent demand letters. The proposed amendments on this issue include:
A definition of “bad faith” in connection with the practice of sending written communications that allege patent infringement
Provisions that define the types of statements in a demand letter that will be scrutinized for “bad faith” when determining whether the demand letter is unfair or deceptive
A requirement that a demand letter disclose the ultimate parent of the party enforcing the patent, at least one patent alleged to have been infringed, at least one accused product or service, a description of why the accused product or service infringes the claim, and the name of a person who may be contacted about the assertions in the letter
Provisions relating to the preemption of state laws relating to communications that assert patent rights, enforcement by state attorneys general, and intervention by the FTC
In the coming weeks, we will provide further analysis on the STRONG Patents Act of 2015 and how it stacks up against the Innovation Act, which was introduced in the House last month.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
William Woodford is an innovative trial lawyer who specializes in high-stakes patent cases. He has led numerous trials, hearings, and appeals in cases involving a broad range of cutting-edge technologies in the physical, engineering, and life sciences. Mr. Woodford is known for his ability...