PublishedMay 18, 2015

Three Crucial Words in Patent Reform: Inter Partes Review (Part 3)

Note: This is Part 3 in a three-part series. If you’re not comfortable with how inter partes review works, you may want to start with Part 1. If you are comfortable with IPRs, start with Part 2.

Gutting Inter Partes Review

Pharmaceutical and biotech companies are pushing for major changes to inter partes reviews (IPRs).

First, they want the same strong presumption of validity that patents get in district court. The presumption has been around for over a century and a half. The rationale is that a court should defer to the work of the USPTO:

It is evident that a patent, thus issued after an inquisition or examination, made by skilful and sworn public officers, appointed for the purpose of protecting the public against false claims or useless inventions, is entitled to much more respect, as evidence of novelty and utility, than those formerly issued without any such investigation. Consequently such a patent may be, and generally is, received as primâ facie evidence of the truth of the facts asserted in it.

Corning v. Burden, 56 U.S. 252, 271 (1854).

There’s no reason for Administrative Patent Judges (APJs) to defer to patent examiners, which is what pharma and biotech are asking for. APJs review patent examiner decisions during patent prosecution; they’re the ones we normally trust to do that job. I have yet to hear a real argument for why that should be different for IPRs.

The next major proposed change is to change the standard for claim construction from the broadest reasonable interpretation of the claims to the understanding of one of ordinary skill in the art. At the same time, patent owners would have the right to substitute new claims; the petitioner would have to prove a substitute claim is invalid in order to block the amendment. This would give patent owners a huge advantage over district court, where they can’t amend their claims.

Pharma and biotech also want to stop companies who haven’t been sued from filing an IPR. This would apply to Kyle Bass, but it would also apply to the Electronic Frontier Foundation, which recently used an IPR to stop the podcasting troll. It would block any company, public interest group, or individual from helping others by challenging bad patents.

The net result is to turn IPRs into, as Woody Allen put it in Bananas, “a travesty of a mockery of a sham of a mockery of a travesty of two mockeries of a sham.”

Maybe we should listen to the words of Senator Coons:

Thank you, Mr. Johnson, I share that concern that we both meet the very real concerns and threats facing completely innocent end-user small businesses without causing needless harm to what is a very vital and I think somewhat fragile ecosystem that is unique and vital to our economy.

Oops! Senator Coons is the leading force behind the STRONG Act. That’s the bill that contains the proposals to gut IPRs.

It seems the patent ecosystem must have gotten a lot stronger in the last year.

If Patents Were Trees

Seriously, these changes to IPR are completely counterproductive. They’re unnecessary and would take away what has become a useful tool in fighting patent trolls.

Let your senator know that you oppose the STRONG Act or any part of it becoming law, using the action button on the right.

Matt Levy

Previously, Matt was patent counsel at the Computer & Communications Industry Association

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