patent reform: where do we go from here? · hot legislative reform topics limiting damages...

May 17, 2006 The Crowne Plaza Hotel, San Jose, California

Patent Reform:Where do we go from here?

Peter DetkinManaging DirectorIntellectual Ventures

Derek MinihaneDirector, IP Law & Asst. GCAltera Corporation

Moderated by: Kelly C. Hunsaker, Fish & Richardson P.C.

Panelists:

Chip LuttonChief Patent CounselApple Computer Inc.

Michael B. EinschlagVP Intellectual PropertyNektar Therapeutics


Where are we now?Panelists’ Opening RemarksProposed PTO Rule ChangesHot Legislative Reform TopicsLooking forward…

Patent Reform:Where do we go from here?


Where are we now?

Starting point – The GoalsLitigation ReformsPatent Quality Harmonization


Where are we now?

June 8, 2005HR2795 Introduced in the House

July 28, 2005Smith Draft(House)

Sept 1, 2005“CoalitionPrint”

April 5, 2006HR5096 (“PDQ Act”)Introduced in the House

Feb/Mar 2006Issa Specialty Court DarftBills (House)


Where are we now?

PDQ (p -d -ku ) adv. InformalAt once; immediately.

[p(retty) d(amned) q(uick).]


Where are we now?

June 8, 2005HR2795+Introduced in the House



April 5, 2006HR5096 (“PDQ Act”)Introduced in the House

Feb/Mar 2006Issa Specialty Court Draft Bills (House)

Hearings in the House, HarmonizationHearings in the House & Senate


Where are we now?




April 5, 2006HR5096(“PDQ Act”)Introduced in the House

Feb/Mar 2006Issa Specialty Court Draft Bills (House)Dec. 15, 2005

S. 2109 Introduced in Senate“National Innovation Act of 2005”


Where are we now?




April 5, 2006HR5096Introduced in the House

PTO and S.Ct. Act May 15, 2006 S.Ct. EBay v. MercExchange

Feb/Mar 2006Issa Specialty Court Draft Bills (House)


Where are we now?Big divide between “tech” and “pharma”Interests of big business vs. small inventors & universitiesMost expected something enacted by end of this Congressional session, but….


Panelists’ Opening Remarks



Peter DetkinManaging Director

Intellectual Ventures



Chip LuttonChief Patent CounselApple Computer Inc.



Michael B. EinschlagVP Intellectual Property

Nektar Therapeutics



Derek MinihaneDirector, IP Law & Asst. GC

Altera Corporation


Proposed USPTO Rule Changes


USPTO Rule ProposalsTwo Rules Packages

Published January 3, 2006 Public comment invited by May 3, 2006

#1 - Limitation on Continuations#2 - Ten Claim Limit for Initial Examination


USPTO Rule Proposals

#1 - Limitation on ContinuationsOnly one Continuation or Request for Continued Examination (RCE) per originally filed application as a matter of rightSecond continuation possible only upon showing:

To the satisfaction of the Director “that the amendment, argument or evidence could not have been submitted during the prosecution of the prior-filed application.”


USPTO Rule Proposals

#2 – Ten Claim LimitInitial examination is limited to 10 representative claims selected by Applicants Other claims are examined only after allowance of claims in the representative set Applicants must file an "examination report" if there are more than 10 independent claims


Hot Legislative Reform Topics



Post Grant OppositionInjunctionsVenueLimiting Damages (Apportionment)Redefinition of Prior ArtSpecialty Patent Courts



Post Grant OppositionChallenge to validity short of litigationGrounds of challenge not limited to patents and printed publications; estoppel provisions relaxedOpposer allowed limited discoveryFinal PTO determination within 1 year of initiation



Post Grant OppositionSecond Window

9 months after grant or reissue or 6 months after notice alleging infringement

Secret OpposersStandard of Proof – Preponderance of the evidenceWho does this help/hurt?Will people use it?


Hot Legislative Reform TopicsInjunction Standard

Court shall consider fairness of remedy in light of all facts and relevant interests of the partiesEbay v. Mercexchange - (May 15, 2006)

“the decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that [] discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases governed by such standards.”

Stay pending appeal?



VenueRequires transfer of venue in certain patent cases where there is insubstantial connection of parties or witnesses to the judicial districtDiscourage forum shopping?



Limiting Damages (Apportionment)Consider value of accused feature, rather than end-product or parts in the prior artIs change even needed?Consider “inventive contribution” (H.R. 2795) or “claimed invention” (Coalition Print)?


Hot Legislative Reform TopicsRedefinition of Prior Art

Deletes prior art “on sale” or “in public use”Instead must be “reasonably and effectively accessible”OR “embodied in or otherwise inherent in subject matter that has become reasonably and effectively accessible.”Something “reasonably and effectively accessible” only if:

Someone skilled in the field able to “gain access to the subject matter” and ‘comprehend the content of the subject matter” without undue efforts

Provides for 12 Month Grace PeriodInventor Created or Derived Art



Redefinition of Prior ArtWhy change? Who will this hurt/help?Eliminate “secret prior art”?Other issues:

Effective filing date now includes earliest foreign filing dateCommonly owned or jointly developed subject matter is not prior art



Specialty Patent CourtsDraft bills by Rep. Issa (Feb. 15 & Mar. 29, 2006)“a pilot program in certain US district courts to encourage enhancement of expertise in patent cases among district judges.”



Specialty Patent CourtsJudges requesting patent cases are designated to hear them; other randomly assigned judges can decline, and case re-assigned to a designated judgeno less than 5 district courts in at least 3 different judicial circuits picked "from among the 15 district courts in which the largest number of patent and plant variety protection cases were filed in the most recent calendar year."


Looking Forward…


Looking Forward…

The Divide Between Tech & Bio/PharmaIs it closing or widening?Is consensus possible?


Looking Forward…

Should reforms be more incremental or will they be even more sweeping?


Looking Forward…Patent reform in the Courts

EBay v. MercExchange – injunctions (May 15, 2006)

AT&T v. Microsoft - 271(f) foreign salesKSR - Obviousness StandardPresumption of Validity & Burden of Proof



EBay v. MercExchange – injunctions (May 15, 2006)“[W]e take no position on whether permanent injunctive relief should or should not issue in this particular case…. We hold only that the decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that such discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases governed by such standards.”



EBay v. MercExchange – injunctions (May 15, 2006)In concurring, Chief Justice Roberts (with Justices Scalia and Ginsburg) emphasized the district courts’ discretion must be exercised with an understanding of history & difficulty of enforcing right to exclude with money only. In concurring, Justice Kennedy (with Justices Stevens, Souter, and Breyer) agreed that history was important, but that times are changing: “When the patented invention is but a small component of the product the companies seek to produce and the threat of an injunction is employed simply for undue leverage in negotiations, legal damages may well be sufficient to compensate for the infringement and an injunction may not serve the public interest.”


Thank you!


Kelly Hunsaker is a patent trial lawyer representing a wide range of technology companies, especially in the field of computer software. She is a Principal of Fish & Richardson P.C. with a national practice resident in their Silicon Valley office. Ms. Hunsaker has extensive experience in all aspects of patent litigation, and a track record of leading high-stakes cases to successful resolution consistent with her clients’business objectives. She has recently been named one of the Top Women Litigators in California and one of Northern California’s Top 100 “Super Lawyers.”

About the Moderator…

[email protected]

650-839-5077

http://www.fr.com/directory/directory.cfm?aid=303

patent reform: where do we go from here? · hot legislative reform topics limiting damages...

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