Judge Michel Tells Congress Patent Office Should Keep Fees, Provides Views from His Days on Bench

House Judiciary Committee Hears Patent Reform Testimony

          The House Judiciary Committee, Subcommittee on Intellectual Property, Competition and the Internet, held a hearing entitled, “Crossing the Finish Line on Patent Reform – What Can and Should be Done”, on February 11, 2011.  Former Chief Judge of the Court of Appeals for the Federal Circuit, Paul Michel, testified on his own behalf. His written statement, published by the Committee, is worth reading for

a number of reasons, including Michel's historical account of the Patent Act and his views on changes in the complexity of the technology disclosed in patents during his tenure on the bench.

          David Simon, Intel's Chief Patent Counsel, testified on behalf of the Coalition for Patent Fairness. Arguing that the Supreme Court's recent opinions had addressed most of CPA's concerns of the past, he asked the Committee to focus patent reform efforts on improving the Patent Office, and in particular the quality of patents being issued (see Simon's testimony here). CPA's specific recommendations include computerizing patent application examination, increasing the budget of the Patent Office's reexamination unit, improving prior user rights provisions of the statute, allowing the Patent Office to set fees and retain fees it generates, and providing post-grant oppositions.

          Carl Horton, Chief Intellectual Property Counsel at General Electric, testified on behalf of the Coalition for 21st Century Patent Reform.

 

Patent Reform Efforts Target "False Marking" Lawsuits and Tax Inventions

H.R. 243 ("Patent Lawsuit Reform Act of 2011")

          Representative Robert Latta (R-OH) (right) introduced the Patent Lawsuit Reform Act of 2011 in the House of Representatives on January 7, 2011.  The bill was referred to the House Judiciary Committee, Subcommittee on Intellectual Property, Competition and the Internet, on February 7, 2011.

          Latta's measure is apparently aimed at curtailing the increase in the number of "false marking" lawsuits, which saw a sharp uptick in 2010.  False marking is governed by 35 U.S.C. 292, which states that "Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word "patent" or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words "patent applied for," "patent pending," or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public - Shall be fined not more than $500 for every such offense."

          Latta's bill would make the $500 fine apply to all of a defendant's falsely marked articles, rather than each article as a separate offense.  His bill would change the language of 292 to state "(b) A person who has suffered a competitive injury as a result of a violation of this section [35 USC 292] may bring a civil action in the appropriate district court of the United States against the person violating this section for recovery of not more than $500 in damages to compensate for the injury."

 

S.139 ("Equal Access to Tax Planning Act")

     Senator Max Baucus (D-MT) (right) introduced S.139, the Equal Access to Tax Planning Act of 2011, on January 25, 2011.  The bill was referred to the Senate Judiciary Committee the same day.  The text of the bill is apparently directed at preventing the patenting of any methods for reducing, avoiding, or deferring tax liabilities:  

"In General- For purposes of evaluating an invention under section 102 or 103 of title 35, United States Code, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art."

 

UPDATE: S.23 ("Patent Reform Act of 2011")

          The Senate's version of Patent Reform, S.23, was reported out of the Judiciary Committee with a few amendments, on February 3, 2011, and placed on the full Senate Legislative Calendar the same day. The date the bill will be debated by the entire Senate has apparently not been determined.

 

Litigation Update: June 2010 District Court Filings

     The following cases are reported as being filed in the U.S. District Court for the District of Maryland in June 2010 (source: Justia.com):

  • Patent docket:

       

    • WhitServe LLC v. Benesch Friedlander Coplan & Aranoff LLP, Brinks Hofer Gilson & Lione, PC, Dinsmore & Shohl LLP, Edwards Angell Palmer & Dodge LLP, EMC Corp, General Electric Co., Intel Corp., Kusner & Jaffe, Mueting, Raasch & Gebhardt, PA and Wilmer Cutler Pickering Hale and Dorr LLP, No. 8:2010cv01639 (filed June 18, 2010) 

       

    • Genzyme Corporation v. Sandoz, Inc., No. 1:2010cv01715 (filed June 25, 2010)
       
  • Trademark docket:

     

    • B Line, Inc. v. Outrageous Outlet, Yossef Benzakan and David Azoulin, No. 1:2010cv01670 (filed June 22, 2010)
       
  • Copyright docket:

     

    • Broadcast Music, Inc , EMI Blackwood Music Inc. and Still on Top Publishing Corp. v. Orange Ball, Inc. and Ho S. Chang, No. 1:2010cv01560 (filed June 14, 2010)
       
    • 88 LLC v. RC Matrice LLC and Rene Mitchell, No. 8:2010cv01607 (filed June 16, 2010)
       
    • Micro Focus(US), Inc. v. Ashley Furniture Industries, Inc., No. 8:2010cv01623 (filed June 17, 2010)
       
    • Micro Focus(US), Inc. v. Ashley Furniture Industries, Inc., No. 8:2010cv01624 (filed June 17, 2010)
       
    • Jonathan Hanson v. Here Publishing, Inc. and Here Media, Inc., No. 1:2010cv01712 (filed June 25, 2010)