Last year, Judge Illston gifted patentees with a proverbial lump of coal with her decision in Illumina, Inc. v. Ariosa Diagnostics, Inc. by invalidating on summary judgment claims directed to methods for isolating cell-free fetal DNA from maternal DNA on the grounds that they are not patent-eligible under 35 U.S.C. § 101.  On December 19, Rep. Danny K. Davis (IL-7), joined by Congressman Paul A. Gosar (AZ-04), introduced a bill that is more like a Christmas gift for inventors, entitled the Inventor Rights Act (H.R. 5478).

After preliminary sections extolling the contribution of inventors to American innovation and economic advancement, and noting the negative effects on inventor rights by Supreme Court cases including eBay Inc. v. MercExchange, LLC, TC Heartland LLC v. Kraft Foods Group Brands LLC, and PTAB proceedings under the provisions of the Leahy-Smith America Invents Act (AIA), and calling out the practice of "efficient infringement," the bill proposes amending Section 100 of the Patent Act to include a new section (k):

(k) The term 'inventor-owned patent' means a patent with respect to which the inventor of the invention claimed by the patent or an entity controlled by that inventor—
    (1) is the patentee; and
    (2) holds all substantial rights.

For such "inventor-owned patents," the bill proposes a new Section 330, entitled Inventor protections, which include:

(a) Not subjecting such patents to reexamination or review [presumably including post-grant review, inter partes review, or covered business method patent review], or [more broadly], to otherwise make a determination about the validity of an inventor-owned patent" without consent of the inventor-owner;
(b) permitting venue either:
    (1) in accordance with section 1400(b) of title 28;
    (2) where the defendant has agreed or consented to be sued in the instant action;
    (3) where an inventor named on the patent in suit conducted research or development that led to the application for the patent in suit;
    (4) where a party has a regular and established physical facility that such party controls and operates, not primarily for the purpose of creating venue, and has—
        (A) engaged in management of significant research and development of an invention claimed in a patent in suit prior to the effective filing date of the patent;
        (B) manufactured a tangible good that is alleged to embody an invention claimed in a patent in suit; or
        (C) implemented a manufacturing process for a tangible good in which the process is alleged to embody an invention claimed in a patent in suit; or
    (5) in the case of a foreign defendant that does not meet the requirements of section 1400(b) of title 28, in accordance with section 1391(c)(3) of such title.

Further, under proposed Section 330(c) the bill creates a presumption that after a finding of infringement the inventor-owner will suffer irreparable harm unless the court grants an injunction, and provides for rebutting the presumption only upon a showing by clear and convincing evidence that the patentee would not be irreparably harmed.

The bill further provides in Section 330(d) that an inventor-owner can elect, "at any time before final judgment is entered by the court," to obtain recovery under this Section, which will include: (1) profit disgorgement, which will include all infringer's revenues relating to the infringing article, with the infringer bearing the burden of showing any "elements of cost or production" claimed to reduce this amount; (2) interests and costs; (3) treble damages for willful infringement; and (4) attorneys fees in the amount that exceeds 10% of the amounts set forth in subparagraph (1)-(3).

The University of Illinois/Chicago is in Rep. Davis's congressional district but he has not sponsored much patent-related legislation before.  One possible consequence of this bill should it pass (which is unlikely) is that patents will remain "owned" by (i.e., assigned) to the named inventors, even in corporate settings, with their corporate masters holding licenses (likely exclusive licenses) to get the benefit of the bill's provisions while retaining traditional control of the patented invention.  Care will need to be taken to avoid situations where the scope of the license is so restrictive to amount to an assignment, thus frustrating the purpose (see "St Regis Mohawk Tribe v. Mylan Pharmaceuticals").

According to a press release posted on Rep. Davis's website, "[t]he Inventor Rights Act provides narrowly targeted relief only to inventors that own and control their own patents.  This bill does not apply to large corporations, drug companies, or typical non-practicing entities."  The bill will be taken up in due course by the House, presumably in the next session beginning in early 2020.