A Sea Change for IPRs? -- Part II

McDonnell Boehnen Hulbert & Berghoff LLP

House of Representatives SealYesterday, we reported on the inter partes review (IPR)-specific provisions of the Managers Amendment to the PATENT ACT bil, which was passed last week by the Senate Judiciary Committee (see also "Senate Judiciary Committee Passes PATENT Act").

On June 9th, in the House of Representatives, Rep. Bob Goodlatte submitted an "Amendment in the Nature of a Substitute to H.R. 9" for his INNOVATION ACT bill.  This bill does not comport fully with the Senate bill, but the amendment does include tweaks to the Litigation Reform proposals in his prior bill (see "Rep. Goodlatte Introduces His Patent Reform Bill (Again)" and "Rep. Goodlatte Introduces His Patent Reform Bill (Again) -- Part II"), and a couple of the IPR/PGR-related provisions of the PATENT ACT Manager's Amendment addressed in our report yesterday.  It also contains a couple of new IPR/PGR provisions, relating to consideration of due process rights in implementing IPR/PGR regulations and requiring that a petitioner certify that it has engaged in hedging or demanded payment from the patent owner.

Note that the Goodlatte Innovation Act bill introduced on February 5, 2015 already included one of the Standards and Burden of Proof provisions of the Senate bill -- requiring the Phillips' ordinary and customary claim construction standard to be applied as opposed to the broadest reasonable interpretation.  It also required that the PTAB consider any prior claim construction by a Court.

Thus, the new IPR/PGR provisions introduced by amendment in the Goodlatte bill are as follows:

Allows the Preliminary Response to Petition for an IPR or PGR to include affidavits or declarations of supporting evidence and opinions.  Also allows the Commissioner to accept a reply by the Petitioner to any new issues raised in the response [similar to the Senate bill].

Requires the Director in implementing any regulations regarding IPRs and PGRs to consider the effect of those regulations on due process of the patent owner [new provision].

Precludes review unless the petitioner certifies: (1) that it does not own a financial instrument designed to hedge or offset any decrease in market or equity value of the patent owner or an affiliate, and (2) that it has not demanded payment from the patent owner in exchange for foregoing filing an IPR/PGR (unless the petitioner or real party in interest has been sued or charged with infringement under patent)  [new provision].

Patent Docs will provide more information on amendments to the Innovation Act in a subsequent post.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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