Patent Reform Legislation Off The Table -- For Now

by McDonnell Boehnen Hulbert & Berghoff LLP

Leahy, PatrickEarlier today, Senator Patrick Leahy (D-VT), Chairman of the Senate Committee on the Judiciary, announced that he was taking the Patent Transparency and Improvements Act of 2013 (S. 1720) off the Committee's agenda.  He cited as the reason a lack of "sufficient support behind any comprehensive deal" to address the problem of so-called patent trolls who are misusing the patent system.  He pointed to "repeated concerns" that the Innovation Act that passed the House "went beyond the scope of addressing patent trolls, and would have severe unintended consequences on legitimate patent holders who employ thousands of Americans."  Sen. Leahy (at right) indicated that "competing companies on both sides of this issue refused to come to an agreement" that would have provided the broad bipartisan support required to get a bill through Senate.  Nevertheless, he promised that if the stakeholders involved "are able to reach a more targeted agreement that focuses on the problem of patent trolls, there will be a path for passage this year and I will bring it immediately to the Committee."  A copy of Sen. Leahy's press release can be found here.

We have not reported on the pending legislation before the Senate Judiciary Committee for several weeks, because even though it has appeared on the Committee's agenda every week, it has been repeatedly postponed.  Even so, reports have suggested that work on a compromise had been on-going, and that a bipartisan agreement was imminent.  In fact, before Sen. Leahy's announcement, it was suggested that a Manager's Amendment would be considered by the Committee as early as tomorrow.  In attempt to explain what happened, the National Journal reported that Henry Reid (D-NV), the majority leader, told Sen. Leahy that the patent reform bill would not even get to floor of the Senate, even if it passed out of Leahy's Committee.  The National Journal cited opposition from trial attorneys, the biotech industry, and pharmaceutical companies for the warning from Sen. Reid.  Sen. John Cornyn (R-TX) apparently agreed with the criticisms levied against Mr. Reid, complaining that "the demands of one special interest group" should not trump the patent reform desires of the White House, House Democrats, and the bipartisan agreement in the Senate.

Biotechnology Industry Organization (BIO)In response to the then-imminent vote in of the Committee, several organizations including the Biotechnology Industry Organization (BIO), the Innovation Alliance, and several university organizations, such as the Association of University Technology Mangers (AUTM), sent a letter on May 20, 2014 to the members of the Senate Judiciary Committee.  This letter stated that the signatories could not support the proposed changes because they would substantially weaken the patent system.  The letter indicated that these organizations have been working with members of the Judiciary Committee to craft a bill that would target frivolous patent litigation.  Nevertheless, many of the current provisions would have had the effect of treating every patent holder as a patent troll.  The letter stated that a patent system that weakens the ability of every patent holder to enforce its own patents would discourage innovation.  The signatories concluded by opposing the legislation that the Judiciary Committee was considering, and asking that the members not support the proposed reforms.

IPO #1Of course, not every organization was necessarily opposed to the pending Senate legislation.  The Intellectual Property Organization ("IPO"), a trade association for owners of patents, trademarks, copyrights, and trade secrets and serving all intellectual property owners in all industries and all fields of technology, had supported a balanced, non-discriminatory change in the law to stop frivolous litigation and bad faith demand letters.  IPO Executive Director Herb Wamsley released a statement today in which he indicated that "[w]hile IPO supported key parts of Leahy's bill, compromises that were being proposed by various Senators were inconsistent with IPO positions."  Mr. Wamsley concluded by noting that that Sen. Leahy's "announcement  will give us more time to work with Congress this year or next year to obtain the best legislation to address the abusive litigation problem."  The IPO position and Mr. Wamsley's comments can be found here.

EFFLess measured in its response, the Electronic Frontier Foundation ("EFF") accused Sen. Leahy of killing patent reform, even if temporarily.  The EFF blamed the pharmaceutical, biotech, and university lobbies, complaining that these organizations "are hardly the victims of patent trolls anyway."  Of course, the legislation that the EFF has been pushing would impact these organizations just as much as the so-called patent trolls (except for some exceptions for Hatch-Waxman-type litigation).  To highlight its extreme position, the EFF went as far as to accuse universities of "sometimes fuel[ing] patent trolls."  The EFF also has comedian Adam Corolla on its side.  According to the Technocrat blog, Mr. Corolla was scheduled to be at an event today in the Russell Senate Office Building to support the proposed legislation.  As we have previously reported, Mr. Corolla has been sued by Personal Audio for infringing its patent related to podcasting.  Personal Audio has been labeled a troll by Mr. Corolla and others, even though it is a company owned by the inventor of the patent at issue.  Mr. Corolla was quoted on the blog as calling for rules that would protect inventors, but that would also prevent so-called patent trolls from picking apart companies.  Without commenting on the validity or scope of the patents owned by Personal Audio, Mr. Carolla's concerns highlight the problem with crafting well-tailored legislation.  Does Personal Audio represent an inventor trying to protect his patented ideas, or is he a troll because he does not practice the invention himself?  This exemplifies why it is so important to define the problem before attempting to legislate against it.  And this is perhaps another reason why the pending legislation has stalled in the Senate -- it is impossible to narrowly tailor legislation against a vague notion that some entities are abusively asserting their patents.

We will continue to monitor the situation and we will report any updates if and when the Senate Judiciary Committee places the pending legislation back on its agenda.  But as for now, it would appear that there will be no patent reform legislation this year.



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.

© McDonnell Boehnen Hulbert & Berghoff LLP | Attorney Advertising

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.