With concern growing about the United States’ ability to remain the dominant force in the global innovation economy, the STRONGER Patents Act is intended to restore and strengthen the U.S. patent system by making it easier for patent owners to enforce their intellectual property rights.

On July 10, 2019, Senator Chris Coons (D-DE) introduced a new version of the STRONGER Patents Act, officially titled the “Support Technology and Research for Our Nation’s Growth and Economic Resilience Patents Act of 2019.” Sen. Coons, long an advocate of patent reform, stated that the legislation is needed “to recalibrate the U.S. patent system...so that our inventors’ and entrepreneurs’ ideas and business can continue to fuel the American economy.”

 

The problem

The bill claims that the U.S. patent system has been weakened over the past several years by a series of judicial, legislative, and administrative changes. Primary among those was the passage of the Leahy-Smith America Invents Act of 2011, which the bill characterizes as having had “unintended consequences” such as the filing of post-grant proceedings to depress stock prices, the filing of repetitive petitions to harass patent owners, and an unnecessary overlap of work by the Patent Trial and Appeal Board (PTAB) and the U.S. district courts.

The bill also cites the Supreme Court’s 2014 decisions in Octane Fitness and Highmark as having significantly reduced the burden on alleged infringers to recover attorney fees from patent owners and increased fee-shifting to losing parties.

And while the bill does not mention the Alice decision by name, Sen. Coons has been an outspoken critic of that decision, having introduced a draft bill to abrogate it earlier this year.

 

Key provisions of the STRONGER Patents Act

Just as Sen. Coons’s draft § 101 bill aimed to reverse the changes brought about by Alice, the STRONGER Patents Act aims to reverse many of AIA’s patent reforms, particularly those relating to post-grant proceedings at the PTAB. Some of the key provisions of these changes include:

  • Claim construction: Officially changes the PTAB’s claim construction standard from the broadest reasonable interpretation (BRI) standard to the Phillips standard that is used in district courts
  • Burden of proof: Increases the petitioner’s burden of proof from the preponderance of the evidence standard to the clear and convincing evidence standard that is used in district courts. Also establishes that patents are entitled to a presumption of validity in post-grant proceedings, just as they are in district court litigation.
  • Standing: Narrows the availability of post-grant proceedings to parties who have been sued for infringement of the patent at issue rather than “any person other than the patent owner”
  • Appeals of institution decisions: Eliminates the ability of a petitioner to appeal the PTAB’s determination that the petitioner is reasonably likely to prevail when making institution decisions
  • Repetitive proceedings: Limits a petitioner to one challenge against a patent unless the petitioner is later charged with infringement of additional claims of the patent
  • Redundancy with district court proceedings: Bars petitioners from seeking validity challenges of the same type in district court as they sought at the PTAB

The Act also makes a number of other changes, such as:

  • Injunctive relief: Directs the courts to presume that injunctive relief should be granted against infringers upon a finding that a patent is valid and infringed. This provision effectively abrogates the Supreme Court’s 2006 decision in eBay v. MercExchange (holding that an injunction should not automatically be issued upon a finding of patent infringement).
  • Fee diversion: Eliminates USPTO fee diversion and establishes a new revolving fund at the U.S. Treasury
  • Educational institutions: Classifies all colleges, universities, and other institutions of higher education as micro-entities for filing purposes under the AIA
  • Small business support: Aims to strengthen the standing of small businesses in the patent system by expediting cases against small business defendants and providing greater access to patent-searching databases
  • Patent trolls: Mirrors the Targeting Rogue and Opaque Letters (TROL) Act by empowering the Federal Trade Commission to take enforcement actions against entities that engage in unfair or deceptive acts

 

What are people saying about the Act?

As with all proposals for patent reform, reactions to the Act have been mixed. In a Senate Subcommittee on Intellectual Property hearing held on September 11, Subcommittee Chairman Thom Tillis (R-NC) expressed concern that the Act’s abrogation of the eBay decision could easily be abused by patent trolls. Tom Cotter, Professor at the University of Minnesota, shared this concern. Josh Landau, Patent Counsel at the Computer and Communications Industry Association, feared that the Act’s prohibition of serial IPR petitions could prevent meritorious petitions.

Other witnesses, including Adam Mossoff (Professor at GMU’s Antonin Scalia Law School) and Earl Bright II (President of ExploraMed), praised the Act for its alignment of claim construction and burden of proof standards between the PTAB and district courts. Mossoff even went so far as to say that the bill would put a stop to the “willy nilly” operations of the PTAB and likely would end its reputation as a “death squad for patents.”

The National Small Business Association (NSBA) supports the measure on the grounds that it will make it easier and more affordable for patent owners to enforce their patents, while the Electronic Frontier Foundation (EFF) has criticized it as a boon for patent trolls.

 

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