This recent RPX[1] report tells retailers what you likely already knew anecdotally – NPE cases are back. Patent litigation filings in the first half of 2015 are close to 2013 levels. As you are likely aware, this is in stark contrast to the large drops in 2014 filings.

The 2014 drop was largely explained

The patent blogs are abuzz with detailed analysis of cloture votes, yesterday’s Senate hearings and the Senate’s overwhelming passage of the America Invents Act ( the “AIA”). With the AIA expected to be signed by President Obama in the next few weeks, I am beginning a series of posts looking at its key provisions. This is the first of those posts. It is based upon a post from earlier this week at my Retail Patent Litigation Blog.
Here are four key provisions of the AIA for patent litigators and litigants:
Smaller Patent Troll Suits: The most immediate impact on patent litigation will be Section 19, limiting joinder in a single suit of unrelated parties. This is not the more extreme restrictions on venue or joinder that many had hoped for. But it will have some positive impact on patent troll litigation. For suits filed on or after the date of enactment, plaintiffs will only be able to join related parties in a single suit — for example, multiple manufacturers, distributors or resellers of an identical product. And while cases against unrelated parties could still be joined for discovery, they will not be able to be joined for trial. At first glance, this is not much of a barrier to entry for patent trolls. Very few defendants get to trial, and cases may still be consolidated for discovery purposes at the court’s discretion. Where a troll today could pay one $350 filing fee and sue 100 unrelated defendants, after enactment that same troll would have to file 100 suits and pay $35,000 in filing fees. $35,000, however, is dwarfed by the settlement demands in many cases. The hassle of filing the extra suits and the related filing fees, however, may be enough to prevent suits against some of the much smaller entities that almost always end up in these suits. And the requirement of separate suits will allow defendants a much greater ability to seek transfer to an appropriate venue. So, while this is not the sea change that many sought, it is a real benefit to retailers who are tired of being sued in Texas and want a better shot at transferring cases. This Section only applies to cases filed after enactment, not pending cases. So, existing cases will not be impacted.
Post-Grant Review: The AIA establishes a brief window for post-grant and inter partes review in Section 6. Third parties may challenge the validity of any claim of a patent for nine months after a patent is granted or issuance of a reissued patent. But you cannot seek post-grant review after filing a suit involving the patent. And when post-grant review ends in a final Board decision, you give up the right to use the arguments used in post-grant review or arguments that could reasonably have been used, in a later ITC proceeding or district court litigation.
False Marking Restrictions: Private citizens that file false marking claims will be required to prove competitive injury and their damages will be limited to the injury. Additionally, Section 16(b) excludes marking with an expired patent from the false marking statute. Furthermore, Section 16 applies to all cases pending when the AIA is enacted, as well as cases filed thereafter. Section 16 will clear out many of the existing false marking cases, but leaves considerable room for competitor false marking cases.
First to Invent: One of the most publicized changes to the U.S. patent laws is the move to a first-to-file patent system, the system used by most of the rest of the world. The first-to-file system incentivizes filing patents as quickly as possible to avoid an earlier filing by a competitor. Section 3 softens the first-to-file system providing for a proceeding between patent owners if the junior patent holder can show that the senior patent holder’s invention was derived from the junior patent holder’s invention. These “derivation proceedings” will replace the current, seldom-used interferences.
Of course, there is much more to the AIA, but these key changes are a good way to start digging into it. If there are other provisions you view as on par with these four from a litigation perspective, I would love to hear about them. Future posts will look at some of the other provisions of the AIA.

Continue Reading 4 Key Provisions of the Patent Reform Act for Patent Litigators

Another sign that patent reform is heating up again: the ABA’s IP Section has sent the Senate Judiciary Committee a position paper regarding inequitable conduct reform (click here to get to the Section’s advocacy page which has a link to the letter). The ABA argues that inequitable conduct materiality should be based upon the law and standards at the time of the alleged conduct, not based upon the present day standards. The ABA also argues that inequitable conduct decisions should continue to be made by the federal courts, not the PTO. And finally, the ABA argues that the standard for inequitable conduct should be:
(1) that a person having a duty of candor and good faith to the PTO in connection with the patent or an application therefor knowingly and willfully misrepresented a material fact or material information to the PTO or omitted a known material fact or known material information from the PTO;
(2) that, in the absence of such misrepresentation or omission, the PTO, acting reasonably, would not have granted or maintained in force at least one invalid patent claim; and
(3) that the misrepresentation or omission occurred with a specific intent to deceive the PTO, and that such intent cannot be established by the mere materiality of the misrepresentation or omission.

Continue Reading Patent Reform: ABA on Inequitable Conduct

Here are several Northern District and IP news stories that did not warrant separate posts:
The Northern District’s new Rockford courthouse is being named for retired Judge Roszkowski. Judge Roszkowski was the first federal judge permanently seated in Rockford and served for over twenty years.
Blawg Review #198 is up at the East Central Illinois Criminal Law & DUI Blog (click here to read it). As you might expect based upon the blog’s subject matter, there is not a lot of IP content. But there are several Illinois-specific stories that Blog readers may find interesting. For example, My Law Life warns that an Illinois statute makes it illegal to jog (or walk) on Illinois roadways where sidewalks are available — click here to read the post.
Several blogs are reporting that patent reform may be back on in Congress this year: Patently-O; and 271 Patent Blog.

Continue Reading Northern District IP News

Tomorrow I will be back to case analysis, but there is some Northern District news and some excellent IP and litigation blog posts worth reading, here they are:
Ninth Annual Pro Bono and Public Interest Awards — The Northern District and the Federal Bar Association are seeking nominations for excellence in pro bono and public interest work. Nominations should be based upon work performed in civil cases before the Northern District which are no longer pending. Send nominations by March 28 to:
Amy Rettberg, Executive Law Clerk
Chambers of the Chief Judge James F. Holderman
219 South Dearborn Street, Suite 2548
Chicago, Illinois 60604
Patent Reform is Moving Forward — The Senate is preparing to vote on the Patent Reform Act after its spring recess (yes, it is spring already in DC). Here is some additional coverage of the Act’s status:
271 Patent Blog — looking at the latest amendments to the Act.
Maryland Intellectual Property Blog — looking at the latest amendments and questioning whether proponents have the sixty votes necessary for cloture, thereby avoiding a filibuster.
Patent Docs — taking sides, but asking you to call your Senators regardless of which side you take.
Check out the newest entry to Chicago’s law blog scene, the Lean & Mean Litigation Blog. It is not IP-focused, but it is an interesting read for any commercial litigator or litigant.
William Patry at Patry on Copyright has an interesting post about the difficulties of serving corporate entities based upon a District of the District of Columbia case involving a pro se plaintiff. The best advice, of course, is to hire counsel because if you do not get the party served properly, you have no case.
The Seventh Circuit affirmed Judge St. Eve’s ground breaking opinion in the CLC v. Craigslist case. The Seventh Circuit held that an ISP is exempt from cases based upon user content when the case attempts to treat the ISP as a publisher of the content. This is considerably narrower than most of the other circuits, which have held that Section 230 exempts ISPs from essentially all suits based upon user content. For more coverage, check out the WSJ Law Blog (which erroneously elevates Judge St. Eve to the Seventh Circuit), Internet Cases, and the Technology & Marketing Law Blog (very detailed analysis of Judge Easterbrook’s opinion).

Continue Reading Northern District & IP News: Pro Bono & Patent Reform

As I mentioned several days ago, Northwestern’s excellent IP Law Week series begins Monday, January 14. The student IP group is hosting a panel each day next week. The Monday through Thursday panels will run from noon until 1:15. Friday’s panel starts at 1:40 and ends at 2:35. All events will be held in Rubloff 140. The panels are listed below and promise to be very interesting. I am part of Monday’s Patent Reform panel, and I look forward to seeing you there.
Monday: Patent Reform – Motivations, Impact and Controversy
Tuesday: Balancing the Right to Life vs. the Right to Patent
Wednesday: Copyright Law and Media Distribution over the Internet
Thursday: Patent and Pharmaceutical / Drug Issues
Friday: KSR v. Teleflex and Patent Prosecution

Continue Reading Nortwestern’s IP Law Week Starts Monday

With Patent Reform not expected to be considered by the full Senate before January 2008, the House appear to be turning its focus to copyright reform. The Maryland Intellectual Property Law Blog has a series of posts on the new copyright legislation (click here and here to read them). The most recent bill would prevent lawsuits from being dismissed for unintentional errors in copyright registration forms and would give courts discretion to treat compilations as more than one work for statutory damages purposes. Treating compilations* as multiple works for damages is significant because it increases the potential award for infringing a compilation from a maximum of $150,000 (the maximum willful infringement award for a work) to multiples of $150,000 depending on how many separate works the court determines the compilation to be.
* Compilations are grouped works such as collections of short stories, magazines with multiple articles or databases.

Continue Reading Will Copyright Reform Come Before Patent Reform?

I have been meaning to highlight the University of Michigan Law Review’s recent Supreme Court, Federal Circuit, and Patent Law edition for some time. The day before the Michigan-Ohio State match-up for the Big Ten title and a trip to the Rose Bowl seems like an appropriate time to do it. The article contains excellent analysis of the future of patent law and the effects of recent Supreme Court rulings, in particular KSR. The specific articles are:
Rebecca S. Eisenberg, The Supreme Court and the Federal Circuit: Visitation and Custody of Patent Law
John F. Duffy, KSR v. Teleflex: Predictable Reform of Patent Substance and Procedure in the Judiciary
Harold C. Wegner, Making Sense of KSR and Other Recent Patent Cases
Robert A. Armitage, Now That the Courts Have Beaten Congress to the Punch, Why Is Congress Still Punching the Patent System?
Stephen G. Kunin & Andrew K. Beverina, KSR’s Effect on Patent Law
Each article is worth the read, perhaps as you watch the game tomorrow.

Continue Reading Michigan Law Review on SCOTUS, the Federal Circuit and Patent Law