A bipartisan group of House and Senate lawmakers are reviving legislation aimed at helping patent owners pursue infringement cases and fight administrative challenges.
Patent owners, including independent inventors and small businesses, have complained that it’s too easy for alleged infringers to challenge patents in administrative proceedings at the agency’s Patent Trial and Appeal Board, known as inter partes reviews. Tech companies such as Samsung Electronics Co. Ltd. and Apple Inc. often go to the PTAB to attack patents that they’re accused of infringing.
Sen. Chris Coons (D-Del.) and Rep. Steve Stivers (R-Ohio) July 10 announced the reintroduction of the Support Technology & Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patents Act. Under the measure, entities that fund a patent validity challenge can’t then file a separate challenge to the same patent, according to a summary of the bill.
Different groups of PTAB judges would have to decide whether to hear a challenge, and then whether the challenged patent was valid, under the bill.
The bill would preserve U.S. intellectual property value, Coons and Stivers said.
“While our global competitors strengthen their intellectual property laws, we are at risk of losing our reputation as the gold standard for patent protection because U.S. patents have become too difficult to enforce and too unreliable to justify critical investments in emerging technologies,” Coons said in a statement.
Stivers said the legislation would help inventors across the country.
“Main Street can and should be just as much of an engine for innovation as Silicon Valley, but we must ensure that the innovators are able to protect their next big idea,” Stivers said in the statement.
Earlier versions of the bill failed to advance in previous years.
Patent Owner Relief
The bill includes other provisions aimed at protecting patent owners.
A new provision in the reintroduced measure, would clarify when appeals of patent board decisions are allowed, reinforcing the U.S. Court of Appeals for the Federal Circuit’s 2018 ruling in Wi-Fi One LLC v. Broadcom Corp.
Defendants in patent infringement lawsuits have one year after they’re sued to challenge a patent at the PTAB. The board’s decision on whether to hear a challenge, which are otherwise “final and unappealable,” can be appealed in some instances, such as if the board’s decision is based on when the challenge was filed, the Federal Circuit ruled in Wi-Fi One.
The reintroduced bill also aims to restore a patent owner’s ability to get a permanent injunction after the patent board finds that a valid patent was infringed. Lawmakers are looking to undo the Supreme Court’s 2006 ruling in eBay Inc. v. MercExchange LLC which barred automatic injunctions for owners of infringed patents.
The bill also would prohibit patent challenges in district courts if the PTAB has agreed to hear a challenge in an administrative review.
Patent owners’ groups, including the Alliance of U.S. Startups and Inventors for Jobs and the Innovation Alliance, and the Biotechnology Innovation Organization are backing the bill.
Allowing inventors to regain injunctive relief and making inter partes reviews more balanced “will have a dramatic and positive effect on patent-intensive startups,” the Alliance of U.S. Startups and Inventors for Jobs said in a statement.
The High Tech Inventors Alliance, whose members include Alphabet Inc.'s Google and Amazon.com Inc. didn’t immediately respond to a request for comment.
Sens. Tom Cotton (R-Ark.), Richard J. Durbin (D-Ill.), John Kennedy (R-La.), Mazie Hirono (D-Hawaii), and Kevin Cramer (R-N.D.) are co-sponsoring the Senate bill. Rep. Bill Foster (D-Ill.) is co-sponsoring the House measure.