Senate Vote Tomorrow Could Give Helping Hand to Patent Trolls

Former tech advisor to Google Patent Litigation here.

The Ex Parte Reexamination is a fundamental tool for fighting against patent trolls:

https://en.wikipedia.org/wiki/Reexamination

They can also be used by big companies to steal IP from small inventors. However, this is not why the backers of this bill are trying to limit them.

When a troll buys up a patent from the early 2000's, they hope to stretch its claims, with the help of a patent-friendly judge, to cover some modern technology. Naturally, it's the FAANG and other big companies they really want, but first they build up a war chest by settling with smaller fish.

Filing an IPR is a cheaper way than going to trial for challenging these bogus patents, and believe me, nearly all software patents are bogus. I busted lots of them, including this:

https://www.zdnet.com/article/microsoft-patent-may-block-goo...

If you go to trial, it's some unsophisticated jurors who decide if the patent is valid. For a reexam, it's PTO people, who at least know what the law is.

So that's why trolls want to get rid of reexams: to force companies to negotiate with them.

Inactive patent lawyer here (these days my practice is in other areas).

1. This bill doesn't appear to address Alice/Mayo unpatentability under 35 USC § 101. https://www.congress.gov/bill/118th-congress/senate-bill/222...

2. My concern is that this bill seems to inappropriately raise the evidentiary bar for a patent challenger to prove invalidity in an inter partes review in the USPTO:

- Existing law, at 35 USC § 316(e) says a challenger in an IPR must prove invalidity by a preponderance of the evidence. https://www.law.cornell.edu/uscode/text/35/316

(In a court challenge to validity, the Supreme Court has ruled that invalidity must be proved by clear and convincing evidence, the highest standard in civil litigation, just short of beyond a reasonable doubt.)

- Section 4 of this amendment, when it comes to issued claims, would raise the IPR challenger's burden to clear and convincing evidence. For new claims, the challenger would still have the burden of proof, but by a preponderance.

Both standards are bad public policy, because in most cases a single, very-busy patent examiner is in effect making national industrial policy — and granting the patent applicant a nationwide monopoly on the claimed subject matter — all by his- or her lonesome after doing a prior-art search; the applicant must disclose material information known to him/her but is under no obligation to do a search. That's been the law for a long time.

It'd be as if a graduate school made a rule that a Ph.D. candidate must be issued the degree unless his (or her) dissertation committee does a literature search and shows that the candidate's research wasn't sufficiently novel. (As I understand it, every reputable Ph.D.-granting institution requires the candidate to do a literature search to demonstrate novelty.)

But of course it's worse than that, because — unlike a new patent holder — a newly-minted Ph.D. can't weaponize his- or her dissertation to try to "extract" royalties from other researchers.

Is there an online discussion about this happening somewhere? This sounds very important, but without some dissenting opinions, it's hard to be sure what details are being glossed over.

On the EFF's side, there's this: https://www.theregister.com/2009/05/11/scheduling_paradigm/

The opposing CSIS article posted by "alwa" in another comment also sounds very convincing. https://www.csis.org/analysis/new-efforts-promote-us-innovat...

Where is the civil debate?

I manually contacted all of the senators suggested by EFF. It took me all of 10 minutes. You should really share your opinion, even if it differs from that of the EFF.

Speaking as someone who holds six patents: This is only making bad problems worse.

We need to be reducing patent terms and making it easier to invalidate bad patents, not helping trolls.

Raising the standard in PTAB like this bill seems like a pretty bad idea, a huge % of patents are invalidated today in PTAB (I think like 80%) because a huge percentage of them are horseshit. One overworked patent examiner can basically derail an industry.

Patents are one of the great evils of the modern world. Patents delayed everything from Henry Ford's engine by twenty years to countless vital breakthroughs over the last century. End all patents.

Honestly, how can you patent a human gene? What happens if I'm born with that gene? I have to pay a company for the right to be alive?

Who are the lobbyists pushing this?

I know absolutely nothing about this act, but I was put off by the EFF’s tone of righteousness here. As a rule of thumb I worry when I hear something described in absolute or moralistic terms: rarely do complicated things happen just out of pure villainy.

For slightly more detailed perspective into what proponents might be thinking, CSIS suggests that the status quo effectively allows large companies with armies of lawyers to steal IP from small firms at will, and that PERA seeks to remedy a category of iffy gotcha kind of challenges; the conservative Federalist society claims that PERA would remove a threshold challenge to patent validity but would not disrupt more substantial analyses and tests later in the process.

I still have no opinion personally, but maybe a couple of contrasting opinions might be helpful for folks here.

[0] https://www.csis.org/analysis/new-efforts-promote-us-innovat...

[1] https://fedsoc.org/commentary/fedsoc-blog/the-patent-eligibi...