"PREVAILbill" The goal is to address the United States Patent and Trademark Office in a number of ways (USPTO) Patent Trial and Appeal Board (PTAB) Carry out reform. The main provisions of the bill include:

demandPTABThe challengers must be qualified——To be specific, In the directionPTABBefore you challenge, They must have already been sued or threatened with a patent infringement lawsuit——And pass "Prohibit anything on an itemPTABEntities that question the existence of financial backing raise their own challenges" To limit multiple claims against the same patent;

Cancel the joint action of the parties whose time limitation has expired;

Estoppel applies at the time of the challenge and not after the final written decision;

rightPTABDevelop a set of rules on patent invalidity "Clear and convincing evidence" Standard, And request the use of the United States District Court "Simple and common meaning" Standard to interpret the claims;

demandUSPTOThe director isPTABJudges set rules of conduct, And asked the director to participate in itPTABGreater transparency in decision-making;

The parties are required to choose between the district court and the District courtPTABFile a lawsuit／appeal, But you can't file a lawsuit in both bodies／appeal, To put an end to repeated litigation／appeal;

End up atPTABThe practice of filing a request for review after a failed appeal;

Provides for deciding whether to initiate post-authorization proceedingsPTABThe judge cannot be the same as the judge who decides the outcome of the complaint.

Although no specific information was mentioned, But Coons, who chairs the intellectual property subcommittee, points to two recent high-profile casesPTABAbuse case——VLSICase sumMolly Metzcase. He explained: "today, Those are very large, Companies with abundant resources often use themPTABTo weaken the patent (possessor) Tool of. In patent litigation, exceed85%Use ofPTABAs a duplicate rather than a substitute form of patent challenge, Often in district court andPTABMakes the same invalid argument. " Coons said, finally, PTABDid not achieve its goal, It will make effective litigation in the district court faster, A more economical alternative.

Tillis, the ranking member, said in his opening remarks "We have a business problem here" , And urge stakeholders "Come to the negotiating table" , And make sure that his office is open to anyone with an opinion——Except for one thing: "It is fair to say the status quo, It's the only reason I'm gonna shut up. " Tillis thinks "PTABNeed to change" .

Stakeholder attitudes

Before this hearing, Some organizations have submitted letters and issued statements.

The American Inventors Organization has always been "PREVAILbill" and "Patent Restoration Act" (PERA) He was highly critical, Described the hearing as a "Sham hearing" , Union representation " "PREVAILbill" It's a step in the right direction, though, But the impact will be marginal at best, It may not even matter at all. The group also disputed the list of witnesses, Says the list lacks the voices of small inventors and businesses" .

According to the organization's report "PREVAILbill" Position paper, The bill failed to resolve itPTABRoot of the problem—— "A drivePTABThe perverse incentive system that invalidates patents at a very high rate is simply designed to keep them going. "

Other groups have applauded the senators' approach, And urged passage of the bill. The Federation of Intellectual Property Associations said, This bill will restore predictability and rebalancePTABThe system of.

Brian, executive director of the Innovation Alliance．Pomper (Brian Pomper) expression, PTABWeaken patent rights, while "PREVAILbill" "Will limit the ability of big tech companies and other patent infringers to launch repetitive and harassing challenges against inventors, And put an end to patent challengersPTABAnd the district court to seek a more favorable rule. "

Witness testimony

Witnesses at the hearing included the former chairman of the House Judiciary Committee, Hold the office ofAkin GumpSenior consultant Lamar．Smith (Lamar Smith) ; predecessorUSPTOActing Director and acting attorney, Hold the office ofClear IPJoe in charge．Matar (Joe Matal) ; MasimoCompany founder, Chairman and Chief Executive Officer Joe．Kiani (Joe Kiani) ; Armond WilsonFounding partner Michelle．Armande (Michelle Armond) .

The majority of witnesses generally supported the bill. Especially Kiani, He urged swift passage of the bill, And suggested that the bill doesn't even go far enough for many inventors.

At the hearing, Kiani focused on itMasimoThe company's battle with Apple over pulse oximeter technology. althoughMasimiCompany recently before the International Trade Commission (ITC) Beat Apple, But Kiani recounted how the company responded to Apple's attacks on its patentsPTABmentioned33Multi-party review (IPR) , Eventually lead toMasimoThe company lost about1300Ten thousand dollars. Mr Kayani added, To invalidate these claims, All Apple has to do is let its experts say, "I thought of that a long time ago" .

"Preponderance of evidence is the problem. I found out later, PTABThe biggest customer is Apple. I hope (Federal Circuit Court of Appeals) Be able to overturnPTABThe decision of... But what struck me was this, They did not do so. Here's what I learned, On account of (PTABPreponderance of evidence) Standard, They have no choice, Can only acceptPTABThe decision of. "

Kiani cited a study that Matar cited in his introductory statement and written testimony, The study concluded that, "in (patent) On the issue of validity, PTABThey get confirmation more often than district courts. " Kiani indication, This study "I think it misses the point" . He added: " (Federal circuit) Turn downPTABThe decision was not made because of low standards... Not because (PTABJudge) Is a professional technical expert. The technologist is our patent examiner, He's engaged in patent review of pulse oximetry already30years. "

Matar was perhaps the most supportive of the panelPTABWitness of, He commented that, The system "Run well" , and "A reliable and technically accurate review of patent validity is conducted" . He objected to the requestPTABConsistent with the standard of review of the district court, And commented: "The reason the court adopted a clear and convincing standard was out of respect for the expertise of the institution. " He went on: "Back to the agency, It is also an expert body, In fact, They've done more analysis of the same claims... If we automatically give them clear and convincing respect, Even for technologies that were never considered before, People lose the incentive to do quality searches during litigation. "

Armond is right "PREVAILbill" The terms of the agreement, It believes the provision will put an end to repeated litigation, Although she saidPTABVery good at conducting limited litigation well and quickly. however, Armond also points out: "There are a lot of customers on both sides who are frustrated that they are spending money in two places at once. Clarity would help. "

Act as "America invents Act" (AIA) One of the main promoters, Assist in creatingPTABSmith's statement, The agency is not functioning as expected, And very supportive of the proposed adjustments. He mentioned "The Hill" A recent column, The article says the U. S. share of global venture capital funding has fallen from2004annual82%Drop to2021annual49%. Matar said: "So that we can continue to compete with other countries, We must eliminate this flaw. "

It is reported, Coons also plans to introduce a bill in the near future, The bill deals with injunctive relief. (Be compiled fromipwatchdog. com)

TRANSLATORS: Wang Dan　proofread: Wu Xian



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