SEGMENT 1:

Thomas Mays, Ph.D., J.D., Counsel for Intellectual Property, Bureau of Competition, Office of Policy and Coordination,
Federal Trade Commission

The Federal Trade Commission considers patent policy an important stimulus of innovation. However, the importance of patent quality is vital in maintaining the alignment of patent and competition policy. One means to support patent quality is to enact a post-grant review of and opposition to a patent after issuance by the U.S. Patent & Trademark Office.

Providing reliable and early notice of the subject matter a patent covers enhances business certainty for competitors who wish to avoid infringement. In order to promote the disclosure, teaching, and notice function of patents, the doctrine of willful infringement should be modified by enacting legislation to require, as a predicate for liability for willful infringement, either actual, written notice of infringement from the patentee or deliberate copying of the patentee's invention, knowing it to be patented.

The notice function of patents will also be furthered by enacting legislation to require publication of all patent applications 18 months after filing.

The Federal Trade Commission is conducting five public hearings on the evolving intellectual property marketplace. Based upon the testimony taken in December 2008, February, March, April and May 2009, a report will be prepared to explore and make recommendations concerning issues pertaining to use of patents in the marketplace raised by a number of stakeholders. The assessment of damages awarded in patent litigation is one of the topics generating great interest.

Other issues under review in these hearings on the evolving IP marketplace, include new business models based upon the selling or licensing of patents, and the effects of recent changes in patent law affecting these new business models.

SEGMENT 2:

George Best, Partner,
Foley & Lardner LLP

Patent Reform and Patent Litigation

Status - Report - Draft legislation has been introduced in the Senate and has been reported out of the Judiciary Committee to the entire Senate. Additional amendments are possible before final passage by the full Senate. Once passed by the Senate, the legislation moves to the House. In the past, the Senate has been the stumbling block for patent reform, so passage is likely sometime before the end of this Congress in 2011.

Venue - The - first draft of the legislation attempted to eliminate the ability of non-practicing entities to choose the venue of their choice. After amendment, the standards have been softened. The current draft provides for transfer upon a showing that the transferee venue is “clearly more convenient” than the venue where the action is pending.

Damages - Section - 284 is amended to create novel pretrial procedures intended to force District Court judges to act as gatekeepers. The intent is to keep frivolous or outrageous damage theories from reaching a jury.

Willful - Infringement - The bill codifies the Federal Circuit’s holding in In re Seagate, which has the effect of limiting the availability of enhanced damages.

Interlocutory - Appeals - The legislation provides for interlocutory appeals of claim construction orders, subject to District Court certification. The Federal Circuit must decide the appeal unless it finds the certification decision to be clearly erroneous.

Best - Mode - Disclosure is still required, but failure to disclose is not a ground for asserting invalidity or inequitable conduct.

What’s - missing - The bill does not address inequitable conduct.

SEGMENT 3:

Jeffrey J. Oelke, Partner,
White & Case LLP

- Tafas v. Doll: On Friday, March 20, 2009, the Federal Circuit ruled on the controversial final patent rules (“Final Rules”) issued by the United States Patent and Trademark Office on August 21, 2007. The Federal Circuit’s decision bears directly on the authority of the USPTO to rewrite patent practice rules in the United States.

- Provide a background of the proposed rules and an overview of the controversy surrounding the USPTO’s attempt to change patent practice with the promulgation of the four Final Rules, including the policy behind the Final Rules and the various arguments against their enforcement.

- The scope of the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) and 35 U.S.C. § 132(b) before and after the Federal Circuit’s decision in Tafas v. Doll, including the “substantive/procedural” distinction addressed by the Federal Circuit.

- The Federal Circuit’s disposition of the four Final Rules. The Federal Circuit classified each of the Final Rules then determined whether or not each rule is consistent with the Patent Act.

- Going forward: Issues that remain for the district court on remand. The implications of the Federal Circuit’s decision and the high level of deference provided to the USPTO. Potential for review by the full court of the Federal Circuit or the Supreme Court.