Emails to Senate Judiciary Committee Regarding Sec 112(f) Patent Changes

June 21

The Senate Judiciary Committee had asked for our comments on your proposed bill to modify sections 100, 101, and 112(f). We have no comments on sections 100 and 101 at this time. However, SBTC feels very strongly on Section 112(f). We believe the proposed wording will unintentionally narrow claims, thus weakening patents, and hurt the innovation economy in our country.

It is our belief that the committee’s proposed changes to Section 112(f) will broaden the application of the clause by deleting the “means or step for” language. The result will be more patents becoming unintentionally narrow, rather than following the plain language of the claim. Even with the current “means or step for” language, the applicability of 112(f) is already too unpredictable.

Thus, the position of our small high technology companies is to leave 112(f) as currently worded, but to add a sentence to the end of it, that will make it much less likely for the small business to unintentionally invoke this peculiar mode of claim interpretation (please see underlined text, add to the below version of 112(f)):

35 U.S. Code § 112 – Specification
(f) Element in Claim for a Combination.—

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. A claim element that does not recite the words “means for” or “step for” shall not invoke this paragraph unless such element is wholly devoid of structural recitations.

Should the above bolded sentence be unacceptable, we would prefer simply leaving Section 112(f) as currently worded.

While a simple streamlining of the statute may have been the intent, we believe the committee’s proposed rewording of Section 112(f) will actually hurt the economy, by narrowing claims beyond their plain language, which will be particularly confusing to small companies.

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June 25

In furtherance of the Small Business Technology Council’s email of June 21, I wanted to provide a somewhat longer rational of why we oppose the proposed wording for a modified Section 112(f).  One of our members, Eric Blatt wrote the attached article in Law360.  It states:

The proposed Section 112(f) …”has the potential to increase litigation expenses, hinder business planning, and perhaps most significantly to proponents of the proposed reform, undermine the effectiveness of Sections 102 and 103 in combating the meritless assertion of overbroad claims. Were the application of Section 112(f) expanded, the scope of its accompanying uncertainty would be likewise increased.”

Page 1 of my March 19, 2015 Senate Testimony stated “Large firms can and do survive without strong patent rights. Small businesses cannot.”   And that restricting patents “will hurt the small high-tech, job-creating SBIR businesses, and thus the economy. Simply stated, patents are far more important to small businesses’ survival than to large businesses. And licensed patents are the only way universities can commercialize their research.”

Thus, I hope you will reconsider your proposed language for Section 112(f), as we believe it will broaden the application of the clause, and thus weaken patents for small business.  We believe that the proposed Section 112(f) language will make patents less certain, which is contrary to the goals of your proposed legislation.  We also think the proposed wording will hurt the formation and growth of small business, and thus be bad for the economy.

-Bob Schmidt, SBTC Co-Chair

Senate May Want to Reconsider Sec. 112f Patent Reform Law

SBTC Submits Comment on PTAB Claim Amendment Practice

SBTC submitted the comment linked below to the Patent Board in December 2018 in response to a request for comment on a proposed rule change regarding PTAB Claim Amendment Practice and Procedures.

SBTC Comment on PTAB Claim Amendment Practice

SBTC Submits Comment on PTAB Notice for Rulemaking

SBTC submitted the attached comment in July of 2018 supporting the change in rule altering the Patent Trials and Appeals Board (PTAB)

SBTC Comment on USPTO’s Proposed Changes to Claim Construction Standard

SBTC Supports the “Restoring America’s Leadership in Innovation Act of 2018” 

In June 2018 the Small Business Technology Council sent the below letter offering its support for the “Restoring America’s Leadership in Innovation Act of 2018”, introduced into the House by Representative Thomas Massie (R-KY), and Representative Marcy Kaptur (D-OH).  This bill would strengthen patent rights for small businesses by reversing some of the more harmful effects of the America Invents Act

SBTC Letter in Support of the “Restoring America’s Leadership in Innovation Act of 2018” 

SBTC Supports the STRONGER Patents Act of 2017

In June of 2017, the STRONGER Patents Act of 2017 (S.1390) was introduced in Congress by co-sponsors Senator Chris Coons (D-DE), Senator Tom Cotton (R-AR), Senator Dick Durbin (D-IL) and Senator Mazie Hirono (D-HI). This bill would strengthen our nation’s patent system, while making it easier and less costly for small businesses to defend and protect their intellectual property in court.  SBTC stands with our parent organization NSBA in supporting passage of this legislation, and we ask our members to communicate their support for it to their members of Congress.

NSBA Position Paper Supporting STRONGER Patents Act

Other Letters of Support and Explanatory Materials:

SBTC Acknowledged for SCOTUS Amicus Brief by Law360 

SBTC’s Amicus Brief requesting that the US Supreme Court take the case of Commil v. Cisco Systems was discussed by the website law360.com. The case is about the fact that patent holders have lost their constitutionally guaranteed right to a jury trial. The article states in part:

Expressing concern that patent owners’ right to a jury trial was being eroded, a small-business group [SBTC] and a consulting firm urged the U.S. Supreme Court to hear Commil USA LLC’s appeal of a Federal Circuit ruling that vacated a $74 million verdict against Cisco Systems Inc…

“The Seventh Amendment right to trial by jury is of immense importance to patent owners and the enforcement of their patents,” an attorney for SBTC and Affinity Labs, Patrick M. Arenz of Robins Kaplan LLP, told Law360 on Wednesday.

To read the entire article, please click on the link below.  It can only be viewed by subscribers or readers who sign up for a free trial subscription:

Law360 Article on Commil vs. Cisco (subscribers only)

The amicus brief can be found here:

SBTC/Affinity Labs Amicus Brief on SCOTUS Commil vs Cisco

The brief discusses SBTC’s position:
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An essential part of a strong patent system is the ability of patent holders to efficiently and reliably enforce their patents against infringers. This is particularly true when a small company or individual inventor with limited resources attempts to hold accountable a larger infringer with unlimited resources. Amici have experienced and seen the important role juries play in resolving patent infringement disputes. As a result, amici are well suited to explain the importance of this Court’s consideration of the issues set forth in the petition, and why further review is warranted.
 
The heart of the petition pertains to the sacrosanctity of the right to trial by jury in patent cases. Commil has tried its patent infringement claims against Cisco to a jury—twice. On both occasions, the jury determined that Cisco infringed Commil’s valid claims. And yet the Petitioner is seeking review by this Court because the Federal Circuit reversed the jury’s factual findings regarding infringement. Amici support Commil’s petition, and request further review for the reasons below.
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Although not expressed in the brief, the reason this is important to small SBTC companies is that the erosion of the right to trial by jury in patent cases is degrading the our ability to grow businesses, create jobs, and grow the American economy.
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SBTC Amicus Brief Contributes to Sumpreme Court Decision

SBTC’s contribution to the Small Inventors Amicus Brief on Halo/Stryker Supreme Court Case was part of the documentation that helped swing the pendulum back toward supporting inventors in patent law.

On June 13, 2016, the Supreme Court rejected the Federal Circuit’s standard for awarding enhanced damages under 35 U.S.C. §284 in companion cases Halo Electronics v. Pulse Electronics and Stryker Corp. v. Zimmer Inc. The Court overturned the Federal Circuit’s objective recklessness standard established in In re Seagate (Fed. Cir. 2007).

The Court also rejected the clear and convincing evidence standard of proof of willfulness, replacing it with the preponderance of evidence standard. Further, the Court adopted the abuse of discretion standard of review, rejecting the appellate standard of review.

Justice Breyer authored a concurrence in which he emphasized the need for due diligence in the form of a clearance opinion. Further, the concurrence expressed concern that the Court’s opinion should not be taken by district courts to mean willful misconduct can be established by knowledge of the patent and nothing more.

This case will make it easier for patent holders to get enhanced damages from infringers, thus taking a small step to enforce patents and subdue infringement.  While we have a long way to go, this is significant as it is one of the first cases to stop the tide of weakening patents and start helping inventors and small businesses.

You can read the decision here:
HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC., ET AL. 

 

Engage with your Members of Congress on Patent Rights

We also encourage everyone to engage their Congressmen and women through calls, emails, and social media to oppose HR 9 from being brought back to the floor.  Below are a sample email and phone script you can use to help you write or call your Congressional representatives.  Also below is a “Twitter Kit” with a list of sample tweets, hashtags, handles, and links you can use.  Feel free to use or edit these as you see fit.

HR 9 Sample Email to Congress
HR 9 Sample Phone Script to Congressional Offices
HR 9 Twitter Kit

Finally, here is a 1-page document you can distribute to any legislators or staffers you interact with.  It concisely lays out 9 bullet points for why the “Innovation Act” will harm small business and American Innovation:

Top 9 Reasons to vote “NO” on HR 9

Patent Reform Issue Background

The SBTC and the NSBA believe that HR 9, along with its sister bill in the Senate S 1137, could have very damaging effects on the patent system and could undermine the ability of small business inventors to protect and defend their intellectual property.  Instead, SBTC endorses HR 2045, the “TROL Act”, and S 632, the “STRONG Patents Act”, which do a much more effective job at stopping abuse of patent demand letters, but without weakening the essential protections in the patent system that allow legitimate small business inventors to defend and protect their intellectual property.

July 2016

Small Inventors Amicus Brief on Halo/Stryker Supreme Court Case
SBTC Contributed to an Amicus Brief for a Supreme Court Case regarding enhanced damages under 35 U.S.C. §284. The Court rejected the clear and convincing evidence standard of proof of willfulness, replacing it with the preponderance of evidence standard.

June 2016

MCM vs HP Amicus Brief
SBTC Chair Bob Schmidt submitted an amicus brief on May 30th for the case of MCM Porfolio, LLC vs Hewlett-Packard, signed by SBTC and 15 different organizations.  At issue is whether inter partes review (IPR) violates Article III of the Constitution; and whether IPR violates the Seventh Amendment to the Constitution.  Bob Schmidt and the SBTC’s position is that we agree with MCM that the IPR procedure was beyond Congress’s power to impose, and its underpinning rationale—that patents are a matter of administrative largesse, rather than a constitutionally protected property right—is constitutionally infirm.

March 2016

SBTC Amicus Brief on Trading Technologies International, Inc. CBM Case
SBTC files an Amicus brief on behalf of Trading Technologies International, arguing that the Patent Trial and Appeal Board is inapproriately applying Covered Business Method patent definition to a technology patented by Trading Technologies.  In the case at hand, Trading Technologies International, Inc. is seeking relief from a Patent Trial and Appeal Board review on a piece of software it created and patented because it doesn’t solve a “technical problem”.  SBTC’s position is this review stretches the definition of CBM beyond what it was intended to cover, and that the relief should be granted.

December 2015

Small Inventors Amicus Brief on Halo/Stryker Supreme Court Case
SBTC contributed to this Amicus brief to the Supreme Court on 2 cases related to patent rights.

October 2015

Bob Schmidt 10.08.15 LEI Patent Policy Conference Written Remarks
Bob Schmidt 10.08.15 LEI Patent Policy Conference Slides
SBTC Co-Chair Bob Schmidt spoke at the Thomson Reuters Legal Executive Institute on the subject of Patent Policy from the perspective of a small business.  These links are his written remarks and slides from that speech.

August 2015

Top 9 Reasons to vote “NO” on HR 9
This one-pager, put together by the Innovation Alliance, highlights 9 different ways HR 9, the “Innovation Act”, could hurt the patent system, small businesses, and America’s economy

Patent Reform in Washington Threatens Cleveland-area Innovation
SBTC Co-Chair Bob Schmidt penned this opinion piece on patent reform that was published in the Northeast Ohio-focused online news service Cleveland.com on August 7.

June 2015

Joint Statement from AAU, APLU, BIO, IA, MDMA, NSBA, NVCA, PhRMA, SBTC and USIJ on H.R. 9
A joint statement from ten industry and university organizations, including SBTC, voicing opposition to HR 9, the Innovation Act, for the damaging results it will have on intellectual property rights.

SBTC Opposes HR 9, the Innovation Act
We sent this letter to Representative Goodlatte, Chairman of the House Judiciary Committee, outlining our opposition to HR 9 and the manager’s amendment that was under consideration.  Unfortunately, the bill was ultimately passed by the committee, and will now face a vote on the House Floor.

Small Businesses Oppose Misguided “Patent Reforms”
An op-ed on patent reform written by SBTC Co-Chair Bob Schmidt that was published in the Daily Caller.

May 2015

Letter to Speaker Boehner Opposing HR 9
This letter urges Speaker Boehner to oppose HR 9, aka the Innovation Act, and instead support the TROL Act as alternative patent reform legislation.

April 2015

SBTC Co-Chair Bob Schmidt’s Answers to Senate Small Business Committee Questions Regarding Patent Reform
The Senate Small Business Committee submitted to Bob Schmidt a list of questions after his testimony in March to expand further on the issue of patent reform, this is his response.

SBTC Supports TROL Act Letter
A letter by the SBTC offering our endorsement of the TROL Act as an alternative to HR 9, the “Innovation Act”

HR 9 Crushed Innovation, Killing the American Dream
An op-ed by Bob Schmidt covering HR 9 that was published in The Hill, and describing the ways it will be harmful to the patent system and small business innovation.

March 2015

SBTC Co-Chair Bob Schmidt’s Written Testimony Before the Senate Small Business Committee Regarding Patent Reform
SBTC Co-Chair Bob Schmidt’s Oral Testimony Before the Senate Small Business Committee Regarding Patent Reform
Co-Chair of SBTC Bob Schmidt Testified before the Senate Small Business Committee in March 2015 to discuss patent reform, and how the current bills being considered could impact small business.  These two documents are his submitted written testimony, and his oral testimony.

Letter to US Senate Opposing Senator Warner’s Patent Letter
This Letter was sent to all US Senators asking them not to sign Senator Warner’s letter supporting S 1137

February 2015

Letter to Members of Congress Opposing Goodlatte/Issa Patent Legislation
An open letter to all members of Congress briefly stating SBTC’s opposition to new patent legislation proposed by Congressmen Darryl Issa and Bob Goodlatte

January 2015

SBTC Anti-Patent legislation 2-page Summary
A 2-page summary of the changes and items in HR 9 and other patent reform bills that we believe will be severely damaging to the patent system.

July 2014

Letter to Speaker Boehner Supporting the TROL Act
A letter to Speaker Boehner asking him to support the TROL Act over the “Innovation Act”

May 2014

SBTC Co-Chair Bob Schmidt’s Testimony on Patent Reform Before House Small Business Committee
Bob Schmidt’s written testimony before the House Small Business Committee hearing on patent reform.

April 2014

In April of 2014, the intellectual property blog IP Watchdog published a series of 5 articles written by SBTC Co-Chairs Bob Schmidt, Heidi Jacobus, and SBTC Executive Director Jere Glover.  These articles covered a comprehensive range of topics on patent reform, laying out the reasons why the proposed legislation will harm small business

Part 1 – Why ‘Patent Reform’ Harms Innovative Small Businesses
Part 2 – Raising the Cost of Enforcing Patents: ‘Patent Reform’ Prices Small Businesses Out of the Inventing Business
Part 3 – ‘Patent Reform’ Will Keep Small Business Inventions From Being Commercialized
Part 4 – ‘Patent Reform’ Tips Power in Favor of Infringers and Against Small Businesses
Part 5 – Why ‘Patent Reform’ Harms Innovative Small Businesses – Summary

NSBA’s position on Patent Reform Legislation

SBTC’s parent organization, the NSBA, has also been active in the patent reform effort, and they share our views on the issues.  The following are a series of letters sent to Senate and House leadership asking for support of S 632 and HR 2045, while opposing S 1137 and HR 9.

NSBA Supports S 632, STRONG Patents Act
NSBA Opposes S 1137, PATENT Act
NSBA Supports HR 2045, TROL Act
NSBA Opposes HR 9, the Innovation Act