House Hearings on Litigation Abuses

By Renee Dopplick, ACM Director of Public Policy
March 11, 2013

Two Congressional hearings relevant to patent reforms, which were canceled last week due to “snowquester,” are scheduled for this week.

House Hearing on “Examination of Litigation Abuses”
Wednesday March 13, 2013, 10 am ET
Subcommittee on the Constitution and Civil Justice
House Judiciary Committee
Webcast: http://judiciary.house.gov
Witnesses:

  • Elizabeth Milito, National Federation of Independent Business
  • Theodore Frank, Center for Class Action Fairness
  • Joanne Doroshow, Center for Justice and Democracy at New York Law School
  • John Beisner, Skadden, Arps, Slate, Meagher & Flom LLP

House Hearing on “Abusive Patent Litigation: The Impact on American Innovation & Jobs, and Potential Solutions”
Thursday, March 14, 2013, 11:30 am ET
Subcommittee on Courts, Intellectual Property and the Internet
House Judiciary Committee
Webcast: http://judiciary.house.gov
Witnesses: The list of witnesses is not yet posted. The scheduled witnesses for last week’s canceled hearing included representatives from Adobe, Cisco Systems, and the Global IP Law Group.

The hearing is expected to focus on potential legislative reforms to enhance and strengthen the American Invents Act and to address issues related to recent patent litigation trends.

One topic will be the recently introduced “Saving High-Tech Innovators from Egregious Legal Disputes Act of 2013? (SHIELD Act) (H.R. 845), sponsored by Reps. Jason Chaffetz (R-UT) and Peter DeFazio (D-OR). Rep. Chaffetz serves on the Subcommittee. H.R. 845 is a revision of the proposed SHIELD Act of 2012 that died in Committee last session. The proposed SHIELD Act of 2013 contains two major changes. It would extend the “loser pays” regime to all types of patents, not just computer and software-related patents. It also changes the threshold for when the loser must pay the winner’s litigation costs from the “party alleging the infringement of the patent did not have a reasonable likelihood of succeeding” to a categorical approach targeting patent trolls. The loser-pays regime would not apply if the losing party would be able to meet at least one of three conditions: (1) original inventor, (2) an entity making a “substantial investment” in the patent through production or sale, and (3) university or technology transfer organization. Because patent trolls are businesses that mainly purchase patents and then license those patents, they likely would not be able to qualify under these three categories and thus would be subject to the loser-pays regime.

Full-text of the SHIELD Act of 2013, H.R. 845, is available at: http://thomas.loc.gov/cgi-bin/bdquery/z?d113:h.r.00845:

Full-text of the SHIELD Act of 2012, H.R. 6245, is available at: http://thomas.loc.gov/cgi-bin/bdquery/z?d112:h.r.06245:

Also on Thursday, March 14, the USPTO Patent Public Advisory Committee will meet to discuss, in part, continued implementation of the America Invents Act (AIA), legislative proposals in Congress, and the two recent Software Partnership roundtables aimed at exploring how to improve the quality of software patents.