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Taking the STRONGER Patents Act critics seriously | American Enterprise Institute

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In previous posts, we’ve explored the introduction (and re-introduction), progress, and latest status of the Support Technology & Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patents Act.


Following Senate Judiciary Committee hearings in September,
the measure (which would soften the blow of US Patent and Trademark Office
(USPTO) trials and make it easier for a patent owner to obtain an injunction)
appeared to gather steam, even as it competes for Congressional attention with
issues such as impeachment and the typical approaching election-year slowdown
in the legislative calendar.

But not all observers agree, and some opponents of the
measure have presented cogent critiques that deserve a fair hearing.

First, though, as a reminder, the STRONGER Patents Act would
elevate the burden of proof used to invalidate a patent in proceedings at the
USPTO, such as inter partes review (IPR), to the higher “clear and convincing”
standard — the same yardstick used in district courts. The measure would also
make it more difficult to institute those Patent Office proceedings in the
first place.

STRONGER would also create a presumption that the court
would enjoin sales by a party found liable for infringing a valid patent. Under
current Supreme Court precedent, it is fairly difficult to obtain injunctive
relief even against companies adjudged to infringe.

Finally, the bill would inhibit “rogue and opaque” patent
demand letters sent by so-called patent “trolls” looking to shake down would-be

At the Judiciary hearing, hosted by the Intellectual Property Subcommittee Chairman Thom Tillis (R-NC) and Ranking Member Chris Coons (D-DE), Tillis kicked off discussion of the measure, noting that he was “concerned about the impact on patent litigation” of creating a presumption in favor of an injunction, because it “could potentially encourage the type of bad litigation behavior by patent trolls that Congress has spent years trying to stop.”

“IPR as a whole is cheaper and faster than litigation in
district court,” Tillis went on to assert, expressing his fear that “the many
benefits IPR provides our patent system could be undermined.”

Similarly, some 27 law professors submitted an open letter to Congress last month, arguing that “IPR has helped to remove hundreds of invalid patents, many already involved in litigation,” and characterizing Patent Office trials as a “robust and efficient check on patent validity [that] has had a positive impact across industries, including high-tech, Main Street, and pharmaceuticals.”

The law professors singled out one particular portion of the
STRONGER Act for criticism:

Among the most significant changes in
the bill is the limitation of one challenge per patent claim, which ignores the
realities of patent litigation in which numerous parties can be sued by the
same plaintiff. This change would foreclose future defendants from the ability
to administratively challenge an asserted patent, leaving them with no choice
but to litigate or (more likely) settle.

Indeed, STRONGER would limit the number of challenges that
an accused patent infringer can take. Currently, only the Patent Office’s
discretion restrains a challenger from filing multiple IPRs against a single

But while the professors and Chairman Tillis are correct
that the “second-bite-at-the-apple” problem may be overstated, it nonetheless
exists, and the Patent Office by and large has not exercised its discretion to
nullify repetitive challenges. Still, modification or softening of the STRONGER
legislation to balance these needs wouldn’t be a bad idea.

As for injunctions, the decade-plus long détente inaugurated
by the Supreme Court’s 2007 eBay v. MercExchange decision has brought comfort
to technology companies accused of infringement. It has warded off some of the
worst abuses but has also arguably undervalued the patent right by impeding
non-practicing entities such as universities and research institutions from
obtaining injunctions. Here, again, while an automatic injunction may go too
far, tilting the balance away from eBay could provide real system-wide

Nevertheless, the debate will continue among advocates and officials on all sides of this issue, even if Congress as a whole may not be as focused on it going forward.

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