Welcome!

News Feed Item

As Passage of Legislation on Patent Trolls Appears Imminent, IP Attorney Looks at Its Swift Evolution

Fee Shifting Remains Among the Three Most Divisive Issues Presenting Challenges to Pending Patent Legislation

ANN ARBOR, MI--(Marketwired - May 16, 2014) - Following two years of brisk bill writing to address the impact of non-practicing entities (NPEs) on patent litigation across the country, legislation may soon be passed, thanks to the bi-partisan support of several current bills. James Cleland, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., said the evolution in patent reform legislation to curb frivolous patent litigation reflects a shift from attempting to define NPEs, often referred to as 'patent trolls,' to focusing instead on behavior that abuses the litigation process and threatens innovation.

"With earlier bills, the legislation attempted to define a patent troll, which often resulted in entities such as universities or large companies falling under the definition," said Cleland. "The focus of legislation in the past year has moved away from definitions to directly targeting unfair and deceptive practices in asserting patents, as well as frivolous patent litigation.

"The new legislation is focused on clearly identifying the entities who assert patents, requiring a detailed basis for their claims, protecting customers and making patent plaintiffs more accountable for bad faith patent assertion, including potential attorney fee shifting provisions that put additional skin in the game for patent plaintiffs."

Despite a Congress that is overwhelmingly divided on most issues today, the need for patent reform legislation has bi-partisan support, according to Cleland.

"We saw it with the 325-91 House of Representatives vote in December 2013 for the passage of The Innovation Act (H.R. 3309), a bill sponsored by House Judiciary Committee Chairman Robert W. Goodlatte (R-Va.). We continue to see movement with the Patent Transparency and Improvements Act (Senate bill 1720), a bill sponsored by Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.), which contains a number of provisions that mirror provisions from the Innovation Act that passed in the House," said Cleland. "The Senate is currently working behind the scenes on the most contentious provisions, but a Senate version may be passed in the next month if those provisions can be addressed and resolved. President Obama mentioned patent reform legislation in his January State of the Union address, and has indicated that he will sign patent reform legislation that comes out of Congress and crosses his desk."

Cleland identifies the three hot button provisions, which were included in the Goodlatte legislation but removed from the Leahy legislation:

  1. Attorney fee shifting, wherein the prevailing party is awarded attorney's fees.
  1. Heightened pleading standards, which, among other things, would require a patent plaintiff to provide much more detail than is currently required upon filing a case, including each claim infringed and each accused product or process, as well as an explanation of the alleged infringement and a description of any licensing commitments for the asserted patent.
  1. Core discovery and discovery fee shifting (also referred to as docket control), which requires early claim construction, limits discovery prior to claim construction, only allows expanded discovery to prevent manifest injustice, limits discovery to a set of "core documentary evidence," and shifts the cost to parties seeking additional discovery.

"Any kind of fee shifting discussion, even if intended to address an imbalance in cost between NPE plaintiffs and their targets, tends to be divisive because it alters the traditional American Rule in litigation," said Cleland. "However, the April 29, 2014 Supreme Court decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc. provides District Courts with broader discretion to award attorney fees in patent cases, so that decision may impact the debate. In the patent and business communities, we are very focused not only on how patent reform legislation will alter the patent litigation landscape, but also on the resulting impact to both large and small businesses. Most believe that change is coming, and I think we will have our answer as to the exact nature of that change in the near future."

Brinks Gilson & Lione
 
Brinks Gilson & Lione has 160 attorneys, scientific advisors and patent agents who specialize in intellectual property, making it one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them identify, protect, manage and enforce their intellectual property. Brinks lawyers provide expertise in all aspects of patent, trademark, unfair competition, trade secret and copyright law. The Brinks team includes lawyers with advanced degrees in all fields of technology and science. Based in Chicago, Brinks has offices in Washington, D.C., Research Triangle Park, N.C., Ann Arbor, Detroit, Salt Lake City and Indianapolis. More information is at www.brinksgilson.com.

The following files are available for download:

More Stories By Marketwired .

Copyright © 2009 Marketwired. All rights reserved. All the news releases provided by Marketwired are copyrighted. Any forms of copying other than an individual user's personal reference without express written permission is prohibited. Further distribution of these materials is strictly forbidden, including but not limited to, posting, emailing, faxing, archiving in a public database, redistributing via a computer network or in a printed form.

Latest Stories
"We are focused on SAP running in the clouds, to make this super easy because we believe in the tremendous value of those powerful worlds - SAP and the cloud," explained Frank Stienhans, CTO of Ocean9, Inc., in this SYS-CON.tv interview at 20th Cloud Expo, held June 6-8, 2017, at the Javits Center in New York City, NY.
"DX encompasses the continuing technology revolution, and is addressing society's most important issues throughout the entire $78 trillion 21st-century global economy," said Roger Strukhoff, Conference Chair. "DX World Expo has organized these issues along 10 tracks with more than 150 of the world's top speakers coming to Istanbul to help change the world."
"Peak 10 is a hybrid infrastructure provider across the nation. We are in the thick of things when it comes to hybrid IT," explained , Chief Technology Officer at Peak 10, in this SYS-CON.tv interview at 20th Cloud Expo, held June 6-8, 2017, at the Javits Center in New York City, NY.
"I think DevOps is now a rambunctious teenager – it’s starting to get a mind of its own, wanting to get its own things but it still needs some adult supervision," explained Thomas Hooker, VP of marketing at CollabNet, in this SYS-CON.tv interview at DevOps Summit at 20th Cloud Expo, held June 6-8, 2017, at the Javits Center in New York City, NY.
"We are still a relatively small software house and we are focusing on certain industries like FinTech, med tech, energy and utilities. We help our customers with their digital transformation," noted Piotr Stawinski, Founder and CEO of EARP Integration, in this SYS-CON.tv interview at 20th Cloud Expo, held June 6-8, 2017, at the Javits Center in New York City, NY.
"We've been engaging with a lot of customers including Panasonic, we've been involved with Cisco and now we're working with the U.S. government - the Department of Homeland Security," explained Peter Jung, Chief Product Officer at Pulzze Systems, in this SYS-CON.tv interview at @ThingsExpo, held June 6-8, 2017, at the Javits Center in New York City, NY.
"We're here to tell the world about our cloud-scale infrastructure that we have at Juniper combined with the world-class security that we put into the cloud," explained Lisa Guess, VP of Systems Engineering at Juniper Networks, in this SYS-CON.tv interview at 20th Cloud Expo, held June 6-8, 2017, at the Javits Center in New York City, NY.
"I will be talking about ChatOps and ChatOps as a way to solve some problems in the DevOps space," explained Himanshu Chhetri, CTO of Addteq, in this SYS-CON.tv interview at @DevOpsSummit at 20th Cloud Expo, held June 6-8, 2017, at the Javits Center in New York City, NY.
With tough new regulations coming to Europe on data privacy in May 2018, Calligo will explain why in reality the effect is global and transforms how you consider critical data. EU GDPR fundamentally rewrites the rules for cloud, Big Data and IoT. In his session at 21st Cloud Expo, Adam Ryan, Vice President and General Manager EMEA at Calligo, will examine the regulations and provide insight on how it affects technology, challenges the established rules and will usher in new levels of diligence...
SYS-CON Events announced today that SkyScale will exhibit at SYS-CON's 21st International Cloud Expo®, which will take place on Oct 31 – Nov 2, 2017, at the Santa Clara Convention Center in Santa Clara, CA. SkyScale is a world-class provider of cloud-based, ultra-fast multi-GPU hardware platforms for lease to customers desiring the fastest performance available as a service anywhere in the world. SkyScale builds, configures, and manages dedicated systems strategically located in maximum-securit...
"We are an IT services solution provider and we sell software to support those solutions. Our focus and key areas are around security, enterprise monitoring, and continuous delivery optimization," noted John Balsavage, President of A&I Solutions, in this SYS-CON.tv interview at 20th Cloud Expo, held June 6-8, 2017, at the Javits Center in New York City, NY.
Your homes and cars can be automated and self-serviced. Why can't your storage? From simply asking questions to analyze and troubleshoot your infrastructure, to provisioning storage with snapshots, recovery and replication, your wildest sci-fi dream has come true. In his session at @DevOpsSummit at 20th Cloud Expo, Dan Florea, Director of Product Management at Tintri, provided a ChatOps demo where you can talk to your storage and manage it from anywhere, through Slack and similar services with...
The financial services market is one of the most data-driven industries in the world, yet it’s bogged down by legacy CPU technologies that simply can’t keep up with the task of querying and visualizing billions of records. In his session at 20th Cloud Expo, Karthik Lalithraj, a Principal Solutions Architect at Kinetica, discussed how the advent of advanced in-database analytics on the GPU makes it possible to run sophisticated data science workloads on the same database that is housing the rich...
SYS-CON Events announced today that Calligo has been named “Bronze Sponsor” of SYS-CON's 21st International Cloud Expo®, which will take place on Oct 31 – Nov 2, 2017, at the Santa Clara Convention Center in Santa Clara, CA. Calligo is an innovative cloud service provider offering mid-sized companies the highest levels of data privacy. Calligo offers unparalleled application performance guarantees, commercial flexibility and a personalized support service from its globally located cloud platfor...
"We want to show that our solution is far less expensive with a much better total cost of ownership so we announced several key features. One is called geo-distributed erasure coding, another is support for KVM and we introduced a new capability called Multi-Part," explained Tim Desai, Senior Product Marketing Manager at Hitachi Data Systems, in this SYS-CON.tv interview at 20th Cloud Expo, held June 6-8, 2017, at the Javits Center in New York City, NY.