The House Judiciary Committee held a hearing on the House Patent Reform Act of 2009 (H.R. 1260). H.R. 1260 closely tracks the original Senate bill (S. 515) that did not make it out of the Senate Judiciary Committee until the Committee made several amendments to it, including to the damages, venue and post-grant review provisions. The members of the House Judiciary Committee stated that they would not necessarily accept wholesale amendments to their proposed bill based on the Senate Judiciary Committee's changes to its bill. The main topic of discussion surrounded the damages provision. The House bill still includes the provisions that would require an apportionment of damages based on the value of the patented invention over prior art. The amended Senate bill was amended to eliminate the apportionment approach in favor of having the courts act as "gate keepers." Chairman Conyers noted that it was the damages provisions that could stop a Patent Reform Act from passing and that a compromise will have to be reached, but that he did not necessarily think the compromise that the Senate bill adopted was the answer.
As was the case earlier this year at the Senate hearing on S. 515, the Committee heard input from industry leaders and legal scholars. Those on the panel were:
- David Simon, Chief Patent Counsel of Intel, Inc.;
- Phillip Johnson, Chief Intellectual Property Counsel of Johnson & Johnson, also representing the Coalition for 21st Century Patent Reform;
- Prof. John Thomas of Georgetown University Law School;
- Jack Lasersohn, Partner of Vertical Group: Speaking on behalf of venture capitalist groups;
- Dean Kamen, DEKA Research and Development, Inc. (a non-practicing entity);
- Mark Chandler, Senior Vice President, General Counsel and Secretary of Cisco Systems, Inc.
- Bernard Cassidy, Senior Vice President and General Counsel of Tessera, Inc. (a non-practicing entity).
The comments from the panel largely stayed along industry lines and echoed the statements made in the Senate hearings.
Mssrs. Simon and Chandler expressed their support for the House version of the bill and the need for more certainty in the damages arena of patent law and improving the quality of patents through post-grant review as it is proposed in this version.
Mr. Johnson voiced support for the Senate version of the bill, particularly the adoption of the gate keeping function of the courts on damages issues.
Mr. Lasersohn stated his belief that there was no need for damages reform, citing statistics about damages awards in cases that go to trial to support his position that many of the fears of others are overstated.
Mr. Kamen expressed his belief that Congress look at the big picture by not focusing only on what is wrong, but on what the patent laws provide and instead nurture those portions of the laws. He suggested better funding and more examiners in the PTO to ensure better patents. He cautioned against reform to solve smaller problems that in turn could hurt the more important overall good.
Mr. Cassidy used his time to discuss the post-grant review (while expressing his agreement with Mssrs. Lasersohn and Kamen). He stated his views that the current state of the law is balanced against patent holders and, as such, harms the foundation and strength of U.S. patent protection.
Prof. Thomas spoke about the need for substantive as well as evidentiary reform and sees the bill as it currently stands as relying too much on current standards - dealing more with the evidentiary side as opposed to substantive issues.
To view the actual amendment click here.