Google, Microsoft Split on Proposal To Expand CBM Challenge Program

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By Tamlin H. Bason  

Nov. 8 --An expansion of the covered business method challenge program is one of the most cost-efficient ways to deal with the litany of bad software patents that are driving a disproportionate amount of abusive patent litigation, Google Inc.'s senior patent counsel said Nov. 8 during a panel discussion at a conference hosted by American University's Program on Information Justice and Intellectual Property.

Suzanne Michel's embrace of the Innovation Act's call for an extension of the CBM program--which, under the America Invents Act, will expire at the end of 2020--was countered by another panelist from the technology community.

“We have supported general means to challenge patents across the board, but we are a little sensitive about a program that allows you to only go after software patents,” David Jones, director of IP policy strategy at Microsoft Corp., said.

Consensus on Need for More Focus on § 112

Jones and Michel were in general agreement both that there was a problem with abusive patent litigation and that an increased focus by the Patent and Trademark Office on 35 U.S.C. § 112 could ameliorate some of the problem. Michel, however, seemed to believe that since software patents of questionable value are most responsible for the uptick in litigation, it is appropriate to single them out.

“These are patents that pretty much make you gag when you read them,” Michel said. She noted that there was agreement that a lack of attention to Section 112's written description, enablement and definiteness requirements is a primary cause of the problem. “The only way to bring Section 112 actions on existing patents is through CBM. It would be nice to allow the PTO to clean up some of the mess that is out there,” she said.

Jones disagreed only to the extent that CBM challenges single out a particular category of patents, which he said makes little sense when the problem extends beyond the software community.

“On a more principled level, we think that this problem runs throughout the patent system and if we are going to address it, let's address it,” Jones said.

The moderator of the panel, Megan LaBelle, associate professor at Catholic University Law School, asked if it was feasible to open all patents up to post-grant review under the CBM program.

Caroline Dennison, legal advisor for the PTO's Office of Patent Legal Administration, said that with the PTO's current resources, it would be difficult to expand PGR.

In response, Michel pointed out that the PTO's new fee structure “is set up to make every challenge self funded.” She noted that a current problem is that the PTO has been hit both by sequestration and by fee diversion. But, assuming the agency can get the funds that it needs, she saw no reason that a PGR expansion to all patents couldn't work “if the fees are funding the program.”

Separation of Powers Issue

There was also disagreement on an earlier panel discussion that was more broadly focused on patent reform efforts that went beyond the CBM provision.

Adam Mossoff, a law professor at George Mason University, Arlington, Va., reiterated the criticisms he had voiced the day before during a hearing held by the Senate Committee on Commerce, Science, and Transportation. Mossoff said the legislative proposals seem to be being rushed through, and he questions whether an empirical case has been made for the utility of some of the provisions.

“I worry that we are not fully taking into account the systemic effects and the implications that will follow changing patent law just two years after the enactment of the America Invents Act,” Mossoff said.

Mossoff also noted that many in the judiciary are raising concerns about provisions in the Innovation Act that they feel overstep the Congress's constitutional powers. On Nov. 6, the Judicial Conference of the United States delivered letters to the chairman and ranking minority member of House Judiciary Committee claiming that H.R. 3309, the most comprehensive bill now under consideration, “runs counter to” the Rules Enabling Act process.

“I don't see a constitutional problem about the process of developing new federal litigation rules,” Andy Gavil, director of the Office of Policy Planning for the Federal Trade Commission, said. He noted that Congress enacted similar new rules requiring more demanding pleadings standards in securities litigation.

Gavil said he could understand why the Judicial Conference was upset, but he also noted that there are plenty of existing litigation tools that could be used to address some of the very problems that are being targeted by some of the legislative proposals.

Gavil said: “The broader picture would be that to the degree that there are tools available now, why aren't they being used?”

 

To contact the reporter on this story: Tamlin Bason in Washington at tbason@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com