Senate Passes Amended Bill for Program To Enhance District Court Patent Expertise

Bloomberg BNA’s Patent Trademark & Copyright Journal® is the IP industry’s premier news service, offering customizable, objective, timely, and reliable news coverage and commentary from leading...

In a surprise move, the U.S. Senate on Dec. 13 passed by unanimous consent an amended version of a bill, H.R. 628, aimed at establishing a 10-year pilot program in certain district courts to encourage enhancement of expertise in patent cases among district judges. The amended bill must return to the House for approval before being cleared for the president's signature

The stated goal of the program as originally proposed was to see whether designating and/or training specific judges to review patent cases--rather than randomly assigning the cases to all judges--would result in fewer reversals by the U.S. Court of Appeals for the Federal Circuit of patent claim construction decisions.

The bill as passed by the Senate was an amendment in the nature of a substitute to H.R. 628, which the U.S. House of Representatives passed in March 2009 by a vote of 409 to 7 (77 PTCJ 517, 3/20/09).

Amendment Differences.

Similar to unsuccessful legislation from past Congresses, H.R. 628 was introduced in January 2009 by Rep. Darrell E. Issa (R-Calif.) (77 PTCJ 308, 1/30/09). In floor remarks before the final House action on H.R. 628, Issa stressed that his legislation is not aimed at creating “specialty courts.” Rather, he said, its purpose is to allow judges experienced and interested in patent litigation to step forward and handle those cases.

An identical Senate counterpart, S. 299, was introduced the same day by Sen. Arlen Specter (D-Pa.) but was never considered by the Senate Judiciary Committee. Now nearing the end of the lame-duck session of Congress, the Senate voted to discharge the committee from further consideration and to take up the amended bill on the floor.

There are two substantive differences between the substitute amendment and the original H.R. 628:

• Under the Senate-passed bill, the director of the Administrative Office of the U.S. Courts can select six courts to participate in the program. The selection must include three courts having more than 10 judges and three courts having less. In the earlier version, at least six and up to 15 courts having at least 10 judges could have been selected.

• A section titled “Authorization for Training and Clerkships” was deleted. The prior bill would have authorized the appropriation of $5 million to train judges and compensate clerks with technical expertise. A Senate staffer suggested that the bill's sponsors eliminated the funding language to ensure movement of the legislation during the lame-duck session of Congress.

The bill as passed retains language requiring the director of the Administrative Office of the U.S. Courts to submit periodic reports to Congress on the efficacy of the pilot program.

The amended H.R. 628 at