Patent Reform Bill S.515 Update – Compromise May Be Near in Senate Judiciary Committee

April 1, 2009

The Patent Reform Act of 2009 represents the third consecutive congressional session to attempt the first overhaul of the U.S. patent system since 1952. Tuesday morning, March 31, 2009, Senators Leahy, Specter and Feinstein all agreed that an agreement is very close on all of the contentious issues in the Patent Reform Bill, including patent damages, willful damages, inequitable conduct, best mode, post-grant review, interlocutory appeals and venue. While the agreements were discussed, Senator Leahy explained that the Senators and their staff are still working on the exact language that will be put in place prior to the next scheduled meeting on Thursday, April 2, 2009.

From Tuesday morning’s meeting, it appears that the Senators agree on the following changes:

  • Damages: The legislation will include a “gatekeeper” provision that will allow parties to submit summary judgment motions on damages, but will not change the existing law — rather the legislation will codify the existing law of damages.
  • Best Mode: The best mode description requirement for patent specifications will be maintained. However, failure to disclose the best mode will not be grounds for invalidating patent or rendering it unenforceable.
  • Interlocutory Appeals: The legislation will include an interlocutory appeals provision that will require district courts to certify that certain specific standards have been met. The legislation as introduced would have given district courts complete discretion in approving/denying applications for interlocutory appeals of claim constructions.
  • Willfulness: The legislation will include a willfulness provision that is in line with the Federal Circuit’s decision in Seagate.
  • Venue: The legislation will include a subsection on venue, codifying the Federal Circuit’s recent decision in TS Tech.

It is expected that the Senate Judiciary Committee will release details of the agreement reached by the Senators on or about April 1, 2009.

During Tuesday’s meeting, Senator Kyl (R-Ariz.) alone expressed disappointment in the Leahy-Specter-Feinstein compromise. Senator Kyl opposed anticipated changes to post-grant review, interlocutory appeals, and willfulness.

If the Leahy-Specter-Feinstein compromise is supported by other Senators, the committee could approve the bill as early as tomorrow. Tomorrow’s committee meeting is scheduled for 10:00 a.m. in room 226 of the Dirksen Building.