PALO ALTO, Calif. — Congress is expected to pass legislation soon to curb frivolous patent infringement suits. But experts warn that the current draft bills are hampered by a lack of hard data and could have unintended consequences.
"I think some form of patent reform directed at litigation abuse will pass, though it may not be what the House has passed," Mark A. Lemley, a Stanford Law School professor focused on intellectual property, said in an email exchange with EE Times. (The House of Representatives passed Innovation Act, HR 3309, in December.) "Most patent academics, like most innovative companies, recognize patent litigation abuse as a serious problem and want to see something done about it."
David J. Kappos, former undersecretary of the US Patent Office, is currently in private practice with the New York law firm Cravath, Swaine & Moore LLP. "My view is legislation is quite likely to move forward and we can get it right... to do some modest things to discourage [frivolous] suits without discouraging good faith innovators," he told EE Times. However, current draft legislation "also has provisions that are not going to achieve [its] goals but will have regrettable downsides."
Specifically, the draft legislation would require losers to pay court costs. The provision "needs to be carefully calibrated... so it only applies where the loser is taking a position that is not substantially justified," Kappos said. Otherwise, it could favor the more wealthy party in the suit.
Another provision calls for delaying the expensive process of discovery until the court examines the patents in the case, reducing upfront costs of a trial. However, current drafts "reach too far into the discretion of the judicial branch," he said.
One other provision tries to eliminate the practice of suing companies such as retailers, cafes, and innkeepers that lack financial and technical resources to fight a patent suit. However, draft legislation is written in a way that could stretch unintentionally to apply to supply chain manufacturing partners. The good news is "there are briefings going on as we speak... [that could] steer legislation to a center point."
— Rick Merritt, Silicon Valley Bureau Chief, EE Times