Senate Judiciary Committee Seen Close to Deal on Patent Bill Compromise

The Senate Judiciary Committee appeared close to reaching agreement Wednesday on language for a compromise version of the Patent Transparency and Improvements Act (S-1720), but had not yet circulated the compromise language, stakeholders told us in interviews. The committee is scheduled to begin considering S-1720 Thursday at an executive business meeting, but under committee rules all new bills up for consideration are automatically rescheduled for markup at least a week after first coming before the committee, putting a markup of S-1720 no earlier than April 3. A committee spokeswoman would not confirm where negotiations stand on S-1720, but said in an email that Leahy and committee staff “continue working with other offices on a bipartisan agreement.”

Negotiations have continued to mainly focus on language for a fee shifting provision, which has long been a top item Sen. John Cornyn, R-Texas, and other committee Republicans have been pushing for inclusion, said Charles Duan, Public Knowledge’s director-Patent Reform Project. Fee shifting was one of several litigation reform measures included in the House-passed Innovation Act (HR-3309) that did not make it into the original version of S-1720, though Republicans have advocated including language on those measures from the Patent Abuse Reduction Act (S-1013) or the Patent Litigation Integrity Act (S-1612). “The question now is whether it’s going to be presumptive fee shifting or if it’s going to be fee shifting that’s conditional on the judge making a finding,” Duan said. The committee is trying to hammer out alternative language that “bridges the gap between those two,” he said.

The compromise S-1720 will likely restore several of the pieces from HR-3309 that were missing from the original S-1720 in order to get Republicans’ support, albeit with different language more palatable to committee Democrats, said an industry lawyer. A fee shifting provision in S-1720 will almost certainly be worded differently from its HR-3309 iteration, said Daniel Nazer, an Electronic Frontier Foundation staff attorney who focuses on patent revamp legislation. Other litigation reform provisions that would directly affect court rules on issues like the discovery process “might instead be recommendations that will be sent to the U.S. Judicial Conference for rule changes,” Nazer said.

It’s unlikely that the compromise S-1720 will include language that would expand the U.S. Patent and Trademark Office’s covered business method (CBM) patent review program to include software patents, despite a push by Sen. Chuck Schumer, D-N.Y., and others, Nazer and an industry lawyer said in separate interviews. Schumer championed CBM program expansion in his Patent Quality Improvement Act (S-866). HR-3309 originally included a CBM expansion provision, which House Judiciary Committee Chairman Bob Goodlatte, R-Va., removed prior to a committee markup of that bill amid strong software industry opposition (CD Nov 20 p16).