Wednesday, April 01, 2009

Amendments to Patent Reform Bill To Be Submitted Tomorrow

After yesterday's announcement of "very significant" changes to the patent reform bill, copies of the proposed amendments have started to float about the blogosphere (courtesy of Hal Wegner).

Well, here is a peek at the language in the amendments, starting with damages:

§ 284. Damages


(1) COMPENSATORY DAMAGES AUTHORIZED.—Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. In determining damages, the court will direct the jury to consider any relevant factors or methodologies, under applicable law, based on the evidence presented.

(2) USE OF EXPERTS PERMITTED.—The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.



The court shall identify the methodologies and factors that are relevant to the determination of damages, and the court or jury, shall consider only those methodologies and factors relevant to making such determination.

(2) DISCLOSURE OF CLAIMS.—By no later than the entry of the final pretrial order, unless otherwise ordered by the court, the parties shall state, in writing and with particularity, the methodologies and factors the parties propose for instruction to the jury in determining damages under this section, specifying the relevant underlying legal and factual bases for their assertions.

(3) SUFFICIENCY OF EVIDENCE.—Prior to the introduction of any evidence concerning the determination of damages, upon motion of either party or sua sponte, the court shall consider whether one or more of a party’s damages contentions lacks a legally sufficient evidentiary basis. After providing a nonmovant the opportunity to be heard, and after any further proffer of evidence, briefing, or argument that the court may deem appropriate, the court shall identify on the record those methodologies and factors as to which there is a legally sufficient evidentiary basis, and the court or jury shall consider only those methodologies and factors in making the determination of damages under this section. The court shall only permit the introduction of evidence relating to the determination of damages that is relevant to the methodologies and factors that the court determines may be considered in making the damages determination.
On willfulness:
[A]n infringer may not be found to have acted with objective recklessness where for
any period of time during which the infringer had an informed good faith belief that the patent was invalid or unenforceable, or would not be infringed by the conduct later shown to constitute infringement of the patent, and—

(i) there was reasonable reliance on advice of counsel;

(ii) the infringer sought to modify its conduct to avoid infringement once it had discovered the patent; or

(iii) there is sufficient evidence that the infringer had a good faith belief that the patent was invalid or unenforceable, or would not be infringed by conduct later shown to constitute infringement of the patent.
Interlocutory appeals are back on the table, and Best Mode "shall not be a basis on which any
claim of a patent may be canceled or held invalid or otherwise unenforceable."

While there have been reports that post-grant review would be based on "an interesting question" as opposed to "a substantial new question of patentability", such language is not seen in the presently proposed amendments.

-- Read a copy of the proposed amendments here (link)

See also

- Gene Quinn: "Huge Changes to Senate Patent Reform Bill Announced" (link)

- Kevin Noonan, "Progress on Senate Patent Reform Bill" (link)

- F. Scott Kieff & Kevin Rivette: "Congress — Let U.S. patent law 'marinate' before taking action" (link)

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