How has your year as AIPLA President been?
It has been very intense and also very fulfilling. It has been one of my most rewarding and humbling experiences. I traveled over 200,000 miles on behalf of the Association this past year, visiting four continents and 25 cities. It has been a really wonderful experience to see the worldwide atmosphere about intellectual property rights, how it varies so much, and is so valuable and important for our global economy. It has been a really wonderful experience. It is little bit bitter sweet that I am coming to the end of my term.
We filed a record number of amicus briefs, not only in the US Supreme Court but in other courts including the Federal Circuit and the Ninth Circuit Court of Appeals. We had 11 briefs filed with the Supreme Court, which was in significant part because they have been taking a huge number of IP-related cases. We really felt as an organization that if at all possible we should have a voice or stake in those debates.
My unofficial tally is that in the vast majority of those cases we landed roughly where the Supreme Court landed. It is hard to tell cause and effect but it is certainly not the case that we are an outlier. We have our finger on the pulse in terms of where the law is going and we have a unique and important voice for those debates.
In a similar fashion one of the key things legislatively was the focus in Congress on reforming litigation abuse through patent legislation. We were a major stakeholder in those debates. We are heavily involved as an organization in trying to present a balanced view. It has to be very carefully weighed to avoid throwing out the baby with the bathwater. In the end they did not pass a bill, partly I think because they could not get a reasoned middle ground, the kind that we were fighting for. It remains to be seen what happens next session, but we were very engaged in those debates.
What do you see as the biggest issues for the next year?
I think we will still see new debates in Congress about issues around litigation reform.
The impact that Supreme Court decisions on patent eligibility – like under Myriad, Prometheus and Alice – is having on a wide range of technologies that are the foundation of our economy continues to also be of great concern to a lot of our people.
In addition, assuming that Michelle Lee is confirmed as Director, there will be a whole new era of working with the USPTO with her leadership. That will be a key part of the coming year.
Lastly, the work around harmonization among the major IP Offices and treaties such as the TPP are coming to be a very key continuing part of our work. It is increasingly becoming clear we are a very small world and we need to figure out how we coordinate in that world.
How significant was the Supreme Court’s Alice ruling?
It depends on who you ask. It really will depend on the courts and how the Patent Office works through it. Some people will say if you look at the actual case at issue it was very similar to the patent in Bilski. So they would say it wasn’t that extraordinary of a different outcome, the patent was just too simplistic, too abstract and didn’t have enough concrete description to it. That would be one argument. The other is that the court went much farther than that, and some of its language and arguably dicta could have an effect on patent eligibility. People are arguing that is already having an effect in the Patent Office and we are still waiting for guidelines from the Office about that.
My hope is that it wouldn’t upset too much the expectation we have had for decades and decades that actual software-related inventions are no different from any other inventions that human beings create. Software is just another species of – frankly, when you get down to it – mechanical invention. This has been a discussion that has been going on since the 1970s – it was intense then and it’s intense now.
You recently filed comments with the USPTO about Patent Trial and Appeal Board proceedings. How game changing has the PTAB been?
I was involved in that for AIPLA, which strongly supported administrative review as part of the AIA. I was also involved at the Patent Office because I sit on the Patent Public Advisory Committee, which reviewed those proposed regulations. I have been vocal in asking questions during our sessions with Chief Judge Smith and other members of the PTAB about how they are implementing those regulations, and how they are ensuring fairness and due process to the patent owners as well as to the challengers, and making sure that they observe substantive and procedural fairness. I have been pleased that the Office has been very open to hearing concerns. I welcomed the recent Federal notice and the series of road shows where they visited a number of cities and asked for input and feedback about how they are performing. I think it shows they are willing to listen and adjust these procedures.
The statistics have been a little concerning, but it is always hard to find the full trend just from one year’s worth of statistics. It concerns a number of people that there has been a high rate of instituting these cases, and that in some or many of them they are invalidating all of the claims. This includes patents that have gone through very significant challenges in open courts all the way through to appeal and then all of a sudden they are now invalidated on other grounds within one year.
But the real question is: how much of this is an artifact of it being the first year versus what is the eventual run rate going to look like? Will it normalize into something that looks more fair? That is going to be another key issue for the coming year, working with the Patent Office and evaluating that question. We have one branch of the Patent Office that collects user fees for filing patent applications and getting patents granted, and a whole other branch of the Patent Office gathering contester fees for arguably dismantling these same assets they just created. So the question is: is there the right balance in that system? Most people agree we need some mechanism for an opposition-type process, like you have in Europe, but it just comes down to whether it is constructed along fair and due process grounds.