H. R. 5096
IN THE HOUSE OF REPRESENTATIVES
April 5, 2006
Mr. Berman (for himself and Mr. Boucher) introduced the following bill; which was referred to the Committee on the Judiciary
To amend title 35, United States Code, to modify certain procedures relating to patents.
This Act may be cited as the
Depend on Quality Act of 2006 or
Title 35, United States Code, is amended by inserting after chapter 31 the following new chapter:
Post-grant opposition procedures
321. Right to oppose patent; opposition request.
322. Real party in interest.
323. Timing of opposition request.
324. Limits on scope of validity issues raised.
325. Institution of the opposition proceeding.
326. Patent owner response.
327. Amendment of claims.
328. Discovery and sanctions.
329. Supplemental submissions.
330. Hearing and briefs.
331. Written decision.
332. Burden of proof and evidence.
337. Duration of opposition.
339. Intervening rights.
340. Relationship with reexamination proceedings.
Right to oppose patent; opposition request
Filing of opposition
A person may request that the grant or reissue of a
patent be reconsidered by the Patent and Trademark Office by filing an
opposition seeking to invalidate 1 or more claims in the patent. The Director
shall establish, by regulation, fees to be paid by the person filing the
opposition (in this chapter referred to as the
of patents and printed publications to be relied upon in support of the request
must be filed with the request. If an opposer relies on other factual evidence
or on expert opinions in support of the opposition, such evidence and opinions
must be filed with the request through one or more accompanying affidavits or
Copies provided to patent owner
Copies of any documents filed under subsection (a) must be provided to the patent owner or, if applicable, the designated representative of the patent owner, at the time of filing under subsection (a), except that if a request is made that the identity of a real party in interest be kept separate pursuant to section 322(b), then the identity of the real party in interest may be redacted from the copies provided.
File available to the public
The file of any opposition proceeding shall be made available to the public, except as provided in section 322.
Real party in interest
The person making a request under section 321 shall identify in writing each real party in interest, and the opposition pursuant to the request shall proceed in the name of the real party in interest.
Identity kept separate upon request
Subject to paragraph (2), if requested by the opposer, the identity of a real party in interest shall be kept separate from the file of the opposition and made available only to Government agencies upon written request, or to any person upon a showing of good cause. If the identity of a real party in interest is kept separate from the file under this paragraph, then the opposition shall proceed in the name of the individual filing the request as the representative of the real party in interest.
No request under paragraph (1) to keep the identity of a real party in interest separate from the file of the opposition may be made or maintained if the opposer relies upon factual evidence or expert opinions in the form of affidavits or declarations during the opposition proceeding or if the opposer exercises the right to appeal under section 141.
Timing of opposition request
A person may not make an opposition request under section 321 later than 9 months after the grant of the patent or issuance of the reissue patent, as the case may be, or later than 6 months after receiving notice from the patent holder alleging infringement of the patent, except that, if the patent owner consents in writing, an opposition request may be filed anytime during the period of enforceability of the patent. A court having jurisdiction over an issue of validity of a patent may not require the patent owner to consent to such a request.
Limits on scope of validity issues raised
An opposition request under section 321 must identify with particularity the claims that are alleged to be invalid and, as to each claim, 1 or more issues of invalidity on which the opposition is based. The issues of invalidity that may be considered during the opposition proceeding are double patenting and any of the requirements for patentability set forth in sections 101, 102, 103, and 112, and the fourth paragraph of section 251, except for—
any requirement contained in the first paragraph of section 112 relating to disclosing the best mode; and
any issue arising under subsection (c), (f), or (g) of section 102.
Institution of the opposition proceeding
The Director may dismiss an opposition request that the Director determines lacks substantial merit. The determination by the Director to dismiss an opposition request shall not be appealable. The dismissal of an opposition request shall not be admissible in any civil action related to the patent against which a dismissed request was filed.
If the Director receives 1 or more requests that meet the requirements of section 321 regarding the same patent by the Director and are not dismissed under paragraph (1), an opposition proceeding shall be promptly instituted pursuant to the request or requests, but not before a period of 9 months has elapsed since the date on which the patent was granted.
If an opposition proceeding is instituted based upon more than 1 opposition request, the opposition shall proceed as a single consolidated proceeding, unless later divided under subsection (c).
The parties to an opposition proceeding under this section shall be the patent owner and each opposer whose request meets the requirements of section 321 and has not been dismissed under subsection (a)(1).
Decision by panel
The Director shall assign the opposition proceeding to a
panel of three administrative patent judges (in this chapter referred to as the
panel). The panel shall decide the questions of patentability
raised in each opposition request for which an opposition proceeding has been
instituted. The decision shall be based upon the prosecution record that was
the basis for the grant of the patent and the additional submissions by the
parties to the opposition proceeding authorized under this chapter. The panel
may, in appropriate cases, divide the opposition into separate proceedings if
the opposition involves multiple opposition requests by different
Patent owner response
After the Director has instituted an opposition proceeding under section 325, the patent owner shall have the right to file, within the time period set by the panel, a response to each opposition request that is the subject of the proceeding. The patent owner, in responding to an opposition request, shall file with the response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response.
Amendment of claims
The patent owner is entitled to request amendment of any claims that are the subject of an opposition proceeding under this chapter, including by the addition of new claims. The patent owner shall file any such request for amendment with the patent owner’s response to an opposition request under section 326. The panel may permit further requests for amendment of the claims only upon good cause shown by the patent owner. No amendment enlarging the scope of the claims of the patent shall be permitted in the opposition proceeding.
Discovery and sanctions
After an opposition proceeding is instituted under this chapter, the patent owner shall have the right to depose each person submitting an affidavit or declaration on behalf of any opposer, and each opposer shall have the right to depose each person submitting an affidavit or declaration on behalf of the patent owner. Such depositions shall be limited to cross-examination on matters relevant to the affidavit or declaration. No other discovery shall be permitted unless the panel determines that additional discovery is required in the interest of justice. The panel shall determine the schedule for the taking of discovery under this subsection.
If any party to an opposition proceeding fails to properly respond to any discovery under subsection (a), the panel may draw appropriate adverse inferences and take other action permitted by statute, rule, or regulation.
The panel may permit one or more supplemental submissions to be made by any party to an opposition proceeding under this chapter, subject to the rights and limitations on discovery under section 328.
Hearing and briefs
Any party to an opposition proceeding under this chapter may request an oral hearing within the time set by the panel. If a hearing is requested or the panel determines sua sponte that a hearing is needed, the panel shall set a time for the hearing. The panel may permit the partied to file briefs for the hearing, and shall permit cross-examination of all affiants and declarants in the hearing, either before the panel or by deposition taken under section 328.
The panel shall issue a written decision on each issue of patentability with respect to each claim that is the subject of an opposition proceeding under this chapter. The written decision shall consist of findings of fact and conclusions of law. The written decision shall become a final determination of the Office on the issues raised in the opposition unless a party to the opposition files a request for reconsideration and modification of the written decision within a period set by the panel, which shall not be less than two weeks from the date of the written decision.
Burden of proof and evidence
Burden of proof
The opposer in an opposition proceeding under this chapter shall have the burden to prove the invalidity of a claim by a preponderance of the evidence. The determination of invalidity shall be based upon the broadest reasonable construction of the claim.
The Federal Rules of Evidence shall apply to the opposition proceeding, except to the extent inconsistent with any provision of this chapter.
If a request is filed for reconsideration of the written decision in an opposition proceeding under this chapter, the panel may authorize a party to the proceeding who did not file such a request to file a response to the request for reconsideration. Following any reconsideration, the panel shall either deny the request for modification of the written decision or grant the request and issue a modified written decision, which shall constitute the final determination of the Office on the issues raised in the opposition proceeding.
A party dissatisfied with the final determination of the panel in an opposition proceeding under this chapter may appeal the determination under sections 141 through 144. Any party to the opposition proceeding shall have the right to be a party to the appeal.
When a decision of a panel in an opposition proceeding under the chapter has become final under section 331, 333, or 334, as the case may be, the Director shall issue and publish a certificate in accordance with the decision, canceling any claim of the patent determined to be unpatentable, and shall incorporate into the patent any new or amended claims determined to be patentable. The issuance of the certificate shall terminate the opposition proceeding.
Subject to paragraph (2), after a certificate has been issued under section 335 in accordance with the decision of the panel in an opposition proceeding, the determination with respect to an issue of invalidity raised by an opposer shall bar that opposer from raising, in any subsequent proceeding involving that opposer under this title, any issue of fact or law actually decided and necessary to the determination of that issue.
If an opposer in an opposition proceeding demonstrates, in a subsequent proceeding referred to in paragraph (1), that there is additional factual evidence that is material to an issue of fact actually decided in the opposition proceeding, and necessary to the final determination in the opposition proceeding, that could not reasonably have been discovered or presented in the opposition proceeding by that opposer, the opposer may raise, in that subsequent proceeding, that issue of fact and any determined issue of law for which the issue of fact was necessary.
Expanded definition of opposer
purposes of this section, the term
opposer includes the person
making the request under section 321, any real party in interest, and their
successors in interest.
If a proceeding arising by reason of additional factual evidence raised under subsection (a)(2) involves a real party in interest not identified to the patent owner under section 322, the real party in interest shall notify the Director and the patent owner of that fact and of the proceeding, within 30 days after receiving notice that the proceeding has been filed.
Duration of opposition
The determination of a panel in an opposition proceeding under this chapter, including any determinations pursuant to a request for reconsideration under section 133, shall be issued not later than 1 year after the date on which the opposition proceeding is instituted under section 325. Upon good cause shown, the Director may extend the 1-year period by not more than 6 months.
An opposition proceeding under this chapter shall be terminated with respect to any opposer upon the joint request of the opposer and the patent owner, unless the panel has issued a written decision under section 331 before the request for termination is filed. If the opposition is terminated with respect to an opposer under this section, no estoppel under section 336 shall apply to that opposer with respect to an issue of invalidity raised in the opposition proceeding. The written decision under section 331 shall thereafter be issued only with respect to issues of invalidity raised by opposers that remain in the opposition proceeding.
Agreements in writing
Any agreement or understanding between the patent owner and an opposer, including any collateral agreements referred to therein, that is made in connection with or in contemplation of the termination of an opposition proceeding under subsection (a) shall be in writing. The opposition with respect to the parties to the agreement or understanding shall not be terminated until a true copy of the agreement or understanding, including any such collateral agreements, has been filed in the Patent and Trademark Office. If any party filing such an agreement or understanding requests, the agreement or understanding shall be kept separate from the file of the opposition, and shall be made available only to Government agencies on written request, or to any person on a showing of good cause.
Discretionary actions reviewable
Any discretionary action of the Director under subsection (b) shall be reviewable under chapter 7 of title 5.
Any proposed amended or new claim determined to be patentable and incorporated into a patent following an opposition proceeding under this chapter shall have the same effect as that specified in section 252 of this title for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation therefor, before the certificate issued under section 335 with respect to that amended or new claim.
Relationship with reexamination proceedings
A patent for which an opposition proceeding has been instituted under this chapter may not thereafter be made the subject of a request under section 302 or 311 for reexamination, by the same opposer or on behalf of the same real party in interest, on the same claim and on the same issue that was the basis of the opposition proceeding.
Staying of other proceedings
[If, after an opposition proceeding has been instituted under this chapter, a request for reexamination under section 302 or section 311 is made by or on behalf of a person other than the opposer or the same real party in interest, such reexamination shall be stayed during the pendency of any opposition proceeding under this chapter.]
The table of chapters for part III of title 35, United States Code, is amended by adding at the end the following:
Publication of patent applications
Section 122 of title 35, United States Code, is amended—
in subsection (b)(2)—
by striking subparagraph (B); and
in subparagraph (A)—
(A) An application and inserting
by redesignating clauses (i) through (iv) as subparagraphs (A) through (D), respectively; and
by striking subsection (c) and redesignating subsection (d) as subsection (c).
Submissions by third parties
Section 131 of title 35, United States Code, is amended—
The Director and inserting
by adding at the end the following:
Third party submissions
Any party shall have the opportunity to submit for consideration and for inclusion in the record, prior art (including, but not limited to, evidence of knowledge or use, or public use or sale, under section 102), to determine whether the invention was known or used, or was in public use, or on sale, under section 102 or would have been obvious under section 103. The Director shall consider such submissions if the request—
is made in writing not later than—
6 months after the date on which the patent application is published under section 122, or
before the date on which a notice of allowance is mailed under section 151 for a patent on the invention,
is accompanied by the payment of a fee established by the Director under section 41 for third party submissions;
sets forth the teaching and applicability of each reference and the basis on which the submission is offered; and
includes a sworn declaration attesting to the relevance and accuracy of the submissions.
Inter partes reexamination
Section 315(c) of title 35, United States Code, is
amended by striking
or could have raised.
Section 317(b) of title 35, United States Code, is amended—
in the heading, by striking
decision and inserting
in the first
sentence, by striking
final decision and inserting
decision of a district court.
Notwithstanding section 4608(a) of the Intellectual Property and Communications Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law 106–113 (41 U.S.C. note), sections 311 through 318 of title 35, United States Code, as amended by this section, shall apply to any patent that issues from an original application filed before, on, or after November 29, 1999.
Section 284 of title 35, United States Code, is amended—
in the first
paragraph, by striking
Upon and inserting
by amending the second paragraph to read as follows:
A court that has determined that the infringer has willfully infringed a patent or patents may increase the damages up to three times the amount of damages found or assessed under subsection (a), except that increased damages under this paragraph shall not apply to provisional rights under section 154(d) of this title.
Permitted grounds for willfulness
A court may find that an infringer has willfully infringed a patent only if the patent owner presents clear and convincing evidence that—
after receiving written notice from the patentee—
alleging acts of infringement in a manner sufficient to give the infringer an objectively reasonable apprehension of suit on such patent, and
identifying with particularity each claim of the patent, each product or process that the patent owner alleges infringes the patent, and the relationship of such product or process to such claim,
the infringer intentionally copied the patented invention with knowledge that it was patented; or
after having been found by a court to have infringed that patent, the infringer engaged in conduct that was not colorably different from the conduct previously found to have infringed the patent, and which resulted in a separate finding of infringement of the same patent.
Limitations on willfulness
A court shall not find that an infringer has willfully infringed a patent under paragraph (2) 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.
An informed good faith belief within the meaning of subparagraph (A) may be established by reasonable reliance on advice of counsel.
The decision of the infringer not to present evidence of advice of counsel shall have no relevance to a determination of willful infringement under paragraph (2).
Limitation on pleading
Before the date on which a determination has been made that the patent in suit is not invalid, is enforceable, and has been infringed by the infringer, a patentee may not plead, and a court may not determine, that an infringer has willfully infringed the patent. The court’s determination of an infringer's willfulness shall be made without a jury.
in the third
paragraph, by striking
The court and inserting
Section 1400 of title 28, United States Code, is amended by adding at the end the following new subsection:
A court shall grant a motion to transfer an action to a judicial district or division in which the action could have been brought if—
such judicial district or division is a more appropriate forum for the action, including any judicial district or division where a party to the action has substantial evidence or witnesses;
the action was not brought in a district or division—
in which the patentee resides or maintains its principal place of business;
in which an accused infringer maintains its principal place of business; or
in the State in which an accused infringer, if a domestic corporation, is incorporated;
at the time the action was brought, neither the patentee nor an accused infringer had substantial evidence or witnesses in the judicial district in which the action was brought; and
the action has not been previously transferred under this subsection.
For purposes of subsection (c), the use or sale of allegedly infringing subject matter in a judicial district shall not, by itself, establish the existence of substantial evidence or witnesses in such a judicial district.
Section 283 of title 35, United States Code,
is amended by adding at the end the following:
In determining equity,
the court shall consider the fairness of the remedy in light of all the facts
and the relevant interest of the parties associated with the invention. Unless
an injunction is entered pursuant to a nonappealable judgment of infringement,
a court shall stay the injunction pending an appeal upon an affirmative showing
that the stay would not result in irreparable harm to the owner of the patent
and that the balance of hardships from the stay does not favor the owner of the