Quarterly Patent Review: Fall 2019
The bi-partisan Tillis-Coons bill to reform patent eligibility issues under 35 U.S.C. § 101 was proposed back in May. A follow-up to the draft bill was expected in August but has not yet materialized.
- 5/22: Press Release of Draft Bill to Reform Section 101 of the Patent Act | Thom Tillis
- 8/21: United States: Patent Eligibility Reform In Congress: Updates On The Tillis-Coons Proposal | Christopher P. King, Mondaq
The Supreme Court held in Return Mail v. U.S. Postal Service that a US government agency is not a "person" and thus cannot challenge patents using IPRs or the other AIA review procedures.
In line with Saint Regis Mohawk Tribe v. Mylan Pharms, Inc. where sovereign immunity did not shield a Native American tribe from IPR challenges, the Federal Circuit held in Regents of the Univ. of Minn. v. LSI Corp. that sovereign immunity similarly does not shield state organizations from IPRs, ruling that IPRs were "agency enforcement actions" rather than lawsuits. And in Celgene v. Peter, the Federal Circuit held that applying IPRs to patents that were filed before the AIA was enacted was not a taking, setting up a potential showdown in the Supreme Court.
- 6/10: Return Mail: Government is Not a “Person” and Therefore Cannot File AIA Review Petitions | Dennis Crouch, PatentlyO
- 7/30: Next Steps After Celgene: Federal Circuit Ruling on Takings Clause and IPRs Leaves Open Questions | Matthew Rizzolo & Kathryn Thornton, IPWatchdog
- 8/15: The Most Important U.S. Patent Cases of 2019 Thus Far | Christopher E. Loh, Venable LLP
Most companies seem to be reluctant to engage in serious licensing discussions without the threat of litigation. None the less, large NPEs including Longhorn IP, Dominion Harbor, WiLAN, and Acacia have shown increased activity and interest in acquiring patents. For deals that are going through in the brokered patent market for individual portfolios, many appear to be individual licenses rather than outright sales.