Proposed “Patent Troll” Reforms & Design Patents

Yesterday, House Judiciary Committee Chairman Bob Goodlatte introduced a new patent-reform bill called the “Innovation Act.” Like many recent bills, it’s aimed at curbing perceived abuses by so-called “patent trolls” (a/k/a “patent assertion entities”).

But the Innovation Act seems to be different. It has what has been described as “broad bipartisan support” and “a real chance at passing.”

If enacted, the Innovation Act would apply to all patent litigation. There are three types of patents: utility patents, design patents, and plant patents. (For the PTO’s description of each, see here.) However, the Innovation Act seems to have been drafted with only one type of patent—namely, utility patents—in mind.

For example, § 3 of the Innovation Act would impose heightened pleading requirements “in [any] civil action in which a party asserts a claim for relief arising any Act of Congress relating to patents.” Many of these requirements simply would not make sense in design patent cases. For example, one provision requires “[a]n identification of each claim” that is allegedly infringed. Design patents do not have multiple claims. So there’s no need to identify which claim is actually at issue.

And consider the requirement that the claimant explain “where each element of each [asserted] claim . . . is found within the accused” product. Design patent claims don’t have “elements” in the way that utility patents do. Perhaps design patent owners could satisfy this requirement by including side-by-side illustrations of the patent drawings and accused product(s)—something many patent owners already do. But it might take a few motions to dismiss to sort that out.

Other pleading requirements could be more problematic. For example, the Innovation Act requires that a claimant explain, “with detailed specificity, how the terms in each [asserted] claim . . . correspond to the functionality of the accused” product. This one doesn’t fit well with design patents at all. Not only are there no “terms in each . . . claim,” but a design patent is supposed to extend only to non-functional portions of a design. So, if enacted in its current form, this provision could be used to force early claim construction arguments from design patent owners. This might be a sound policy choice. But it doesn’t seem to be an intentional one.

So perhaps this bill (and others like it) should be amended to only apply to utility patent cases. We don’t seem have a widespread, if any, design patent “trolling” problem. And there are important differences between design patents and utility patents. Proposals that overlook or ignore these differences could have serious unintended consequences for design patent litigation.

At a minimum, if we’re going to change the rules for all patents, let’s actually think about how those changes would apply to all patents.

Comments

[Mark Nowotarski]

I agree.