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Innovate4Health Innovation Patents

Innovate4Health: Treating Neonatal Jaundice in the Developing World with D-Rev’s Brilliance

This post is one of a series in the #Innovate4Health policy research initiative.

Innovate4HealthBy Nick Churchill

Severe neonatal jaundice kills over 100,000 newborn babies annually and causes severe brain damage to thousands more. In most cases, the condition can be treated by simply shining a blue light on a baby’s skin. However, each year more than 6 million infants worldwide do not receive adequate treatment. The problem is particularly severe in low-income countries, where many hospitals cannot afford the equipment to treat jaundice.

To address this global health problem, the innovators at D-Rev, a non-profit firm based in San Francisco, designed a high-performance, affordable device called Brilliance to treat severe neonatal jaundice. Brilliance has been praised by users as “effective and user-friendly,” and it was honored as the top innovation in the Health category of the 2016 Tech Awards. Since the introduction of the first Brilliance model in 2012, D-Rev estimates that the device has treated over 250,000 babies and has averted approximately 3,400 infant deaths and disabilities.

Neonatal jaundice occurs when a newborn has elevated levels of bilirubin in the blood. Approximately 18% of babies have severely high levels of bilirubin, which, left untreated, can lead to brain damage, cerebral palsy, hearing loss, and even death. Severe jaundice can be treated with a process called phototherapy, which involves placing the baby under special blue lights. When the light is absorbed by the infant’s skin, it helps break down bilirubin. Treated properly, severe jaundice usually does not cause lasting damage.

Phototherapy has long been recognized as a simple and effective treatment for severe neonatal jaundice; but at around $3,000, traditional phototherapy devices are prohibitively expensive for many hospitals in developing countries. Hospitals that can obtain a traditional unit are often unable to afford the maintenance and repair costs necessary to keep it running. The unreliable electrical systems in many developing countries can cause voltage spikes that damage device components. Commonly used fluorescent lamps require frequent replacement. As a result, phototherapy is unavailable to babies in many developing communities.

D-Rev is a product development company founded in 2007 to provide world-class, affordable healthcare technologies to people living on very low incomes. After learning that severe jaundice continues to cause brain damage in many parts of the world, D-Rev staff members visited hospitals in India and Nigeria to assess the availability of effective phototherapy and found that most of these hospitals did not have phototherapy devices that met standards for care. With the problem identified, D-Rev’s design team got to work.

D-Rev’s advanced devices, for which they are seeking a patent, uses LEDs that last 60x longer than fluorescent lamps, saving hospitals over $240 per year on replacement bulbs. Brilliance is designed to withstand a range of power fluctuations without affecting performance and operates without cooling fans or filters, so there are fewer parts to maintain. The device is height-adjustable and can be integrated with the wide variety of other critical neonatal medical equipment found in hospitals serving low-income communities.

Importantly, D-Rev’s devices are inexpensive to manufacture, which allows D-Rev to sell them for hundreds, instead of thousands, of dollars. The newest model incorporates the technology in their patent application, which ensures light intensity levels remain consistent across the treatment area at any angle of tilt. D-Rev also developed an integrated light meter to help healthcare providers ensure that infants receive appropriate doses of light, something many low income hospitals were previously unable to do. Thus, the innovations developed by D-Rev are improving the technology and reducing cost, making much needed treatments more accessible in the developing world.

After successfully designing an affordable and effective phototherapy device, D-Rev’s next challenge was to find a way to deliver Brilliance to the hospitals that needed it most. D-Rev’s CEO, Krista Donaldson, recognized that the firm would need help to establish a sales and distribution network, noting, “We knew we needed to license in this case.” To achieve its goals, D-Rev needed to find a partner willing to manufacture its products and distribute them to hospitals and clinics in the poorest communities in the world.

D-Rev licensed its technology to Phoenix Medical Systems, a neonatal equipment firm based in India, who agreed to manufacture and distribute Brilliance while capping its price. The licensing agreement was structured so that D-Rev would take a smaller royalty on sales to public and district hospitals, which tend to serve lower-income patients. In this way, D-Rev used its intellectual property rights to align the incentives of Phoenix’s sales team with D-Rev’s goal of reaching those patients who are most in need of affordable phototherapy.

Donaldson has explained why D-Rev’s protection of its intellectual property “is a prerequisite to having the broadest possible impact.” First, intellectual property rights allow D-Rev to ensure that the quality of its products remains consistent. As Donaldson notes, a medical device “cannot fail the user, particularly a user in a vulnerable population.” Second, inconsistency erodes consumer trust, which limits the impact of a product. Third, D-Rev recognizes that designing an effective product does not necessarily solve the targeted problem. By retaining control of its intellectual property, D-Rev can ensure consistent manufacturing of its products, sustainable delivery to users who need it, and continued maintenance and support. Finally, D-Rev protects its intellectual property because the market is “the most economically sustainable and scalable way” of reaching their intended customers.

D-Rev has demonstrated that the value of intellectual property goes beyond incentivizing life-saving innovation like Brilliance. Intellectual property rights empower innovators to increase their impact by partnering with market leaders like Phoenix. As Donaldson concluded: “To succeed, serious partners (for-profit or non-profit) must also make an investment, and none are willing to do that with the threat of knock-offs.”

#Innovate4Health is a joint research project by the Center for the Protection of Intellectual Property (CPIP) and the Information Technology & Innovation Foundation (ITIF). This project highlights how intellectual property-driven innovation can address global health challenges. If you have questions, comments, or a suggestion for a story we should highlight, we’d love to hear from you. Please contact Devlin Hartline at jhartli2@gmu.edu.

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Copyright

Judgment Against Sci-Hub is a Win for Authors and Publishers

shelf full of booksLast week, the United States Court for the Southern District of New York entered a default judgment against Sci-Hub, the Library Genesis Project (LibGen), and a number of related websites and site operators for the willful infringement of dozens of copyright-protected scholarly articles. The judgment comes two years after Elsevier—an international academic publishing company now part of RELX Group—brought suit against the websites and their operators for the unauthorized reproduction and distribution of numerous works to which Elsevier owns the copyright. In awarding the maximum in damages and making permanent a preliminary injunction against US domain name registries associated with the defendants, the decision is not only a win for authors and copyright owners, but represents a strong indictment against the infringement of scholarly works, no matter the purported public benefit.

Sci-Hub—dubbed by some as “the Pirate Bay for science”—was founded in 2011 by Alexandra Elbakyan, a Kazakhstani graduate student and computer programmer who created a website and search engine that bypassed publisher paywalls to collect and distribute copyright-protected academic articles and educational works. The website was unique in that it was one of the first to automate the process of overriding paywalls, eventually partnering with a Russia-based online repository of academic works known as Library Genesis, or LibGen, to store its catalog of both illicitly and legally obtained articles. To access databases such as Elsevier’s ScienceDirect portal, Elbakyan and her fellow operators claim that legitimate subscribers share their passwords, but also admit that passwords are obtained using the same phishing methods hackers use to steal personal and financial information.

Not surprisingly, like other websites that offer free and instant access to stolen content, Sci-Hub became extremely popular all over the world, with hundreds of thousands of download requests per day and a catalog of over 50 million papers. It wasn’t long before authors and copyright owners took notice, and in 2015, academic publishing company Elsevier filed a complaint against Sci-Hub, Elbakyan, LibGen, and a group of related websites and operators for copyright infringement and violations of the Computer Fraud and Abuse Act.

In response to the suit, Elbakyan took a defiant stance, arguing that Sci-Hub’s acts of copyright infringement are justified and making the brazen statement that “[a]ll content should be copied without restriction.” Instead of hiring an attorney, Elbakyan sent a letter to the court accusing Elsevier of operating “by racket” and asking why, like her website, it couldn’t just provide access to everything for free.

Perhaps in response to Elbakyan’s naivite, Tom Allen, then president of the Association of American Publishers (AAP), warned that in addition to the lost revenues to authors and publishers, pirating scholarly materials has a harmful effect on the quality of scientific publications and public health. He explained:

Scholarly publishers work to ensure the accuracy of the scientific record by issuing corrections and revisions to research findings as needed; Libgen typically does not. As a result, its repository of illegally obtained content poses a threat to both quality journal publishing and to public health and safety.

The response of Elbakyan and her supporters to the lawsuit has been a common contention that the academic nature of the content on Sci-Hub somehow elevates the unauthorized distribution above any copyright infringement liability. The “public good” or “public benefit” provided by Sci-Hub is repeatedly invoked, as if copying and distributing scholarly works is different than pirating other content such as music or movies. And while an academic article usually includes facts and ideas that have never been copyrightable, as a whole they are original works of expression—similar to documentary films or educational audio recordings.

Unfortunately, this irreproachable concept of the public good is currently influencing important copyright law decisions such as those related to transformative purpose fair use. In the high-profile Authors Guild v. Google case, proponents of the project repeatedly touted the public good that would come from the creation of a massive online index of books, and the Second Circuit cited this benefit when it ultimately found the unauthorized scanning of millions of copyrighted works to be fair use. It’s a trend that increasingly sees more illegal acts of appropriation deemed fair use because of an alleged public good that may or may not occur after the infringement, and it’s threatening to disrupt the copyright system.

Recognizing that acts of unauthorized reproduction can benefit the public but still be illegal infringement is an important part of understanding and maintaining a balanced approach to copyright and fair use. In a press release addressing the Sci-Hub judgment, current President and CEO of the AAP and former Register of Copyrights, Maria Pallante, praised the Court’s acknowledgment of this concept:

As the final judgment shows, the Court has not mistaken illegal activity for a public good. On the contrary, it has recognized the defendants’ operation for the flagrant and sweeping infringement that it really is and affirmed the critical role of copyright law in furthering scientific research and the public interest.

In its declaratory judgment, the Court awarded Elsevier a maximum $15 million in damages based on the intentional nature of the infringement of a representative sample of 100 works. Along with the maximum damages permitted by law, the judgment makes permanent a 2015 preliminary injunction that required U.S. domain name registries to suspend the defendants’ U.S.-administered domain names, which the AAP believes will be “a deterrent to those who support or do business with illegal operators.”

It’s worth noting that the judgment was entered against the defendants as a result of their failure to respond and it’s unclear whether it will affect Sci-Hub’s overall operation. Elbakyan and her associates remain defiant, pledging to keep Sci-Hub and its sister websites online by alternating between new and different domain names. It’s a practice that has kept pirate sites such as ExtraTorrent and the Pirate Bay alive despite efforts to shut them down, and remains an obstacle to those dedicated to fighting online infringement.

But regardless of whether Sci-Hub’s becomes another whack-a-mole pirate site, publishers, authors, and copyright owners should be encouraged by the Southern District’s recognition of illegal acts of infringement no matter the claims of supreme public good. Hopefully, more judges and lawmakers will make the same distinction and restore sense and stability back into the fair use and transformative purpose debates.

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Uncategorized

As Investment Moves Overseas, the US Must Restore its Gold-Standard Patent System

a lit lightbulb hanging next to unlit bulbsVenture capital investment in the United States has declined steadily for years, as investors abandon an uncertain domestic climate for more reliable opportunities in foreign countries. In a report on the current state of the entrepreneurial ecosystem, the National Venture Capital Association emphasizes the extreme decline in the US share of global venture capital in the last twenty years, highlighting a drop from 83% of global share in 1996 to just 54% in 2015. At a time of decreasing investment, the US should be working to improve its innovation ecosystem, providing stable and effective property rights to inventors so that VCs can once again feel confident that investments in startups’ R&D—secured by patent rights—won’t just be stolen by established and better-financed infringers. Unfortunately, its doing just the opposite. Over the past decade, the US has continued to gut its patent system of the protections and incentives that attracted investment and made it the world leader in cutting-edge innovation in the first place.

Graph showing percent of venture capital dollars by company location, 1996-2015. Information for U.S., China and Hong Kong and Taiwan, India, Asia-Pacific and other, Europe, and Rest of World.While these numbers are certainly cause for concern, they don’t surprise patent law experts such as former Director of the USPTO, David Kappos, who sees the shift in investments as a natural result of the continuing erosion of IP rights in the US. He warns that “[w]hen investment incentives are reduced, you can expect investment to move elsewhere.” And although a variety of factors are likely contributing to the shift of investments outside of the United States, continuing to weaken our patent system will only aggravate this worrisome trend as VCs increasingly look outside of the US for better returns on their investments. The National Venture Capital Association made this point succinctly in congressional testimony back in 2015:

[M]aking it more costly to enforce patents … will have the unintended consequence of diminishing—if not extinguishing—the only true incentive that thousands of innovators presently have to invest the necessary time, money and other resources needed to create a new company from scratch. Put differently, the patent-backed right to own and profit from innovative ideas has been a major driving force for the American economy for 200 years, and that right requires that valid patents be fully enforceable in court at reasonable expense and without undue risk to the patent owner or its investors.

Though the United States has long been regarded as the world leader in securing stable and effective property rights in cutting-edge innovation, over the past decade the US patent system has been transformed by new legislation and misguided Supreme Court decisions. The US tradition of excellence in protecting and encouraging the development of groundbreaking technology has been replaced by a growing sense of uncertainty that is driving money, jobs, and innovative activity overseas.

Patents and related IP rights play an important role in protecting inventors and companies in the innovative marketplace against copycats, and they’re are absolutely vital to R&D-intensive small businesses and VC-backed startups, who are especially vulnerable to having their hard work stolen by larger companies. But as patentable subject matter standards have narrowed in the US, and as the enforcement of IP rights has become a risky and expensive (often impossible) endeavor, investors’ willingness to bet on small R&D-intensive businesses is quickly evaporating.

This troubling dynamic is hitting the most innovative industries the hardest—things like personalized medicine or foundational high tech R&D. Recent Supreme Court decisions have distorted traditional interpretations of patentable subject matter standards and shut the door on game-changing—and potentially lifesaving—inventions. And while the United States backtracks on patentable technologies, foreign jurisdictions are moving forward and encouraging the next wave of innovative breakthroughs. As the Wall Street Journal recently highlighted, China is now embracing advances in biotechnology that the US is rejecting—a trend that may soon result in China leading the world in the development of lifesaving therapeutics and cancer treatment drugs.

With little confidence in the ability of American companies to commercialize and protect their intellectual property rights, investment in innovative research and development has also shifted outside of the United States. As detailed in the 2016 G20 Innovative Report, R&D and patenting activity in the US has slowed as support for R&D and innovation experiences exponential growth in China and other Asian countries. In a Fortune Magazine article titled The Death of American Research and Development, Chris Matthews cites an OECD study that further illustrates this dramatic difference in R&D investment.

Graph showing change in business expenditures on R&D, 2019-2013. Calculated in constant dollars and adjusted for purchasing power parity. China: 78.2%. Korea: 54.8%. Germany: 12.2%. Japan: 11.9%. United States: 7.0%. United Kingdom: 5.4%. Canada: -11.3%. Graphic Sources: OECD; Duke University's FUQUA School of BusinessAn extended decline of American R&D investment in innovative industries would be catastrophic, as the value added to the US economy by IP-intensive industries cannot be overstated. A 2016 Department of Commerce report found that IP-intensive industries—identified as industries that rely most heavily on patents, trademarks, or copyrights—are directly and indirectly responsible for 45 million jobs—30% of the US workforce—and contributed $6.6 trillion to US GDP in 2014. Additionally, the study found that revenues specific to IP licensing—a practice often carelessly maligned as part of the patent “troll” narrative—totaled $115.2 billion in 2012, with 28 industries drawing revenues from licensing.

As Adam Mossoff and I detail in a recent paper, the US is abandoning its “gold standard” patent system at the exact same time that international competitors are embracing the value and importance of patents. We highlight a database of over 1700 patent applications recently rejected in the US but granted in China and the European Union, including applications for potentially lifesaving technologies and therapeutic methods that could usher in the next great advances in medical science. While it may be difficult to judge the long term impact of recently-rejected patent applications in the US, it’s clear that the patent system is no longer the pioneering institution that led the way in the digital and biotech revolutions of the 1980s and 90s. A study released earlier this year by the US Chamber of Commerce ranked the US patent system tenth in overall patent system strength, a significant drop from its former position as number one.

The World Intellectual Property Organization also reports that China is now the main driver of growth in patent applications, recently becoming the first jurisdiction to have over one million applications filed in a given year. And in addition to more filings, China is now granting more patents—many in the dynamic software and biotech industries the US is neglecting. Not surprisingly, stakeholders have recognized these trends, as venture capital investments in China reached a record high of $31 billion in 2016.

To be sure, a weak and uncertain patent protection landscape in the US is not solely to blame for the movement of venture capital to China and other foreign jurisdictions. As Venture Beat notes in a recent article, VCs are also drawn overseas by lower costs (including labor), faster product-to-market times, massive and eager consumer bases, and efficient manufacturing infrastructure. But as a group of venture capital and patent law specialists recently explained at the Advanced Patent Law Institute held at the USPTO, one of the main reason investments are being driven overseas is because an insecure US patent system no longer adequately incentivizes domestic investment. Citing a study by the Kauffman foundation, former Chief Judge of the Federal Circuit Paul Michel warned that because most new jobs come from small start-up companies dependent on technology, if incentives to invest in these job creators are lost, the patent system and economy are in serious danger.

At another recent event, Ami Patel Shah, managing director of Fortress Investment Group, detailed the stark realities facing startups in the wake of the Supreme Court’s patentable subject matter jurisprudence:

[A]s you educate them on the recent uncertainty and the drastic change in the [patentable subject matter] rules and what has happened with their patents, we were not able to provide them financing, nor was anyone else in the venture community giving them venture financing because then it became known that their product was unprotected, that anyone could copy it. So companies were put in bankruptcy or they had a fireside sale.

Across the globe, more and more countries are recognizing that the roots of a vibrant innovation economy lie in stable and effective intellectual property rights. And with countries like China able to offer all-around lower costs, faster production, and millions of eager consumers, it’s no surprise that investors will continue to eye “offshore invention” as a potentially lucrative investment opportunity. In light of this, the US should be working to make sure its patent system isn’t one of the reasons why money is streaming out of the country. If it doesn’t, the next wave of life-changing innovation—and all the economic benefits that come with it—will be realized elsewhere.

 

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Injunctions Innovation Legislation Patent Law Patents

The STRONGER Patents Act: Important Legislation to Protect Our Innovation Economy

U.S. Capitol buildingToday, Senators Chris Coons, Tom Cotton, Dick Durbin, and Mazie Hirono introduced the Support Technology & Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patents Act of 2017. This important piece of legislation will protect our innovation economy by restoring stable and effective property rights for inventors.

First and foremost, the STRONGER Patents Act will bring some much-needed balance to the post-issuance review systems administered by the USPTO’s Patent Trial an Appeal Board (PTAB). Until now, the PTAB has been a “death squad”; an arm of the USPTO killing patents that the same USPTO had previously issued. There are even examples where the PTAB has invalidated a patent that had previously been upheld by the Federal Circuit Court of Appeals.

Data analyzing PTAB outcomes demonstrates just how dire the situation has become. Coordinated and repetitive challenges to patent validity have made it impossible for patent owners to ever feel confident in the value and enforceability of their property rights. Only 16% of patents reaching a final written decision at the PTAB have survived unscathed.

This is not surprising as the procedures have been stacked against patent owners from day one. We and others have noted how broadly construing claims, multiple filings against the same patent by the same challengers, and the inability to amend claims, among other abuses, severely disadvantage patent owners in PTAB proceedings. With the STRONGER Patents Act, these proceedings will move closer to a fair fight to truly examine patent validity. There are many aspects to this legislation that will improve the PTAB, such as:

  • Harmonizing claim construction with litigation, focusing on the “ordinary and customary meaning” instead of the broadest interpretation a bureaucrat can conceive. Sections 102(a) and 103(a).
  • Confirming the presumption of validity of an issued patent will apply to the PTAB just as it does in litigation. Sections 102(b) and 103(b).
  • Permitting only those who are “charged with infringement” of the patent to challenge that patent, thus preventing the abusive and extortionate practice of challenging a patent to extract a settlement or short a company’s stock. Sections 102(c) and 103(c).
  • Limiting abusive repetitive and serial challenges to a patent. Sections 102(d), (f) and 103(d), (f).
  • Authorizing interlocutory review of institution decisions when “mere institution presents a risk of immediate, irreparable injury” to the patent owner as well as in other important circumstances. Sections 102(e) and 103(e).
  • Prohibiting manipulation of the identification of the real-party-in-interest rules to evade estoppel or other procedural rules and providing for discovery to determine the real-party-in-interest. Sections 102(g) and 103(g).
  • Giving priority to Federal Court determinations on the validity of a patent. Sections 102(h) and 103(h).
  • Improving the procedure for amending a challenged patent, including a new expedited examination pathway. Sections 102(i) and 103(i).
  • Prohibiting the same administrative patent judges from both determining whether a challenge is likely to succeed and whether the patent is invalid. Section 104.
  • Aligning timing requirements for ex parte reexamination with inter partes review by prohibiting requests for reexamination more than one year after being sued for infringement. Section 105.

Second, the STRONGER Patents Act will make other necessary corrections to allow patents to promote innovation. For example, as Section 101 of the Act confirms, patents are property rights and deserve the same remedies applicable to other kinds of property. In eBay v. MercExchange, the Supreme Court ignored this fundamental premise by holding that patent owners do not have the presumptive right to keep others from using their property. Section 106 of the STRONGER Patents Act will undo the disastrous eBay decision and confirm the importance of patents as property.

Third, the STRONGER Patents Act will once and for all eliminate USPTO fee diversion. Many people do not realize that the USPTO is funded entirely through user fees and that no taxpayer money goes to the office.  Despite promises that the America Invents Act of 2011 would end fee diversion, the federal government continues to redirect USPTO funds to other government programs.  This misguided tax on innovation is long overdue to be shut down.

Each of the steps in the STRONGER Patents Act will help bring balance back to our patent system. In addition to the major changes described above, there are also smaller changes that will be important to ensuring a vibrant and efficient patent system. CPIP co-founder Adam Mossoff recently testified to Congress about the harms being done to innovation through weakened patent protection.  It is great news to now see Congress taking steps in the right direction.

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Copyright Infringement

Alliance for Creativity and Entertainment (ACE) Unites to Fight Online Piracy

hand holding remote pointed towards a TV screen showing a sports gameAs digital piracy shifts away from torrent downloads and towards unauthorized streaming and theft-based extortion, stakeholders from all parts of the creativity community are reassessing their efforts to fight online infringement. This week, a global coalition of creators and leading on-demand entertainment services joined forces to better address the ever-evolving threat that piracy poses not only to artists and copyright owners, but to consumers and end users. Named the Alliance for Creativity and Entertainment (or ACE), the group brings together 30 industry leaders—including Amazon, HBO, Warner Bros., Netflix, Disney, Hulu, and the BBC—to maximize consumer experience while ensuring the vibrant creative ecosystem they support is not undermined by piracy.

In an opening press release, the Alliance describes the recent exponential growth of digital distribution models and the development of nearly 500 online services that provide consumers with a legitimate on demand viewing experience. And while these platforms have revolutionized the way consumers watch TV and movies, they’ve also added great value to a creative sector that is responsible for $1.2 trillion and 5.5 million jobs in the US alone.

Unfortunately, illicit websites—which sometimes offer pirated works within hours of release—remain a burden to the creative ecosystem and the artists and platforms that drive it. Despite encouraging efforts both in the US and abroad to disable some of the worst offenders, the constant game of cat and mouse with mirroring websites and the emergence of illicit streaming sites continue to frustrate the fight against piracy. According to the press release, in 2016 there were an estimated 5.4 billion downloads of pirated films and television shows and 21.4 billion total visits to illicit streaming websites that profit from the theft and unauthorized distribution of creative works.

To combat these enduring acts of infringement, ACE brings together creative companies from all over the world to combine resources and work in concert with seasoned antipiracy experts at organizations such as the Motion Picture Association of America (MPAA). Specifically, “ACE will conduct research, work closely with law enforcement to curtail illegal pirate enterprises, file civil litigation, forge cooperative relationships with existing national content protection organizations, and pursue voluntary agreements with responsible parties across the internet ecosystem.”

By reducing illegal online piracy, ACE will also work to eliminate the risks to consumers that so often accompany the illegitimate distribution of creative works. A recent study by the Digital Citizens Alliance found that one in three pirate sites expose users to infectious malware and that visitors to these pirate sites are 28 times more likely to encounter malware than visitors to legitimate websites. The serious threats posed to consumers by malware and viruses include not only identity theft and financial loss, but the complete immobilization of entire computer systems, as seen in the recent Wannacry attack.

With pirate site operators finding new ways to profit from the theft and distribution of creative works, it’s encouraging to see a unified and global effort dedicated to reducing piracy, supporting creators, and protecting consumers.

 

Categories
Innovation Legislation Patent Law

CPIP Co-Founder Testifies at House Judiciary Committee Hearing on IP

U.S. Capitol buildingCPIP co-founder Adam Mossoff testified on June 13 before the House Judiciary Committee’s subcommittee on the Courts, Intellectual Property and the Internet.  He and other witnesses testified about the impact of the Supreme Courts recent decision in TC Heartland LLC v. Kraft Foods Group Brands LLC on innovators and the possibility of future changes to patent law.

For those not familiar with the decision, it held that patent lawsuits against corporations must be filed either where the corporation is incorporated or where it has infringed the patent and has a “regular and established placed of business.” This is different than the rule for most litigation which generally allows a lawsuit to be filed wherever a court may exercise jurisdiction over the corporation.  Thus, TC Heartland placed constraints on patent owners enforcing their rights that don’t exist for other litigants.

Although the hearing was nominally about TC Heartland and venue for patent suits, Members of Congress and witnesses took the opportunity to address broader issues of innovation policy.  In his opening statement, Professor Mossoff primarily described how patent owners—particularly individual inventors and small businesses—will now be required to file multiple lawsuits all across the country to enforce their rights.  This will drastically increase the costs of protecting their property from infringers, which for many innovators will be cost prohibitive.  Professor Mossoff mentioned one such inventor, Bunch-o-Balloons inventor Josh Malone, who is being seriously harmed by the inability to protect his invention from rampant infringement.  Together with the litany of other recent disastrous changes to our patent system, innovators are now in a precarious position when deciding to rely on patents to protect their inventions.

Much of the hearing was taken up by questions of what the impact of the TC Heartland decision will be.  There was general agreement that the concentration of patent cases in only a few districts will continue.  Under the old regime, many cases were filed in the Eastern District of Texas.  Under the new regime, these cases will now be filed in the Northern District of California or the District of Delaware.  There was also general agreement that this would benefit accused infringers, who will now be litigating in their preferred fora.

Adam MossoffUnfortunately, much of the discussion centered around a perceived problem with patent “trolls.”  This epithet based on myths is often used in the place of reasoned debate for patent policy.  As Professor Mossoff explained, as deployed in research and policy debates, this term would make even famous inventors like Thomas Edison a troll.  Furthermore, it is both wrong and irresponsible to assume that patent owners who license their inventions are practicing an illegitimate business model. Just as it is perfectly legitimate for a landlord to rent her property instead of selling it, it is likewise perfectly legitimate for a patent owner to license her patent rights instead of manufacturing and selling products to customers. And just as it is legitimate for a landlord to sue a squatter for trespass, it is equally legitimate for a patent owner who licenses her property rights to sue for infringement.

Several questions focused on broader patent issues in the context of whether or what Congress should do next for patent law. The Global Intellectual Property Center of the Chamber of Commerce recently reported that the United States had slipped from 1st to 10th in their annual ranking of patent systems.  Reasons for the degradation of our patent system are obvious: death squads killing patents at the PTAB, subject matter eligibility standards that make oil rigs outside the scope of patent laws, and the inability of patent owners to prevent others from infringing their rights through injunctions.

As Professor Mossoff emphasized, Congress’ first priority should be “do no harm.” Rather than make another attempt to pass legislation further restricting patent owners’ rights, it would be better for Congress to simply do nothing.  However, Congress could make the patent system better for innovators.  One step already being discussed that would be a positive improvement is the suggestion to amend section 101 to limit the scope of the judicial exceptions to subject matter eligibility.  At the hearing, Professor Mossoff astutely noted that the first patent ever issued in the United States—being held up at that moment by Chairman Darrell Issa—would likely be invalidated under current patent eligibility standards.

Many questions directed at the witnesses asked for them to propose specific solutions to either perceived venue abuses or broader patent law issues. Professor Mossoff stressed that systemic changes to the patent system will not just affect a few bad actors, but all of the individual inventors, small businesses, universities, licensing companies, and R&D-intensive high-tech and bio-pharma companies who rely on the patent system to protect their innovations.  These types of companies have been the fountainhead of the U.S. innovation economy for more than 200 years.  “Reform” that only addresses the concerns of accused infringers, but not the costs to patent owners, is doomed to do more harm than good.

Professor Mossoff’s written testimony can be found here.  Video of the hearing can be found here.