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House Judiciary Committee Holds Hearing on Innovation Act, Fee-Shifting

Tuesday, April 14, the House Judiciary Committee convened to discuss H.R. 9, the “Innovation Act,” which was introduced in February 2015 by the Committee’s Chairman, Rep. Bob Goodlatte (R-VA). The hearing came a day after the Federal Circuit Bar Association sent a letter to Rep. Goodlatte that questioned the need for a bill creating a presumption of fee-shifting, given the marked increase in fee awards in patent cases since the Supreme Court’s 2014 opinion in Octane Fitness LLC v. Icon Health & Fitness Inc. In its letter, the FCBA also warned that the fee-shifting provision could pose a significant obstacle to legitimate enforcement efforts.

At the hearing, Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office Michelle Lee voiced the Obama Administration’s support for the fee-shifting provision in the Act. Asked whether the Act should permit joinder of universities with a stake in patent assertion programs to be joined for purposes of satisfying a fee award, she testified at first simply that “if you control or engage in abusive litigation you should be held liable, and should be able to be joined.” Later, she further testified that “if the universities are not controlling the litigation they should be protected [from fee awards].”

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About this Author

Michael T. Renaud, IP Litigation Attorney, Mintz Levin Law Firm

Michael’s practice is focused on patent litigation and also includes licensing, patents, copyrights, trademarks or trade secrets, and other intellectual property matters. His work in patent litigation primarily involves technologies such as electromechanical systems, digital cameras, embedded microprocessors, telecommunications and network software, cellular phones, and e-commerce, among others. Michael has also advised clients in regards to patent portfolios and IP diligence, and has counseled venture capital funds on their IP assets and patent value.

Michael rejoins Mintz Levin...

Robert J. Moore, Mintz Levin Law Firm, Associate, Intellectual Property, Patent

Rob practices in the area of patent litigation, both in International Trade Commission Section 337 investigations and in the Federal District Courts.

In addition, Rob is experienced in complex litigation, products liability, and criminal and appellate law.  As a member of the Massachusetts Committee for Public Counsel Services, Post-Conviction Relief Panel, he represents indigent defendants on appeal. After law school, he clerked for Hon. Fernande Duffly, then of the Massachusetts Appeals Court.  He has represented Fortune 500 companies in class actions, toxic torts, and products liability litigation.  Rob also served as staff attorney at a leading public health think tank in Boston. He has been an adjunct faculty at New England Law Boston and a course instructor at Tulane School of Public Health and Tropical Medicine.