Top Google lawyer calls for U.S. patent reforms

A Google logo is seen outside of the Google Store, where visitors can try phones and other products from the company, in New York City, New York, U.S., February 10, 2022. Picture taken February 10, 2022. REUTERS/Paresh Dave

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  • Tech giant sounds alarm over “trolls,” patent quality
  • Supports bill to reform administrative patent trials, address court-shopping

April 28 – Google’s general counsel Halimah DeLaine Prado in a company blog post Thursday called for revamping the American patent system, sounding alarms over what she called a decline in the quality of U.S. patents and a rise in “shakedown campaigns” by so-called patent trolls.

DeLaine Prado told Reuters the patent system has “historically been a place where the advancement of progress and technology for the benefit of the public is encouraged,” adding, “we feel that we lost our way recently on that.”

Google’s general counsel Halimah DeLaine Prado. Reuters via Google

Her post said Alphabet Inc’s Google supports a bill in Congress to expand an administrative process for challenging patent validity at the U.S. Patent and Trademark Office known as inter partes review. The IPR process is an alternative to traditional patent litigation that is generally popular with big tech companies and other frequent targets of patent lawsuits.

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Google faced more patent-infringement cases in the United States than any other company in 2020, according to a Lex Machina report.

Democratic Senator Patrick Leahy of Vermont and Republican Senator John Cornyn of Texas introduced a bill last year to “restore” IPR, after changes under the Trump Administration led to the board reviewing fewer patents.

Leahy has said the bill would help deter “bad actors” like alleged trolls that make their money suing or threatening to sue over low-quality patents.

Michelle Lee, a former senior Google lawyer, headed the PTO from 2015 to 2017, and some criticized the agency for invalidating too many patents through the IPR process during her tenure.

DeLaine Prado said the PTO under its new director should receive more resources to ensure it issues high-quality patents, and she advocated for higher filing fees for the biggest patent filers, including Google.

The U.S. Senate confirmed Kathi Vidal, a Silicon Valley-based partner at law firm Winston & Strawn, to head the PTO earlier this month. DeLaine Prado told Reuters she was “really hopeful” about the prospect of working with Vidal on “some of the reforms that we’re calling for.”

The blog post also backed a push to reduce what DeLaine Prado called “abusive forum-shopping” in patent-infringement cases, citing a call by the ranking members of the Senate Judiciary Committee’s intellectual property subcommittee to address the “extreme concentration” of cases in U.S. District Judge Alan Albright’s Waco, Texas court.

Critics say Albright’s policies attract patent trolls and that he has inappropriately solicited plaintiffs to bring cases in his court. Albright has defended his approach, but U.S. Supreme Court Chief Justice John Roberts cited concerns about Waco when he said in January that he would review patent venue rules.

DeLaine Prado’s blog post said that the issue had gotten “out of hand.”

(NOTE: The story has been updated to reflect Halimah DeLaine Prado’s last name as “DeLaine Prado” instead of “Prado”.)

Read more:

Senators Leahy, Cornyn introduce bill to ‘restore’ PTAB review process

U.S. Chief Justice Roberts pledges to review patent venue rules

Biden pick Vidal confirmed for empowered patent and trademark chief role

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Blake Brittain

Thomson Reuters

Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com

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