Sec. 3. Patent infringement actions

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Chapter 29 of title 35, United States Code, is amended by inserting after section 281 the following: Except as provided in subsection (b), in a civil action in which a party asserts a claim for relief arising under any Act of Congress relating to patents, a party alleging infringement shall include in the initial complaint, counterclaim, or cross-claim for patent infringement, unless the information is not reasonably accessible to such party, the following: An identification of each patent allegedly infringed. An identification of each claim of each patent identified under paragraph

(1)that is allegedly infringed. For each claim identified under paragraph (2), an identification of each accused apparatus, product, feature, device, method, system, process, function, act, service, or other instrumentality (referred to in this section as an accused instrumentality ) alleged to infringe the claim. For each accused instrumentality identified under paragraph (3), an identification with particularity, if known, of— the name or model number of each accused instrumentality; or if there is no name or model number, a description of each accused instrumentality that, when used, allegedly results in the practice of the claimed invention. For each accused instrumentality identified under paragraph (3), an explanation of— where each element of each claim identified under paragraph

(2)is found within the accused instrumentality; whether each such element is infringed literally or under the doctrine of equivalents; and with detailed specificity, how the terms in each claim identified under paragraph

(2)correspond to the functionality of the accused instrumentality. For each claim that is alleged to have been infringed indirectly, a description of— the direct infringement; any person alleged to be a direct infringer known to the party alleging infringement; and the acts of the alleged indirect infringer that contribute to or are inducing the direct infringement. A description of the right of the party alleging infringement to assert each— patent identified under paragraph (1); and patent claim identified under paragraph (2). A description of the principal business of the party alleging infringement. A list of each complaint filed, of which the party alleging infringement has knowledge, that asserts or asserted any of the patents identified under paragraph (1). For each patent identified under paragraph (1), whether such patent has been specifically declared as essential, potentially essential, or having potential to become essential to any standard-setting body, and whether the United States Government or a foreign government has imposed specific licensing requirements with respect to such patent. A party required to disclose the information described under subsection

(a)shall include with such disclosure a description of any information described under subsection

(a)that is not disclosed, why such undisclosed information was not readily accessible, and the efforts made by such party to access such undisclosed information. For good cause shown by a party required to disclose the information described under subsection (a), the court may allow certain information that the court determines to be confidential to be filed under seal. A civil action that includes a claim for relief arising under section 271(e)(2) shall not be subject to the requirements of subsection (a). . The table of sections for chapter 29 of title 35, United States Code, is amended by inserting after the item relating to section 281 the following new item: 281A. Pleading requirements for patent infringement actions. . Section 285 of title 35, United States Code, is amended to read as follows: The court shall award, to a prevailing party, reasonable fees and other expenses incurred by that party in connection with a civil action in which any party asserts a claim for relief arising under any Act of Congress relating to patents, unless the court finds that the position of the nonprevailing party or parties was substantially justified or that special circumstances make an award unjust. If a nonprevailing party is unable to pay reasonable fees and other expenses awarded by the court pursuant to subsection (a), the court may make the reasonable fees and other expenses recoverable against any interested party joined pursuant to section 299(d). A party to a civil action that asserts a claim for relief arising under any Act of Congress relating to patents against another party, and that subsequently unilaterally extends to such other party a covenant not to sue for infringement with respect to the patent or patents at issue, shall be deemed to be a nonprevailing party (and the other party the prevailing party) for purposes of this section, unless the party asserting such claim would have been entitled, at the time that such covenant was extended, to voluntarily dismiss the action or claim without a court order under Rule 41 of the Federal Rules of Civil Procedure. . The item relating to section 285 of the table of sections for chapter 29 of title 35, United States Code, is amended to read as follows: 285. Fees and other expenses. . Section 273 of title 35, United States Code, is amended by striking subsections

(f)and (g). The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after that date. Section 299 of title 35, United States Code, is amended by adding at the end the following new subsection: In a civil action arising under any Act of Congress relating to patents, the court shall grant a motion by a party defending against an allegation of infringement of a patent claim to join an interested party if such defending party shows that the party alleging infringement has no substantial interest in the patent or patents at issue other than asserting such patent claim in litigation. The court may deny a motion to join an interested party under paragraph

(1)if— the interested party is not subject to service of process; or joinder under paragraph

(1)would deprive the court of subject matter jurisdiction or make venue improper. In this subsection, the term interested party means a person, other than the party alleging infringement, that— is an assignee of the patent or patents at issue; has a right, including a contingent right, to enforce or sublicense the patent or patents at issue; or has a direct financial interest in the patent or patents at issue, including the right to any part of an award of damages or any part of licensing revenue, except that a person with a direct financial interest does not include— an attorney or law firm providing legal representation in the civil action described in paragraph

(1)if the sole basis for the financial interest of the attorney or law firm in the patent or patents at issue arises from the attorney or law firm’s receipt of compensation reasonably related to the provision of the legal representation; or a person whose sole financial interest in the patent or patents at issue is ownership of an equity interest in the party alleging infringement, unless such person also has the right or ability to influence, direct, or control the civil action. . Chapter 29 of title 35, United States Code, is amended by adding at the end the following new section: Except as provided in subsection (b), in a civil action arising under any Act of Congress relating to patents, if the court determines that a ruling relating to the construction of terms used in a patent claim asserted in the complaint is required, discovery shall be limited, until such ruling is issued, to information necessary for the court to determine the meaning of the terms used in the patent claim, including any interpretation of those terms used to support the claim of infringement. If, under any provision of Federal law (including the amendments made by the Drug Price Competition and Patent Term Restoration Act of 1984 ( Public Law 98–417 )), resolution within a specified period of time of a civil action arising under any Act of Congress relating to patents will necessarily affect the rights of a party with respect to the patent, the court may permit discovery, in addition to the discovery authorized under subsection (a), before the ruling described in subsection

(a)is issued as necessary to ensure timely resolution of the action. When necessary to resolve a motion properly raised by a party before a ruling relating to the construction of terms described in subsection (a), the court may allow limited discovery in addition to the discovery authorized under subsection

(a)as necessary to resolve the motion. . The table of sections for chapter 29 of title 35, United States Code, is amended by adding at the end the following new item: 299A. Discovery in patent infringement action. . Except as otherwise provided in this section, the amendments made by this section shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after that date.

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Pub. L. 98-417

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Sec. 3

Patent infringement actions

Pub. L.Pub. L. 98-417

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