Sec. 6. Procedures and practices to implement recommendations of the Judicial Conference
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The Judicial Conference of the United States, using existing resources, shall develop rules and procedures to implement the issues and proposals described in paragraph
(2)to address the asymmetries in discovery burdens and costs in any civil action arising under any Act of Congress relating to patents. Such rules and procedures shall include how and when payment for document discovery in addition to the discovery of core documentary evidence is to occur, and what information must be presented to demonstrate financial capacity before permitting document discovery in addition to the discovery of core documentary evidence. The rules and procedures required under paragraph
(1)should address each of the following issues and proposals: Whether and to what extent each party to the action is entitled to receive core documentary evidence and shall be responsible for the costs of producing core documentary evidence within the possession or control of each such party, and whether and to what extent each party to the action may seek nondocumentary discovery as otherwise provided in the Federal Rules of Civil Procedure. If the parties determine that the discovery of electronic communication is appropriate, whether such discovery shall occur after the parties have exchanged initial disclosures and core documentary evidence and whether such discovery shall be in accordance with the following: Any request for the production of electronic communication shall be specific and may not be a general request for the production of information relating to a product or business. Each request shall identify the custodian of the information requested, the search terms, and a time frame. The parties shall cooperate to identify the proper custodians, the proper search terms, and the proper time frame. A party may not submit production requests to more than 5 custodians, unless the parties jointly agree to modify the number of production requests without leave of the court. The court may consider contested requests for up to 5 additional custodians per producing party, upon a showing of a distinct need based on the size, complexity, and issues of the case. If a party requests the discovery of electronic communication for additional custodians beyond the limits agreed to by the parties or granted by the court, the requesting party shall bear all reasonable costs caused by such additional discovery. Whether the following should apply: Each party to the action may seek any additional document discovery otherwise permitted under the Federal Rules of Civil Procedure, if such party bears the reasonable costs, including reasonable attorney’s fees, of the additional document discovery. Unless the parties mutually agree otherwise, no party may be permitted additional document discovery unless such a party posts a bond, or provides other security, in an amount sufficient to cover the expected costs of such additional document discovery, or makes a showing to the court that such party has the financial capacity to pay the costs of such additional document discovery. A court, upon motion, may determine that a request for additional document discovery is excessive, irrelevant, or otherwise abusive and may set limits on such additional document discovery. A court, upon motion and for good cause shown, may modify the requirements of subparagraphs
(A)and
(B)and any definition under paragraph (3). Not later than 30 days after the pretrial conference under Rule 16 of the Federal Rules of Civil Procedure, the parties shall jointly submit any proposed modifications of the requirements of subparagraphs
(A)and
(B)and any definition under paragraph (3), unless the parties do not agree, in which case each party shall submit any proposed modification of such party and a summary of the disagreement over the modification. A court, upon motion and for good cause shown, may determine that computer code should be included in the discovery of core documentary evidence. The discovery of computer code shall occur after the parties have exchanged initial disclosures and other core documentary evidence. Whether the parties shall discuss and address in the written report filed pursuant to Rule 26(f) of the Federal Rules of Civil Procedure the views and proposals of each party on the following: When the discovery of core documentary evidence should be completed. Whether additional document discovery will be sought under subparagraph (C). Any issues about infringement, invalidity, or damages that, if resolved before the additional discovery described in subparagraph
(C)commences, might simplify or streamline the case, including the identification of any terms or phrases relating to any patent claim at issue to be construed by the court and whether the early construction of any of those terms or phrases would be helpful. In this subsection: The term core documentary evidence — includes— documents relating to the conception of, reduction to practice of, and application for, the patent or patents at issue; documents sufficient to show the technical operation of the product or process identified in the complaint as infringing the patent or patents at issue; documents relating to potentially invalidating prior art; documents relating to any licensing of, or other transfer of rights to, the patent or patents at issue before the date on which the complaint is filed; documents sufficient to show profit attributable to the claimed invention of the patent or patents at issue; documents relating to any knowledge by the accused infringer of the patent or patents at issue before the date on which the complaint is filed; documents relating to any knowledge by the patentee of infringement of the patent or patents at issue before the date on which the complaint is filed; documents relating to any licensing term or pricing commitment to which the patent or patents may be subject through any agency or standard-setting body; and documents sufficient to show any marking or other notice provided of the patent or patents at issue; and does not include computer code, except as specified in paragraph (2)(C)(v). The term electronic communication means any form of electronic communication, including email, text message, or instant message. Not later than 6 months after the date on which the Judicial Conference has developed the rules and procedures required by this subsection, each United States district court and the United States Court of Federal Claims shall revise the applicable local rules for such court to implement such rules and procedures. The Judicial Conference shall study the efficacy of the rules and procedures required by this subsection during the 4-year period beginning on the date on which such rules and procedures by the district courts and the United States Court of Federal Claims are first implemented. The Judicial Conference may modify such rules and procedures following such 4-year period. Before the expiration of the 4-year period described in subparagraph (A), the Judicial Conference may modify the requirements under this subsection— by designating categories of core documentary evidence , in addition to those designated under paragraph (3)(A), as the Judicial Conference determines to be appropriate and necessary; and as otherwise necessary to prevent a manifest injustice, the imposition of a requirement the costs of which clearly outweigh its benefits, or a result that could not reasonably have been intended by the Congress. The Judicial Conference of the United States, using existing resources, shall develop case management procedures to be implemented by the United States district courts and the United States Court of Federal Claims for any civil action arising under any Act of Congress relating to patents, including initial disclosure and early case management conference practices that— will identify any potential dispositive issues of the case; and focus on early summary judgment motions when resolution of issues may lead to expedited disposition of the case. The Supreme Court, using existing resources, shall eliminate Form 18 in the Appendix to the Federal Rules of Civil Procedure (relating to Complaint for Patent Infringement), effective on the date of the enactment of this Act. The Supreme Court may prescribe a new form or forms setting out model allegations of patent infringement that, at a minimum, notify accused infringers of the asserted claim or claims, the products or services accused of infringement, and the plaintiff’s theory for how each accused product or service meets each limitation of each asserted claim. The Judicial Conference should exercise the authority under section 2073 of title 28, United States Code, to make recommendations with respect to such new form or forms. Section 1520(a) of title 11, United States Code, is amended— in paragraph (3), by striking ; and and inserting a semicolon; in paragraph (4), by striking the period at the end and inserting ; and ; and by inserting at the end the following new paragraph: section 365(n) applies to intellectual property of which the debtor is a licensor or which the debtor has transferred. . Section 101(35A) of title 11, United States Code, is amended— in subparagraph (E), by striking or ; in subparagraph (F), by striking title 17; and inserting title 17; or ; and by adding after subparagraph
(F)the following new subparagraph: a trademark, service mark, or trade name, as those terms are defined in section 45 of the Act of July 5, 1946 (commonly referred to as the Trademark Act of 1946 ) ( 15 U.S.C. 1127 ); . Section 365(n)(2) of title 11, United States Code, is amended— in subparagraph (B)— by striking royalty payments and inserting royalty or other payments ; and by striking and after the semicolon; in subparagraph (C), by striking the period at the end of clause
(ii)and inserting ; and ; and by adding at the end the following new subparagraph: in the case of a trademark, service mark, or trade name, the trustee shall not be relieved of a contractual obligation to monitor and control the quality of a licensed product or service. . The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to any case that is pending on, or for which a petition or complaint is filed on or after, such date of enactment.
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Sec. 6
Procedures and practices to implement recommendations of the Judicial Conference
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