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 process, machine, manufacture, or composition of matter (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. For each accused instrumentality identified under paragraph (3), a clear and concise statement of— where each element of each claim identified under paragraph
(2)is found within the accused instrumentality; and with detailed specificity, how each limitation of each claim identified under paragraph
(2)is met by the accused instrumentality. For each claim of indirect infringement, a description of the acts of the alleged indirect infringer that contribute to or are inducing the direct infringement. A description of the authority of the party alleging infringement to assert each patent identified under paragraph
(1)and of the grounds for the court’s jurisdiction. A clear and concise description of the principal business, if any, 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 a standard-setting body has specifically declared such patent to be essential, potentially essential, or having potential to become essential to that standard-setting body, and whether the United States Government or a foreign government has imposed specific licensing requirements with respect to such patent. If information required to be disclosed under subsection
(a)is not readily accessible to a party, that information may instead be generally described, along with an explanation of why such undisclosed information was not readily accessible, and of any efforts made by such party to access such information. A party required to disclose information described under subsection
(a)may file, under seal, information believed to be confidential, with a motion setting forth good cause for such sealing. If such motion is denied by the court, the party may seek to file an amended complaint. 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 and conduct of the nonprevailing party or parties were reasonably justified in law and fact or that special circumstances (such as severe economic hardship to a named inventor) make an award unjust. Upon motion of any party to the action, the court shall require another party to the action to certify whether or not the other party will be able to pay an award of fees and other expenses if such an award is made under subsection (a). If a nonprevailing party is unable to pay an award that is made against it under subsection (a), the court may make a party that has been joined under section 299(d) with respect to such party liable for the unsatisfied portion of the award. 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 the first day of the 6-month period ending on that effective 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 in which fees and other expenses have been awarded under section 285 to a prevailing party defending against an allegation of infringement of a patent claim, and in which the nonprevailing party alleging infringement is unable to pay the award of fees and other expenses, the court shall grant a motion by the prevailing party to join an interested party if such prevailing party shows that the nonprevailing party has no substantial interest in the subject matter 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. The court shall deny a motion to join an interested party under paragraph
(1)if— the interested party did not timely receive the notice required by paragraph (3); or within 30 days after receiving the notice required by paragraph (3), the interested party renounces, in writing and with notice to the court and the parties to the action, any ownership, right, or direct financial interest (as described in paragraph (4)) that the interested party has in the patent or patents at issue. An interested party may not be joined under paragraph
(1)unless it has been provided actual notice, within 30 days after the date on which it has been identified in the initial disclosure provided under section 290(b), that it has been so identified and that such party may therefore be an interested party subject to joinder under this subsection. Such notice shall be provided by the party who subsequently moves to join the interested party under paragraph (1), and shall include language that— identifies the action, the parties thereto, the patent or patents at issue, and the pleading or other paper that identified the party under section 290(b); and informs the party that it may be joined in the action and made subject to paying an award of fees and other expenses under section 285(b) if— fees and other expenses are awarded in the action against the party alleging infringement of the patent or patents at issue under section 285(a); the party alleging infringement is unable to pay the award of fees and other expenses; the party receiving notice under this paragraph is determined by the court to be an interested party; and the party receiving notice under this paragraph has not, within 30 days after receiving such notice, renounced in writing, and with notice to the court and the parties to the action, any ownership, right, or direct financial interest (as described in paragraph (4)) that the interested party has in the patent or patents at issue. 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 subsections
(b)and (c), 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. In the case of an action under any provision of Federal law (including an action that includes a claim for relief arising under section 271(e)), for which 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 shall 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)is issued, the court may allow limited discovery in addition to the discovery authorized under subsection
(a)as necessary to resolve the motion. In special circumstances that would make denial of discovery a manifest injustice, the court may permit discovery, in addition to the discovery authorized under subsection (a), as necessary to prevent the manifest injustice. The limitation on discovery provided under subsection
(a)shall not apply to an action seeking a preliminary injunction to redress harm arising from the use, sale, or offer for sale of any allegedly infringing instrumentality that competes with a product sold or offered for sale, or a process used in manufacture, by a party alleging infringement. The parties may voluntarily consent to be excluded, in whole or in part, from the limitation on discovery provided under subsection
(a)if at least one plaintiff and one defendant enter into a signed stipulation, to be filed with and signed by the court. With regard to any discovery excluded from the requirements of subsection
(a)under the signed stipulation, with respect to such parties, such discovery shall proceed according to the Federal Rules of Civil Procedure. . 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. . It is the sense of Congress that it is an abuse of the patent system and against public policy for a party to send out purposely evasive demand letters to end users alleging patent infringement. Demand letters sent should, at the least, include basic information about the patent in question, what is being infringed, and how it is being infringed. Any actions or litigation that stem from these types of purposely evasive demand letters to end users should be considered a fraudulent or deceptive practice and an exceptional circumstance when considering whether the litigation is abusive. Section 284 of title 35, United States Code, is amended— in the first undesignated paragraph, by striking Upon finding and inserting
(a); In general.— Upon finding in the second undesignated paragraph, by striking When the damages and inserting
(b); Assessment by court; treble damages.— When the damages by inserting after subsection (b), as designated by paragraph
(2)of this subsection, the following: A claimant seeking to establish willful infringement may not rely on evidence of pre-suit notification of infringement unless that notification identifies with particularity the asserted patent, identifies the product or process accused, identifies the ultimate parent entity of the claimant, and explains with particularity, to the extent possible following a reasonable investigation or inquiry, how the product or process infringes one or more claims of the patent. ; and in the last undesignated paragraph, by striking The court and inserting
(d). Expert testimony.— The court 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.