Sec. 3. Patent infringement actions
3,225 words·~15 min read·
/bill/114/hr/9/rh/section-3A research copy — for the controlling text, always check the official state or federal source. Not legal advice.
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 all claims necessary to produce the identification (under paragraph (3)) of each process, machine, manufacture, or composition of matter (referred to in this section as an ‘accused instrumentality’) that is alleged to infringe any claim of each patent that is identified under paragraph (1). For each claim identified under paragraph (2), an identification of each 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 (or a representative 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. If information required to be disclosed under subsection
(a)is not readily accessible to a party after an inquiry reasonable under the circumstances, as required by Rule 11 of the Federal Rules of Civil Procedure, 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. Nothing in this section shall be construed to affect a party’s ability to amend pleadings as specified in the Federal Rules of Civil Procedure. Amendments permitted by the court are subject to the pleading requirements set forth in this section. 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 who asserts a claim for relief arising under any Act of Congress relating to patents against another party, and who subsequently unilaterally
(i)seeks dismissal of the action without consent of the other party and
(ii)extends to such other party a covenant not to sue for infringement with respect to the patent or patents at issue, may be the subject of a motion for attorneys fees under subsection
(a)as if it were a non-prevailing party, unless the party asserting such claim would have been entitled, at the time that such covenant was extended, to dismiss voluntarily the action without a court order under Rule 41 of the Federal Rules of Civil Procedure, or the interests of justice require otherwise. . 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 subsection (f). Section 273 of title 35, United States Code, as amended by subparagraph (B), is further amended by striking subsection (g). The amendment made by this subparagraph shall be effective as if included in the amendment made by section 3(b)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 ). Except as otherwise provided in this subsection, 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: Except as otherwise provided under this 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 expiration of the time period during which a certification under paragraph (4)(B) is required to be filed, that the interested party has been identified in the initial disclosure under section 290(b) 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. This subsection shall not apply to an action unless a party defending against an allegation of infringement of a patent claim files, not later than 14 days before the date on which a scheduling conference is held or the date on which a scheduling order is due under Rule 16(b) of the Federal Rules of Civil Procedure, a statement that such party holds a good faith belief, based on publicly available information and any other information known to such party, that the party alleging infringement has no substantial interest in the subject matter at issue other than asserting the patent in litigation. This subsection shall not apply to an action if the party alleging infringement files, not later than 45 days after the date on which such party is served with the initial statement described under subparagraph (A), a certification that— establishes and certifies to the court, under oath, that such party will have sufficient funds available to satisfy any award of reasonable attorney’s fees and expenses under section 285 if an award is assessed; demonstrates that such party has a substantial interest in the subject matter at issue other than asserting the patent in litigation; or is made under oath that there are no other interested parties. This subsection shall not apply to a technology transfer organization whose primary purpose is to facilitate the commercialization of technologies developed by one or more institutions of higher education (as defined in section 101(a) of the Higher Education Act of 1965 ( 20 U.S.C. 1001(a) )) if such technology transfer organization is alleging infringement on behalf of an entity that would not be subject to this subsection. 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 employee of the party alleging infringement— whose principal source of income or employment is employment with the party alleging infringement; or whose sole financial interest in the patent or patents at issue is a salary or hourly wage paid by the party alleging infringement; 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 or security interest in the party alleging infringement, unless such person also has the right or ability to direct or control (membership on the board of directors alone is not sufficient to demonstrate such right or ability) the civil action. In this subsection, the term substantial interest includes an interest in the subject matter of a patent at issue if the party— invented the subject matter; or commercially practices or implements, made substantial preparations directed particularly to commercially practicing or implementing, or is engaged in research and development in, technology in the field of the subject matter. . Chapter 29 of title 35, United States Code, as amended by subsection (a), is further amended by inserting after section 281A (as added by such subsection) the following new section: Except as provided in subsection (d), in an action for patent infringement under section 271 or an action for a declaratory judgement that a patent is invalid or not infringed, discovery shall be stayed if— the defendant moves to— sever a claim or drop a party for misjoinder under Rule 21 of the Federal Rules of Civil Procedure; transfer the action under section 1404(a) of title 28; transfer or dismiss the action under section 1406(a) of title 28; or dismiss the action pursuant to Federal Rule of Civil Procedure 12(b); and such motion is filed within 90 days after service of the complaint and includes a declaration or other evidence in support of the motion. A stay entered under subsection
(a)shall expire when all motions that are the basis for the stay are decided by the court. In an action described in subsection (a), the court shall decide a motion to sever a claim or drop a party for misjoinder under Rule 21 of the Federal Rules of Civil Procedure, to transfer under section 1404(a) to title 28, to transfer or dismiss under 1406(a) of title 28, or to dismiss the action pursuant to Federal Rule of Civil Procedure 12(b) before the earlier of the date on which the court— decides any other substantive motion, provided however that the court may decide a question of its own jurisdiction at any time; or issues a scheduling order under Rule 16(b) of the Federal Rules of Civil Procedure. Notwithstanding subsection (a), the court may allow such discovery as the court determines to be necessary to decide a motion to sever, drop a party, dismiss, or transfer. Subsections
(a)and
(c)shall not apply to an action in which the patentee is granted a preliminary injunction to prevent harm arising from the manufacture, use, sale, offer for sale, or importation of an allegedly infringing product or process that competes with a product or process made, sold, or offered for sale by the patentee. The patentee and an opposing party shall be excluded, in whole or in part, from the limitations of subsections
(a)and
(c)upon such parties’ filing with the court a signed stipulation agreeing to such exclusion. Subsections
(a)and
(c)shall not apply to an action that includes a cause of action described under section 271(e)(2). . The table of sections for chapter 29 of title 35, United States Code, is amended by inserting after the item relating to section 281A, as added by subsection (a), the following new item: 281B. Stay of discovery pending a preliminary motion. . 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 Subsection
(b)of section 1400 of title 28, United States Code, is amended to read as follows: Notwithstanding subsections
(b)and
(c)of section 1391 of this title, any civil action for patent infringement or any action for a declaratory judgment that a patent is invalid or not infringed may be brought only in a judicial district— where the defendant has its principal place of business or is incorporated; where the defendant has committed an act of infringement of a patent in suit and has a regular and established physical facility that gives rise to the act of infringement; where the defendant has agreed or consented to be sued in the instant action; where an inventor named on the patent in suit conducted research or development that led to the application for the patent in suit; where a party has a regular and established physical facility that such party controls and operates, not primarily for the purpose of creating venue, and has— engaged in management of significant research and development of an invention claimed in a patent in suit prior to the effective filing date of the patent; manufactured a tangible product that is alleged to embody an invention claimed in a patent in suit; or implemented a manufacturing process for a tangible good in which the process is alleged to embody an invention claimed in a patent in suit; or for foreign defendants that do not meet the requirements of paragraphs
(1)or (2), according to section 1391(d) of this title. . For the purpose of determining whether relief may issue under section 1651 of title 28, United States Code, a clearly and indisputably erroneous denial of a motion under section 1406(a) of such title to dismiss or transfer a case on the basis of section 1400(b) of such title shall be deemed to cause irremediable interim harm. If a defendant does not meet the definition of a retailer under section 296(a)(6) of title 35, United States Code, as added by section 5, solely because the defendant manufacturers or causes the manufacture of the covered product or process in suit, the retail facilities of such defendant shall not constitute a regular and established physical facility for purposes of section 1400(b)(2) of title 28, United Code, as added by paragraph (1). The dwelling or residence of an employee or contractor of a defendant who works at such dwelling or residence shall not constitute a regular and established physical facility of the defendant for purposes of section 1400(b)(2) of title 28, United Code, as added by paragraph (1). 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.
Connectionstraces to 1
Traces to 1 document
1 reference not yet in our index
- Pub. L. 112-29
Citation graph
cites case law
Cites 2Cited by 0 across 0 sources