New Patent Litigation Bill Introduced in House

By Donald Zuhn --

Last week, Rep. Hakeem Jeffries (D-NY) introduced the "Patent Litigation and Innovation Act of 2013" (H.R. 2639) in the House.  The bill, which would add procedural requirements for patent infringement suits, is related to the "Patent Abuse Reduction Act of 2013" (S. 1013), which was introduced in the Senate in May (see "Congress Continues Efforts to "Reform" U.S. Patent Law").

Like S. 1013, H.R. 2639 would require a party alleging infringement to include in its complaint, counterclaim, or cross-claim an identification of each patent, and each claim of each patent, allegedly infringed, as well as a specific identification of each accused instrumentality alleged to infringe the claim, the party alleging infringement would also be required to provide "a description of the principal business of the party alleging infringement" and to identify co-owners, assignees, and exclusive licensees of the asserted patent.  Unlike the Senate version of the bill, the House version would not require a party alleging infringement to include a list of other complaints (of which the party alleging infringement has knowledge) asserting the same patents; whether the asserted patents are subject to any licensing term or pricing commitments through any agency, organization, standard-setting body, or other entity or community; or the identity of any person having a direct financial interest in the outcome of the action.

In addition, while S. 1013 would limit discovery prior to claim construction "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," H.R. 2639 would permit a court to stay discovery "if the court determines that a ruling relating to the construction of terms used in a patent claim asserted in the complaint in the action is required."  The House bill also includes provisions for a stay of action against secondary parties, which would allow a court to "grant a motion to stay all or part of the action as to a secondary party with respect to infringement related to a primary party in the same or another action concerning the same apparatus, product, feature, device, method, system, process, function, act, service, or other instrumentality, in whole or in relevant part, of the disputed patent of the primary party" provided that certain conditions are met.

In addition, the House bill provides provisions for sanctions for abusive litigation.  In particular, the legislation would require a court, upon final adjudication of "any civil action arising under any Act of Congress relating to patents," to "include in the record specific findings regarding compliance by each party and each attorney representing any party with each requirement of Rule 11(b) of the Federal Rules of Civil Procedure as to any complaint, responsive pleading, or dispositive motion."

A statement released on Rep. Jeffries' website noted that the new legislation "represents a bipartisan effort to promote American innovation and job creation in the technology ecosystem by addressing the growing problem of abusive patent litigation."  Rep. Jeffries (above left) suggested that the legislation was needed because of "[t]he explosion of patent troll activity [that] diverts resources away from research and development, hinders innovation and stifles entrepreneurship."  Co-sponsor Rep. Blake Farenthold (R-TX) stated that "Americans need to know they are safe from abusive litigation when they buy a product off the shelf and use it for its intended purpose," adding that "[t]he solutions proposed in [H.R. 2639] will deter patent trolls without impeding the rights of responsible intellectual property holders."

After being introduced, the bill was referred to the House Committee on the Judiciary.

Comments

[Ken Jones]

The US is moving to the UK system, which is eminently more sensible. Showing a product at a trade fair before it is patented puts it in the public domain. Inventors should still not rush to patent, better to hone the invention before patenting. Applying for a US provisional patent is also not the smart thing to do, better to apply for a British patent first then move on to a non-provisional US utility patent a year later. Amazon have a good ebook on DIY patenting online internationally.