[Congressional Record Volume 159, Number 73 (Wednesday, May 22, 2013)]
[Senate]
[Pages S3763-S3765]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

      By Mr. CORNYN:
  S. 1013. A bill to amend title 35, United States Code, to add 
procedural requirements for patent infringement suits; to the Committee 
on the Judiciary.
  Mr. CORNYN. Mr. President, I ask unanimous consent that the text of 
the bill be printed in the Record.
  There being no objection, the text of the bill was ordered to be 
printed in the Record, as follows:

                                S. 1013

       Be it enacted by the Senate and House of Representatives of 
     the United States of America in Congress assembled,

     SECTION 1. SHORT TITLE.

       This Act may be cited as the ``Patent Abuse Reduction Act 
     of 2013''.

     SEC. 2. PLEADING REQUIREMENTS.

       (a) In General.--Chapter 29 of title 35, United States 
     Code, is amended by inserting after section 281 the 
     following:

     ``Sec. 281A. Pleading requirements for patent infringement 
       actions

       ``In a civil action 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--
       ``(1) an identification of each patent allegedly infringed;
       ``(2) an identification of each claim of each patent 
     identified under paragraph (1) that is allegedly infringed;
       ``(3) 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

[[Page S3764]]

     section as an `accused instrumentality') alleged to infringe 
     the claim;
       ``(4) for each accused instrumentality identified under 
     paragraph (3), an identification with particularity, if 
     known, of--
       ``(A) the name or model number of each accused 
     instrumentality; and
       ``(B) the name of each accused method, system, process, 
     function, act, or service, or the name or model number of 
     each apparatus, product, feature, or device that, when used, 
     allegedly results in the practice of the claimed invention;
       ``(5) for each accused instrumentality identified under 
     paragraph (3), an explanation of--
       ``(A) where each element of each asserted claim identified 
     under paragraph (2) is found within the accused 
     instrumentality;
       ``(B) whether each such element is infringed literally or 
     under the doctrine of equivalents; and
       ``(C) with detailed specificity, how the terms in each 
     asserted claim identified under paragraph (2) correspond to 
     the functionality of the accused instrumentality;
       ``(6) for each claim that is alleged to have been infringed 
     indirectly, a description of--
       ``(A) the direct infringement;
       ``(B) any person alleged to be a direct infringer known to 
     the party alleging infringement; and
       ``(C) the acts of the alleged indirect infringer that 
     contribute to or are inducing the direct infringement;
       ``(7) a description of the right of the party alleging 
     infringement to assert each--
       ``(A) patent identified under paragraph (1); and
       ``(B) patent claim identified in paragraph (2);
       ``(8) a description of the principal business of the party 
     alleging infringement;
       ``(9) 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);
       ``(10) for each patent identified under paragraph (1), 
     whether such patent is subject to any licensing term or 
     pricing commitments through any agency, organization, 
     standard-setting body, or other entity or community;
       ``(11) the identity of any person other than the party 
     alleging infringement, known to the party alleging 
     infringement, who--
       ``(A) owns or co-owns a patent identified under paragraph 
     (1);
       ``(B) is the assignee of a patent identified under 
     paragraph (1); or
       ``(C) is an exclusive licensee to a patent identified under 
     paragraph (1);
       ``(12) the identity of any person other than the party 
     alleging infringement, known to the party alleging 
     infringement, who has a legal right to enforce a patent 
     identified under paragraph (1) through a civil action under 
     any Act of Congress relating to patents or is licensed under 
     such patent;
       ``(13) the identity of any person with a direct financial 
     interest in the outcome of the action, including a right to 
     receive proceeds, or any fixed or variable portion thereof; 
     and
       ``(14) a description of any agreement or other legal basis 
     for a financial interest described in paragraph (13).''.
       (b) Technical and Conforming Amendment.--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:

``281A. Pleading requirements for patent infringement actions.''.

       (c) Review of Form 18.--Not later than 12 months after the 
     date of enactment of this Act, the Supreme Court shall review 
     and amend Form 18 of the Federal Rules of Civil Procedure to 
     ensure that Form 18 is consistent with the requirements under 
     section 281A of title 35, United States Code, as added by 
     subsection (a).
       (d) Rule of Construction.--Nothing in this section or the 
     amendments made by this section shall be construed to alter 
     existing law or rules relating to joinder.

     SEC. 3. JOINDER OF INTERESTED PARTIES.

       Section 299 of title 35, United States Code, is amended by 
     adding at the end the following:
       ``(d) Joinder of Interested Parties.--
       ``(1) Definition.--In this subsection, the term `interested 
     party', with respect to a civil action arising under any Act 
     of Congress relating to patents--
       ``(A) means a person described in paragraph (11) or (13) of 
     section 281A; and
       ``(B) does not include an attorney or law firm providing 
     legal representation in the action if the sole basis for the 
     financial interest of the attorney or law firm in the outcome 
     of the action arises from an agreement to provide that legal 
     representation.
       ``(2) Joinder of interested parties.--In a civil action 
     arising under any Act of Congress relating to patents, the 
     court shall grant a motion by a party defending an 
     infringement claim to join an interested party if the 
     defending party shows that the interest of the plaintiff in 
     any patent identified in the complaint, including a claim 
     asserted in the complaint, is limited primarily to asserting 
     any such patent claim in litigation.
       ``(3) Limitation on joinder.--The court may deny a motion 
     to join an interested party under paragraph (2) if--
       ``(A) the interested party is not subject to service of 
     process; or
       ``(B) joinder under paragraph (2) would deprive the court 
     of subject matter jurisdiction or make venue improper.''.

     SEC. 4. DISCOVERY LIMITS.

       (a) In General.--Chapter 29 of title 35, United States 
     Code, is amended by adding at the end the following:

     ``Sec. 300. Discovery in patent infringement suits

       ``(a) Discovery Limitation Prior to Claim Construction.--
       ``(1) In general.--Except as provided in paragraph (2), 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, 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.
       ``(2) Discretion to expand scope of discovery.--
       ``(A) Timely resolution of actions.--If, under any 
     provision of Federal law (including the Drug Price 
     Competition and Patent Term Restoration Act (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 have an automatic impact upon the rights of a 
     party with respect to the patent, the court may permit 
     discovery in addition to the discovery authorized under 
     paragraph (1) before the ruling described in paragraph (1) as 
     necessary to ensure timely resolution of the action.
       ``(B) Resolution of motions.--When necessary to resolve a 
     motion properly raised by a party before a ruling relating to 
     the construction of terms (as described in paragraph (1)), 
     the court may allow limited discovery in addition to the 
     discovery authorized under paragraph (1) as necessary to 
     resolve the motion.
       ``(b) Sequence and Scope; Cost-shifting.--
       ``(1) Definitions.--In this subsection--
       ``(A) the term `additional discovery' means discovery of 
     evidence other than core documentary evidence; and
       ``(B) the term `core documentary evidence', with respect to 
     a civil action arising under any Act of Congress relating to 
     patents--
       ``(i) subject to clause (ii), includes only documents 
     that--

       ``(I) relate to the conception, reduction to practice, and 
     application for the asserted patent;
       ``(II) are sufficient to show the technical operation of 
     the instrumentality identified in the complaint as infringing 
     the asserted patent;
       ``(III) relate to potentially invalidating prior art;
       ``(IV) relate to previous licensing or conveyances of the 
     asserted patent;
       ``(V) are sufficient to show revenue attributable to any 
     claimed invention;
       ``(VI) are sufficient to show the organizational ownership 
     and structure of each party, including identification of any 
     person that has a financial interest in the asserted patent;
       ``(VII) relate to awareness of the asserted patent or 
     claim, or the infringement, before the action was filed; and
       ``(VIII) sufficient to show any marking, lack of marking, 
     or notice of the asserted patent provided to the accused 
     infringer; and

       ``(ii) does not include computer code or electronic 
     communication, such as e-mail, text messages, instant 
     messaging, and other forms of electronic communication, 
     unless the court finds good cause for including such computer 
     code or electronic communication as core documentary evidence 
     of a particular party under clause (i).
       ``(2) Discovery sequence and scope.--In a civil action 
     arising under any Act of Congress relating to patents, the 
     parties shall discuss and address in the written report filed 
     under rule 26(f)(2) of the Federal Rules of Civil Procedure 
     the views and proposals of the parties on--
       ``(A) when the discovery of core documentary evidence 
     should be completed;
       ``(B) whether the parties will seek additional discovery 
     under paragraph (3); and
       ``(C) any issues relating to infringement, invalidity, or 
     damages that, if resolved before the additional discovery 
     described in paragraph (3) commences, will simplify or 
     streamline the case, including the identification of any key 
     patent claim terms or phrases to be construed by the court 
     and whether the early construction of any of those terms or 
     phrases would be helpful.
       ``(3) Discovery cost-shifting.--
       ``(A) In general.--In a civil action arising under any Act 
     of Congress relating to patents, each party shall be 
     responsible for the costs of producing core documentary 
     evidence within the possession, custody, or control of that 
     party.
       ``(B) Additional discovery.--
       ``(i) In general.--A party to a civil action arising under 
     any Act of Congress relating to patents may seek additional 
     discovery if the party bears the costs of the additional 
     discovery, including reasonable attorney's fees.
       ``(ii) Requirements.--A party shall not be allowed 
     additional discovery unless the party--

       ``(I) at the time that such party seeks additional 
     discovery, provides to the party from whom the additional 
     discovery is sought payment of the anticipated costs of the 
     discovery; or
       ``(II) posts a bond in an amount sufficient to cover the 
     anticipated costs of the discovery.

       ``(C) Rules of construction.--Nothing in subparagraph (A) 
     or (B) shall be construed to--

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       ``(i) entitle a party to information not otherwise 
     discoverable under the Federal Rules of Civil Procedure or 
     any other applicable rule or order;
       ``(ii) require a party to produce privileged matter or 
     other discovery otherwise limited under the Federal Rules of 
     Civil Procedure; or
       ``(iii) prohibit a court from--

       ``(I) determining that a request for discovery is 
     excessive, irrelevant, or otherwise abusive; or
       ``(II) setting other limits on discovery.''.

     SEC. 5. COSTS AND EXPENSES.

       (a) In General.--Section 285 of title 35, United States 
     Code, is amended to read as follows:

     ``Sec. 285. Costs and expenses

       ``(a) In General.--The court shall award to the prevailing 
     party reasonable costs and expenses, including attorney's 
     fees, unless--
       ``(1) the position and conduct of the non-prevailing party 
     were objectively reasonable and substantially justified; or
       ``(2) exceptional circumstances make such an award unjust.
       ``(b) Prohibition on Consideration of Certain 
     Settlements.--In determining whether an exception under 
     paragraph (1) or (2) of subsection (a) applies, the court 
     shall not consider as evidence any license taken in 
     settlement of an asserted claim.
       ``(c) Recovery.--If the non-prevailing party is unable to 
     pay reasonable costs and expenses awarded by the court under 
     subsection (a), the court may make the reasonable costs and 
     expenses recoverable against any interested party, as defined 
     in section 299(d).''.
       (b) Technical and Conforming Amendments.--
       (1) Table of sections.--The table of sections for chapter 
     29 of title 35, United States Code, is amended by striking 
     the item relating to section 285 and inserting the following:

``285. Costs and expenses.''.

       (2) Conforming amendments.--Chapter 29 of title 35, United 
     States Code, is amended--
       (A) in section 271(e)(4), in the flush text following 
     subparagraph (D), by striking ``attorney fees'' and inserting 
     ``reasonable costs and expenses, including attorney's 
     fees,'';
       (B) in section 273(f), by striking ``attorney fees'' and 
     inserting ``reasonable costs and expenses, including 
     attorney's fees,''; and
       (C) in section 296(b), by striking ``attorney fees'' and 
     inserting ``reasonable costs and expenses (including 
     attorney's fees)''.
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