[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--
[[Page S3765]]
``(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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