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Is there pending legislation on patent litigation reform?

Last updated 7/8/2015
Both the House Judiciary Committee and Senate Judiciary Committee have approved patent reform legislation. Additionally, the House Energy and Commerce Committee approved a bill specifically targeting abusive demand letters. Each bill is described below.

H.R. 9, the Innovation Act

On February 5, 2015, H.R. 9, the Innovation Act was introduced in the 114th Congress. As introduced, H.R. 9  was identical to the Innovation Act (H.R. 3309) passed by the U.S. House of Representatives in the 113th Congress. The proponents of the legislation seek to deter abusive patent litigation by heightening the pleading requirements for patent suits, amending the attorneys’ fees provision of the Patent Act, allowing for joinder of interested parties to ensure an attorneys’ fee award could be collected by the prevailing party, imposing limits on discovery prior to a claim construction ruling, and staying lawsuits against a customer in favor of a suit against a manufacturer or supplier. The bill would also require the Judicial Conference to develop case management rules for patent litigation, mandate the disclosure of patent ownership information, and make technical corrections to the AIA including post grant proceedings, among other things.
On June 11, 2015, during the House Judiciary Committee markup an amended version of H.R. 9, the Innovation Act, was approved which contained numerous modifications, including bringing the House's patent reform legislation closer to a bill previously approved by the Senate Judiciary Committee. During the House markup, the Committee approved a Manager's Amendment to H.R. 9 that included changes to several provisions of the bill as introduced, including changes to the provisions related to heightened pleadings, limits on discovery, stays of customer suits, covenant not to sue, and the Judicial Conference rules and procedures.  In addition, the amendment added additional language that included, among other things, provisions pertaining to venue and mandamus, disciplinary proceedings, trademark appeals, and clarification of jurisdiction. The Committee also adopted amendments to the Manager's Amendment pertaining to venue, stays of discovery, the USPTO's fee-setting authority, a Judicial Conference report on discovery proceedings, and technical changes.  View the AIPLA Direct summarizing the amendments to H.R. 9.

S. 1137, the PATENT Act

In the Senate, S. 1137, the Protecting American Talent and Entrepreneurship Act (or “PATENT Act”) was introduced on April 29, 2015. The bill addresses a number of the same issues that are targeted by the Innovation Act, but with different approaches in certain provisions. Among other things, the bill includes provisions on heightened pleadings and early disclosure requirements, stays of suits against customers, limits on discovery, and attorneys' fees. Additionally, the bill would, address the widespread sending of abusive demand letters by clarifying the Federal Trade Commission’s authority in this area and establishing that a demand letter cannot be used to establish willful infringement unless certain information is provided.
On June 4, 2015, during the Senate Judiciary Committee markup, an amended version of S. 1137 was approved by a vote of 16-4. During the markup, the Committee approved a Managers’ Amendment that included changes to post grant review proceedings at the US Patent and Trademark Office, such as a requirement to construe claims as in district court litigation. Additionally, the Committee adopted an amendment from Senator Feinstein to the demand letter provision and an amendment from Senator Cornyn to define universities and non-profit research organizations as micro-entities.

H.R. 2045, the TROL Act

The issue of abusive patent demand letters has also been considered by the House Energy and Commerce Committee. H.R. 2045, the Targeting Rogue and Opaque Letters (TROL) Act. The TROL Act aims to deter the abusive sending of bad faith demand letters by clarifying that such activity may violate the Federal Trade Commission Act and authorizes the FTC and state attorneys general to bring actions to stop the abusive behavior. The bill also includes a provision that preempts state laws “expressly relating to the transmission or contents of communications relating to the assertion of patent rights.”
The House Energy and Commerce Subcommittee on Commerce, Manufacturing, and Trade approved a discussion draft of the TROL Act by a vote of 10 to 7 during a markup on April 22, 2015. During the markup, the Subcommittee voted in favor of an amendment to the affirmative defense provision in the discussion draft to bring the provision in line with the standard for a bona fide mistake in the Fair Debt Collection Practices Act.
On April 29, 2015, the full House Energy and Commerce Committee approved H.R. 2045 by a vote of 30 to 22. During the markup, amendments to the bad faith requirement and the preemption provision were offered but not agreed to.

Other Congressional Activity

Other related bills have also been introduced in the 114th Congress including H.R. 1832, the Innovation Protection Act, which relates to USPTO funding, H.R. 1895, the Demand Letter Transparency Act, and S. 632, the STRONG Patents Act, which focuses on reforms to the AIA trial proceedings before the Patent Trial and Appeals Board.
The following hearings and markups relating to patent litigation reform have already taken place in the 114th Congress:
  • House Judiciary Committee hearing on “Examining Recent Supreme Court Cases in the Patent Arena” on February 12, 2015
  • House Energy and Commerce Committee hearing on “Update: Patent Demand Letter Practices and Solutions” on February 26, 2015
  • Senate Judiciary Committee hearing on “The Impact of Abusive Patent Litigation Practices on the American Economy” on March 18, 2015
  • Senate Committee on Small Business & Entrepreneurship a hearing on “Patent Reform: Protecting Innovation and Entrepreneurship” on March 19, 2015
  • House Subcommittee on Courts, Intellectual Property and the Internet hearing on “Patent Reform: Protecting American Innovators and Job Creators from Abusive Patent Litigation” on March 25, 2015
  • House Judiciary Committee hearing on H.R. 9, the Innovation Act, on April 14, 2015
  • House Energy and Commerce Committee hearing on H.R. 2045, the TROL Act on April 16, 2015
  • House Energy and Commerce Subcommittee on Commerce, Manufacturing and Trade markup of H.R. 2045, the TROL Act, April 22, 2015
  • House Energy and Commerce Committee markup of H.R. 2045, the TROL Act, April 29, 2015
  • Senate Judiciary Committee Hearing on S. 1137, the PATENT Act, May 7, 2015
  • Senate Judiciary Committee Markup of S. 1137, the PATENT Act, June 4, 2015
  • House Judiciary Committee Markup of H.R. 9, the Innovation Act, June 11, 2015
For more information about legislative activity in the 114th Congress click here.