4/29. Sen. Charles Grassley (R-IA), Sen. Patrick Leahy (D-VT), and others introduced S 1137 [LOC | WW], the "Protecting American Talent and Entrepreneurship Act of 2015", or "PATENT Act". This is a long bill that contains numerous changes to the Patent Act to limit abusive litigation and demand letter practices.

The original sponsors of this bill -- Sen. Grassley, Sen. Leahy, Sen. John Cornyn (R-TX), Sen. Mike Lee (R-UT), Sen. Orrin Hatch (R-UT), Sen. Charles Schumer (D-NY), and Sen. Amy Klobuchar (D-MN) -- are all members of the Senate Judiciary Committee (SJC), which has jurisdiction of patent matters.

They were also working on a similar bill in the 113th Congress, until then Chairman Leahy ended further consideration by the SJC in May of 2014, at the direction of the then Senate Majority Leader, Sen. Harry Reid (D-NV).

That bill was S 1720 [LOC | WW], the "Patent Transparency and Improvements Act of 2013". See, story titled "Sen. Leahy Announces Failure to Reach Consensus on Patent Bill" in TLJ Daily E-Mail Alert No. 2,660, May 20, 2014.

The House had already passed a bill in the 113th Congress directed at fee shifting in patent infringement litigation. The House passed HR 3309 [LOC | WW], the "Innovation Act", in December of 2013.

Sen. Reid's intervention killed patent reform legislation in the 113th Congress. However, Senate Democrats lost their majority in the November 2014 elections, and Sen. Reid is no longer the majority leader.

The just introduced bill would, among other things, amend the Patent Act to provide (1) heightened pleading requirements for patent infringement actions, (2) stays of certain actions against customers who purchased an alleged infringing product, (3) temporary stays of pretrial discovery pending resolution of certain preliminary matters, including motions to dismiss, (4) limited fee shifting based upon an objectively unreasonable standard, and (5) increased transparency of patent transfers.

This bill would also amend the Patent Act in a manner that touches upon Federal Trade Commission (FTC) enforcement of Section 5 of the FTC Act (15 U.S.C. § 45) in matters involving fraudulent and misleading pre-litigation demand letter practices. The bill, however, would not amend the FTC Act. Thus, the sponsors of this bill seek to avoid referrals of the bill to the Senate Commerce Committee (SCC) and the House Commerce Committee (HCC).

The SJC will hold a hearing on this bill on May 7, 2015. See, notice. The SJC has not yet scheduled a meeting to mark up the bill.

Sen. Grassley, the Chairman of the SJC, stated that "our patent system ... is under attack from bad actors, also known as ``patent trolls´´". See, Congressional Record, April 29, 2015, at Page S2532.

He added that "Patent trolls prey on businesses by filing frivolous lawsuits and employing an array of heavy-handed and deceptive tactics to scare plaintiffs into settlements. These bad actors send vague and overly broad demand letters, exploit loose pleading standards that provide little substance of the alleged infringement claims, hide their identity behind shell companies, and use the threat of high cost patent litigation discovery as a weapon. This is a drag on our economy, costing an estimated $80 billion annually in direct and indirect costs."

Sen. Leahy (at right), the ranking Democrat on the SJC, stated that "Our legislation will deter abusive practices while preserving the strength of America's patent system". See, Congressional Record, April 29, 2015, at Page S2539.

He explained that "bad actors have abused the patent system to extract money from unsuspecting companies through broad threats of patent litigation. Coffee shops have been threatened with patent suits simply for using a Wi-Fi router they purchased off the shelf, and website owners have faced costly litigation for using basic software in e-commerce. Instead of using patents to drive new creations, some entities are holding up main street businesses and innovative companies simply to extort financial settlements."

Ed Black, head of the Computer and Communications Industry Association (CCIA), stated in a release that "The abuse of the patent system has been an unfair and unnecessary drain on our economy. Patent trolls have been targeting everyone from restaurants that have websites to customers buying a printer at a store".

Gary Shapiro, head of the Consumer Electronics Association (DEA), stated that this bill "will stop the legalized extortion of American innovators by patent trolls -- individuals or companies that do not manufacture products or supply services, but exist solely to demand payments, threaten litigation and file frivolous lawsuits against those who do. And it will make life easier for legitimate American businesses -- especially small businesses, the most frequent targets of patent trolls."

The National Retail Federation (NRF) stated in a letter that "Abusive patent litigation is a significant and growing problem for retailers, and we strongly support this comprehensive reform. The PATENT Act will help protect retailers from patent trolls, while reaffirming this nation's commitment to American innovation, entrepreneurship, and consumer welfare."

Charles Duan of the Public Knowledge praised this bill. He stated in a release that "we understand that the PATENT Act overcomes many of the problems we have raised with the TROL Act when it comes to patent demand letters, such as not preempting stronger state law protections."

TROL is an acronym for "Targeting Rogue and Opaque Letters". See for example, Title II of S 632 [LOC | WW], the "Support Technology and Research for Our Nation's Growth Patents Act of 2015", or the "STRONG Patents Act of 2015". Section 204 of S 632 would provide for preemption of state laws, but allow state enforcement of the federal statute that it would amend (Section 5 of the FTC Act).

4/29. The following is a summary of key provisions of S 1137 [LOC | WW], the "Protecting American Talent and Entrepreneurship Act of 2015", or "PATENT Act".

Heightened Pleading Requirements. Section 3 of the bill would amend the Patent Act to provide for heightened pleading requirements. First, it would add a new Section 281A to Title 35.

This new section would state that "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 a complaint, counterclaim, or cross-claim for patent infringement" numerous things.

The party must include in the pleading (1) an identification of each patent allegedly infringed; (2) an identification of each claim of each patent that is allegedly infringed; (3) an identification of each accused process, machine, manufacture, or composition of matter (collectively known as instrumentality) alleged to infringe the claim; (4) an identification with particularity of the name or model number of each accused instrumentality, or if there is no name or model number, a description of each accused instrumentality; (5) for each claim alleged to be infringed, a description of the elements thereof that are alleged to be infringed by the accused instrumentality and how the accused instrumentality is alleged to infringe those elements; and (6) for each claim of indirect infringement, a description of the acts of the alleged infringer that are alleged to contribute to or induce the direct infringement.

However, the bill adds that if some required information "is not accessible to a party after an inquiry reasonable under the circumstances ... an allegation requiring that information may be based upon a general description of that information, along with a statement as to why the information is not accessible".

The bill adds that the District Court "shall" dismiss pleading that fail to comply.

Second, the bill would add a new Section 281B that would require that "a patentee shall disclose to the court and each adverse party, not later than 14 days after the date on which the patentee serves or files the pleading subject to the requirements of section 281A" certain enumerated information regarding financial interests in asserted patents.

This information would include each "assignee of the patent or patents at issue, and any ultimate parent entity thereof", each "entity with a right to sublicense to unaffiliated entities or to enforce the patent or patents at issue, and any ultimate parent entity thereof", and each entity with a financial interest in the patent or patents at issue.

This information would also include information regarding other litigation in which the patent has been asserted. It would also include information regarding commitments made to standards development organizations regarding licensing the patent. It would also include information regarding any federally imposed requirements to license the patent.

Customer Suit Stays. Section 4 of the bill provides for stays of actions against customers who purchased allegedly infringing products.

The bill would add a new Section 299A to Title 35. It would provide that "the court shall grant a motion to stay at least the portion of the action against a covered customer that relates to infringement of a patent involving a covered product or covered process if" (1) the manufacturer is a party to litigation in a District Court involving the same claims, (2) the customer agrees to by bound by determinations in that litigation involving the manufacturer, and (3) the motion for stay is timely filed.

Discovery Stays. Section 5 of the bill would provide for temporary discovery stays pending resolution of three types of preliminary motions -- a motion to dismiss, a motion to transfer venue, and a motion to sever accused infringers.

Sen. Leahy stated that "Under the PATENT Act, discovery is stayed while the court resolves early, pre-answer motions about whether the case has been brought in the correct venue, against the correct defendants, and whether the complaint states a plausible claim for relief. Discovery is permitted if necessary to resolve those motions, to resolve a motion for preliminary relief, or if failure to allow discovery would cause specific prejudice to a party."

Fee Shifting. Section 7 of the bill would provide for limited fee shifting based upon an objectively unreasonable standard.

Leahy stated that "The language in the PATENT Act provides for fee shifting only in cases where the court finds that the losing party was not ``objectively reasonable.'' This is an important change from the approach of ``presumptive loser pays´´ contained in the House's patent reform bill, the Innovation Act. It promotes judicial discretion and ensures the burden is on the party seeking fees to show that fees should be awarded. An additional exception allows the court to refrain from awarding fees if such an award would be unjust--for example, because it would cause undue financial harm to an individual inventor or a public institution of higher education.

Currently, 35 U.S.C. § 285 provides in full that "The court in exceptional cases may award reasonable attorney fees to the prevailing party."

This bill would replace this with the following: "In connection with a civil action in which any party asserts a claim for relief arising under any Act of Congress relating to patents, upon motion by a prevailing party, the court shall determine whether the position of the non-prevailing party was objectively reasonable in law and fact, and whether the conduct of the non-prevailing party was objectively reasonable. If the court finds that the position of the non-prevailing party was not objectively reasonable in law or fact or that the conduct of the non-prevailing party was not objectively reasonable, the court shall award reasonable attorney fees to the prevailing party unless special circumstances would make an award unjust." (Emphasis added.)

This bill would also address covenants not to sue. "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 attorney 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."

Demand Letters. Sections 8 and 9 of the would address abusive demand letter practices.

First, Section 8 of this bill would add a new Section 299C to Title 35 titled "Pre-Suit written notice". It enumerates items to be included in pre-suit demand letters. This list contains a lighter version of the heightened pleading requirements.

The bill provides that the consequences of non-compliance are that the defendant is given additional time to file an answer to the complaint, and that a claimant seeking to establish willful infringement may not rely on evidence of pre-suit notification that is not in compliance.

There is no outright mandate that all demand letters must include the enumerated items.

However, Section 9 would add a new Section 299D to Title 35 titled "Bad-faith Demand Letters". It would regulate the "widespread sending" of patent infringement demand letters.

Section 5 of the FTC Act (15 U.S.C. § 45) provides in part that "unfair or deceptive acts or practices in or affecting commerce, are hereby declared unlawful".

However, this bill would not amend the FTC Act (over which the Commerce Committees have jurisdiction). Rather, it would awkwardly amend Title 35 (over which the Judiciary Committees have jurisdiction), but in a manner that would impact FTC enforcement of the FTC Act.

The bill would provide that patent infringement demand letter practices are an unfair or deceptive act or practice within the meaning of Section 5 of the FTC Act if demand letters employ any of numerous enumerated practices.

For example, there is "a pattern of false statements or threats" representing that administrative or judicial relief has been sought, or will be brought.

Or, "the assertions contained in the communications lack a reasonable basis in fact or law" because the person asserting the patent is not the appropriate person to make the assertion, the patent has expired or been held unenforceable, the sender knows that the recipient is authorized by the patentee, the sender falsely represents that an investigation of the recipient's alleged infringement has occurred, or the communications falsely state that litigation has been filed against, or a license has been paid by, similarly situated persons.

Or, the demand letters can violate Section 5 by omission. That is, there is a violation if "the content of the written communications is likely to materially mislead a reasonable recipient because the content fails to include facts reasonably necessary to inform the recipient ... of the identity of the person asserting a right to license the patent" and "of the patent ... alleged to have been infringed".

Notably, Section 9 of the bill does not expressly preempt any state laws regarding unfair or deceptive trade practices, or demand letter practices.

Transparency of Patent Transfers. Section 10 of the bill would add a new Section 261A to Title 35 titled "Disclosure of information relating to patent ownership".

This new section would require that "An assignment of all substantial rights in an issued patent shall be recorded in the Patent and Trademark Office (1) not later than the date on which the patent is issued; and (2) when any subsequent assignment is made that results in a change to the ultimate parent entity  ... not later than 3 months after the date on which such assignment is made", (or within 6 months in the case of certain large corporate acquisitions).

The bill further provides that failure to comply would would affect the recovery of increased damages, and of attorneys fees.

Other Provisions in the Bill. The bill contains numerous other provisions not summarized in this article. For example, the bill addresses patent licenses in bankruptcy proceedings. And, it contains numerous largely technical changes to the Smith Leahy America Invents Act.

This bill also directs the USPTO to conduct a study that contains "legislative recommendations to ensure greater transparency and accountability in patent transactions occurring on the secondary market". It also directs the USPTO to "conduct a study to examine the idea of developing a pilot program for patent small claims procedures in certain judicial districts".

Post Grant Reviews. The bill does not address the post grant review process created by the Smith Leahy America Invents Act.

However, Sen. Leahy said that he may offer amendments during SJC mark up of the bill. He elaborated that "some companies and inventors have raised concerns about unfair practices that are taking place in the post-grant review proceedings through which patents can be challenged at the Patent and Trademark Office. Those proceedings were created by the Leahy-Smith America Invents Act as an important tool to improve patent quality, but if they are being misused or creating inaccurate perceptions in the marketplace, we should address those concerns. I look forward to working with the stakeholders who have already contributed meaningfully to this bill."

The House will not meet the week of May 4-8, 2015, except for pro forma sessions.

The Senate will meet at 3:00 PM.

10:00 AM. The U.S. Court of Appeals (FedCir) will hear oral argument in SFA Systems v. Newegg, App. Ct. No. 14-1712. This is an appeal from the U.S. District Court (EDTex) in a patent infringement case involving online sales technology. At issue is fee shifting under 35 U.S.C. § 285. Panel C. This case is the third of four on the schedule. See, oral arguments schedule. No live webcast. Archived audio webcast. Location: Courtroom 203, 717 Madison Place, NW.

The House will meet in pro forma session only.

The Senate will meet at 10:00 AM.

7:30 AM - 1:45 PM. The FedScoop will host an event titled "Federal Innovations Summit". The price is $195. It is free for government employees. No CLE credits. See, notice. Location: Newseum, 555 Pennsylvania Ave., NW.

8:00 AM - 3:45 PM. Day one of a two day partially closed meeting of the National Science Foundation's (NSF) National Science Board. See, notice in the Federal Register, Vol. 80, No. 83, April 30, 2015, at Pages 24287-24288. Location: NSF, 4201 Wilson Blvd., Room 1235, Arlington, VA.

9:30 AM. The U.S. International Trade Commission (USITC) will hold a hearing titled "Trade and Investment Policies in India, 2014-2015". See, notice in the Federal Register, Vol. 80, No. 38, February 26, 2015, at Page 10513. Monday, March 30. Location: USITC, 500 E St., SW.

10:30 AM. The Senate Appropriations Committee (SAC) will hold a hearing on the FY 2016 budget requests of the Securities and Exchange Commission (SEC) and Commodity Futures Trading Commission (CFTC). See, notice. Location: Room 138, Dirksen Building.

The House will not meet.

The Senate will meet at 9:30 AM.

8:00 AM - 3:00 PM. Day two of a two day partially closed meeting of the National Science Foundation's (NSF) National Science Board. See, notice in the Federal Register, Vol. 80, No. 83, April 30, 2015, at Pages 24287-24288. Location: NSF, 4201 Wilson Blvd., Room 1235, Arlington, VA.

9:00 AM - 5:00 PM. Day one of a two day meeting of the Federal Aviation Administration's (FAA) Radio Technical Commission for Aeronautics' (RTCA) Special Committee 234, Portable Electronic Devices (PEDs). See, notice in the Federal Register, Vol. 80, No. 62, April 1, 2015, at Page 17542. Location: RTCA, Suite 910, 1150 18th St., NW.

10:00 AM. The Senate Homeland Security and Governmental Affairs Committee will meet to approve nominations and mark up bills. The agenda includes consideration of S 1180 [LOC | WW], the "Integrated Public Alert and Warning System Modernization Act of 2015", S 623 [LOC | WW], the "Social Media Working Group Act of 2015", and S 280 [LOC | WW], the "Federal Permitting Improvement Act of 2015". See, notice. Location: Room 342, Dirksen Building.

10:00 AM. The U.S. Court of Appeals (FedCir) will hear oral argument in Intellectual Ventures I v. Capital One Financial, App. Ct. No. 14-1506. This is an appeal from the U.S. District Court (EDVa) in a patent infringement case involving banking technology, with counterclaims of violation of antitrust law, and a request for fee shifting under 35 U.S.C. § 285. See, D.C. No. 1:13-cv-00740. Panel H. This case is the third of four on the schedule. See, oral arguments schedule. No live webcast. Archived audio webcast. Location: Courtroom 402, 717 Madison Place, NW.

10:00 AM - 12:00 NOON. The Federal Communications Bar Association's (FCBA) Engineering and Technical Practice Committee will host a tour of the DuPont Fabros Technologies Data Center. Free. No CLE credits. No webcast. See, notice. Location: DFT, Ashburn, VA.

2:15 PM. The Senate Judiciary Committee (SJC) will hold a hearing on four judicial nominees: Dale Drozd (USDC/EDCal), Ann Donnelly (USDC/EDNY), Lawrence Vilardo (USDC/WDNY), and LaShann Hall (USDC/EDNY). See, notice. Location: Room 226, Dirksen Building.

Deadline to submit comments to the U.S. Patent and Trademark Office (USPTO) in response to its request for comments on enhancing patent quality. See, notice in the Federal Register, Vol. 80, No. 24, February 5, 2015, at Pages 6475-6481.

The House will not meet.

7:30 AM - 12:15 PM. The FedScoop will host an event titled "Data Innovation Summit 2015". The price is $195. It is free for government employees. No CLE credits. See, notice. Location: Newseum, 555 Pennsylvania Ave., NW.

9:00 AM - 5:00 PM. Day two of a two day meeting of the Federal Aviation Administration's (FAA) Radio Technical Commission for Aeronautics' (RTCA) Special Committee 234, Portable Electronic Devices (PEDs). See, notice in the Federal Register, Vol. 80, No. 62, April 1, 2015, at Page 17542. Location: RTCA, Suite 910, 1150 18th St., NW.

9:30 AM. The Senate Judiciary Committee (SJC) will hold a hearing on S 1137 [LOC | WW], the "PATENT ACT". The witnesses will be Mark Chandler (Cisco Systems), Kevin Rhodes (3M Company), Diane Lettelleir (JCPenny Corporation), Henry Hadad (Bristol-Myers Squibb), and Julie Samuels (Engine). See, notice. Location: Room 226, Dirksen Building.

10:00 AM. The Senate Foreign Relations Committee (SFAC) will hold a hearing titled "Safeguarding American Interests in the East and South China Seas". See, notice. Location: Room 419, Dirksen Building.

10:00 AM. The Senate Homeland Security and Governmental Affairs Committee will hold a hearing titled "Jihad 2.0: Social Media in the Next Evolution of Terrorist Recruitment". The witnesses will be Peter Bergen (New America Foundation), J.M. Berger (Brookings Institution), Mubin Shaikh (author of the book titled "Undercover Jihadi"), and Daveed Ross (Foundation for Defense of Democracies). See, notice. Location: Room 342, Dirksen Building.

10:00 AM. The U.S. Court of Appeals (FedCir) will hear oral argument in Linex Technologies v. Aruba Networks, App. Ct. No. 14-1561. This is an appeal from the U.S. District Court (NDCal) in a patent infringement case involving Wi-Fi technology. See, D.C. No. 4:13-cv-00159. Panel J. This case is the fourth of four on the schedule. See, oral arguments schedule. No live webcast. Archived audio webcast. Location: Courtroom 201, 717 Madison Place, NW.

1:00 - 2:30 PM. The American Bar Association (ABA) will host a webcast panel discussion titled "T-Mobile South v. City of Roswell and Other Recent Developments in Cell Tower Siting". See, January 14, 2015 opinion of the Supreme Court in T-Mobile South v. City of Roswell, Sup. Ct. No. 13-975. The speakers will be Alexander Judd, Bradford Townsend, and David Davidson. Prices vary. CLE credits. See, notice.

The House will meet in pro forma session only.

Mothers Day.

12:00 NOON. The Cato Institute will host a panel discussion titled "The U.S. National ID Law at Ten Years". This program pertains to the REAL ID Act. The speakers will be Adam Candeub (Michigan State University College of Law), Edward Hasbrouck (consultant to the Identity Project), Gabe Rottman (ACLU), and Jim Harper (Cato). Webcast. Free. Open to the public. Lunch will be served after the program. See, notice. Location: Cato, 1000 Massachusetts Ave., NW.

10:00 AM - 12:00 NOON. The Federal Communications Bar Association's (FCBA) Telehealth Committee will host a panel discussion of "legislative and regulatory initiatives for telemedicine, health services IT, and related communications issues". The speakers will be Neal Neuberger (Institute for e-Health Policy), Latoya Thomas (American Telemedicine Association), Sylvia Trujillo (American Medical Association), and Chantal Worzala (American Hospital Association). Free. No CLE credits. No webcast. See, notice. Location: CTIA, Suite 600, 1400 16th St., NW.

7:30 AM - 10:45 AM. The FedScoop will host an event titled "The IT Security Crisis". The price is $195. It is free for government employees and reporters. No CLE credits. See, notice and registration page. Location: Hotel Monaco, 700 F St., NW.

10:00 AM. Deadline for Representatives to submit to the House Rules Committee (HRC) proposed amendments to HR 1806 [LOC | WW], the "America COMPETES Reauthorization Act of 2015". See, notice.

10:00 AM. The Senate Energy and Natural Resources Committee (SENRC) will hold a hearing on S 883 [LOC | WW], the "American Mineral Security Act of 2015". This bill would affect domestic production of rare earth materials used in the information technology and communications sectors. It would require the U.S. Geological Survey to develop a list of critical minerals, and to promote a quicker permitting process for such minerals. See, notice. Location: Room 366, Dirksen Building.

10:00 - 11:30 AM. The Brookings Institution (BI) will host a discussion of the book titled "Meeting China Halfway: How to Defuse the Emerging U.S.-China Rivalry". The speakers will be Lyle Goldstein (author), Jonathan Pollack (BI), Stapleton Roy (Woodrow Wilson Center), and Michael McDevitt (Center for Naval Analysis). See, notice. Location: BI, 1775 Massachusetts Ave., NW.

6:00 - 8:15 PM. The Federal Communications Bar Association's (FCBA) Homeland Security and Emergency Communications and Privacy and Data Security Committees will host an event titled "Cybersecurity: The CSRIC Report and the Challenges Ahead". CLE credits. Prices vary. No webcast. The deadline for registrations and cancellations is 5:00 PM on May 11. See, notice. Location: Arnold & Porter, Conference Room 213A, 555 12th, NW.

Deadline to submit post-hearing briefs and statements following the U.S. International Trade Commission's (USITC) May 5, 2015 hearing titled "Trade and Investment Policies in India, 2014-2015". See, notice in the Federal Register, Vol. 80, No. 38, February 26, 2015, at Page 10513.

Deadline to submit comments to the National Institute of Standards and Technology's (NIST) Computer Security Division (CSD) regarding its final public draft SP 800-171 [77 pages in PDF] titled "Protecting Controlled Unclassified Information in Nonfederal Information Systems and Organizations".

Deadline to submit initial comments to the Federal Communications Commission's (FCC) Media Bureau (MB) in response to its Public Notice (PN) requesting comments to assist it in preparing the report required by Section 109 of the STELA Reauthorization Act of 2014, Public Law No. 113-200. This report pertains to designated market areas and fostering localism. The FCC/MB released this PN on February 25, 2015. It is DA 15-253 in MB Docket No. 15-43. See, notice in the Federal Register, Vol. 80, No. 63, April 2, 2015, at Pages 17745-17748.

9:00 - 10:30 AM. The Information Technology and Innovation Foundation (ITIF) will host a panel discussion titled "Inclusive Prosperity Without the Prosperity: Limits of the Middle-Out Strategy". The speakers will be Robert Atkinson (ITIF), Martin Baily (Brookings Institution), Michael Lind (New America Foundation), Robert Litan (Brookings Institution), Michael Mandel (Progressive Policy Institute), and Zach Silk. Free. Open to the public. Live and archived webcast. See, notice. Location: ITIF/ITIC, Suite 610, 1101 K St., NW.

Supreme Court conference day. See, 2014-2015 calendar. Closed to the public.

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