Florida Senate - 2015 CS for SB 1084 By the Committee on Judiciary; and Senator Brandes 590-03275-15 20151084c1 1 A bill to be entitled 2 An act relating to patent infringement; creating part 3 VII of ch. 501, F.S., entitled the “Patent Troll 4 Prevention Act”; creating s. 501.991, F.S.; providing 5 legislative intent; creating s. 501.992, F.S.; 6 defining terms; creating s. 501.993, F.S.; prohibiting 7 bad faith assertions of patent infringement from being 8 made; providing factors that a court may consider when 9 determining whether an allegation was or was not made 10 in bad faith; creating s. 501.994, F.S.; authorizing a 11 court to require a patent infringement plaintiff to 12 post a bond under certain circumstances; limiting the 13 bond amount; authorizing the court to waive the bond 14 requirement in certain circumstances; creating s. 15 501.995, F.S.; authorizing private rights of action 16 for violations of this part; authorizing the court to 17 award certain relief to prevailing plaintiffs; 18 creating s. 501.996, F.S.; requiring a bad faith 19 assertion of patent infringement to be treated as an 20 unfair or deceptive trade practice; creating s. 21 501.997, F.S.; providing exemptions; providing an 22 effective date. 23 24 Be It Enacted by the Legislature of the State of Florida: 25 26 Section 1. Part VII of chapter 501, Florida Statutes, 27 consisting of ss. 501.991-501.997, Florida Statutes, is created 28 and is entitled the “Patent Troll Prevention Act.” 29 Section 2. Section 501.991, Florida Statutes, is created to 30 read: 31 501.991 Legislative intent.— 32 (1) The Legislature recognizes that it is preempted from 33 passing any law that conflicts with federal patent law. However, 34 the Legislature recognizes that the state is dedicated to 35 building an entrepreneurial and business-friendly economy where 36 businesses and consumers alike are protected from abuse and 37 fraud. This includes protection from abusive and bad faith 38 demands and litigation. 39 (2) Patents encourage research, development, and 40 innovation. Patent holders have a legitimate right to enforce 41 their patents. The Legislature does not wish to interfere with 42 good faith patent litigation or the good faith enforcement of 43 patents. However, the Legislature recognizes a growing issue: 44 the frivolous filing of bad faith patent claims that have led to 45 technical, complex, and especially expensive litigation. 46 (3) The expense of patent litigation, which may cost 47 millions of dollars, can be a significant burden on companies 48 and small businesses. Not only do bad faith patent infringement 49 claims impose undue burdens on individual businesses, they 50 undermine the state’s effort to attract and nurture 51 technological innovations. Funds spent to help avoid the threat 52 of bad faith litigation are no longer available for serving 53 communities through investing in producing new products, helping 54 businesses expand, or hiring new workers. The Legislature wishes 55 to help its businesses avoid these costs by encouraging good 56 faith assertions of patent infringement and the expeditious and 57 efficient resolution of patent claims. 58 Section 3. Section 501.992, Florida Statutes, is created to 59 read: 60 501.992 Definitions.—As used in this part, the term: 61 (1) “Demand letter” means a letter, e-mail, or other 62 communication asserting or claiming that a person has engaged in 63 patent infringement. 64 (2) “Institution of higher education” means an educational 65 institution as defined in 20 U.S.C. s. 1001(a). 66 (3) “Target” means a person, including the person’s 67 customers, distributors, or agents, residing in, incorporated 68 in, or organized under the laws of this state which: 69 (a) Has received a demand letter or against whom an 70 assertion or allegation of patent infringement has been made; 71 (b) Has been threatened with litigation or against whom a 72 lawsuit has been filed alleging patent infringement; or 73 (c) Whose customers have received a demand letter asserting 74 that the person’s product, service, or technology has infringed 75 upon a patent. 76 Section 4. Section 501.993, Florida Statutes, is created to 77 read: 78 501.993 Bad faith assertions of patent infringement.—A 79 person may not make a bad faith assertion of patent 80 infringement. 81 (1) A court may consider the following factors as evidence 82 that a person has made a bad faith assertion of patent 83 infringement: 84 (a) The demand letter does not contain the following 85 information: 86 1. The patent number; 87 2. The name and address of the patent owner and assignee, 88 if any; and 89 3. Factual allegations concerning the specific areas in 90 which the target’s products, services, or technology infringe or 91 are covered by the claims in the patent. 92 (b) Before sending the demand letter, the person failed to 93 conduct an analysis comparing the claims in the patent to the 94 target’s products, services, or technology, or the analysis did 95 not identify specific areas in which the target’s products, 96 services, and technology were covered by the claims of the 97 patent. 98 (c) The demand letter lacked the information listed under 99 paragraph (a), the target requested the information, and the 100 person failed to provide the information within a reasonable 101 period of time. 102 (d) The demand letter requested payment of a license fee or 103 response within an unreasonable period of time. 104 (e) The person offered to license the patent for an amount 105 that is not based on a reasonable estimate of the value of the 106 license. 107 (f) The claim or assertion of patent infringement is 108 unenforceable, and the person knew, or should have known, that 109 the claim or assertion was unenforceable. 110 (g) The claim or assertion of patent infringement is 111 deceptive. 112 (h) The person, including its subsidiaries or affiliates, 113 has previously filed or threatened to file one or more lawsuits 114 based on the same or a similar claim of patent infringement and: 115 1. The threats or lawsuits lacked the information listed 116 under paragraph (a); or 117 2. The person sued to enforce the claim of patent 118 infringement and a court found the claim to be meritless. 119 (i) Any other factor the court finds relevant. 120 (2) A court may consider the following factors as evidence 121 that a person has not made a bad faith assertion of patent 122 infringement: 123 (a) The demand letter contained the information listed 124 under paragraph (1)(a). 125 (b) The demand letter did not contain the information 126 listed under paragraph (1)(a), the target requested the 127 information, and the person provided the information within a 128 reasonable period of time. 129 (c) The person engaged in a good faith effort to establish 130 that the target has infringed the patent and negotiated an 131 appropriate remedy. 132 (d) The person made a substantial investment in the use of 133 the patented invention or discovery or in a product or sale of a 134 product or item covered by the patent. 135 (e) The person is: 136 1. The inventor or joint inventor of the patented invention 137 or discovery, or in the case of a patent filed by and awarded to 138 an assignee of the original inventor or joint inventors, is the 139 original assignee; or 140 2. An institution of higher education or a technology 141 transfer organization owned by or affiliated with an institution 142 of higher education. 143 (f) The person has: 144 1. Demonstrated good faith business practices in previous 145 efforts to enforce the patent, or a substantially similar 146 patent; or 147 2. Successfully enforced the patent, or a substantially 148 similar patent, through litigation. 149 (g) Any other factor the court finds relevant. 150 Section 5. Section 501.994, Florida Statutes, is created to 151 read: 152 501.994 Bond.—If a person initiates a proceeding against a 153 target in a court of competent jurisdiction, the target may move 154 that the proceeding involves a bad faith assertion of patent 155 infringement in violation of this part and request that the 156 court issue a protective order. After the motion, and if the 157 court finds that the target has established a reasonable 158 likelihood that the plaintiff has made a bad faith assertion of 159 patent infringement, the court must require the plaintiff to 160 post a bond in an amount equal to the lesser of $250,000 or a 161 good faith estimate of the target’s expense of litigation, 162 including an estimate of reasonable attorney fees, conditioned 163 on payment of any amount finally determined to be due to the 164 target. The court shall hold a hearing at either party’s 165 request. A court may waive the bond requirement for good cause 166 shown or if it finds the plaintiff has available assets equal to 167 the amount of the proposed bond. 168 Section 6. Section 501.995, Florida Statutes, is created to 169 read: 170 501.995 Private right of action.—A person aggrieved by a 171 violation of this part may bring an action in a court of 172 competent jurisdiction. A court may award the following remedies 173 to a prevailing plaintiff in an action brought pursuant to this 174 section: 175 (1) Equitable relief; 176 (2) Damages; 177 (3) Costs and fees, including reasonable attorney fees; and 178 (4) Punitive damages in an amount equal to $50,000 or three 179 times the total damages, costs, and fees, whichever is greater. 180 Section 7. Section 501.996, Florida Statutes, is created to 181 read: 182 501.996 Enforcement.—A violation of this part is an unfair 183 or deceptive trade practice in any action brought by an 184 enforcing authority pursuant to s. 501.207. For the purposes of 185 this section, the term “enforcing authority” has the same 186 meaning as provided in s. 501.203. 187 Section 8. Section 501.997, Florida Statutes, is created to 188 read: 189 501.997 Exemptions.—This part does not apply to 190 institutions of higher education, to a technology transfer 191 organization owned by or affiliated with an institution of 192 higher education, or to a demand letter or an assertion of 193 patent infringement that includes a claim for relief arising 194 under 35 U.S.C. s. 271(e)(2) or 42 U.S.C. s. 262. 195 Section 9. This act shall take effect upon becoming a law.