Florida Senate - 2016 COMMITTEE AMENDMENT
Bill No. SB 1298
Ì618428?Î618428
LEGISLATIVE ACTION
Senate . House
Comm: RCS .
02/16/2016 .
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The Committee on Judiciary (Brandes) recommended the following:
1 Senate Amendment (with title amendment)
2
3 Delete everything after the enacting clause
4 and insert:
5 Section 1. Section 501.991, Florida Statutes, is amended to
6 read:
7 501.991 Legislative intent; construction.—
8 (1) The Legislature recognizes that it is preempted from
9 passing any law that conflicts with federal patent law. However,
10 the Legislature recognizes that the state is dedicated to
11 building an entrepreneurial and business-friendly economy where
12 businesses and consumers alike are protected from abuse and
13 fraud. This includes protection from abusive and bad faith
14 demands and litigation.
15 (2) Patents encourage research, development, and
16 innovation. Patent holders have a legitimate right to enforce
17 their patents. The Legislature does not wish to interfere with
18 good faith patent litigation or the good faith enforcement of
19 patents. However, the Legislature recognizes a growing issue:
20 the frivolous filing of bad faith patent claims that have led to
21 technical, complex, and especially expensive litigation.
22 (3) The expense of patent litigation, which may cost
23 millions of dollars, can be a significant burden on companies
24 and small businesses. Not only do bad faith patent infringement
25 claims impose undue burdens on individual businesses, they
26 undermine the state’s effort to attract and nurture
27 technological innovations. Funds spent to help avoid the threat
28 of bad faith litigation are no longer available for serving
29 communities through investing in producing new products, helping
30 businesses expand, or hiring new workers. The Legislature wishes
31 to help businesses avoid these costs by encouraging good faith
32 assertions of patent infringement and the expeditious and
33 efficient resolution of patent claims.
34 (4) This part may not be construed to:
35 (a) Limit the rights and remedies available to the state or
36 a person under any other law;
37 (b) Alter or restrict the Attorney General’s authority
38 under any other law regarding claims of patent infringement; or
39 (c) Prohibit a person who owns, or has a right to license
40 or enforce, a patent from:
41 1. Notifying other parties of such person’s ownership of,
42 or rights under, the patent;
43 2. Offering the patent to other parties for license or
44 sale;
45 3. Notifying other parties of such parties’ infringement of
46 the patent as provided by 35 U.S.C. s. 287; or
47 4. Seeking compensation for past or present infringement
48 of, or license to, the patent.
49 Section 2. Subsections (1) and (3) of section 501.992,
50 Florida Statutes, are amended to read:
51 501.992 Definitions.—As used in this part, the term:
52 (1) “Demand letter” means a letter, e-mail, or other
53 written communication, including e-mail, asserting or claiming
54 that a person has engaged in patent infringement.
55 (3) “Target” means a person residing in, incorporated in,
56 or organized under the laws of this state who purchases, rents,
57 leases, or otherwise obtains a product or service in the
58 commercial market which is not for resale in the commercial
59 market and who:
60 (a) Has received a demand letter or against whom a written
61 assertion or allegation of patent infringement has been made; or
62 (b) Has been threatened in writing with litigation or
63 against whom a lawsuit has been filed alleging patent
64 infringement.
65 Section 3. Section 501.993, Florida Statutes, is amended to
66 read:
67 501.993 Bad faith assertions of patent infringement.—A
68 person may not send a demand letter to a target which makes make
69 a bad faith assertion of patent infringement. A demand letter
70 makes a bad faith assertion of patent infringement if it:
71 (1) Includes a claim that the target, or a person
72 affiliated with the target, has infringed a patent and that the
73 target is legally liable for such infringement; and A court may
74 consider the following factors as evidence that a person has
75 made a bad faith assertion of patent infringement:
76 (a) The demand letter does not contain the following
77 information:
78 1. The patent number;
79 2. The name and address of the patent owner and assignee,
80 if any; and
81 3. Factual allegations concerning the specific areas in
82 which the target’s products, services, or technology infringe or
83 are covered by the claims in the patent.
84 (b) Before sending the demand letter, the person failed to
85 conduct an analysis comparing the claims in the patent to the
86 target’s products, services, or technology, or the analysis did
87 not identify specific areas in which the target’s products,
88 services, and technology were covered by the claims of the
89 patent.
90 (c) The demand letter lacked the information listed under
91 paragraph (a), the target requested the information, and the
92 person failed to provide the information within a reasonable
93 period.
94 (d) The demand letter requested payment of a license fee or
95 response within an unreasonable period.
96 (e) The person offered to license the patent for an amount
97 that is not based on a reasonable estimate of the value of the
98 license.
99 (f) The claim or assertion of patent infringement is
100 unenforceable, and the person knew, or should have known, that
101 the claim or assertion was unenforceable.
102 (g) The claim or assertion of patent infringement is
103 deceptive.
104 (h) The person, including its subsidiaries or affiliates,
105 has previously filed or threatened to file one or more lawsuits
106 based on the same or a similar claim of patent infringement and:
107 1. The threats or lawsuits lacked the information listed
108 under paragraph (a); or
109 2. The person sued to enforce the claim of patent
110 infringement and a court found the claim to be meritless.
111 (i) Any other factor the court finds relevant.
112 (2) Meets one or more of the following criteria A court may
113 consider the following factors as evidence that a person has not
114 made a bad faith assertion of patent infringement:
115 (a) The demand letter falsely asserts that the sender has
116 filed a lawsuit in connection with the claim contained the
117 information listed under paragraph (1)(a).
118 (b) The demand letter asserts a claim that is objectively
119 baseless due to any of the following:
120 1. The sender, or a person whom the sender represents,
121 lacks a current right to license the patent to, or enforce the
122 patent against, the target.
123 2. The patent is invalid or unenforceable pursuant to a
124 final judgment or an administrative order.
125 3. The infringing activity alleged in the demand letter
126 occurred after the expiration of the patent The demand letter
127 did not contain the information listed under paragraph (1)(a),
128 the target requested the information, and the person provided
129 the information within a reasonable period.
130 (c) The demand letter is likely to materially mislead a
131 reasonable person because it does not contain sufficient
132 information to inform the target of all of the following:
133 1. The identity of the person asserting the claim,
134 including the name and address of such person.
135 2. The patent alleged to have been infringed, including the
136 patent number of such patent.
137 3. At least one product, service, or technology of the
138 target alleged to infringe the patent, or at least one activity
139 of the target which is alleged to infringe the patent The person
140 engaged in a good faith effort to establish that the target has
141 infringed the patent and negotiated an appropriate remedy.
142 (d) The person made a substantial investment in the use of
143 the patented invention or discovery or in a product or sale of a
144 product or item covered by the patent.
145 (e) The person is the inventor or joint inventor of the
146 patented invention or discovery, or in the case of a patent
147 filed by and awarded to an assignee of the original inventor or
148 joint inventors, is the original assignee.
149 (f) The person has:
150 1. Demonstrated good faith business practices in previous
151 efforts to enforce the patent, or a substantially similar
152 patent; or
153 2. Successfully enforced the patent, or a substantially
154 similar patent, through litigation.
155 (g) Any other factor the court finds relevant.
156 Section 4. Section 501.994, Florida Statutes, is repealed.
157 Section 5. Section 501.995, Florida Statutes, is amended to
158 read:
159 501.995 Private right of action.—A person aggrieved by a
160 violation of this part may bring an action in a court of
161 competent jurisdiction. A court may award the following remedies
162 to a prevailing plaintiff in an action brought pursuant to this
163 section:
164 (1) Equitable relief;
165 (2) Actual damages;
166 (3) Costs and fees, including reasonable attorney fees; and
167 (4) Punitive damages in an amount not to exceed $75,000.
168 However, such punitive damages may only be awarded if the court
169 determines that the person asserting the patent infringement
170 claim has repeatedly violated this chapter Punitive damages in
171 an amount equal to $50,000 or three times the total damages,
172 costs, and fees, whichever is greater.
173 Section 6. Section 501.997, Florida Statutes, is repealed.
174 Section 7. This act shall take effect upon becoming law.
175
176 ================= T I T L E A M E N D M E N T ================
177 And the title is amended as follows:
178 Delete everything before the enacting clause
179 and insert:
180 A bill to be entitled
181 An act relating to bad faith assertions of patent
182 infringement; amending s. 501.991, F.S.; providing for
183 construction; amending s. 501.992, F.S; revising
184 definitions; amending s. 501.993, F.S.; prohibiting a
185 person from sending a demand letter to a target which
186 makes a bad faith assertion of patent infringement;
187 specifying what constitutes such a demand letter;
188 repealing s. 501.994, F.S., relating to the
189 requirement that a plaintiff post a specified bond in
190 certain circumstances; amending s. 501.995, F.S.;
191 revising provisions authorizing the bringing of
192 actions and specified remedies under the Patent Troll
193 Prevention Act; repealing s. 501.997, F.S., relating
194 to an exemption for institutions of higher learning;
195 providing an effective date.