II 

115TH CONGRESS 

1ST SESSION S. 1390 

To strengthen the position of the United States as the world’s leading innovator by amending title 35, United States Code, to protect the property 

rights of the inventors that grow the country’s economy. 

IN THE SENATE OF THE UNITED STATES 

JUNE 21, 2017 

Mr. COONS (for himself, Mr. COTTON, Mr. DURBIN, and Ms. HIRONO) introduced the following bill; which was read twice and referred to the Committee on the Judiciary 

A BILL 

To strengthen the position of the United States as the 

world’s leading innovator by amending title 35, United 

States Code, to protect the property rights of the inventors that grow the country’s economy. 

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled, 

3 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

4 (a) SHORT TITLE.—This Act may be cited as the 

5 ‘‘Support Technology and Research for Our Nation’s 

6 Growth and Economic Resilience Patents Act of 2017’’ or 

7 the ‘‘STRONGER Patents Act of 2017’’. 


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1 (b) TABLE OF CONTENTS.—The table of contents for 

2 this Act is as follows: 

Sec. 1. Short title; table of contents. 

TITLE I—STRONGER PATENTS ACT 

Sec. 101. Findings. 

Sec. 102. Inter partes review. 

Sec. 103. Post-grant review. 

Sec. 104. Composition of post-grant review and inter partes review panels. 

Sec. 105. Reexamination of patents. 

Sec. 106. Restoration of patents as property rights. 

Sec. 107. Elimination of USPTO fee diversion. 

Sec. 108. Infringement of patent. 

Sec. 109. Institutions of higher education. 

Sec. 110. Assisting small businesses in the U.S. patent system. 

TITLE II—TARGETING ROGUE AND OPAQUE LETTERS 

Sec. 201. Definitions. 

Sec. 202. Unfair or deceptive acts or practices in connection with the assertion 

of a United States patent. 

Sec. 203. Enforcement by Federal Trade Commission. 

Sec. 204. Preemption of State laws on patent demand letters and enforcement 

by State attorneys general. 

3 TITLE I—STRONGER PATENTS 

4 ACT 

5 SEC. 101. FINDINGS. 

6 Congress finds that— 

7 (1) the patent property rights enshrined in the 

8 Constitution of the United States provide the foun9 dation for the exceptional innovation environment in 

10 the United States; 

11 (2) strong patent rights encourage United 

12 States inventors to invest their resources in creating 

13 new inventions; 

14 (3) patent protection has led to patient cures, 

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1 ple in the United States, and improvements to the 

2 agricultural, telecommunications, and electronics in3 dustries, among others; 

4 (4) the United States patent system is an es5 sential part of the country’s economic success; 

6 (5) strong patent protection improves the 

7 chances of success for small companies and increases 

8 their chances of securing financing from investors; 

9 (6) intellectual property-intensive industries in 

10 the United States generate tens of millions of jobs 

11 for individuals in the United States; 

12 (7) intellectual property-intensive industries in 

13 the United States account for more than one-third 

14 of the country’s gross domestic product; 

15 (8) in the highly competitive global economy, 

16 the United States needs to uphold strong patent 

17 protections to maintain its position as the world’s 

18 premier innovative country; 

19 (9) Congress last enacted comprehensive re20 forms of the patent system just recently, in 2011; 

21 (10) unintended consequences of the com22 prehensive 2011 reform of patent laws are con23 tinuing to become evident, including the strategic fil24 ing of post-grant review proceedings to depress stock 

25 prices and extort settlements, the filing of repetitive 


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1 petitions for inter partes and post-grant reviews that 

2 have the effect of harassing patent owners, and the 

3 unnecessary duplication of work by the district 

4 courts of the United States and the Patent Trial 

5 and Appeal Board; 

6 (11) the Judicial Conference of the United 

7 States has made significant revisions to rules gov8 erning pleadings and discovery in the Federal Rules 

9 of Civil Procedure, which took effect in December 

10 2015; 

11 (12) the Supreme Court recently issued rulings 

12 in Octane Fitness, LLC v. Icon Health & Fitness, 

13 Inc., 134 S.Ct. 1749 (2014) and Highmark Inc. v. 

14 Allcare Health Management System, Inc., 134 S.Ct. 

15 1744 (2014) that significantly reduced the burden 

16 on an alleged infringer to recover attorney fees from 

17 the patent owner, and increased the incidence of fees 

18 shifted to the losing party; and 

19 (13) efforts by Congress to reform the patent 

20 system without careful scrutiny create a serious risk 

21 of making it more costly and difficult for legitimate 

22 innovators to protect their patents from infringe23 ment, thereby weakening United States companies 

24 and the United States economy. 


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1 SEC. 102. INTER PARTES REVIEW. 

2 (a) CLAIM CONSTRUCTION.—Section 316(a) of title 

3 35, United States Code, is amended— 

4 (1) in paragraph (9), by inserting after ‘‘sub5 stitute claims,’’ the following: ‘‘including the stand6 ard for how substitute claims should be construed,’’; 

7 (2) in paragraph (12), by striking ‘‘; and’’ and 

8 inserting a semicolon; 

9 (3) in paragraph (13), by striking the period at 

10 the end and inserting ‘‘; and’’; and 

11 (4) by adding at the end the following: 

12 ‘‘(14) providing that for all purposes under this 

13 chapter— 

14 ‘‘(A) each challenged claim of a patent 

15 shall be construed as the claim would be con16 strued under section 282(b) in an action to in17 validate a patent, including by construing each 

18 challenged claim of the patent in accordance 

19 with— 

20 ‘‘(i) the ordinary and customary 

21 meaning of the claim as understood by a 

22 person having ordinary skill in the art to 

23 which the claimed invention pertains; and 

24 ‘‘(ii) the prosecution history per25 taining to the patent; and 


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1 ‘‘(B) if a court has previously construed a 

2 challenged claim of a patent or a challenged 

3 claim term in a civil action to which the patent 

4 owner was a party, the Office shall consider 

5 that claim construction.’’. 

6 (b) BURDEN OF PROOF.—Section 316(e) of title 35, 

7 United States Code, is amended to read as follows: 

8 ‘‘(e) EVIDENTIARY STANDARDS.— 

9 ‘‘(1) PRESUMPTION OF VALIDITY.—The pre10 sumption of validity under section 282(a) shall apply 

11 to a previously issued claim that is challenged dur12 ing an inter partes review under this chapter. 

13 ‘‘(2) BURDEN OF PROOF.—In an inter partes 

14 review instituted under this chapter, the petitioner 

15 shall have the burden of proving a proposition of 

16 unpatentability of a previously issued claim by clear 

17 and convincing evidence.’’. 

18 (c) STANDING.—Section 311 of title 35, United 

19 States Code, is amended by adding at the end the fol20 lowing: 

21 ‘‘(d) PERSONS THAT MAY PETITION.— 

22 ‘‘(1) DEFINITION.—In this subsection, the term 

23 ‘charged with infringement’ means a real and sub24 stantial controversy regarding infringement of a pat25 ent exists such that the petitioner would have standVerDate Sep 11 2014 22:09 Jun 26, 2017 Jkt 069200 PO 00000 Frm 00006 Fmt 6652 Sfmt 6201 E:\BILLS\S1390.IS S1390

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1 ing to bring a declaratory judgment action in Fed2 eral court. 

3 ‘‘(2) NECESSARY CONDITIONS.—A person may 

4 not file with the Office a petition to institute an 

5 inter partes review of a patent unless the person, or 

6 a real party in interest or privy of the person, has 

7 been— 

8 ‘‘(A) sued for infringement of the patent; 

9 or 

10 ‘‘(B) charged with infringement under the 

11 patent.’’. 

12 (d) LIMITATION ON REVIEWS.—Section 314(a) of 

13 title 35, United States Code, is amended to read as fol14 lows: 

15 ‘‘(a) THRESHOLD.— 

16 ‘‘(1) LIKELIHOOD OF PREVAILING.—Subject to 

17 paragraph (2), the Director shall not authorize an 

18 inter partes review to be instituted unless the Direc19 tor determines that the information presented in the 

20 petition filed under section 311 and any response 

21 filed under section 313 shows that there is a reason22 able likelihood that the petitioner would prevail with 

23 respect to at least one of the claims challenged in 

24 the petition. 


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1 ‘‘(2) PREVIOUS INSTITUTION.—The Director 

2 shall not authorize an inter partes review to be insti3 tuted on a claim challenged in a petition if the Di4 rector has previously instituted an inter partes re5 view or post-grant review with respect to that 

6 claim.’’. 

7 (e) APPEALS FROM INSTITUTION DECISIONS.—Sec8 tion 314 of title 35, United States Code, is amended by 

9 striking subsection (d) and inserting the following: 

10 ‘‘(d) NO APPEAL.—A determination by the Director 

11 not to institute an inter partes review under this section 

12 shall be final and nonappealable. 

13 ‘‘(e) INTERLOCUTORY APPEAL.— 

14 ‘‘(1) RIGHT OF APPEAL.—A determination by 

15 the Director to institute an inter partes review under 

16 this section may be appealed to the United States 

17 Court of Appeals for the Federal Circuit. 

18 ‘‘(2) TIMING.—A party shall file a notice of in19 terlocutory appeal under paragraph (1) not later 

20 than 7 days after the date on which the Director en21 ters the institution decision. 

22 ‘‘(3) LIMITATION.—An interlocutory appeal 

23 filed under paragraph (1) may challenge the institu24 tion decision on any basis except for the determina25 tion made under section 314(a)(1). 


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1 ‘‘(4) EFFECT ON PROCEEDINGS.—An interlocu2 tory appeal filed under paragraph (1) shall not stay 

3 proceedings in the inter partes review unless the Di4 rector or the United States Court of Appeals for the 

5 Federal Circuit so orders. 

6 ‘‘(5) DECISION.—An interlocutory appeal filed 

7 under paragraph (1) may be granted at the discre8 tion of the United States Court of Appeals for the 

9 Federal Circuit, which may include consideration of 

10 whether— 

11 ‘‘(A) the institution decision appears to be 

12 in error and mere institution presents a risk of 

13 immediate, irreparable injury to the patent 

14 owner; 

15 ‘‘(B) the institution decision presents an 

16 unsettled and fundamental issue of law, impor17 tant both to the specific proceeding and gen18 erally, that is likely to evade end-of-the-pro19 ceeding review; or 

20 ‘‘(C) the institution decision is manifestly 

21 erroneous.’’. 

22 (f) ELIMINATING REPETITIVE PROCEEDINGS.—Sec23 tion 315(e) of title 35, United States Code, is amended 

24 to read as follows: 

25 ‘‘(e) ESTOPPEL.— 


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1 ‘‘(1) PROCEEDINGS BEFORE THE OFFICE.—A 

2 person petitioning for an inter partes review of a 

3 claim in a patent under this chapter, or the real 

4 party in interest or privy of the petitioner, may not 

5 petition for a subsequent inter partes review before 

6 the Office with respect to that patent on any ground 

7 that the petitioner raised or reasonably could have 

8 raised in the initial petition, unless, after the filing 

9 of the initial petition, the petitioner, or the real 

10 party in interest or privy of the petitioner, is 

11 charged with infringement of additional claims of 

12 the patent. 

13 ‘‘(2) CIVIL ACTIONS AND OTHER PRO14 CEEDINGS.—A person petitioning for an inter partes 

15 review of a claim in a patent under this chapter that 

16 results in an institution decision under section 314, 

17 or the real party in interest or privy of the peti18 tioner, may not assert either in a civil action arising 

19 in whole or in part under section 1338 of title 28 

20 or in a proceeding before the International Trade 

21 Commission under section 337 of the Tariff Act of 

22 1930 (19 U.S.C. 1337) that the claim is invalid 

23 based on section 102 or 103 of this title, unless the 

24 invalidity argument is based on allegations that the 

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1 erwise available to the public before the effective fil2 ing date of the claimed invention.’’. 

3 (g) REAL PARTY IN INTEREST.— 

4 (1) CLARIFICATION OF DEFINITION.—Section 

5 315 of title 35, United States Code, is amended by 

6 adding at the end the following: 

7 ‘‘(f) PETITIONER.—For purposes of this chapter, a 

8 person that directly or through an affiliate, subsidiary, or 

9 proxy, makes a financial contribution to the preparation 

10 for, or conduct during, an inter partes review on behalf 

11 of the petitioner shall be considered a real party in interest 

12 of the petitioner.’’. 

13 (2) DISCOVERY OF REAL PARTY IN INTER14 EST.—Section 316(a)(5) of title 35, United States 

15 Code, is amended to read as follows: 

16 ‘‘(5) setting forth standards and procedures for 

17 discovery of relevant evidence, including that such 

18 discovery shall be limited to— 

19 ‘‘(A) the deposition of witnesses submitting 

20 affidavits or declarations; 

21 ‘‘(B) evidence identifying the petitioner’s 

22 real parties in interest; and 

23 ‘‘(C) what is otherwise necessary in the in24 terest of justice;’’. 


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1 (h) PRIORITY OF FEDERAL COURT VALIDITY DE2 TERMINATIONS.— 

3 (1) IN GENERAL.—Section 315 of title 35, 

4 United States Code, as amended by subsection (h), 

5 is amended— 

6 (A) by redesignating subsections (c) 

7 through (f) as subsections (d) through (g), re8 spectively; and 

9 (B) by inserting after subsection (b) the 

10 following: 

11 ‘‘(c) FEDERAL COURT VALIDITY DETERMINA12 TIONS.— 

13 ‘‘(1) INSTITUTION BARRED.—An inter partes 

14 review of a patent claim may not be instituted if, in 

15 a civil action arising in whole or in part under sec16 tion 1338 of title 28 or in a proceeding before the 

17 International Trade Commission under section 337 

18 of the Tariff Act of 1930 (19 U.S.C. 1337), a court 

19 has entered a final judgment— 

20 ‘‘(A) that decides the validity of the patent 

21 claim with respect to section 102 or 103; and 

22 ‘‘(B) from which an appeal under section 

23 1295 of title 28 may be taken, or from which 

24 an appeal under section 1295 of title 28 was 

25 previously available but is no longer available. 


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1 ‘‘(2) STAY OF PROCEEDINGS.— 

2 ‘‘(A) IN GENERAL.—If, in a civil action 

3 arising in whole or in part under section 1338 

4 of title 28 or in a proceeding before the Inter5 national Trade Commission under section 337 

6 of the Tariff Act of 1930 (19 U.S.C. 1337), a 

7 court has entered a final judgment that decides 

8 the validity of a patent claim with respect to 

9 section 102 or 103 and from which an appeal 

10 under section 1295 of title 28 may be taken, 

11 the Patent Trial and Appeal Board shall stay 

12 any ongoing inter partes review of that patent 

13 claim pending a final decision of the court or 

14 Commission, as applicable. 

15 ‘‘(B) TERMINATION.—If the validity of a 

16 patent claim described in subparagraph (A) is 

17 finally upheld by a court or the International 

18 Trade Commission, as applicable, the Patent 

19 Trial and Appeal Board shall terminate the 

20 inter partes review.’’. 

21 (2) TECHNICAL AND CONFORMING AMEND22 MENTS.—Chapter 31 of title 35, United States 

23 Code, is amended— 

24 (A) in section 315(b), by striking ‘‘sub25 section (c)’’ and inserting ‘‘subsection (d)’’; 


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1 (B) in section 316(a)— 

2 (i) in paragraph (11), by striking 

3 ‘‘section 315(c)’’ and inserting ‘‘section 

4 315(d)’’; and 

5 (ii) in paragraph (12), by striking 

6 ‘‘section 315(c)’’ and inserting ‘‘section 

7 315(d)’’; and 

8 (C) in section 317(a), by striking ‘‘section 

9 315(e)’’ and inserting ‘‘section 315(f)’’. 

10 (i) AMENDMENT OF CLAIMS.— 

11 (1) INTER PARTES REVIEW AMENDMENT PRAC12 TICE.—Chapter 31 of title 35, United States Code, 

13 is amended by inserting after section 316 the fol14 lowing: 

15 ‘‘§ 316A. Inter partes review amendment practice 

16 ‘‘(a) ACTIONS PERMITTED.—During an inter partes 

17 review instituted under this chapter, the patent owner may 

18 move to take one or more of the following actions with 

19 respect to any challenged patent claim being reviewed: 

20 ‘‘(1) Cancel the claim. 

21 ‘‘(2) Propose a reasonable number of substitute 

22 claims whose patentability will be adjudicated by the 

23 Patent Trial and Appeal Board in accordance with 

24 subsection (c). 


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1 ‘‘(3) Propose a reasonable number of substitute 

2 claims to be examined in an expedited IPR reexam3 ination in accordance with subsection (d). 

4 ‘‘(b) SCOPE OF CLAIMS.—An amendment to a patent 

5 under this section may not enlarge the scope of the claims 

6 of the patent or introduce new matter. 

7 ‘‘(c) AMENDMENT PRACTICE BEFORE THE PATENT

8 TRIAL AND APPEAL BOARD.— 

9 ‘‘(1) PATENT OWNER’S INITIAL MOTION.—For 

10 each challenged claim for which the patent owner 

11 seeks to propose a reasonable number of substitute 

12 claims, the patent owner shall be required to make 

13 a prima facie showing that each substitute claim— 

14 ‘‘(A) responds to each ground of unpatent15 ability on which the inter partes review was in16 stituted; 

17 ‘‘(B) meets the written description require18 ment under section 112(a); and 

19 ‘‘(C) meets the requirement under sub20 section (b) of this section. 

21 ‘‘(2) NEW EVIDENCE.— 

22 ‘‘(A) PETITIONER.—The petitioner may re23 spond to the patent owner’s initial motion 

24 under paragraph (1) by presenting new evi25 dence. 


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1 ‘‘(B) PATENT OWNER.—The patent owner 

2 shall have not less than 1 opportunity to re3 spond to any new evidence presented under sub4 paragraph (A). 

5 ‘‘(3) EXPEDITED PATENTABILITY REPORT.— 

6 ‘‘(A) IN GENERAL.—Upon the filing of a 

7 motion under paragraph (1), the Patent Trial 

8 and Appeal Board, in its discretion, may order 

9 an expedited patentability report from a patent 

10 examiner on a substitute claim. 

11 ‘‘(B) CONTENTS OF REPORT.—In ordering 

12 an expedited patentability report, the Patent 

13 Trial and Appeal Board may— 

14 ‘‘(i) order examination of any ground 

15 of patentability that is assessed by a pat16 ent examiner under chapter 12; and 

17 ‘‘(ii) request a non-binding recommen18 dation as to the patentability of a sub19 stitute claim. 

20 ‘‘(C) RIGHT OF REPLY.—Any party to the 

21 inter partes review may file supplemental brief22 ing, including new evidence, addressing the ex23 pedited patentability report. 

24 ‘‘(D) TIMING.—The production of the ex25 pedited patentability report shall be expedited. 


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1 ‘‘(E) GOOD CAUSE.—The ordering of a 

2 patentability report shall constitute good cause, 

3 for purposes of section 316(a)(11), to extend 

4 the 1-year period for the inter partes review. 

5 ‘‘(4) ADJUDICATION OF PATENTABILITY.— 

6 ‘‘(A) NO REBUTTAL.—A patent owner 

7 shall be entitled to a substitute claim if the 

8 prima facie showing required under paragraph 

9 (1) is not rebutted. 

10 ‘‘(B) ADDITIONAL EVIDENCE.—If addi11 tional evidence of record is presented, the pat12 ent owner shall be entitled to a substitute claim 

13 unless a preponderance of that evidence proves 

14 that the patent owner is not so entitled. 

15 ‘‘(5) PATENT TRIAL AND APPEAL BOARD’S DIS16 CRETION TO ORDER EXPEDITED IPR REEXAMINA17 TION.—Upon issuing a final written decision with 

18 respect to each challenged claim, the Patent Trial 

19 and Appeal Board may order an expedited IPR reex20 amination to be conducted under section (d)(2) to 

21 consider a substitute claim in lieu of issuing a final 

22 written decision on that claim. 

23 ‘‘(6) AMENDMENTS TO ADVANCE SETTLE24 MENT.—The Patent Trial and Appeal Board may 

25 consider additional motions to amend upon the joint 


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1 request of the petitioner and the patent owner to 

2 materially advance the settlement of a proceeding 

3 under section 317 if the patent owner makes the 

4 prima facie showing required under paragraph (1). 

5 ‘‘(d) AMENDMENT PRACTICE BEFORE A PATENT EX6 AMINER.— 

7 ‘‘(1) MOTION TO CONVERT TO EXPEDITED IPR

8 EXAMINATION.— 

9 ‘‘(A) IN GENERAL.—If the Director deter10 mines to institute an inter partes review on a 

11 challenged claim under section 314, a patent 

12 owner may, before any further substantive 

13 briefing on the patentability of an instituted 

14 claim, move to terminate the inter partes review 

15 in favor of an expedited IPR reexamination 

16 under paragraph (2) of this subsection. 

17 ‘‘(B) CONTENTS OF MOTION.—A patent 

18 owner shall be required to show good cause for 

19 why an expedited IPR reexamination would fur20 ther the goals of the patent system, including 

21 consideration of whether there are substantial— 

22 ‘‘(i) investments in research directly 

23 related to the claimed invention; 

24 ‘‘(ii) secondary indicia of non-obvious25 ness, such as commercial success, long-felt 


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1 but unsolved needs, or failures of persons 

2 skilled in the art to develop the claimed in3 vention; or 

4 ‘‘(iii) changes in case law governing 

5 relevant substantive patentability require6 ments since the patent was issued. 

7 ‘‘(C) NEW EVIDENCE ALLOWED.—The 

8 opening motion and opposition briefs under this 

9 paragraph may include new evidence, and fur10 ther rebuttal evidence may be allowed at the 

11 discretion of the Patent Trial and Appeal 

12 Board. 

13 ‘‘(2) CONDUCT OF EXPEDITED IPR EXAMINA14 TION.— 

15 ‘‘(A) IN GENERAL.—If the Patent Trial 

16 and Appeal Board grants a motion filed under 

17 paragraph (1), the patent owner shall cancel 

18 each instituted claim and submit a reasonable 

19 number of substitute claims for consideration 

20 by the patent examiner in an expedited IPR ex21 amination under this paragraph. 

22 ‘‘(B) TIMING.—A patent examiner shall 

23 complete an expedited IPR examination, exclud24 ing any time for appeals, within 18 months. 


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1 ‘‘(C) PROCEDURES.—Consideration of the 

2 substitute claims in an expedited IPR examina3 tion shall follow the procedures established for 

4 initial examination under sections 132 and 133, 

5 subject to subsection (b) of this section and 

6 modified as necessary to ensure that the proce7 dures are expedited. 

8 ‘‘(D) APPEAL.— 

9 ‘‘(i) PATENT EXAMINER DECISION.— 

10 If the final decision of a patent examiner 

11 in an expedited IPR examination is ad12 verse to the patentability of a substitute 

13 claim, the patent owner may appeal the de14 cision to the Patent Trial and Appeal 

15 Board under section 134(c). 

16 ‘‘(ii) PATENT TRIAL AND APPEAL

17 BOARD DECISION.—If the final decision in 

18 an appeal of an expedited IPR reexamina19 tion to the Patent Trial and Appeal Board 

20 under section 134(c) is adverse to the pat21 entability of a substitute claim, the patent 

22 owner may appeal the decision to the 

23 United States Court of Appeals for the 

24 Federal Circuit in accordance with sections 

25 141 through 144. 


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1 ‘‘(E) CERTIFICATE.—If the patent exam2 iner determines in an expedited IPR examina3 tion that a substitute claim is patentable, and 

4 the time for appeal has expired or any appeal 

5 proceeding has terminated, the Director shall 

6 issue and publish a certificate incorporating in 

7 the patent the substitute claim. 

8 ‘‘(F) INTERVENING RIGHTS.—Any sub9 stitute claim determined to be patentable and 

10 incorporated into a patent following an expe11 dited IPR examination shall have the same ef12 fect as that specified in section 252 for reissued 

13 patents on the right of any person who made, 

14 purchased, or used within the United States, or 

15 imported into the United States, anything pat16 ented by the substitute claim, or who made sub17 stantial preparation therefor, prior to issuance 

18 of a certificate under subparagraph (E).’’. 

19 (2) TECHNICAL AND CONFORMING AMEND20 MENTS.— 

21 (A) EXPEDITED IPR EXAMINATION AP22 PEALS.— 

23 (i) APPEALS TO PATENT TRIAL AND

24 APPEAL BOARD.—Section 134 of title 35, 


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1 United States Code, is amended by adding 

2 at the end the following: 

3 ‘‘(c) PATENT OWNER IN EXPEDITED EXAMINA4 TION.—A patent owner may appeal from the final rejec5 tion of any substitute claim by the primary examiner in 

6 an expedited IPR examination under section 316A(d) to 

7 the Patent Trial and Appeal Board, having once paid the 

8 fee for such appeal.’’. 

9 (ii) APPEALS TO FEDERAL CIRCUIT.— 

10 Section 141 of title 35, United States 

11 Code, is amended— 

12 (I) by redesignating subsections 

13 (c) and (d) as subsections (d) and (e); 

14 and 

15 (II) by inserting after subsection 

16 (b) the following: 

17 ‘‘(c) EXPEDITED EXAMINATIONS.—A patent owner 

18 who is dissatisfied with the final decision in an appeal to 

19 the Patent Trial and Appeal Board under section 134(c) 

20 of an expedited IPR examination may appeal the Board’s 

21 decision to the United States Court of Appeals for the 

22 Federal Circuit.’’. 

23 (B) CONDUCT OF INTER PARTES RE24 VIEW.—Section 316 of title 35, United States 

25 Code, is amended— 


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1 (i) in subsection (a)(9), by striking 

2 ‘‘subsection (d)’’ each place that term ap3 pears and inserting ‘‘section 316A’’; 

4 (ii) by striking subsection (d); and 

5 (iii) by redesignating subsection (e) as 

6 subsection (d). 

7 (C) DECISION OF THE BOARD.—Section 

8 318(a) of title 35, United States Code, is 

9 amended— 

10 (i) by striking ‘‘If’’ and inserting ‘‘Ex11 cept as provided in section 316A(c)(5), if’’; 

12 and 

13 (ii) by striking ‘‘section 316(d)’’ and 

14 inserting ‘‘section 316A’’. 

15 (D) TABLE OF SECTIONS.—The table of 

16 sections for chapter 31 of title 35, United 

17 States Code, is amended by inserting after the 

18 item relating to section 316 the following: 

‘‘316A. Inter partes review amendment practice.’’. 

19 SEC. 103. POST-GRANT REVIEW. 

20 (a) CLAIM CONSTRUCTION.—Section 326(a) of title 

21 35, United States Code, is amended— 

22 (1) in paragraph (9), by inserting after ‘‘sub23 stitute claims,’’ the following: ‘‘including the stand24 ard for how substitute claims should be construed,’’; 


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1 (2) in paragraph (11), by striking ‘‘; and’’ and 

2 inserting a semicolon; 

3 (3) in paragraph (12), by striking the period at 

4 the end and inserting ‘‘; and’’; and 

5 (4) by adding at the end the following: 

6 ‘‘(13) providing that for all purposes under this 

7 chapter— 

8 ‘‘(A) each challenged claim of a patent 

9 shall be construed as the claim would be con10 strued under section 282(b) in an action to in11 validate a patent, including by construing each 

12 challenged claim of the patent in accordance 

13 with— 

14 ‘‘(i) the ordinary and customary 

15 meaning of the claim as understood by a 

16 person having ordinary skill in the art to 

17 which the claimed invention pertains; and 

18 ‘‘(ii) the prosecution history per19 taining to the patent; and 

20 ‘‘(B) if a court has previously construed a 

21 challenged claim of a patent or a challenged 

22 claim term in a civil action to which the patent 

23 owner was a party, the Office shall consider 

24 that claim construction.’’. 


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1 (b) BURDEN OF PROOF.—Section 326(e) of title 35, 

2 United States Code, is amended to read as follows: 

3 ‘‘(e) EVIDENTIARY STANDARDS.— 

4 ‘‘(1) PRESUMPTION OF VALIDITY.—The pre5 sumption of validity under section 282(a) shall apply 

6 to a previously issued claim that is challenged dur7 ing a proceeding under this chapter. 

8 ‘‘(2) BURDEN OF PROOF.—In a post-grant re9 view instituted under this chapter, the petitioner 

10 shall have the burden of proving a proposition of 

11 unpatentability of a previously issue claim by clear 

12 and convincing evidence.’’. 

13 (c) STANDING.—Section 321 of title 35, United 

14 States Code, is amended by adding at the end the fol15 lowing: 

16 ‘‘(d) PERSONS THAT MAY PETITION.— 

17 ‘‘(1) DEFINITION.—In this subsection, the term 

18 ‘charged with infringement’ means a real and sub19 stantial controversy regarding infringement of a pat20 ent exists such that the petitioner would have stand21 ing to bring a declaratory judgment action in Fed22 eral court. 

23 ‘‘(2) NECESSARY CONDITIONS.—A person may 

24 not file with the Office a petition to institute a post25 grant review of the patent unless the person, or a 


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1 real party in interest or privy of the person, dem2 onstrates— 

3 ‘‘(A) a reasonable possibility of being— 

4 ‘‘(i) sued for infringement of the pat5 ent; or 

6 ‘‘(ii) charged with infringement under 

7 the patent; or 

8 ‘‘(B) a competitive harm related to the va9 lidity of the patent.’’. 

10 (d) LIMITATION ON REVIEWS.—Section 324(a) of 

11 title 35, United States Code, is amended to read as fol12 lows: 

13 ‘‘(a) THRESHOLD.— 

14 ‘‘(1) LIKELIHOOD OF PREVAILING.—Subject to 

15 paragraph (2), the Director may not authorize a 

16 post-grant review to be instituted unless the Director 

17 determines that the information presented in the pe18 tition filed under section 321, if such information is 

19 not rebutted, would demonstrate that it is more like20 ly than not that at least one of the claims challenged 

21 in the petition is unpatentable. 

22 ‘‘(2) PREVIOUS INSTITUTION.—The Director 

23 may not authorize a post-grant review to be insti24 tuted on a claim challenged in a petition if the DiVerDate Sep 11 2014 22:09 Jun 26, 2017 Jkt 069200 PO 00000 Frm 00026 Fmt 6652 Sfmt 6201 E:\BILLS\S1390.IS S1390

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1 rector has previously instituted an inter partes or 

2 post-grant review with respect to that claim.’’. 

3 (e) APPEALS FROM INSTITUTION DECISIONS.—Sec4 tion 324 of title 35, United States Code, is amended by 

5 striking subsection (e) and inserting the following: 

6 ‘‘(e) NO APPEAL.—A determination by the Director 

7 not to institute a post-grant review under this section shall 

8 be final and nonappealable. 

9 ‘‘(f) INTERLOCUTORY APPEAL.— 

10 ‘‘(1) RIGHT OF APPEAL.—A determination by 

11 the Director to institute a post-grant review under 

12 this section may be appealed to the United States 

13 Court of Appeals for the Federal Circuit. 

14 ‘‘(2) TIMING.—A party shall file a notice of in15 terlocutory appeal under paragraph (1) not later 

16 than 7 days after the date on which the Director en17 ters the institution decision. 

18 ‘‘(3) LIMITATION.—An interlocutory appeal 

19 filed under paragraph (1) may challenge the institu20 tion decision on any basis except for the determina21 tion made under section 324(a)(1). 

22 ‘‘(4) EFFECT ON PROCEEDINGS.—An interlocu23 tory appeal filed under paragraph (1) shall not stay 

24 proceedings in the post-grant review unless the DiVerDate Sep 11 2014 22:09 Jun 26, 2017 Jkt 069200 PO 00000 Frm 00027 Fmt 6652 Sfmt 6201 E:\BILLS\S1390.IS S1390

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1 rector or the United States Court of Appeals for the 

2 Federal Circuit so orders. 

3 ‘‘(5) DECISION.—An interlocutory appeal filed 

4 under paragraph (1) may be granted at the discre5 tion of the United States Court of Appeals for the 

6 Federal Circuit, which may include consideration of 

7 whether— 

8 ‘‘(A) the institution decision appears to be 

9 in error and mere institution presents a risk of 

10 immediate, irreparable injury to the patent 

11 owner; 

12 ‘‘(B) the institution decision presents an 

13 unsettled and fundamental issue of law, impor14 tant both to the specific proceeding and gen15 erally, that is likely to evade end-of-the-pro16 ceeding review; or 

17 ‘‘(C) the institution decision is manifestly 

18 erroneous.’’. 

19 (f) ELIMINATING REPETITIVE PROCEEDINGS.—Sec20 tion 325(e)(1) of title 35, United States Code, is amended 

21 to read as follows: 

22 ‘‘(1) PROCEEDINGS BEFORE THE OFFICE.—A 

23 person petitioning for a post-grant review of a claim 

24 in a patent under this chapter, or the real party in 

25 interest or privy of the petitioner, may not petition 


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1 for a subsequent post-grant review before the Office 

2 with respect to that patent on any ground that the 

3 petitioner raised or reasonably could have raised in 

4 the initial petition, unless, after the filing of the ini5 tial petition, the petitioner, or the real party in in6 terest or privy of the petitioner, is charged with in7 fringement of additional claims of the patent.’’. 

8 (g) REAL PARTY IN INTEREST.— 

9 (1) CLARIFICATION OF DEFINITION.—Section 

10 325 of title 35, United States Code, is amended by 

11 adding at the end the following: 

12 ‘‘(g) REAL PARTY IN INTEREST.—For purposes of 

13 this chapter, a person that directly or through an affiliate, 

14 subsidiary, or proxy, makes a financial contribution to the 

15 preparation for, or conduct during, a post-grant review on 

16 behalf of the petitioner shall be considered a real party 

17 in interest of the petitioner.’’. 

18 (2) DISCOVERY OF REAL PARTY IN INTER19 EST.—Section 326(a)(5) of title 35, United States 

20 Code, is amended to read as follows: 

21 ‘‘(5) setting forth standards and procedures for 

22 discovery of relevant evidence, including that such 

23 discovery shall be limited to— 

24 ‘‘(A) the deposition of witnesses submitting 

25 affidavits or declarations; 


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1 ‘‘(B) evidence identifying the petitioner’s 

2 real parties in interest; and 

3 ‘‘(C) what is otherwise necessary in the in4 terest of justice;’’. 

5 (h) PRIORITY OF FEDERAL COURT VALIDITY DE6 TERMINATIONS.— 

7 (1) IN GENERAL.—Section 325 of title 35, 

8 United States Code, as amended by subsection (h), 

9 is amended— 

10 (A) by redesignating subsections (c) 

11 through (g) as subsections (d) through (h), re12 spectively; and 

13 (B) by inserting after subsection (b) the 

14 following: 

15 ‘‘(c) FEDERAL COURT VALIDITY DETERMINA16 TIONS.— 

17 ‘‘(1) INSTITUTION BARRED.—A post-grant re18 view of a patent claim may not be instituted if, in 

19 a civil action arising in whole or in part under sec20 tion 1338 of title 28 or in a proceeding before the 

21 International Trade Commission under section 337 

22 of the Tariff Act of 1930 (19 U.S.C. 1337), a court 

23 has entered a final judgment— 

24 ‘‘(A) that decides the validity of the patent 

25 claim with respect to section 102 or 103; and 


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1 ‘‘(B) from which an appeal under section 

2 1295 of title 28 may be taken, or from which 

3 an appeal under section 1295 of title 28 was 

4 previously available but is no longer available. 

5 ‘‘(2) STAY OF PROCEEDINGS.— 

6 ‘‘(A) IN GENERAL.—If, in a civil action 

7 arising in whole or in part under section 1338 

8 of title 28 or in a proceeding before the Inter9 national Trade Commission under section 337 

10 of the Tariff Act of 1930 (19 U.S.C. 1337), a 

11 court has entered a final judgment that decides 

12 the validity of a patent claim with respect to 

13 section 102 or 103 and from which an appeal 

14 under section 1295 of title 28 may be taken, 

15 the Patent Trial and Appeal Board shall stay 

16 any ongoing post-grant review of that patent 

17 claim pending a final decision of the court or 

18 Commission, as applicable. 

19 ‘‘(B) TERMINATION.—If the validity of a 

20 patent claim described in subparagraph (A) is 

21 finally upheld by a court or the International 

22 Trade Commission, as applicable, the Patent 

23 Trial and Appeal Board shall terminate the 

24 post-grant review.’’. 


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1 (2) TECHNICAL AND CONFORMING AMEND2 MENTS.—Chapter 32 of title 35, United States 

3 Code, is amended— 

4 (A) in section 326(a)(11), by striking ‘‘sec5 tion 325(c)’’ and inserting ‘‘section 325(d)’’; 

6 and 

7 (B) in section 327(a), by striking ‘‘section 

8 325(e)’’ and inserting ‘‘section 325(f)’’. 

9 (i) AMENDMENT OF CLAIMS.— 

10 (1) POST-GRANT REVIEW AMENDMENT PRAC11 TICE.—Chapter 32 of title 35, United States Code, 

12 is amended by inserting after section 326 the fol13 lowing: 

14 ‘‘§ 326A. Post-grant review amendment practice 

15 ‘‘(a) ACTIONS PERMITTED.—During a post-grant re16 view instituted under this chapter, the patent owner may 

17 move to take one or more of the following actions with 

18 respect to any challenged patent claim being reviewed: 

19 ‘‘(1) Cancel the claim. 

20 ‘‘(2) Propose a reasonable number of substitute 

21 claims whose patentability will be adjudicated by the 

22 Patent Trial and Appeal Board in accordance with 

23 subsection (c). 


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1 ‘‘(3) Propose a reasonable number of substitute 

2 claims to be examined in an expedited PGR reexam3 ination in accordance with subsection (d). 

4 ‘‘(b) SCOPE OF CLAIMS.—An amendment to a patent 

5 under this section may not enlarge the scope of the claims 

6 of the patent or introduce new matter. 

7 ‘‘(c) AMENDMENT PRACTICE BEFORE THE PATENT

8 TRIAL AND APPEAL BOARD.— 

9 ‘‘(1) PATENT OWNER’S INITIAL MOTION.—For 

10 each challenged claim for which the patent owner 

11 seeks to propose a reasonable number of substitute 

12 claims, the patent owner shall be required to make 

13 a prima facie showing that each substitute claim— 

14 ‘‘(A) responds to each ground of 

15 unpatentability on which the post-grant review 

16 was instituted; 

17 ‘‘(B) meets the written description require18 ment under section 112(a); and 

19 ‘‘(C) meets the requirement under sub20 section (b) of this section. 

21 ‘‘(2) NEW EVIDENCE.— 

22 ‘‘(A) PETITIONER.—The petitioner may re23 spond to the patent owner’s initial motion 

24 under paragraph (1) by presenting new evi25 dence. 


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1 ‘‘(B) PATENT OWNER.—The patent owner 

2 shall have not less than 1 opportunity to re3 spond to any new evidence presented under sub4 paragraph (A). 

5 ‘‘(3) EXPEDITED PATENTABILITY REPORT.— 

6 ‘‘(A) IN GENERAL.—Upon the filing of a 

7 motion under paragraph (1), the Patent Trial 

8 and Appeal Board, in its discretion, may order 

9 an expedited patentability report from a patent 

10 examiner on a substitute claim. 

11 ‘‘(B) CONTENTS OF REPORT.—In ordering 

12 an expedited patentability report, the Patent 

13 Trial and Appeal Board may— 

14 ‘‘(i) order examination of any ground 

15 of patentability that is assessed by a pat16 ent examiner under chapter 12; and 

17 ‘‘(ii) request a non-binding recommen18 dation as to the patentability of a sub19 stitute claim. 

20 ‘‘(C) RIGHT OF REPLY.—Any party to the 

21 post-grant review may file supplemental brief22 ing, including new evidence, addressing the ex23 pedited patentability report. 

24 ‘‘(D) TIMING.—The production of the ex25 pedited patentability report shall be expedited. 


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1 ‘‘(E) GOOD CAUSE.—The ordering of a 

2 patentability report shall constitute good cause, 

3 for purposes of section 326(a)(11), to extend 

4 the 1-year period for the post-grant review. 

5 ‘‘(4) ADJUDICATION OF PATENTABILITY.— 

6 ‘‘(A) NO REBUTTAL.—A patent owner 

7 shall be entitled to a substitute claim if the 

8 prima facie showing required under paragraph 

9 (1) is not rebutted. 

10 ‘‘(B) ADDITIONAL EVIDENCE.—If addi11 tional evidence of record is presented, the pat12 ent owner shall be entitled to a substitute claim 

13 unless a preponderance of that evidence proves 

14 that the patent owner is not so entitled. 

15 ‘‘(5) PATENT TRIAL AND APPEAL BOARD’S DIS16 CRETION TO ORDER EXPEDITED PGR REEXAMINA17 TION.—Upon issuing a final written decision with 

18 respect to each challenged claim, the Patent Trial 

19 and Appeal Board may order an expedited PGR re20 examination to be conducted under section (d)(2) to 

21 consider a substitute claim in lieu of issuing a final 

22 written decision on that claim. 

23 ‘‘(6) AMENDMENTS TO ADVANCE SETTLE24 MENT.—The Patent Trial and Appeal Board may 

25 consider additional motions to amend upon the joint 


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1 request of the petitioner and the patent owner to 

2 materially advance the settlement of a proceeding 

3 under section 327 if the patent owner makes the 

4 prima facie showing required under paragraph (1). 

5 ‘‘(d) AMENDMENT PRACTICE BEFORE A PATENT EX6 AMINER.— 

7 ‘‘(1) MOTION TO CONVERT TO EXPEDITED PGR

8 EXAMINATION.— 

9 ‘‘(A) IN GENERAL.—If the Director deter10 mines to institute a post-grant review on a chal11 lenged claim under section 324, a patent owner 

12 may, before any further substantive briefing on 

13 the patentability of an instituted claim, move to 

14 terminate the post-grant review in favor of an 

15 expedited PGR reexamination under paragraph 

16 (2) of this subsection. 

17 ‘‘(B) CONTENTS OF MOTION.—A patent 

18 owner shall be required to show good cause for 

19 why an expedited PGR reexamination would 

20 further the goals of the patent system, includ21 ing consideration of whether there are substan22 tial— 

23 ‘‘(i) investments in research directly 

24 related to the claimed invention; 


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1 ‘‘(ii) secondary indicia of non-obvious2 ness, such as commercial success, long-felt 

3 but unsolved needs, or failures of persons 

4 skilled in the art to develop the claimed in5 vention; or 

6 ‘‘(iii) changes in case law governing 

7 relevant substantive patentability require8 ments since the patent was issued. 

9 ‘‘(C) NEW EVIDENCE ALLOWED.—The 

10 opening motion and opposition briefs under this 

11 paragraph may include new evidence, and fur12 ther rebuttal evidence may be allowed at the 

13 discretion of the Patent Trial and Appeal 

14 Board. 

15 ‘‘(2) CONDUCT OF EXPEDITED PGR EXAMINA16 TION.— 

17 ‘‘(A) IN GENERAL.—If the Patent Trial 

18 and Appeal Board grants a motion filed under 

19 paragraph (1), the patent owner shall cancel 

20 each instituted claim and submit a reasonable 

21 number of substitute claims for consideration 

22 by the patent examiner in an expedited PGR 

23 examination under this paragraph. 


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1 ‘‘(B) TIMING.—A patent examiner shall 

2 complete an expedited PGR examination, ex3 cluding any time for appeals, within 18 months. 

4 ‘‘(C) PROCEDURES.—Consideration of the 

5 substitute claims in an expedited PGR examina6 tion shall follow the procedures established for 

7 initial examination under sections 132 and 133, 

8 subject to subsection (b) of this section and 

9 modified as necessary to ensure that the proce10 dures are expedited. 

11 ‘‘(D) APPEAL.— 

12 ‘‘(i) PATENT EXAMINER DECISION.— 

13 If the final decision of a patent examiner 

14 in an expedited PGR examination is ad15 verse to the patentability of a substitute 

16 claim, the patent owner may appeal the de17 cision to the Patent Trial and Appeal 

18 Board under section 134(c). 

19 ‘‘(ii) PATENT TRIAL AND APPEAL

20 BOARD DECISION.—If the final decision in 

21 an appeal of an expedited PGR reexamina22 tion to the Patent Trial and Appeal Board 

23 under section 134(c) is adverse to the pat24 entability of a substitute claim, the patent 

25 owner may appeal the decision to the 


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1 United States Court of Appeals for the 

2 Federal Circuit in accordance with sections 

3 141 through 144. 

4 ‘‘(E) CERTIFICATE.—If the patent exam5 iner determines in an expedited PGR examina6 tion that a substitute claim is patentable, and 

7 the time for appeal has expired or any appeal 

8 proceeding has terminated, the Director shall 

9 issue and publish a certificate incorporating in 

10 the patent the substitute claim. 

11 ‘‘(F) INTERVENING RIGHTS.—Any sub12 stitute claim determined to be patentable and 

13 incorporated into a patent following an expe14 dited PGR examination shall have the same ef15 fect as that specified in section 252 for reissued 

16 patents on the right of any person who made, 

17 purchased, or used within the United States, or 

18 imported into the United States, anything pat19 ented by the substitute claim, or who made sub20 stantial preparation therefor, prior to issuance 

21 of a certificate under subparagraph (E).’’. 

22 (2) TECHNICAL AND CONFORMING AMEND23 MENTS.— 

24 (A) EXPEDITED PGR EXAMINATION AP25 PEALS.— 


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1 (i) APPEALS TO PATENT TRIAL AND

2 APPEAL BOARD.—Section 134 of title 35, 

3 United States Code, is amended by adding 

4 at the end the following: 

5 ‘‘(c) PATENT OWNER IN EXPEDITED EXAMINA6 TION.—A patent owner may appeal from the final rejec7 tion of any substitute claim by the primary examiner in 

8 an expedited PGR examination under section 326A(d) to 

9 the Patent Trial and Appeal Board, having once paid the 

10 fee for such appeal.’’. 

11 (ii) APPEALS TO FEDERAL CIRCUIT.— 

12 Section 141 of title 35, United States 

13 Code, is amended— 

14 (I) by redesignating subsections 

15 (c) and (d) as subsections (d) and (e); 

16 and 

17 (II) by inserting after subsection 

18 (b) the following: 

19 ‘‘(c) EXPEDITED EXAMINATIONS.—A patent owner 

20 who is dissatisfied with the final decision in an appeal to 

21 the Patent Trial and Appeal Board under section 134(c) 

22 of an expedited PGR examination may appeal the Board’s 

23 decision to the United States Court of Appeals for the 

24 Federal Circuit.’’. 


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1 (B) CONDUCT OF POST-GRANT REVIEW.— 

2 Section 326 of title 35, United States Code, is 

3 amended— 

4 (i) in subsection (a)(9), by striking 

5 ‘‘subsection (d)’’ each place that term ap6 pears and inserting ‘‘section 326A’’; 

7 (ii) by striking subsection (d); and 

8 (iii) by redesignating subsection (e) as 

9 subsection (d). 

10 (C) DECISION OF THE BOARD.—Section 

11 328(a) of title 35, United States Code, is 

12 amended— 

13 (i) by striking ‘‘If’’ and inserting ‘‘Ex14 cept as provided in section 326A(c)(5), if’’; 

15 and 

16 (ii) by striking ‘‘section 326(d)’’ and 

17 inserting ‘‘section 326A’’. 

18 (D) TABLE OF SECTIONS.—The table of 

19 sections for chapter 32 of title 35, United 

20 States Code, is amended by inserting after the 

21 item relating to section 326 the following: 

‘‘326A. Post-grant review amendment practice.’’. 

22 SEC. 104. COMPOSITION OF POST-GRANT REVIEW AND 

23 INTER PARTES REVIEW PANELS. 

24 Section 6(c) of title 35, United States Code, is 

25 amended to read as follows: 


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1 ‘‘(c) 3-MEMBER PANELS.— 

2 ‘‘(1) IN GENERAL.—Each appeal, derivation 

3 proceeding, post-grant review, and inter partes re4 view shall be heard by at least 3 members of the 

5 Patent Trial and Appeal Board, who shall be des6 ignated by the Director. 

7 ‘‘(2) INELIGIBILITY TO HEAR REVIEW.—A 

8 member of the Patent Trial and Appeal Board who 

9 participates in the decision to institute a post-grant 

10 review or an inter partes review of a patent shall be 

11 ineligible to hear the review. 

12 ‘‘(3) REHEARINGS.—Only the Patent Trial and 

13 Appeal Board may grant rehearings.’’. 

14 SEC. 105. REEXAMINATION OF PATENTS. 

15 (a) REQUEST FOR REEXAMINATION.—Section 302 of 

16 title 35, United States Code, is amended to read as fol17 lows: 

18 ‘‘§ 302. Request for reexamination 

19 ‘‘Any person at any time may file a request for reex20 amination by the Office of any claim of a patent on the 

21 basis of any prior art cited under the provisions of section 

22 301. The request must be in writing and must be accom23 panied by payment of a reexamination fee established by 

24 the Director pursuant to the provisions of section 41. The 

25 request must identify all real parties in interest and certify 


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1 that reexamination is not barred under section 303(d). 

2 The request must set forth the pertinency and manner of 

3 applying cited prior art to every claim for which reexam4 ination is requested. Unless the requesting person is the 

5 owner of the patent, the Director promptly will send a 

6 copy of the request to the owner of record of the patent.’’. 

7 (b) REEXAMINATION BARRED BY CIVIL ACTION.— 

8 Section 303 of title 35, United States Code, is amended 

9 by adding at the end the following: 

10 ‘‘(d) An ex parte reexamination may not be instituted 

11 if the request for reexamination is filed more than 1 year 

12 after the date on which the requester or a real party in 

13 interest or privy of the requester is served with a com14 plaint alleging infringement of the patent.’’. 

15 SEC. 106. RESTORATION OF PATENTS AS PROPERTY 

16 RIGHTS. 

17 Section 283 of title 35, United States Code, is 

18 amended— 

19 (1) by striking ‘‘The several courts’’ and insert20 ing the following: 

21 ‘‘(a) IN GENERAL.—The several courts’’; and 

22 (2) by adding at the end the following: 

23 ‘‘(b) INJUNCTION.—Upon a finding by a court of in24 fringement of a patent not proven invalid or unenforce25 able, the court shall presume that— 


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1 ‘‘(1) further infringement of the patent would 

2 cause irreparable injury; and 

3 ‘‘(2) remedies available at law are inadequate to 

4 compensate for that injury.’’. 

5 SEC. 107. ELIMINATION OF USPTO FEE DIVERSION. 

6 (a) FUNDING.—Section 42 of title 35, United States 

7 Code, is amended— 

8 (1) in subsection (b), by striking ‘‘Patent and 

9 Trademark Office Appropriation Account’’ and in10 serting ‘‘United States Patent and Trademark Of11 fice Innovation Promotion Fund’’; 

12 (2) in subsection (c)— 

13 (A) in paragraph (1)— 

14 (i) by striking ‘‘To the extent’’ and all 

15 that follows through ‘‘fees’’ and inserting 

16 ‘‘Fees’’; and 

17 (ii) by striking ‘‘shall be collected by 

18 and shall, subject to paragraph (2), be 

19 available to the Director’’ and inserting 

20 ‘‘shall be collected by the Director and 

21 shall be available to the Director until ex22 pended’’; 

23 (B) by striking paragraph (2); and 

24 (C) by redesignating paragraph (3) as 

25 paragraph (2); 


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1 (3) by redesignating subsections (d) and (e) as 

2 subsections (e) and (f), respectively; 

3 (4) by inserting after subsection (c) the fol4 lowing: 

5 ‘‘(d) REVOLVING FUND.— 

6 ‘‘(1) DEFINITIONS.—In this subsection— 

7 ‘‘(A) the term ‘Fund’ means the United 

8 States Patent and Trademark Office Innovation 

9 Promotion Fund established under paragraph 

10 (2); and 

11 ‘‘(B) the term ‘Trademark Act of 1946’ 

12 means the Act entitled ‘An Act to provide for 

13 the registration and protection of trademarks 

14 used in commerce, to carry out the provisions 

15 of certain international conventions, and for 

16 other purposes’, approved July 5, 1946 (15 

17 U.S.C. 1051 et seq.) (commonly referred to as 

18 the ‘Trademark Act of 1946’ or the ‘Lanham 

19 Act’). 

20 ‘‘(2) ESTABLISHMENT.—There is established in 

21 the Treasury a revolving fund to be known as the 

22 ‘United States Patent and Trademark Office Inno23 vation Promotion Fund’. 


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1 ‘‘(3) DERIVATION OF RESOURCES.—There shall 

2 be deposited into the Fund any fees collected 

3 under— 

4 ‘‘(A) this title; or 

5 ‘‘(B) the Trademark Act of 1946. 

6 ‘‘(4) EXPENSES.—Amounts deposited into the 

7 Fund under paragraph (3) shall be available, with8 out fiscal year limitation, to cover— 

9 ‘‘(A) all expenses to the extent consistent 

10 with the limitation on the use of fees set forth 

11 in subsection (c), including all administrative 

12 and operating expenses, determined in the dis13 cretion of the Director to be ordinary and rea14 sonable, incurred by the Director for the contin15 ued operation of all services, programs, activi16 ties, and duties of the Office relating to patents 

17 and trademarks, as such services, programs, ac18 tivities, and duties are described under— 

19 ‘‘(i) this title; and 

20 ‘‘(ii) the Trademark Act of 1946; and 

21 ‘‘(B) all expenses incurred pursuant to any 

22 obligation, representation, or other commitment 

23 of the Office.’’; 


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1 (5) in subsection (e), as redesignated, by strik2 ing ‘‘The Director’’ and inserting ‘‘REFUNDS.—The 

3 Director’’; and 

4 (6) in subsection (f), as redesignated, by strik5 ing ‘‘The Secretary’’ and inserting ‘‘REPORT.—The 

6 Secretary’’. 

7 (b) EFFECTIVE DATE; TRANSFER FROM AND TERMI8 NATION OF OBSOLETE FUNDS.— 

9 (1) EFFECTIVE DATE.—The amendments made 

10 by subsection (a) shall take effect on the first day 

11 of the first fiscal year that begins on or after the 

12 date of enactment of this Act. 

13 (2) REMAINING BALANCES.—There shall be de14 posited in the Fund, on the effective date described 

15 in paragraph (1), any available unobligated balances 

16 remaining in the Patent and Trademark Office Ap17 propriation Account, and in the Patent and Trade18 mark Fee Reserve Fund established under section 

19 42(c)(2) of title 35, United States Code, as in effect 

20 on the date before the effective date. 

21 (3) TERMINATION OF RESERVE FUND.—Upon 

22 the payment of all obligated amounts in the Patent 

23 and Trademark Fee Reserve Fund under paragraph 

24 (2), the Patent and Trademark Fee Reserve Fund 

25 shall be terminated. 


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1 SEC. 108. INFRINGEMENT OF PATENT. 

2 Section 271 of title 35, United States Code, is 

3 amended— 

4 (1) by striking subsection (b) and inserting the 

5 following: 

6 ‘‘(b) Whoever actively induces infringement of a pat7 ent shall be liable as an infringer upon a showing that 

8 the accused infringer intended to cause the acts that con9 stitute infringement, without regard to whether the ac10 cused infringer knew of the patent.’’; 

11 (2) in subsection (f), by adding at the end the 

12 following: 

13 ‘‘(3)(A) Whoever, without authority, supplies or 

14 causes to be supplied in or from the United States a de15 sign for a product embodying a patented invention in such 

16 manner as to actively induce the making of that product 

17 outside the United States in a manner that would infringe 

18 the patent if made in the United States, shall be liable 

19 as an infringer. 

20 ‘‘(B) Whoever, without authority, supplies or causes 

21 to be supplied in or from the United States a specification 

22 for performing a patented process or method in such man23 ner as to actively induce the performance of that process 

24 or method outside the United States in a manner that 

25 would infringe the patent if performed in the United 

26 States, shall be liable as an infringer.’’; and 


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1 (3) by adding at the end the following: 

2 ‘‘(j) For a finding of liability for actively inducing in3 fringement of a process patent under subsection (b), or 

4 for contributory infringement of a process patent under 

5 subsection (c), it shall not be a requirement that the steps 

6 of the patented process be practiced by a single entity.’’. 

7 SEC. 109. INSTITUTIONS OF HIGHER EDUCATION. 

8 Section 123(d) of title 35, United States Code, is 

9 amended to read as follows: 

10 ‘‘(d) INSTITUTIONS OF HIGHER EDUCATION.—For 

11 purposes of this section, a micro entity shall include an 

12 applicant who certifies that— 

13 ‘‘(1) the applicant’s employer, from which the 

14 applicant obtains the majority of the applicant’s in15 come, is an institution of higher education as de16 fined in section 101(a) of the Higher Education Act 

17 of 1965 (20 U.S.C. 1001(a)); 

18 ‘‘(2) the applicant has assigned, granted, con19 veyed, or is under an obligation by contract or law, 

20 to assign, grant, or convey, a license or other owner21 ship interest in the particular applications to such 

22 an institution of higher education; 

23 ‘‘(3) the applicant is an institution of higher 

24 education as defined in section 101(a) of the Higher 

25 Education Act of 1965 (20 U.S.C. 1001(a)); or 


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1 ‘‘(4) the applicant is an organization described 

2 in section 501(c)(3) of the Internal Revenue Code of 

3 1986 and exempt from taxation under section 

4 501(a) of such Code that holds title to patents and 

5 patent applications on behalf of such an institution 

6 of higher education for the purpose of facilitating 

7 commercialization of the technologies of the patents 

8 and patent applications.’’. 

9 SEC. 110. ASSISTING SMALL BUSINESSES IN THE U.S. PAT10 ENT SYSTEM. 

11 (a) DEFINITION.—In this section, the term ‘‘small 

12 business concern’’ has the meaning given the term in sec13 tion 3 of the Small Business Act (15 U.S.C. 632). 

14 (b) SMALL BUSINESS ADMINISTRATION REPORT.— 

15 Not later than 1 year after the date of enactment of this 

16 Act, the Small Business Administration, using existing re17 sources, shall submit to the Committee on Small Business 

18 and Entrepreneurship of the Senate and the Committee 

19 on Small Business of the House of Representatives a re20 port analyzing the impact of— 

21 (1) patent ownership by small business con22 cerns; and 

23 (2) civil actions against small business concerns 

24 arising under title 35, United States Code, relating 

25 to patent infringement. 


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1 (c) EXPANSION OF PATENT PILOT PROGRAM IN CER2 TAIN DISTRICT COURTS.— 

3 (1) IN GENERAL.—Not later than 180 days 

4 after the date of enactment of this Act, the Director 

5 of the Administrative Office of the United States 

6 Courts shall designate not fewer than 6 of the dis7 trict courts of the United States that are partici8 pating in the patent cases pilot program established 

9 under section 1 of Public Law 111–349 (28 U.S.C. 

10 137 note) for the purpose of expanding that pro11 gram to address special issues raised in patent in12 fringement suits against individuals or small busi13 ness concerns. 

14 (2) PROCEDURES FOR SMALL BUSINESSES.— 

15 Not later than 2 years after the date of enactment 

16 of this Act, each district court designated under 

17 paragraph (1) shall develop procedures for expe18 diting cases in which an individual or small business 

19 concern is accused of patent infringement. 

20 (3) PARTICIPATING JUDGES.— 

21 (A) IN GENERAL.—In each district court 

22 designated under paragraph (1), each district 

23 court judge participating in the patent cases 

24 pilot program established under section 1 of 

25 Public Law 111–349 may appoint 1 additional 


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1 law clerk or secretary in excess of any other 

2 limitation on the number of such employees. 

3 (B) EDUCATION AND TRAINING.—The 

4 Federal Judicial Center, using existing re5 sources, shall prepare educational and training 

6 materials to assist district court judges de7 scribed in subparagraph (A) in developing ex8 pertise in patent and plant variety protection 

9 cases. 

10 (4) FUNDS.—There are authorized to be appro11 priated such sums as may be necessary to carry out 

12 paragraph (3)(A). 

13 (d) FREE ONLINE AVAILABILITY OF PUBLIC SEARCH

14 FACILITY MATERIALS.—Section 41(i) of title 35, United 

15 States Code, is amended by adding at the end the fol16 lowing: 

17 ‘‘(5) FREE ONLINE AVAILABILITY OF PUBLIC

18 SEARCH FACILITY MATERIALS.—The Director shall 

19 make available online and at no charge all patent 

20 and trademark information that is available at the 

21 Public Search Facility of the Office located in Alex22 andria, Virginia, including, except to the extent that 

23 licenses with third-party contractors would make 

24 such provision financially unviable— 

25 ‘‘(A) search tools and databases; 


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1 ‘‘(B) informational materials; and 

2 ‘‘(C) training classes and materials.’’. 

3 TITLE II—TARGETING ROGUE 

4 AND OPAQUE LETTERS 

5 SEC. 201. DEFINITIONS. 

6 In this title: 

7 (1) BAD FAITH.—The term ‘‘bad faith’’ means, 

8 with respect to section 202(a), that the sender— 

9 (A) made knowingly false or knowingly 

10 misleading statements, representations, or omis11 sions; 

12 (B) made statements, representations, or 

13 omissions with reckless indifference as to the 

14 false or misleading nature of such statements, 

15 representations, or omissions; or 

16 (C) made statements, representations, or 

17 omissions with awareness of the high prob18 ability of the statements, representations, or 

19 omissions to deceive and the sender inten20 tionally avoided the truth. 

21 (2) COMMISSION.—The term ‘‘Commission’’ 

22 means the Federal Trade Commission. 

23 (3) FINAL DETERMINATION.—The term ‘‘final 

24 determination’’ means, with respect to the invalidity 

25 or unenforceability of a patent, that the invalidity or 


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1 unenforceability has been determined by a court of 

2 the United States or the United States Patent and 

3 Trademark Office in a final decision that is 

4 unappealable or for which any opportunity for ap5 peal is no longer available. 

6 SEC. 202. UNFAIR OR DECEPTIVE ACTS OR PRACTICES IN 

7 CONNECTION WITH THE ASSERTION OF A 

8 UNITED STATES PATENT. 

9 (a) IN GENERAL.—It shall be an unfair or deceptive 

10 act or practice within the meaning of section 5(a)(1) of 

11 the Federal Trade Commission Act (15 U.S.C. 45(a)(1)) 

12 for a person, in connection with the assertion of a United 

13 States patent, to engage in a pattern or practice of send14 ing written communications that state or represent that 

15 the recipients are or may be infringing, or have or may 

16 have infringed, the patent and bear liability or owe com17 pensation to another, if— 

18 (1) the sender of the communications, in bad 

19 faith, states or represents in the communications 

20 that— 

21 (A) the sender is a person with the right 

22 to license or enforce the patent at the time the 

23 communications are sent, and the sender is not 

24 a person with such a right; 


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1 (B) a civil action asserting a claim of in2 fringement of the patent has been filed against 

3 the recipient; 

4 (C) a civil action asserting a claim of in5 fringement of the patent has been filed against 

6 other persons; 

7 (D) legal action for infringement of the 

8 patent will be taken against the recipient; 

9 (E) the sender is the exclusive licensee of 

10 the patent asserted in the communications; 

11 (F) persons other than the recipient pur12 chased a license for the patent asserted in the 

13 communications; 

14 (G) persons other than the recipient pur15 chased a license, and the sender does not dis16 close that such license is unrelated to the al17 leged infringement or the patent asserted in the 

18 communications; 

19 (H) an investigation of the recipient’s al20 leged infringement occurred; or 

21 (I) the sender or an affiliate of the sender 

22 previously filed a civil action asserting a claim 

23 of infringement of the patent based on the ac24 tivity that is the subject of the written commu25 nication when the sender knew such activity 


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1 was held, in a final determination, not to in2 fringe the patent; 

3 (2) the sender of the communications, in bad 

4 faith, seeks compensation for— 

5 (A) a patent claim that has been held to 

6 be unenforceable due to inequitable conduct, in7 valid, or otherwise unenforceable against the re8 cipient, in a final determination; 

9 (B) activities undertaken by the recipient 

10 after expiration of the patent asserted in the 

11 communications; or 

12 (C) activity of the recipient that the sender 

13 knew was authorized, with respect to the patent 

14 claim or claims that are the subject of the com15 munications, by a person with the right to li16 cense the patent; or 

17 (3) the sender of the communications, in bad 

18 faith, fails to include— 

19 (A) the identity of the person asserting a 

20 right to license the patent to, or enforce the 

21 patent against, the recipient, including the iden22 tity of any parent entity and the ultimate par23 ent entity of such person, unless such person is 

24 a public company and the name of the public 

25 company is identified; 


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1 (B) an identification of at least one patent 

2 issued by the United States Patent and Trade3 mark Office alleged to have been infringed; 

4 (C) an identification, to the extent reason5 able under the circumstances, of at least one 

6 product, service, or other activity of the recipi7 ent that is alleged to infringe the identified pat8 ent; 

9 (D) a description, to the extent reasonable 

10 under the circumstances, of how the product, 

11 service, or other activity of the recipient in12 fringes an identified patent and patent claim; or 

13 (E) a name and contact information for a 

14 person the recipient may contact about the as15 sertions or claims relating to the patent con16 tained in the communications. 

17 (b) AFFIRMATIVE DEFENSE.—With respect to sub18 section (a), there shall be an affirmative defense that 

19 statements, representations, or omissions were not made 

20 in bad faith (as defined in subparagraphs (B) and (C) of 

21 section 201(1)) if the sender can demonstrate that such 

22 statements, representations, or omissions were mistakes 

23 made in good faith. Evidence that the sender in the usual 

24 course of business sends written communications that do 

25 not violate the provisions of this title shall be sufficient 


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1 to demonstrate good faith. Good faith may also be dem2 onstrated by other evidence. 

3 (c) RULE OF CONSTRUCTION.—For purposes of sec4 tions 203 and 204, the commission of an act or practice 

5 that is declared under this section to be an unfair or de6 ceptive act or practice within the meaning of section 

7 5(a)(1) of the Federal Trade Commission Act (15 U.S.C. 

8 45(a)(1)) shall be considered to be a violation of this sec9 tion. 

10 SEC. 203. ENFORCEMENT BY FEDERAL TRADE COMMIS11 SION. 

12 (a) VIOLATION OF RULE.—A violation of section 202 

13 shall be treated as a violation of a rule defining an unfair 

14 or deceptive act or practice prescribed under section 

15 18(a)(1)(B) of the Federal Trade Commission Act (15 

16 U.S.C. 57a(a)(1)(B)). 

17 (b) POWERS OF COMMISSION.—The Commission 

18 shall enforce this title in the same manner, by the same 

19 means, and with the same jurisdiction, powers, and duties 

20 as though all applicable terms and provisions of the Fed21 eral Trade Commission Act (15 U.S.C. 41 et seq.) were 

22 incorporated into and made a part of this title. Any person 

23 who violates section 202 shall be subject to the penalties 

24 and entitled to the privileges and immunities provided in 

25 the Federal Trade Commission Act. 


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1 (c) EFFECT ON OTHER LAWS.—Nothing in this title 

2 shall be construed in any way to limit or affect the author3 ity of the Commission under any other provision of law. 

4 SEC. 204. PREEMPTION OF STATE LAWS ON PATENT DE5 MAND LETTERS AND ENFORCEMENT BY 

6 STATE ATTORNEYS GENERAL. 

7 (a) PREEMPTION.— 

8 (1) IN GENERAL.—This title preempts any law, 

9 rule, regulation, requirement, standard, or other pro10 vision having the force and effect of law of any 

11 State, or political subdivision of a State, expressly 

12 relating to the transmission or contents of commu13 nications relating to the assertion of patent rights. 

14 (2) EFFECT ON OTHER STATE LAWS.—Except 

15 as provided in paragraph (1), this title shall not be 

16 construed to preempt or limit any provision of any 

17 State law, including any State consumer protection 

18 law, any State law relating to acts of fraud or decep19 tion, and any State trespass, contract, or tort law. 

20 (b) ENFORCEMENT BY STATE ATTORNEYS GEN21 ERAL.— 

22 (1) IN GENERAL.—In any case in which the at23 torney general of a State has reason to believe that 

24 an interest of the residents of that State has been 

25 adversely affected by any person who violates section 


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1 202, the attorney general of the State, may bring a 

2 civil action on behalf of such residents of the State 

3 in a district court of the United States of appro4 priate jurisdiction— 

5 (A) to enjoin further such violation by the 

6 defendant; or 

7 (B) to obtain civil penalties on behalf of 

8 recipients who suffered actual damages as a re9 sult of such violation. 

10 (2) MAXIMUM CIVIL PENALTY.—Notwith11 standing the number of actions which may be 

12 brought against a person under this subsection, a 

13 person may not be liable for a total of more than 

14 $5,000,000 for a series of related violations of sec15 tion 202. 

16 (3) INTERVENTION BY THE FTC.— 

17 (A) NOTICE AND INTERVENTION.—The at18 torney general of a State shall provide prior 

19 written notice of any action under paragraph 

20 (1) to the Commission and provide the Commis21 sion with a copy of the complaint in the action, 

22 except in any case in which such prior notice is 

23 not feasible, in which case the attorney general 

24 shall serve such notice immediately upon instiVerDate Sep 11 2014 22:09 Jun 26, 2017 Jkt 069200 PO 00000 Frm 00060 Fmt 6652 Sfmt 6201 E:\BILLS\S1390.IS S1390

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1 tuting such action. The Commission shall have 

2 the right— 

3 (i) to intervene in the action; 

4 (ii) upon so intervening, to be heard 

5 on all matters arising therein; and 

6 (iii) to file petitions for appeal. 

7 (B) LIMITATION ON STATE ACTION WHILE

8 FEDERAL ACTION IS PENDING.—If the Commis9 sion has instituted a civil action for violation of 

10 section 202, no State attorney general may 

11 bring an action under this subsection during 

12 the pendency of that action against any defend13 ant named in the complaint of the Commission 

14 for any violation of such section alleged in the 

15 complaint. 

16 (4) CONSTRUCTION.—For purposes of bringing 

17 any civil action under paragraph (1), nothing in this 

18 title shall be construed to prevent the attorney gen19 eral of a State from exercising the powers conferred 

20 on the attorney general by the laws of that State 

21 to— 

22 (A) conduct investigations; 

23 (B) administer oaths or affirmations; or 


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1 (C) compel the attendance of witnesses or 

2 the production of documentary and other evi3 dence. 

Æ 


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