II 

113TH CONGRESS 

1ST SESSION S. 1013 

To amend title 35, United States Code, to add procedural requirements 

for patent infringement suits. 

IN THE SENATE OF THE UNITED STATES 

MAY 22, 2013 

Mr. CORNYN introduced the following bill; which was read twice and referred 

to the Committee on the Judiciary 

A BILL 

To amend title 35, United States Code, to add procedural 

requirements for patent infringement suits. 

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. 

4 This Act may be cited as the ‘‘Patent Abuse Reduc5 tion Act of 2013’’. 

6 SEC. 2. PLEADING REQUIREMENTS. 

7 (a) IN GENERAL.—Chapter 29 of title 35, United 

8 States Code, is amended by inserting after section 281 the 

9 following: 


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1 ‘‘§ 281A. Pleading requirements for patent infringe2 ment actions 

3 ‘‘In a civil action arising under any Act of Congress 

4 relating to patents, a party alleging infringement shall in5 clude in the initial complaint, counterclaim, or cross-claim 

6 for patent infringement— 

7 ‘‘(1) an identification of each patent allegedly 

8 infringed; 

9 ‘‘(2) an identification of each claim of each pat10 ent identified under paragraph (1) that is allegedly 

11 infringed; 

12 ‘‘(3) for each claim identified under paragraph 

13 (2), an identification of each accused apparatus, 

14 product, feature, device, method, system, process, 

15 function, act, service, or other instrumentality (re16 ferred to in this section as an ‘accused instrumen17 tality’) alleged to infringe the claim; 

18 ‘‘(4) for each accused instrumentality identified 

19 under paragraph (3), an identification with particu20 larity, if known, of— 

21 ‘‘(A) the name or model number of each 

22 accused instrumentality; and 

23 ‘‘(B) the name of each accused method, 

24 system, process, function, act, or service, or the 

25 name or model number of each apparatus, 

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1 legedly results in the practice of the claimed in2 vention; 

3 ‘‘(5) for each accused instrumentality identified 

4 under paragraph (3), an explanation of— 

5 ‘‘(A) where each element of each asserted 

6 claim identified under paragraph (2) is found 

7 within the accused instrumentality; 

8 ‘‘(B) whether each such element is in9 fringed literally or under the doctrine of equiva10 lents; and 

11 ‘‘(C) with detailed specificity, how the 

12 terms in each asserted claim identified under 

13 paragraph (2) correspond to the functionality of 

14 the accused instrumentality; 

15 ‘‘(6) for each claim that is alleged to have been 

16 infringed indirectly, a description of— 

17 ‘‘(A) the direct infringement; 

18 ‘‘(B) any person alleged to be a direct in19 fringer known to the party alleging infringe20 ment; and 

21 ‘‘(C) the acts of the alleged indirect in22 fringer that contribute to or are inducing the 

23 direct infringement; 

24 ‘‘(7) a description of the right of the party al25 leging infringement to assert each— 


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1 ‘‘(A) patent identified under paragraph 

2 (1); and 

3 ‘‘(B) patent claim identified in paragraph 

4 (2); 

5 ‘‘(8) a description of the principal business of 

6 the party alleging infringement; 

7 ‘‘(9) a list of each complaint filed, of which the 

8 party alleging infringement has knowledge, that as9 serts or asserted any of the patents identified under 

10 paragraph (1); 

11 ‘‘(10) for each patent identified under para12 graph (1), whether such patent is subject to any li13 censing term or pricing commitments through any 

14 agency, organization, standard-setting body, or other 

15 entity or community; 

16 ‘‘(11) the identity of any person other than the 

17 party alleging infringement, known to the party al18 leging infringement, who— 

19 ‘‘(A) owns or co-owns a patent identified 

20 under paragraph (1); 

21 ‘‘(B) is the assignee of a patent identified 

22 under paragraph (1); or 

23 ‘‘(C) is an exclusive licensee to a patent 

24 identified under paragraph (1); 


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1 ‘‘(12) the identity of any person other than the 

2 party alleging infringement, known to the party al3 leging infringement, who has a legal right to enforce 

4 a patent identified under paragraph (1) through a 

5 civil action under any Act of Congress relating to 

6 patents or is licensed under such patent; 

7 ‘‘(13) the identity of any person with a direct 

8 financial interest in the outcome of the action, in9 cluding a right to receive proceeds, or any fixed or 

10 variable portion thereof; and 

11 ‘‘(14) a description of any agreement or other 

12 legal basis for a financial interest described in para13 graph (13).’’. 

14 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

15 The table of sections for chapter 29 of title 35, United 

16 States Code, is amended by inserting after the item relat17 ing to section 281 the following: 

‘‘281A. Pleading requirements for patent infringement actions.’’. 

18 (c) REVIEW OF FORM 18.—Not later than 12 months 

19 after the date of enactment of this Act, the Supreme Court 

20 shall review and amend Form 18 of the Federal Rules of 

21 Civil Procedure to ensure that Form 18 is consistent with 

22 the requirements under section 281A of title 35, United 

23 States Code, as added by subsection (a). 


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1 (d) RULE OF CONSTRUCTION.—Nothing in this sec2 tion or the amendments made by this section shall be con3 strued to alter existing law or rules relating to joinder. 

4 SEC. 3. JOINDER OF INTERESTED PARTIES. 

5 Section 299 of title 35, United States Code, is 

6 amended by adding at the end the following: 

7 ‘‘(d) JOINDER OF INTERESTED PARTIES.— 

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

9 ‘interested party’, with respect to a civil action aris10 ing under any Act of Congress relating to patents— 

11 ‘‘(A) means a person described in para12 graph (11) or (13) of section 281A; and 

13 ‘‘(B) does not include an attorney or law 

14 firm providing legal representation in the action 

15 if the sole basis for the financial interest of the 

16 attorney or law firm in the outcome of the ac17 tion arises from an agreement to provide that 

18 legal representation. 

19 ‘‘(2) JOINDER OF INTERESTED PARTIES.—In a 

20 civil action arising under any Act of Congress relat21 ing to patents, the court shall grant a motion by a 

22 party defending an infringement claim to join an in23 terested party if the defending party shows that the 

24 interest of the plaintiff in any patent identified in 

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1 plaint, is limited primarily to asserting any such pat2 ent claim in litigation. 

3 ‘‘(3) LIMITATION ON JOINDER.—The court may 

4 deny a motion to join an interested party under 

5 paragraph (2) if— 

6 ‘‘(A) the interested party is not subject to 

7 service of process; or 

8 ‘‘(B) joinder under paragraph (2) would 

9 deprive the court of subject matter jurisdiction 

10 or make venue improper.’’. 

11 SEC. 4. DISCOVERY LIMITS. 

12 (a) IN GENERAL.—Chapter 29 of title 35, United 

13 States Code, is amended by adding at the end the fol14 lowing: 

15 ‘‘§ 300. Discovery in patent infringement suits 

16 ‘‘(a) DISCOVERY LIMITATION PRIOR TO CLAIM CON17 STRUCTION.— 

18 ‘‘(1) IN GENERAL.—Except as provided in para19 graph (2), in a civil action arising under any Act of 

20 Congress relating to patents, if the court determines 

21 that a ruling relating to the construction of terms 

22 used in a patent claim asserted in the complaint is 

23 required, discovery shall be limited, until such rul24 ing, to information necessary for the court to deter25 mine the meaning of the terms used in the patent 


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1 claim, including any interpretation of those terms 

2 used to support the claim of infringement. 

3 ‘‘(2) DISCRETION TO EXPAND SCOPE OF DIS4 COVERY.— 

5 ‘‘(A) TIMELY RESOLUTION OF ACTIONS.— 

6 If, under any provision of Federal law (includ7 ing the Drug Price Competition and Patent 

8 Term Restoration Act (Public Law 98–417)), 

9 resolution within a specified period of time of a 

10 civil action arising under any Act of Congress 

11 relating to patents will have an automatic im12 pact upon the rights of a party with respect to 

13 the patent, the court may permit discovery in 

14 addition to the discovery authorized under para15 graph (1) before the ruling described in para16 graph (1) as necessary to ensure timely resolu17 tion of the action. 

18 ‘‘(B) RESOLUTION OF MOTIONS.—When 

19 necessary to resolve a motion properly raised by 

20 a party before a ruling relating to the construc21 tion of terms (as described in paragraph (1)), 

22 the court may allow limited discovery in addi23 tion to the discovery authorized under para24 graph (1) as necessary to resolve the motion. 

25 ‘‘(b) SEQUENCE AND SCOPE; COST-SHIFTING.— 


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

2 ‘‘(A) the term ‘additional discovery’ means 

3 discovery of evidence other than core documen4 tary evidence; and 

5 ‘‘(B) the term ‘core documentary evidence’, 

6 with respect to a civil action arising under any 

7 Act of Congress relating to patents— 

8 ‘‘(i) subject to clause (ii), includes 

9 only documents that— 

10 ‘‘(I) relate to the conception, re11 duction to practice, and application 

12 for the asserted patent; 

13 ‘‘(II) are sufficient to show the 

14 technical operation of the instrumen15 tality identified in the complaint as 

16 infringing the asserted patent; 

17 ‘‘(III) relate to potentially invali18 dating prior art; 

19 ‘‘(IV) relate to previous licensing 

20 or conveyances of the asserted patent; 

21 ‘‘(V) are sufficient to show rev22 enue attributable to any claimed in23 vention; 

24 ‘‘(VI) are sufficient to show the 

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1 ture of each party, including identi2 fication of any person that has a fi3 nancial interest in the asserted patent; 

4 ‘‘(VII) relate to awareness of the 

5 asserted patent or claim, or the in6 fringement, before the action was 

7 filed; and 

8 ‘‘(VIII) sufficient to show any 

9 marking, lack of marking, or notice of 

10 the asserted patent provided to the 

11 accused infringer; and 

12 ‘‘(ii) does not include computer code 

13 or electronic communication, such as e14 mail, text messages, instant messaging, 

15 and other forms of electronic communica16 tion, unless the court finds good cause for 

17 including such computer code or electronic 

18 communication as core documentary evi19 dence of a particular party under clause 

20 (i). 

21 ‘‘(2) DISCOVERY SEQUENCE AND SCOPE.—In a 

22 civil action arising under any Act of Congress relat23 ing to patents, the parties shall discuss and address 

24 in the written report filed under rule 26(f)(2) of the 


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1 Federal Rules of Civil Procedure the views and pro2 posals of the parties on— 

3 ‘‘(A) when the discovery of core documen4 tary evidence should be completed; 

5 ‘‘(B) whether the parties will seek addi6 tional discovery under paragraph (3); and 

7 ‘‘(C) any issues relating to infringement, 

8 invalidity, or damages that, if resolved before 

9 the additional discovery described in paragraph 

10 (3) commences, will simplify or streamline the 

11 case, including the identification of any key pat12 ent claim terms or phrases to be construed by 

13 the court and whether the early construction of 

14 any of those terms or phrases would be helpful. 

15 ‘‘(3) DISCOVERY COST-SHIFTING.— 

16 ‘‘(A) IN GENERAL.—In a civil action aris17 ing under any Act of Congress relating to pat18 ents, each party shall be responsible for the 

19 costs of producing core documentary evidence 

20 within the possession, custody, or control of 

21 that party. 

22 ‘‘(B) ADDITIONAL DISCOVERY.— 

23 ‘‘(i) IN GENERAL.—A party to a civil 

24 action arising under any Act of Congress 

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1 covery if the party bears the costs of the 

2 additional discovery, including reasonable 

3 attorney’s fees. 

4 ‘‘(ii) REQUIREMENTS.—A party shall 

5 not be allowed additional discovery unless 

6 the party— 

7 ‘‘(I) at the time that such party 

8 seeks additional discovery, provides to 

9 the party from whom the additional 

10 discovery is sought payment of the an11 ticipated costs of the discovery; or 

12 ‘‘(II) posts a bond in an amount 

13 sufficient to cover the anticipated 

14 costs of the discovery. 

15 ‘‘(C) RULES OF CONSTRUCTION.—Nothing 

16 in subparagraph (A) or (B) shall be construed 

17 to— 

18 ‘‘(i) entitle a party to information not 

19 otherwise discoverable under the Federal 

20 Rules of Civil Procedure or any other ap21 plicable rule or order; 

22 ‘‘(ii) require a party to produce privi23 leged matter or other discovery otherwise 

24 limited under the Federal Rules of Civil 

25 Procedure; or 


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1 ‘‘(iii) prohibit a court from— 

2 ‘‘(I) determining that a request 

3 for discovery is excessive, irrelevant, 

4 or otherwise abusive; or 

5 ‘‘(II) setting other limits on dis6 covery.’’. 

7 SEC. 5. COSTS AND EXPENSES. 

8 (a) IN GENERAL.—Section 285 of title 35, United 

9 States Code, is amended to read as follows: 

10 ‘‘§ 285. Costs and expenses 

11 ‘‘(a) IN GENERAL.—The court shall award to the pre12 vailing party reasonable costs and expenses, including at13 torney’s fees, unless— 

14 ‘‘(1) the position and conduct of the non-pre15 vailing party were objectively reasonable and sub16 stantially justified; or 

17 ‘‘(2) exceptional circumstances make such an 

18 award unjust. 

19 ‘‘(b) PROHIBITION ON CONSIDERATION OF CERTAIN

20 SETTLEMENTS.—In determining whether an exception 

21 under paragraph (1) or (2) of subsection (a) applies, the 

22 court shall not consider as evidence any license taken in 

23 settlement of an asserted claim. 

24 ‘‘(c) RECOVERY.—If the non-prevailing party is un25 able to pay reasonable costs and expenses awarded by the 


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1 court under subsection (a), the court may make the rea2 sonable costs and expenses recoverable against any inter3 ested party, as defined in section 299(d).’’. 

4 (b) TECHNICAL AND CONFORMING AMENDMENTS.— 

5 (1) TABLE OF SECTIONS.—The table of sections 

6 for chapter 29 of title 35, United States Code, is 

7 amended by striking the item relating to section 285 

8 and inserting the following: 

‘‘285. Costs and expenses.’’. 

9 (2) CONFORMING AMENDMENTS.—Chapter 29 

10 of title 35, United States Code, is amended— 

11 (A) in section 271(e)(4), in the flush text 

12 following subparagraph (D), by striking ‘‘attor13 ney fees’’ and inserting ‘‘reasonable costs and 

14 expenses, including attorney’s fees,’’; 

15 (B) in section 273(f), by striking ‘‘attorney 

16 fees’’ and inserting ‘‘reasonable costs and ex17 penses, including attorney’s fees,’’; and 

18 (C) in section 296(b), by striking ‘‘attor19 ney fees’’ and inserting ‘‘reasonable costs and 

20 expenses (including attorney’s fees)’’. 

Æ 


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